Domain names and trademarks – What happens when there’s a dispute?

Amritha Sathyajith

domain names and trademarksDomain names and trademarks

Nowadays, the Internet has become the most popular medium for commercial organisations to promote themselves. This is because the internet has no boundaries or closing hours. Every person who wishes to use the internet as a medium needs a domain name. A domain name is nothing but a network address that helps identify a particular entity on the internet. Usually, a domain name consists of two parts – the top level domain (TLD), which is used to identify the organisation that owns it or the geographical area where it originates and the second level domain, which identifies the unique administrative owner associated with an Internet Protocol address. (For example, in example.com, .com is the TLD whereas example is the second level domain name)

With an increase in the worldwide TLD’s, there is a simultaneous increase in a type of Intellectual Property dispute that was not very prevalent previously. This dispute is between two domain name registrants, having the same second level domain name but a different TLD. What aggravates this conflict is that domain names owing to their global reach need to be unique throughout the world, while trademarks may overlap across different categories or geographical locations.

So what happens when you have adopted a domain name but it just so happens that your second level domain name is identical to another? The most common mistake among domain owners is that they do not conduct an exhaustive search before investing their resources and buying a domain. Many domain name search tools are available in the internet which allows you to effortlessly search the availability of your domain name. One such search tool is WHOIS (www.whois.net).

But, if you have gone forward and registered the domain name in good faith, legitimately believing that you are the sole owner of the domain name then, you do stand a chance to win in a domain name dispute. Under the INDRP (.IN Domain Name Dispute Resolution Policy) and UDRP (Uniform Domain Name Dispute Resolution Policy) rules, the complainant must be able to prove that the respondent is using the domain name in bad faith or has no legitimate right or interest over the domain name. Failure to prove this on the part of the complainant will result in abandonment of the complaint. The same happened in two leading cases of WIPO relating to the domain names maggi.com and armani.com. Therefore, if you have made an honest adoption of an identical domain name then you will not necessarily end up losing the right over it.

The Courts have, while deciding on this issue, laid down the following criteria to decide whether a case of infringement can be made out in a case of identical second level domain names.

Reputation or Goodwill

If your domain name is identical to a domain name of a well known brand, then the chances are that you might have already received a cease and desist notice. It does not matter that you have a different TLD. Well known brands go to a great extent to protect their Intellectual Property. They do not entertain even the likeliness or chance of passing off by another brand. Courts have also supported this view and given domain names very high protection.

Marks and Spencer, a multinational brand, owning the domain name marks-and-spencer.co.uk, sued One-in-a-million, an internet domain registrar, for making available for sale marksandspencer.com. Here, it is pertinent to note that even though the domain name was only offered for sale and there was no actual business activity taking place under it, the Court held that Marks and Spencer had enough cause of action to file the suit for infringement owing to its world-wide reputation. The same principle was applied in case of Lifestyle Management Ltd. v. Frater, wherein the Court decreed against the Respondents for using offshorelsm.net, offshorelsm.org and offshorelsm.co.uk as it infringed the Claimant’s registered domain offshorelsm.com.

First use

When deciding the validity of two conflicting domain names, proof of first use has been accepted as a valid contention to retain rights over the domain name. If a person is able to establish that his date of registration is earlier than that of the other, then the balance of favour will tilt towards him. But there is an exception to this general rule. In cases where the later registrant has a registered trademark in the same name, then the Court will look into other factors to decide the dispute. Moreover, the Courts have realized that a blind application of the first-come-first-serve rule will only result in exploitation by cyber squatters.

Similarity or dissimilarity of goods and services offered

The next question is whether the two registrants are offering the same goods or services under their domain name. In the case of trademarks, two owners are permitted to own similar/identical trademark if the goods sold by them are completely different. Similarly, if the content of both the domains are different then there is very little chance of confusion for an average man using the internet.

But, keeping aside the factor of confusion, internet being a mechanical phenomenon, runs its searches based on keywords. If a user types in a particular domain in the search engine, then chances are, he might not notice the TLD attached to the search results. This might result in taking him to a webpage that he did not intend to use in the first place. All this will only cause undue inconvenience to the user. The same has been held in the case of Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd., ‘a deceptively similar domain name may not only lead to a confusion of the source but the receipt of unsought for services.’

Conclusion

The most common and effective ground for defense to retrieve your domain name is to prove first use. You can establish your rights over a particular domain name and prevent others from using it if you can effectively show that you are a well known brand and that you were the first to register your trademark and domain name in your respective TLD.

In short, those who wish to create a domain name identical to another by just changing the TLD, have to think twice, or even better, seek legal advice before they venture into it. You should keep in mind while choosing an identical second level domain name, the possibility of getting embroiled in legal consequences.

This article has been authored by Amritha Sathyajith who is pursuing law at the School of Excellence, Chennai. Being a civil service aspirant, she seeks happiness through empowerment. She is currently a member of the The InfoMission Project and The Debunk project, both initiatives that aim to make lives better.

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