This article on ‘Protection of Domain Name under Trademark Laws in India‘ was written by Riya Chaudhary, an intern at Legal Upanishad.
Introduction
These days, IT is crucial to the expansion of the internet. Technology in the information age may be seen as both a blessing and a curse for businesses and people. There have been many cases of cybercrime committed around the world with the intention of damaging companies’ reputations by engaging in similar business activities under a similar name. A Domain Name System (DNS) was created to solve this problem.
One of the most critical elements of successful online commerce is the domain name. It is regarded as a vital aspect of the company when any firm indulges in an online commercial activity. In the global marketplace, a domain name serves as both a brand name and a promotional tool for a company. There is a lot more to consider when choosing a domain name than just how it relates to a company’s online presence.
As the volume of online commerce continues to grow, so too does the value of domain names for boosting brand awareness and driving traffic to online stores, all of which may lead to significant financial gains. A company can protect its brand internationally by registering a domain name that no one else can use.
What’s a Domain Name?
One unique identifier for a virtual administrative region is its domain name. Domain names are generated by the DNS according to its own internal rules and outputs (DNS). A domain name is a unique identifier that can be looked up via the DNS. The domain name is the globally unique identifier for an IP resource like a user’s computer, a server computer, a website, or any other service accessible over the internet. Only a small fraction of these domains are really available. Among the many types of organisations are government agencies (.gov), educational institutions (.edu), charitable organisations (.org), and commercial enterprises (.com).
What is Trademark?
A Trademark may be a single word, symbol, design, or a mix of these, used to indicate the source of goods or services. Trademark law protects the rights of the original trademark owner by excluding any other parties from using the mark in connection with competing goods or services. Businesses benefit from trademark rules because they allow customers to more easily identify a favourite brand whenever they see that mark on other items. A trademark ensures customers that they will always get the same high quality from the brand they’ve come to know and trust.
Demand for domain names pertaining to certain industries, products, or services has increased in tandem with the explosion of online commerce and marketing. Many trademark infringement cases have arisen because of the rush to register domain names. Some companies, for instance, found out the hard way that the domain name they wanted to use as their well-known brand was already in use. After settling on a domain name, its owner may seek trademark protection to exclude others from using the name in any capacity. Trademark protection in business domain names, however, is not as robust as it is in other contexts.
Domain Name as Trademarks
After meeting all trademark registration requirements, domain names may be registered as trademarks.
A domain name may be registered as a trademark if it is distinctive, can be used to differentiate the products or services in question from those of others, and can be trusted to identify the source of the goods or services online.
In the Supreme Court case Satyam Infoway Ltd. vs. Siffynet Solutions, the issue of whether domain names may be secured as intellectual property like trademarks came up. There can be little doubt that a domain name’s principal purpose was to act as a computer’s Internet address, according to the court. But more than ever before, people utilise the internet for both personal and professional purposes. Another purpose for a domain name is as a brand name, particularly in light of the rise of online shopping.
Due to these factors, the domain name serves as more than simply an address; it also serves to identify the website and set it apart from the services of other companies. As a consequence, a domain name must be unique in order to be used as an address. This is true in particular when the domain name is connected to a business. As more companies transfer their activities online, domain names have grown more costly and conflicts are more likely to occur.
Trademark Protection Vs. Domain Name Protection
An official designation and legal protection for a trademark or service mark will only be awarded in the nations and jurisdictions where it has been registered. The Internet Corporation for Assigned Names and Numbers (ICANN), the only global registrar in charge of such matters, protects domain names that are trademarks or service marks globally. Anyone body of local or international law cannot ensure that a domain name may be used exclusively in a single jurisdiction.
A tight and censorious system of domain name registration via authorised registrars and a highly effective and efficient dispute resolution mechanism, the Uniform Domain Name Dispute Resolution Policy, was developed by ICANN and WIPO to accomplish this purpose.
In order to have their problem handled in compliance with the UDNDR Policy, which has been in operation since October 1999, a person or business may submit a formal complaint to one of the certified administration-dispute-resolution services providers [authorised by ICANN under Rule 4(a)].
The Complainant has rights in a trademark or service mark that is identical or confusingly similar to one of the domain names at issue; the registration and use of the domain name at issue are evidence of bad faith. There is a demonstrable trademark violation to support the claim. To prohibit the registration of trademark-infringing domain names in bad faith and abusively, ICANN-accredited registrars operate a dispute resolution mechanism under the Uniform Domain Name Dispute Resolution Policy.
Protection of domain names in India
When a domain name is also used as a trademark, it is protected not only at the national and international levels but also by ICANN [Internet Corporation for Assigned Names and Numbers] and the relevant provisions of applicable national trademark law and a variety of international trademark treaties.
If a domain name meets all of the conditions for registration under India’s Trademarks Act, 1999 (henceforth referred to as “the Act”), then it may be protected as a trademark or service mark (as enumerated above). Once a domain name is registered in India, its owner is afforded the same statutory safeguards and common law rights as those of a trademark or service mark holder. This may include a claim of infringement or passing off.
If a person uses a domain name that is already registered as a trademark in India, they would be guilty of trademark infringement under section 29 of the Indian Trademark Law.
If the trademark owner is the first user, the mark has become distinctive, and there is a misrepresentation of the trademark owner’s products by another party that is likely to mislead the target audience, then the trademark owner is entitled to protection for his mark even if he has not registered his mark.
People Interactive (India) Pvt. Ltd. v. Vivek Pahwa & Ors was a passing-off case tried by the Bombay High Court involving the wedding planning websites shaadi.com and secondshaadi.com. The court agreed with the defense’s argument that “Shaadi” is a generic term. It was determined by the court that if a word takes on a new meaning, it must have abandoned its original significance and broken all connections to the previous owner of the mark in the eyes of the general public. However, the court ruled that this was not the case since the word “online space” had no other meaningful meaning.
Conclusion
Given this, it’s very evident that domain names are crucial components of online commerce. Maintaining control of one’s domain name is crucial, especially for companies that operate primarily in the digital realm. Since domain names may be used by anyone in any part of the world, it is important to have consistency.
Reference
- Hemant Goyal and Mohit Porwal (14 July 2014) Protection of Domain Name as a Trademark. https://www.mondaq.com/india/trademark/327272/protection-of-domain-name-as-a-trademark
- Protection of Domain Name as a Trademark. https://www.indialawoffices.com/legal-articles/protection-of-domain-name-as-a-trademark
- Law Corner. Protection of Internet Domain Name as a Trademark. https://lawcorner.in/protection-of-internet-domain-name-as-trademark/
- Domain name and Trademarks Right in India. https://www.lexology.com/library/detail.aspx?g=daaafca2-6a68-4134-bd29-27aa941a1f03