Trademark and Internet : Domain Name and Dispute Resolution
An Internet domain name is an alpha-numeric mnemonic device that can be mapped onto an Internet Protocol (“IP”) address to enable users to “surf the Web” more easily than if they had to remember the details of each IP address they wanted to visit. Black’s Law Dictionary defines domain names as
“the words and characters that website owners designate for their registered Internet addresses. All domain names have at least two levels. The first level domain name identifies the registrants. The second-level domain name is the unique identifier for the user in particular. A second-level domain name may be protected under trademark law but first-level domain names are not.”
In terms of technical infrastructure, the domain name system is administered by the Internet Corporation for Assigned Names and Numbers (ICANN).
There is a growing pressure on trademark owners to obtain the rights over the domain name for their company. Most of the companies and individuals still see the .com domain as the most suitable or prestigious for business. Since over 15 million “.com”, “.org” and “.net” names are already registered; many first choice names are taken. Some companies are therefore, prepared to pay to buy a domain name from a third party. A domain name is more than a mere Internet Address, for it also identifies the Internet site to those who reach it, much like a person’s name identifies a particular person, or as more relevant to trademark disputes, a Company’s name identifies a specific Company.
India And Domain Names
The protection of domain names in India has been in some ways, a favourable one, because the Courts in India have been more patient towards the concept of providing legal protection to domain names as that to trademarks. Domain names serve the same functions as a trademark, and are not mere addresses or like finding a number on the internet and therefore, it is entitled to equal protection as trademarks. To make it more clear, this part of the article will look into few important cases that are decided by Indian Courts in order to substantiate the above statement made.
The court in Tata Sons Ltd. v. Manukosuri and Others held that domain names are entitled to the protection as trademark and trade mark law applies to the activities on internet, and the mere fact that the petitioner has no registered domain name by itself may not stand in the way of passing off action. Generally in India, the complications begin when a person gets a domain name registered with the Registering Authority, which happens to be the Trade Name of some other person. The Registering Authority has no mechanism to inquire whether the domain name sought to be registered is in prior existence and belongs to another person. Therefore the court in Acqua Minerals Ltd. v. Pramod Borse and Another, observed that
“unless and until a person has credible explanation as to why did he choose a particular name for registration as a domain name or for that purpose as a trade name which was already in long and prior existence and has established its goodwill and reputation; there is no other inference drawn than that the said person wanted to trade in the name of trade name he has picked up for registration or as a domain name because of its being an established name with widespread reputation and goodwill achieved at huge cost and expenses involved in advertisement.”
The courts have focused on the intention of the party. It is observed that if it is found that a Man’s object in using the same domain name which he used was to deceive, or that he had an intention to deceive the Court, will very much infer that his object has been achieved, if the facts tend to show that, then his intention to deceive ripening into receipts gives ground for an injunction.
Can a descriptive or generic mark be used as domain names? A descriptive mark may be granted protection where the same has assumed a secondary meaning which identifies it either with particular goods or as being from a particular source. There are instances when the courts in India observed that the word “Aaj” and “tak” may be individually descriptive and may not be monopolised by any person but the combination does provide for protection as a trademark if it has been in long, prior and continuous user and it gets identified with such persons. Similar observation was made by the Kerala High Court with respect to words “Pen” and “Books” and the combination was provided with protection under trademark law. But where the parties have not been able to establish that the name used has not attained secondary meaning then the courts have even refused to grant the remedy. In Online India Capital Co. Pvt. Ltd. v. Dimensions Corporate, the plaintiff who was using the website under the name
of “www. Mutualfundsindia.com” brought an action against the defendant who adopted the name “MUTUALFUNDINDIA.COM”. It was held that the plaintiff’s domain name was descriptive of the character of the Services offered by it and there was no evidence to show that the word has acquired a secondary meaning which was precondition for granting protection to descriptive names and therefore the claim was dismissed.
This brings us to the most important and landmark judgment of the Apex Court, Satyam Inforway Ltd. v. Sifynet Solutions Pvt. Ltd. where the question for consideration before the Honourable Supreme Court of India was whether Internet domain names are subject to the legal norms applicable to other intellectual properties such as trademarks. The Supreme Court observed that
“the use of similar or same domain name may lead to a diversion of users which would result from such users’ mistakenly accessing one domain name instead of another. Ordinary users seeking to locate the functions available under 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 has misrepresented its goods or services through its promotional activities and the first domain-owner would thereby lose its custom. It’s apparent, therefore, that a domain name may have all the characteristics of a trademark and could find an action for passing-off.”
Dispute resolution through Udrp – The Icann Policy
Disputes over rights to domain names, which serve a source identifying function in cyberspace, arise at the heart of this intersection between international trademark law and the Internet. In an effort to reconcile the unique complexities presented by domain name disputes, a host of vehicles have developed by which aggrieved parties may assert their rights. With a few notable exceptions, these remedies may be obtained in one of two forums-
traditional litigation or private arbitration under the Uniform Domain Name Dispute Resolution Policy’ (UDRP) promulgated by the Internet Corporation for Assigned Names and Numbers (ICANN), the non-profit organization that manages the DNS.14
ICANN has been in charge of administration and regulation of domain names since 1998. UDRP was implemented by four of ICANN accredited organizations; WIPO (World Intellectual Property Organization), NAF (National Arbitration Forum), CPR (CPR Institute for Dispute Resolution) and eRes or DeC (eResolution). The eRes was shut down in December 2001. In February 2002 and January 2008, two new providers of UDRP Policy were approved which are ADNDRC (Asian Domain Name Dispute Resolution Centre) and CAC (Czech Arbitration Court) respectively. The UDRP stands applicable to registered as well as unregistered marks.
According to UDRP rules 3(a), any person can initiate a claim by simply submitting the hard copy and email with the complaint, to any forums or service providers approved by ICANN. The complaint must contain the choice of the complainant of conducting the dispute by a three member panel or a single-member panel. UDRP rules 3(b) facilitates the complainant to choose the panellists of his choice. The complainant must show that all the grounds mentioned in the Rule 4 (a) are fulfilled. The registrant must respond to the complaint within twenty days. Relying on its findings, the panel further provides the remedy to the complainant. The remedies available to the complainant are limited to cancellation and transfer of domain names.
Three tests have been set out in the Rule 4(a) of the UDRP for the purpose of continuing the claims:
(a) If the domain name is identical or confusingly similar to the mark in which the complainant has rights- WIPO lays down that “the test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion” and also the similarity in the content of the website stands irrelevant while determining the “confusingly similar” factor.
The rules are valid for registered as well as for unregistered marks. First of all, if the domain name is identical to the mark in question, the complainant need not prove the clause of “confusingly similar”, but it is important to find out whether the domain name is merely similar or actually identical.
(b) If the registrant does not have any legitimate interests in the domain name in issue- It is also mandatory to prove the registrant does not own any legal rights or interest in the domain name (UDRP Policy 4(a)) and when the complainant succeeds in doing so, the burden falls on the registrant to prove any of the circumstances mentioned in UDRP Policy 4(c) in order to prove their legitimate interest in the name. They are :
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are 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 trade mark or service mark at issue.
These grounds are not exhaustive and any other evidence proving the legitimate rights and interests in the domain name is acceptable.
(c) If the domain name is registered and used in bad faith- The most important requirement to initiate any proceeding against a cyber crime is to show that the registrant had acted in “bad faith”. Article 4 b of the UDRP lays down circumstances which lead to the conclusion whether the act was done in bad faith or not.
• If the motive of obtaining the name is to prevent the rightful owner from using it and the party has had a previous record of doing the same.
• The domain name was obtained with a motive of selling, licensing or transferring it either to the owner of the trademark or to his competitor, in return for money.
• The domain name is registered with a motive to disrupt the business of the trademark owner.
• The domain name is used for the purpose of attracting users online by creating a striking similar domain name as that of the true trademark owner.
It is to note that a mere registration of a domain name that resembles some registered trademark does not constitute bad faith. A registered trademark does not provide with any automatic rights in the domain name. Neither does any attempt to sell the registered domain to the owner of the trademark amounts to abusive registration.
The domain names were registered to take advantage of the distinctive character and reputation of the marks. But with the rise of domain name users, this protection caused lots of difficulties. Some illustrations, the domain name”Marutisuzuki.com” is identical to Maruti Suzuki, and court observed that registration of domain name is a “bad faith registration”; the domain name “Newsony.com” is identified and confusingly similar to “sony.com”. The current approaches to Internet domain name disputes focus on protecting holders of trademarks from bad-faith registrations and uses of domain names that correspond to relevant trademark interests. In some senses, this is an unusual extension of trademark policy into a new area of legal regulation. This development is remarkable because traditional trademark law and policy is aimed at preventing consumer confusion about the source and, to some extent, the quality of particular goods or services.
This article has been authored by Meril Mathew Joy who is pursuing law at National Law University, Odisha