Protection Of Domain Name And Related Disputes

Introduction

The domain name, like any other source identifier in trademark law, can be used as a sign of a company’s goodwill. In the world of e-commerce, a company’s domain name selection can be a crucial marketing tool, if not the most crucial component of its online presence. Users frequently attempt to predict a company’s internet address by typing the company’s name followed by the “.com” top level domain name.

Trademark Dispute

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As a result, it goes without saying that a good domain name is critical to e-commerce success. Several organizations throughout the world register domain names, but none have the reach and scale of the Internet Corporation for Assigned Names and Numbers (ICANN). In order to survive the digital revolution, you’ll need a website, and domain names can help you get your site noticed. As a result, investing in a solid domain name is critical if you want to maintain your credibility. Your website’s web host is also a vital component of the internet. Your domain name is the virtual address that your consumers will use to discover you on the internet. Choosing a suitable distinctive domain name that reflects your company’s concept is a certain approach to increase visitors.

Protection Of Domain Name

Domain name registrations take place through various organizations on a first-come first-served basis. A person needs to make an application and pay the required amount of fees to register the domain name. Disputes arise when someone else registers the domain name of an already existing trademark. Domain name disputes can be categorized into the following:

Mechanisms Present To Protect The Domain Name

Internationally, the domain names are protected by the ICANN (Internet Corporation for Assigned Names and Numbers) organisation[1]. The registrations of the domain names are conducted on a first-come, first-served basis,[2] which gives rise to the cases of cybersquatting. Hence, on 24th October 1999, ICANN adopted a policy for resolutions of disputes related to domain names, called UDRP (Uniform Domain Name Dispute Resolution Policy), all registrars are required to follow this policy.[3] For disputes that are followed by abusive registrations, such as cybersquatting, UDRP offers expedited administrative proceedings to the trademark rights holders WIPO appoints independent panels for the disputes decided under the UDRP and these disputes only pertain to the transfer of the disputed domain name registrations. Anyone who registers a domain name is protected under the Trade Marks Act, 1999 and the Trademark Rules 2002. However, it is pertinent to note that the registered domain name has to fulfil all the requirements properly in order to receive the protection under the trademark and once registered, the domain name owners will be regarded similar as to the trademark owners and thus can avail the rights and authorities associated with it.

Trademark Infringement

Trademark infringement is usage of a mark that is identical or deceptively similar to the registered trademark without the prior consent of the trademark owner. Trademark infringement takes place when the mark used by a person causes confusion among the public. If it makes the people believe that the goods or services are associated with the goods or services of the registered mark, the person using such mark will be said to have infringed the registered trademark. Unregistered owners of trademarks are also protected under the Trademark Act, 1999. Similarly, registering domain name under an already existing trademark by a person who is not the owner of the trademark, comes under infringement of trademark. As there is no exclusive law for domain name law in India, the provisions of the Trademark Act, 1999 are used to govern disputes related to domain law. Domain names are registered and protected under ICANN (Internet Corporation for Assigned Names and Numbers) at an international level.

Trademark Dilution

It essentially differs from the concept of normal trademark infringement; trademark dilution occurs by a party’s unauthorised use of a mark that tarnishes or diminishes the reputation of a well- known trademark. This often occurs between business and companies that usually don’t operate in the same market. For instance, a business owner uses the ‘FACEBOOK’ mark on his publishing house, which results in consumers associating it with the well-known trademark ‘FACEBOOK’. This hampers the image of Facebook. In such a case, a trademark owner will not be able to prove the likelihood of confusion since both the businesses operate in different markets. Since, a trademark owner cannot bring an action for infringement in such matters, trademark dilution comes to their rescue. Moreover, it is pertinent to note that, for trademark dilution to occur a mark has to be famous or a well-known trademark. [4]

The doctrine of dilution is not defined under the Trade Marks Act, 1999. However, we find its presence under the Section 29(4) of the Act, which states that trademark infringement occurs when an unauthorised user creates a mark that is “identical or similar to a well-known registered trademark.”[5]

Violation Of Domain Name

  1. Cyber parasite

The concept of cyber parasite is very similar to that of cybersquatting. Here, the intention behind registering the domain name under the tradename of a well-known mark is to benefit from the use of the domain name rather than sell it for profit. Generally, disputes arise between direct competitors, those in similar business or those who intend to ‘pass off’ their goods as the goods of the well-known trademark owner.

  1. Reverse Domain Name Hijacking

When the trademark owner, in bad faith attempts to take over a domain name registered by someone else, who has not breached any trademark laws, it is called “reverse domain name hijacking.” Rule 15(e) of the UDRP explicitly states that if any complaint is brought under mala-fide intention, or to unnecessarily harass the domain name holder, such complaint shall be constituted as ‘abuse of administrative proceedings’.[6]

  1. Cyber Twin

When both the domain name holders have a genuine claim to the domain name they are called cyber twins. In a case before the WIPO arbitration centre, the defendant had registered his legitimate domain name and had been using it in good faith. The plaintiff also had a licit interest over the domain name of the defendant. Here, allegations so made were against the defendant diverting traffic was dismissed by the Arbitration Centre. The suit was dismissed based on the fact that the plaintiff had failed at proving the bad intention and thus it was held that both the parties had a legitimate claim over the domain name.[7]

  1. Cyber squatter

As has been mentioned, cyber squatters are those who register domain name of trademarks owned by other with the intention of selling, renting or transferring them to the rightful owner for a consideration.

Domain Names Disputes

With the growing popularity of Internet companies, they have discovered that a domain name identical to their company name or the name of one of their products can be an invaluable component of creating an Internet presence. Companies wishing to purchase a domain name need to register with the relevant organizations as mentioned above. They first look to see if their chosen domain name is already in use. Network solutions is a great place to start if you’re looking for something specific. If a business finds that a domain name that matches its business or brand name has been taken, it has two options: change its name or try to get the domain name back from its current owner.

Legal Remedies

If a domain name dispute arises as described above, the parties can always seek court assistance. While courts and judges have the right to grant control and ownership of domain names (like any other property), the legal system is very slow. As a result, many countries have turned to domain name registrar dispute resolution policies rather than courts. Companies that file lawsuits must provide legal reasons why a domain name registered for someone else should be revoked or transferred to a company that is not fast enough to register the name first. This argument is always based on trademark or dilution law. It can sometimes be difficult to make a solid case on the basis of traditional trademark law, especially when the person searching for a domain name can’t show possible confusion or is a well-known person who doesn’t own the trademark rights to their name.

Conclusions

For a domain name to receive protection under the Trade Marks Act of 1999, it must meet all the requirements of a trademark, making its protection an arduous procedure. When an e-commerce company becomes successful, its domain name becomes a significant asset in attracting customers to its website, resulting in an increase in revenue. In essence, the e- commerce business’s domain name becomes a valuable asset in and of itself. Domain name can be called a broader trademark and have the same characteristics as a trademark. As domain names serve as a virtual representation of a brand’s reputation, there is a considerable risk that it may be misrepresented by someone else in order to destroy the brand’s reputation. Hence, there should be stricter scrutiny of domain name infringement and trademarks act should insert the definition of domain name in order to ensure broader protection.

In order to provide an effective and firm solution to the bad faith and misuse of domain name registrations that violate the applicant’s trademark rights, domain registrars officially authorized by ICANN cooperate with dispute resolution mechanisms in accordance with the UDNDR Directive.

Because the Internet is increasingly becoming a very popular and highly favoured environment for the rapid flow of all types of business knowledge from individuals and corporations from all walks of life, it is vital to provide proper protection for distinctive domain names, such as trademarks and service marks. This increasingly sought trademark protection for Internet domain names is now a reality thanks to ICANN and WIPO. To accomplish the greatest, most effective, and most complete domain name protection on a global scale, it is also extremely desired to establish global trademark law harmonisation. In addition to the protection offered by trademark laws in other nations, uniform international legislation is essential to protect domain names because they transcend geographic borders.

Author: Yashmeen Hussain, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

[1] franklyn David J, Owning words in cyberspace: The accidental trademark regime, Wisconsin Law Review, 4 (2001) 1251, 1263-1266

[2] Gregg Duffey, “Trademark Dilution under the Federal Trademark Dilution Act of 1995: You’ve Come a Long Way Baby — Too Far, Maybe?”, 39 S. Tex. L. Rev. 133, 147 (1997).

[4] Trade Mark Act, 1946, (Also Known As the Lanham Act) 15 U.S.C. § 1127 (2000)

[5] Trade Marks Act, 1999, § 29(4)

[6] UDRP Rule 15(e)

[7] 15 Indian Farmers Fertilizer Corporation ltd. v. International Foodstuffs Co.; WIPO case no. D2011-110

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