Protection Of Internet Domain Name As Trademark

Introduction

Information technology plays a vital role in the modern-day scenario for the development of the internet. Information technology can be considered as both boon and bane for companies as well as for individuals also. Various cyber-crimes happened on a global level for damaging companies’ reputation by adopting similar kind of commercial activity with a similar brand name which creates confusion in the mind of a customer. To avoid this confusion, a Domain Name System (DNS) was introduced.

The Internet Domain Name is one of the most important aspects of commercial activities through the internet. It is considered an integral part of the business while any business indulges in an online commercial activity. A domain name acts as a business identifier and promoter in the worldwide business. The domain name has much more importance than represents the website of different businesses on the internet.

In the present scenario, commercial activities on the internet go on increasing day by day, thus, the importance and usefulness of domain names are also enhanced for business promotion, publicity of goods and services which turns into huge profits in the business activities. Companies use the domain name as their trademark which no other companies are allowed to use not only in their country but restrictions are also available worldwide.

What is meant by Internet Domain Name?

Business organizations have been started flourishing and expanding their activities through the internet after the emergence of e-commerce. Without having any unique identity, the business entity cannot enter into cyberspace for the commencement of the business activity. The Unique Identity Protocol (IP) Addresses are numeric characteristics due to which it is difficult to remember. To avoid this difficulty, the Domain Name System (DNS) came into the force, as a substitute for IP address.

The Internet Domain Name refers to the unique name of an organization or an individual on the internet. In other words, it is the address of any company’s or an individual’s website that people search at the browser to visit that website. It is also known as user- friendly form of IP address. A Domain name of one company cannot use by another company of that country as well as restrictions applicable on companies of other countries. A Domain name consists of two elements: one is a website name and another one is a domain name extension. For example, Facebook.com, (here Facebook is a website name and .com is a domain extension). Some of the basic characteristics of Domain Name are:

  1. The Domain Name contains only English alphabets from A to Z and Numeric digits from 0 to 9.
  2. Space and special characters (! @, ^ and &, etc.) are not permitted in the domain name.
  3. Domain name contains a minimum of 3 letters and a maximum of 63 letters.
  4. It is not case sensitive i.e. it may either use upper case or lower case or both.

Not all domain names may follow the same type of domain extension. There are different types of domain extension in cyberspace. These are:

Top-Level Domain- TLD

Top Level Domains (TLD) is listed at the highest position in the Domain Name System (DNS). The TLD is maintained by an organization called Internet Assigned Number Authority (IANA). There are various TLDs in the Domain Name System but the major ones are .com, .net, .org, and .edu.

Generic Top-Level Domain (gTLD)

It is a category of Top Level Domain which intends a specific use in a certain area. It cannot be limited by a geographical location i.e. it is an international extension. The gTLD contains three or more characters as domain extensions, such as, .gov which is aimed at governmental institutions. Similarly, gTLD includes .edu for education institutions, .org (for non-profit organizations), .mil (military) and .net for Internet service providers (ISPs).

Apart from this, there are some of the popular restricted gTLD (or Generic Restricted Top Level Domain), such as .xyz, .biz, .google, .oracle, and .info. These are classified as restricted gTLD because it requires proof of eligibility during registration. For example, .biz can only be registered by businesses or .name can be registered only by individuals.

It is a kind of Top Level Domain that sponsored a specific community or entity, either a private business organization, government, or other groups. For example,

  • in/.nic – Used by the Indian government;
  • in/– For Indian educational institution;
  • in– For Indian research management;
  • in– Used for Indian academic institution;
  • in – For the Indian military institution;
  • .post– It was sponsored by Universal Postal Union; etc.

Country Code Top Level Domain (ccTLD)

The ccTLD is a country-specific top level domain name that ends with country code extension. It uses two letters domain extension, such as,

  • .in– country code extension of India;
  • .us– country code extension of the United States; and
  • .au– country code extension of Australia, etc.

What is meant by Trademark?

The term “Trademark” is popularly known as Brand name and it is used to register a business as a legal entity within the state where it operates. It is a unique symbol, phrase, insignia, or words used to represent businesses or products. It legally differentiates a product or service from all other of its kinds. Trademarks are used to identify the developer of a product or service and its owner. Unlike a patent, the trademark does not expire after 20 years, the owner may get protection associated with them throughout the life of a company.  Some of the famous examples of a trademark are:

  • The word Google is a trademark of Google technology;
  • The name Coca-Cola is a trademark of Coca-Cola Corporation. The Corporation takes trademark protection on the graphical representation on their name and shape of the bottle;
  • The logo of Apple is a trademark of Apple Inc., based in the US.

There will be a question that arises if the business carried on by the two companies is entirely different, can they be allowed to function with similar trade name marks?

The answer will be Yes, when you register a trademark, you don’t get a monopoly over a word, phrase, or logo itself. We are getting monopoly only over the mental link between that word, phrase, or logo and specific products and services that we offer. So as long as your products and services are completely different from the other registered trademarks you can safely use or even register that.

Difference between Trademark protection and domain name protection

Both Trademark and domain names are interrelated because they used to give protection to the company’s goodwill by any kind of legal infringement. But apart from this, there are some differences lies between them. These differences are:

1. The trademark operates in the real world while the Domain name operates in cyberspace.

2. The trademark provides a unique identity to a product and services of a company through trademark protection on unique symbols, phrases, insignia, or words used to represent businesses or products.

Whereas, the domain name is regarded as internet resource locators and it also, provides the internet address of a company. In other words, the Domain Name is the address of any company’s or an individual’s website that people search at the browser to visit that website.

3. The registration of Trademark is applicable at the national level, whereas, the applicability of registration of domain name is at the global level.

For example, if the business carried on by the two companies is either identical or similar, then, according to Section 12[1] of The Trademarks Act, 1999, they can be allowed to function with similar trademarks at the national level, but two companies cannot use the same domain name at the global level under any circumstances, such as gov. in/. nic, used for the only Indian government.

In Nandhini Deluxe v. Karnataka Co-Operative Milk Producer Federation Ltd.,[2]

Since 1985, Karnataka Co-Operative Milk Producers Federation Ltd. (KMF), has been indulged in producing and selling milk and milk products under their mark ‘NANDINI’ which had been registered under Class 29 and Class 30 of Trademark list.

Since 1989, M/S. Nandhini Deluxe is indulging in the business of running restaurants under the name ‘NANDHINI’ and had applied for the registration of the same.

The Hon’ble Supreme Court granted the trademark registration of the mark ‘NANDHINI’ for the restaurant on the condition that registration will not be given to them for milk and milk products. The Court also held that there is no violation of the law if two companies associated with different products are using a similar trademark for their product.

4. Trademarks have no jurisdiction issues because it has a geographical boundary, that’s why, disputes are easily settled but, in case of domain name difficulty arises during dispute resolution because the internet has no geographical boundary.

5. Trademark protection was given specific product or product line of the company whereas; the domain name is applicable for the entire company which has a range of products.

Is Domain Name Entitled To Trademark Protection?

Yes, the domain name is entitled to registration and protection of trademark at the national and global level, if it fulfills all the necessary conditions. Any unique internet domain name which is capable of being identifying the goods and services of a company and distinguishing it from other companies and also, if domain name act as an identifier of goods and services on the internet, then it is entitled to trademark registration and protection.

For trademark registration, the domain name of a company should be unambiguously unique from other companies, so that, companies engaged in the same or different fields cannot deceive, mislead the consumers. There are also some essentials for a Domain name while registering as a trademark:

  • It is distinctive or its peculiarity results from consumer association of the name and the internet business; and
  • The owner of the company’s domain name must be the first one who uses it in the association with sales of goods and services.

Generally, the trademarks which receive more legal protection are not descriptive at all. Thus, if the brand name is not purely generic or descriptive, and also the brand name is a domain name of a company, this domain name can be considered as a trademark.

For example, ebay.com is both a domain name as well a trademark of a company. It provides an address of a company on the internet as well as identifies the developer of a product or service and the owner of a particular online service. Also, it is not a generic or descriptive domain name, that’s why it is considered a trademark. On the other hand, if an internet domain name is either descriptive or generic, then, the domain name is not entitled to trademark registration. As, cars.com and hotel.com, both are descriptive domain names, so, they are not entitled to registration and protection of trademark.

Domain Name Registration As Trademark in India

If a domain name is unique, undisruptive, and available and also not protected as a trademark of another company engaged in similar or different goods and services, then, the applicant can register the domain name as a trademark. The applicant has to pay a fee for trademark registration which is assessed yearly and provide contact information to the approved registrar. The ICANN (Internet Corporation for Assigned Names and Numbers) provides the list of approved registrars.

In India, National Centre for Software Technology (NCST) is an organizational body that regulated country-level domain name registration. In the year 2000, on 26th September, the regulatory body NCST added two more domain names “ind. in” and “gen. in” to facilitate the registration of individuals and organizations. For registration of an individual or a company under these two domain names, the applicants are not required to present in the country during the registration process. Before this situation, the applicant should be compulsorily having their office in India during domain name registration under “co. in” and “org. in“. In October 2004, the Indian government declared the National Internet Exchange of India (NIXI) as the registrar of the .in domain name.

Once, a domain name is registered as a trademark, then the owner of the domain name has exclusive right over it, but this right cannot prohibit others from using the name for their business.

The protection is given to the Domain name in India

In India, due to the absence of specific legislation relating to the protection of domain names, the judiciary applies Indian trademark laws for protecting it. Under Trademarks Act, 1999 and the Trademarks Rule of 2002, any individual or business, or professional entity may obtain protection for any infringement of their newly created Domain name in entire India.

In Yahoo! Inc. v. Akash Arora and Anr,[3]

The Delhi High Court held that the laws relating to trademarks are equally applicable on domains name. The Court further held that the Domain name is not just an address, but merely, it is a primary address of the company on the internet, and thus, it enjoys the same protection which has been granted to trademarks.

How the Dispute of Domain Name Can be Settled in India?

The ICANN (Internet Corporation for Assigned Names and Numbers), a regulatory body has set- up the Uniform Dispute Resolution Policy (UDRP) to settle domain name dispute at the global level. However, the main issue that arises during the dispute settlement of Domain name and Trademark Protection is the jurisdictional issue (i.e., whether the decision of Hon’ble Court has binding force over the disputed parties of different countries) because the internet had no geographical boundaries.

In India, the Indian Dispute Resolution Policy (INDRP) deals with disputes regarding the domain name. Rules and procedures of INDRP were approved by NIXI[4]. INDRP mandates the arbitration proceeding under the arbitration and Conciliation Act, 1996 for the domain name registered by NIXI.

If a company already has a registered trademark, can NIXI prohibit another company from using that trademark as their internet domain name?

No, if a company already have a registered trademark, then, it does not necessarily prohibit other company engaged in similar or different businesses use that trademark as their internet domain name. But there are certain circumstances when trademark owners can apply NIXI to prohibit other companies to use their trademark as a domain name:

In case, a company uses a domain name that is already a registered trademark of another company engaged in a similar or different form of business for creates some confusion in the mind of consumers regarding product and services (this act is known as Cybersquatting), then the NIXI may impose restrictions under trademark law for using that trademark as the domain name of another company.

In case of dilution of famous trademark reputation due to the commercial use of Domain name, then, restrictions may impose for using the trademark as a domain name.

Landmark Cases

In Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company,[5]

This case was decided with the help of an e-magistrate mechanism within 45 days and the whole procedure was online. In this case, there was a complainant, who engaged in the publication of articles in the daily newspaper such as the “Economic Times” and the “Times of India”. He also published articles on the online version of respective newspapers under the domain name “economicstimes.com” and “timesofindia.com”. The respondent registered domain names as “theeconomicstimes.com” and “thetimesofindia.com.”

The complainant held that the sponsored top-level domain name of the respondent company is similar as their, moreover, they use to attracts readers by using the complainant’s goodwill and they have no good intention in this regard.

The matter came before the panel of Mediation and arbitration Centre of WIPO and the panel held that the two domain names of the respondent company should be transferred to the complainant.

In Rediff Communication Ltd. v. Cyberbooth & Another,[6]

The Bombay High Court held that a domain name is much more than an internet address, therefore, it is equally entitled to protection as a trademark under trademark law.

In this case, the plaintiff has filed a case against Defendant Company that they use the domain name “rediff.com” similar to their trademark to deceive the plaintiff. The High Court held that, with the “intention to deceive” the plaintiff, the respondent uses the domain name in bad faith.

Conclusion

Nowadays, there is a rapid expansion of e-commerce in cyberspace, due to which various issues were raised regarding the protection of business activities. Trademarks and domain name plays a major role for protecting business activities from any illegal infringement or violation of the law. A domain name is the primary address of a company on the internet and it is user-friendly. It is also considered a valuable corporate asset. A domain name can be registered as a trademark also if it is unique, distinctive, and not descriptive nor generic. For example, Amazon. in, is a domain name as well as trademark of Amazon Co. because it fulfills all the necessary conditions mentioned above for trademark registration.

There is no geographical limitation on the internet domain name and thus, the primary concern regarding was the jurisdictional issues. If parties belong to different countries having different laws, then, it is a serious issue whether the decision made by the court applies to disputed parties or not. To overcome such issues, ICAAN has set up the Uniform Dispute Resolution Policy (UDRP) to settle domain name dispute at the global level. There is also a regulatory body in India, known as the Indian Dispute Resolution Policy (INDRP) deals with disputes regarding the country code domain name.

In general, disputes relating to a domain name can be settled by ADR mechanism i.e. Arbitration and mediation; court proceedings; agreement between the parties that in case of any disputes, they may arrive for mutual settlement, etc.

References

[1] Section 12 of the Trademarks Act, 1999 states that in case of honest concurrent or special circumstances which in the opinion of Registrar, then, registration of a similar or identical trademark is permitted to more than one proprietor or whether such trademark was already registered for identical or similar services.

[2] AIR 2018 SC 3516

[3] 1999 IIAD Delhi 229; 78 (1999) DLT 285

[4] National Internet Exchange of India

[5] D-2000- 0015, ADM Panel Decision, WIPO

[6] 1999 (4) BomCR 278


This article has been written by Aditi Sahu, 4th year (B.B.A.LL.B.) student at Banasthali Vidyapith.

Also Read – Who Can Apply for Trademark?

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