Posted by: Catherine Fernandes | April 14, 2010

Domain Name Protection In India

The original role of a domain name was to provide an address for computers on the Internet. The Internet has, however, developed from a mere means of communication to a mode of carrying on commercial activity giving rise to new “digital issues“.

With the increase of commercial activity on the Internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for Internet communication but also identifies the specific Internet site. In the commercial field, each domain name owner provides information/services, which are associated with such domain names. Domain names are used in various networking contexts and application-specific naming and addressing purposes.

A domain name is an identification label to define a realm of administrative autonomy, authority, or control in the Internet, based on the Domain Name System (DNS). The Domain Name Systems (DNS) is a hierarchical naming system for computers, services or any resource participating in the internet. It associates different information with domain names assigned to each of the participants. Domain names are also used as simple identification labels to indicate ownership or control of a resource. Such examples are the realm identifiers used in the Session Initiation Protocol (SIP), the Domain keys used to verify DNS domains in e-mail systems, and in many other Uniform Resource Identifiers (URIs).

An important purpose of domain names is to provide easily recognizable names to numerically addressed Internet resources. This abstraction allows any resource (e.g., website) to be moved to a different physical location in the address topology of the network, globally on the internet or locally in an intranet.

In simple terms, Domain name is the address of a web site that is intended to be easily identifiable and easy to remember, such as yahoo.com. These user-friendly addresses for websites help connect computers and people on the Internet. Because they are easy to remember and use, domain names have become business identifiers and, increasingly, even trademarks themselves, such as amazon.com. By using existing trademarks for domain names – sony.com, for example – businesses attract potential customers to their websites.

Domain Name & Intellectual Property Rights

Now, the question that arises is that, “how are Domain Names and Intellectual Property rights (IPR) inter-related?” The answer lies in the understanding of Intellectual property rights. So what are these rights? Intellectual property (IP) is legal property right over creations of the mind, both artistic and commercial, and the corresponding fields of law. Under intellectual property law, owners are granted certain exclusive rights to a variety of intangible assets, such as musical, literary, and artistic works; ideas, discoveries and inventions; and words, phrases, symbols, and designs. The intellectual property rights provide creators of original works economic incentive to develop and share ideas through a form of temporary monopoly.

Originally, Domain Names were conceived and intended to function as an address, but with an increasing number of cases of registered domain names being illegally occupied (cyber squatting), it has posed additional problems in how to handle trademark disputes in cyberspace. Cyber squatting as an offence relates to the registration of a domain name by an entity that does not have an inherent right or a similar or identical trademark registration in its favour, with the sole view and intention to sell them to the legitimate user in order to earn illegal profits. An address in the cyber-space is imperative in the new e-economy for companies and individuals to be easily traceable by their consumers with the emergence of the Internet as an advertising forum, recruiting mechanism, and marketplace for products and services whereby companies doing business have a strong desire to register domain names akin to their products, trade names or trademarks. For example, owners of famous trademarks, such as Haier, typically register their trademarks as domain names, such as http://www.haier.com. Domain names may be valuable corporate assets, as they facilitate communication with a customer base. With the advancement of Internet communication, the domain name has attained as much legal sanctity as a trademark or trade name and, therefore, it is entitled to protection.

Another issue is the registration of names of popular brands with a slight spelling variation like pesi.com and radiff.com for the sole purpose of diverting traffic to their website through typing errors. ‘A significant purpose of a domain name is to identify the entity that owns the website.’ A domain name should not confuse the consumers as to the origins of the services or products defeating the principal of trademark law. In Rediff Communications Ltd. v. Cybertooth & Another the Bombay High Court while granting an injunction restraining the defendants from using the domain name ‘RADIFF’ or any other similar name, held that when both domain names are considered there is every possibility of internet users being confused and deceived into believing that both domain names belong to one common source and connection although the two belong to two different persons. Again the website using the domain name, ‘Naukari.com’ was held to be confusingly similar to that of the plaintiff, ‘naukri.com’, with a different spelling variant establishing prima facie inference of bad faith.

Domain name protection: Legal aspect

As stated earlier, the constant increase in the use of internet for commercial purposes has greatly increased the level of cyber crimes and other internet related offences. Thus, the legal protection of such domain names is a serious issue which must be dealt with. In order to do so, the Internet Corporation for Assigned Names and Numbers (‘ICANN’), a domain name regulatory authority, adopted a Uniform Domain Name Dispute Resolution Policy (‘UDRP’), which is incorporated into the Registration Agreement, and sets forth the terms and conditions in connection with a dispute between the registrant and any party other than the registrar over the registration and use of an Internet domain name registered. Upon entering into the Core Registration Agreement with ICANN while registering a domain name, one agrees to submit to proceedings commenced under ICANN’s Uniform Domain Name Dispute Resolution Policy. According to the ICANN policy, the registration of a domain name shall be considered to be abusive when all the following conditions are met:

(a) The domain name is identical or misleadingly similar to a trade or service mark in which the complainant has rights.

(b) The holder of the domain name has no rights or legitimate interests in respect of the domain name; and

(c) The domain name has been registered in bad faith.

The term ‘bad faith’ does not simply mean bad judgment but it implies the conscious doing of a wrong with a dishonest purpose. In order to prove bad faith, the following circumstances, if found, are sufficient evidence of bad faith registration:

(a) When there is an offer to sell, rent or otherwise transfer the domain name to the owner of the trademark or service mark, or to a competitor of the complainant for valuable consideration.

(b) When the respondent registers the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.

(c) When by using the domain name, a party has intentionally attempted to attract, for commercial gain, internet users to its website or other online location by creating a likelihood of confusion with the trade or service mark of the complainant.

INTA has consistently sought to protect domain names in the cyberspace in the same way as in any other media as these domain names can and often do work as trade marks. For the very same reason, INTA seeks to achieve the following six objectives:

(a) establishment of specific minimum standards for domain name registration;

(b) a publicly accessible domain name database, which contains up-to-date and accurate contact information;

(c) a uniform and easy-to-use dispute resolution policy which renders administrative – not legal – decisions;

(d) a reasonable mechanism whereby exclusions can be obtained and enforced for famous marks;<

(e) a “go-slow” approach on the addition of new generic top-level domains (“gTLDs”); and

(f) a voice for trademark owners in the formulation of domain name policy.

INTA believes that when the above-mentioned six objectives are achieved, it would safeguard the trademark rights, which in this case would be the domain names.

Dispute Resolution

INTA believes that a reasonable administrative dispute resolution policy is an essential element of any plan for the administration of domain names on the Internet. Discretion for domain name policy should neither reside with the domain name registrars, nor with the registries. Any dispute policy needs to be consistent across the gTLD space. A lack of uniformity and specificity will only lead to confusion on the part of trademark and domain name holders, fundamental unfairness in the unequal treatment of rights in domain names and therefore inconsistent policies and precedent, chaos in the Internet community. If the goal is to create a system which is fair and predictable, and a relief to the current confusion and uncertainty, there can only be a single uniform system. There is no division among trademark holders on this point. A global marketplace and community requires a single set of global rules.

Therefore, any dispute resolution policy should be limited, at least during an appropriate interim period, to alleged instances of bad-faith activity by the domain name registrant. Further, use of online dispute resolution (ODR) is also very useful for resolving domain name disputes as WIPO is doing.

Situation in India

Domain Name Issues

With the advancement of e-commerce, the domain names have come to acquire the same value as a trademark or the business name of a company. The value attached to domain names makes it lucrative for cyber criminals to indulge in domain name infringements and the global nature and easier and inexpensive procedure for registering domain names further facilitates domain name infringements. When a person gets a domain name registered in bad faith, i.e. in order to make huge profits by registering a domain name corresponding to a trademark of another person, with an intent to sell the domain name to the trademark owner at a higher price, such activities are known as cyber squatting. The IT Act does not deal with the domain name issues. In India the domain name infringement cases are dealt with according to the trademark law. The issue concerning protection of domain names came up before the Supreme Court of India in the case of Satyam Infoway Ltd. vs. Sifynet Solutions P. Ltd (2004(28) PTC 566). The court, in an authoritative decision has held that internet domain names are subject to the same legal norms applicable to other Intellectual Properties such as trademarks. It was further held by the Supreme Court of India that:

“The use of the same or similar domain name may lead to a diversion of users which could result from such user mistakenly accessing one domain name instead of another. This may occur in e-commerce with its rapid progress and instant (and theoretically limitless) accessibility to users and potential customers and particularly so in areas of specific overlap. Ordinary consumers/users seeking to locate the functions available less than one domain name may be confused if they accidentally arrived at a different but similar website which offers no such services. Such users could well conclude that the first domain name owner had misrepresented its goods and services through its promotional activities and the first domain owner would thereby lose their custom. It is apparent therefore that a domain name may have all the characteristics of a trade mark and could found an action for passing off.”

The court further held that there is no legislation in India which explicitly refers to dispute resolution in connection with domain names. The operation of the Trade Marks Act, 1999 is also not extra territorial and may not allow for adequate protection of domain names. This does not mean that domain names are not to be protected legally to the extent possible under laws of passing off.

However, with most of the countries providing for specific legislations for combating and curbing cyber squatting, India also needs to address the issue and formulate legal provisions against cyber squatting. For settlement of Disputes, WIPO has introduced a new mechanism called ICANN (Internet Corporation for Assigned Names and Numbers) for settlement of disputes relating to domain names. As the parties are given the right to file the case against the decision of ICANN in their respective jurisdictions, the decisions of ICANN is having only persuasive value for the domain users.

We know that a domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online internet location. Consequently where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical. As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high. Whereas a large number of trademarks containing the same name can comfortably co-exist because they are associated with different products, belong to business in different jurisdictions etc, the distinctive nature of the domain name providing global exclusivity is much sought after. The fact that many consumers searching for a particular site are likely, in the first place, to try and guess its domain name has further enhanced this value.

The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are:

Honesty and fair play are, and ought to be, the basic policies in the world of business.When a person adopts or intends to adopt a name in connection with his business or services, which already belongs to someone else, it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury

Thus, a Domain Name requires a strong, constant and instant protection under all the legal systems of the world, including India. This can be achieved either by adopting harmonization of laws all over the world or by jealously protecting the same in the municipal spheres by all the countries of the world.

Trademarks vs. Domain names

There is a distinction between a trademark and a domain name, which is not relevant to the nature of the right of an owner in connection with the domain name, but is material to the ’scope of the protection’ available to the right. The distinction lies in the manner in which the two operate.

A trademark is protected by the laws of a country where such trademark may be registered. Consequently, a trademark may have multiple registrations in many countries throughout the world.

On the other hand, since the internet allows for access without any geographical limitation, a domain name is potentially accessible irrespective of the geographical location of the consumers. The outcome of this potential for universal connectivity is not only that a domain name would require world wide exclusivity but also that national laws might be inadequate to effectively protect a domain name.

The defense available to such a complaint has been particularized “but without limitation”, in Rule 4 (c) as follows:

(i) Before any notice to the domain name owner/registrant, the use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with bona fide offering of goods or services; or

(ii) The domain name owner/registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) The domain name owner/registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These rules indicate that the disputes may be broadly categorized as:

Disputes between trademark owners and domain name owners andBetween domain name owners inter se.

A prior registrant can protect its domain name against subsequent registrants. Confusing similarity in domain names may be a ground for complaint and similarity is to be decided on the possibility of deception amongst potential customers. The defenses available to a complaint are also substantially similar to those available to an action for passing off under trademark law.

As far as India is concerned, there is no legislation, which explicitly refers to dispute resolution in connection with domain names. But although the operation of the Trade Marks Act, 1999 itself is not extra territorial and may not allow for adequate protection of domain names, this does not mean that domain names are not to be legally protected to the extent possible under the laws relating to passing off

In India, the Trademarks Act, 1999 (Act) provide protection to trademarks and service marks respectively. A closer perusal of the provisions of the Act and the judgments given by the Courts in India reveals that the protection available under the Act is stronger than internationally required and provided.

Rule 2 of the UDNDR Policy requires the applicant to determine that the domain name for which registration is sought, does not infringes or violates someone else’s rights. Thus, if the domain name, proposed to be registered, is in violation of another person’s “trademark rights”, it will violate Rule 2 of the Policy.

In such an eventuality, the Registrar is within his right to refuse to register the domain name. This shows that a domain name, though properly registered as per the requirements of ICANN, still it is subject to the Trademarks Act, 1999 if a person successfully proves that he has ‘rights’ flowing out of the Act.

Conclusion

The protection of domain name under the Indian legal system is standing on a higher footing as compared to a simple recognition of right under the UDNDR Policy. The ramification of the Trademarks Act, 1999 are much wider and capable of conferring the strongest protection to the domain names in the world.

The need of the present time is to harmoniously apply the principles of the trademark law and the provisions concerning the domain names. It must be noted that the moment a decision is given by the Supreme Court and it attains finality, then it becomes binding on all the person or institutions in India.

It cannot be challenged by showing any ’statutory provision’ to the contrary. This is so because no statutory provision can override a ‘Constitutional provision’ and in case of a conflict, if any, the former must give way to the latter. This settled legal position becomes relevant when we consider the decision of the Supreme Court in Satyam case (supra) in the light of the above discussion. The various landmark judgments of the Supreme Court have conferred the ’strongest protection’ to the domain names in the world.

References:

(1) Praveen Dalal, Domain Name Protection Law In India.

(2) Praveen Dalal, Intellectual Property Rights In The Digital Era

(3) Praveen Dalal, Domain Name Protection: An Indian Perspective

(4) Praveen Dalal, Online Dispute Resolution In India

SOURCE: CYBER LAWS IN INDIA

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