This article is written by Richi Palesha, pursuing a Certificate Course in Introduction to Legal Drafting: Contracts, Petitions, Opinions & Articles and has been edited by Oishika Banerji (Team Lawsikho).
It has been published by Rachit Garg.
Table of Contents
Introduction
A domain name is a term usually familiar with the area of coding, or general computer science. A domain name is basically an internet address, a unique combination of words displayed on the address bar of a website, this is said to be that website’s domain name. Using the said domain name, you can directly access the said website. The terminology ‘domain name’ has recently gained a lot of impetus in the field of marketing and branding on online portals. This is because, firstly they take the users directly to the desired website. Secondly, they make it feasible for the users to identify their desired brand from the other brands available on the web, making it very easy and feasible for the customer or the viewer. Thus, due to sudden growth in the e-commerce sector, these domain names haven’t just remained website addresses but have evolved into business identifiers or business distinguishers and thereby fall under the ambit of trademark, which in itself is a type of intellectual property. This article has been written to make the readers aware of the concept of domain names in the world of intellectual property.
What do you mean by domain name
A domain name is a distinctive set of words or combination of words, letters, numbers and characters which have a prefix and suffix attached to it. The arrangement of domain names can be split into two parts, namely:
- Top level domain (TLD), and
- Second level domain (SLD).
Nowadays with the rise of commercial activities these domain names especially the SLD have been made user-friendly and identical to business brands for easier identification of users, thereby becoming an identifying and distinguishing factor of the business on the internet and hence have gained importance.
This new understanding of domain names has been added in the legal definition of domain name through Satyam Infoway Ltd. vs. Siffynet Solutions (2004), the Hon’ble Court held that “A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online Internet location”. Thus domain name can simply be understood to be a unique combination which locates a website as well as distinguishes it from other websites, and helps the viewers in identifying the business enterprise or any enterprise, the said website it is associated with.
Importance of domain name in trade
The rapid evolution of online commercial activities has opened the door for several technical terms in the areas of marketing, advertising and promotion of brands. The technical terms don’t only comprise of the domain name but also include meta tags, browser words and many more technical terminologies which now play a vital role in the marketing of brands on the internet. These terminologies are used by the users for the identification of a particular brand they are in search of. Domain names in particular play a very vital role as the first thing a person searches for while looking for a brand is the brand name itself or any name in its association and selects out of the options displayed, the results having a domain name either as the brand name or similar to it. Thus, domain names have become a very essential part of the commercial activities of businesses on the Internet. The domain names are no longer just internet website addresses but with time are being designated as business identifiers.
Association of domain names with trademarks
Domain names are now known to be business identifiers; they are often considered to be a part of a trademark, as trademarks in itself are visual identifiers which differentiate the products or services of one entity from those of the others. Thereby trademark being an umbrella term is considered to now include domain names as well, this has been developed through common law judgements and through statutory interpretation and inference of provisions which have been explicitly stated under the statutes.
In India domain names are regarded as trademark entities, because as per the definition of trademark provided under Section 2(zb), any mark which is capable of being graphically represented and is also capable of showcasing the distinction between goods and services of one person with that of the other, and may be inclusive of shapes, packaging and combination of colours in relation to the goods, will be characterised as a trademark.
The issue that was in the case of Satyam Infoway Ltd. v. Sifynet Solutions (2004) involved asking the basic question as to if and whether domain names can be considered a word which is capable of differentiating the trade/service which is supplied to the users on the internet thereby confirming intellectual property rights. The court opined that the domain name defines a website address but due to increase in the internet commercial activities it has gained a different value of being an identifier and distinguisher of business enterprises. It is used in quite a few commercial activities like for trade, promotions and advertisement on the web, making domain names more valuable. Its involvement in trade and commerce has given it a designation under trademarks. The court also stated that domain names would also be considered as providing a service on the web/internet and thereby also come under service marks.
In India domain names are governed under trademark law itself, the Trade Mark Act, 1999 and Trade Marks Rules, 2002.
Trademark registration for a domain name
Domain names are registered in the Domain Name System (DNS) nationally as well as internationally, in accordance with the rules and procedures of DNS. DNS basically stores these domain names and once accessed by the users i.e, once the domain name is clicked on, it directs the computer to the website and the domain name changes to an IP address. This conversion or transformation is done by the Domain Name System. The DNS is basically a directory, which regulates the forming and accessing of domain names. Any name registered under this system is said to be a domain name i.e., any name which is registered in this system becomes a domain name. This is simply the registration of domain names in their capacity of being a website address.
Now registration of domain names with respect to them being business promoters, distinguishers, and identifiers is not governed by a separate statute nationally nor is there a separate global treaty which deals with domain names exclusively. Hence nationally, and to a certain extent international domain name is considered to be under the trademark category of intellectual property and not under a category of its own. Nationally domain names are governed by the Trade Marks Act, 1999[4] and the Trade Marks Rules, 2002[5]. Internationally the trademarks are registered under the Internet Corporation for Assigned Names and Numbers (ICANN).
Registration criteria for domain names
The domain names are registered as a trademark only if they are really the subject matter of their business identification on the internet. The registration of domain names as is done in accordance of it being a trademark it has to fulfil all the requirements present for the registration of trademarks:
o Uniqueness- Are not generic or suggestive, or of any sort with respect to section 9 of the Act.
o Distinguishing factor- It is of such a composition that it distinguishes the goods/ service provided by the individual or entity from that of the other.
o Source of identifier- It is of such a combination that on reading or viewing the same a person associates it to its source, brand.
It should not also be violative of the provisions of Section 11 of the Act of 1999. The domain names would be granted registration only if the essentials of a trademark are fulfilled and once provided with registration all the rights which flow to a trademark owner would be retained by the owner of such domain names.
Different managing bodies involved with respect to domain names
- DNS- Domain Name System
A computer system which sources out domain names that allows individuals to create domain names. A system in which any name registered if accepted by the System becomes a domain name. The system is the middleman through which on clicking on the domain name you go to a website, DNS facilitates that transformation.
- ICANN- Internet Corporation for Assigned Names and Numbers
It is a private, non-government, non-profit corporation having participants from all over the world. It was formulated with the objective to keep the Internet secure and stable. It is responsible for the management and functioning of the domain name system as well as the protection of domain names.
- UNDRP- Uniform Domain Name Dispute Resolution Policy
The policy was formulated by ICANN on the recommendation of WIPO for the protection of domain names throughout the world.
- INDRP- .IN Domain Name Dispute Resolution Policy
The Ministry of Information Technology adopted this policy in consultation with UNDPR. This only allowed domain names with extensions .in and .co.in registration but now irrespective of such contention registration is granted, if the trademark requirements as per the act, common law and rules are fulfilled by the domain name claiming registration.
- NIXI- National Internet Exchange of India
The organisation is entrusted with the registration of the domain names and are responsible to maintain the .IN registry. The law has developed much in the field of domain name, in recent years and has made it very feasible for business enterprises, individuals, commercial entities or any sort of organisation in general to register their domain names on fulfilling the required essentials and gain the rights which flow from them.
Protection of domain names
Domain names being business identifiers need protection from malafide practices carried out by entities to own profit under the well-established trademark or to create confusion amongst the viewers, with respect to the source of the website. These deceitful entities try to generate huge revenues by advertisements on these fake websites. These actions carried out by entities to deceive the public at large need to be checked as well as justice has to be done towards the loss of business incurred by the well-established entities or even upcoming entities or any trademark proprietor in the e-commerce sector.
In the recent matter of Sporta Technologies Pvt. Ltd. and Anr. v. Virat Saxena (2020), the Hon’ble Court held that the use of domain name “dream11.bet” by the defendant is capable of causing confusion and association of it to the original mark of the plaintiff and thus were held liable for infringement and passing off. The domain names when seem to have the characteristics of a trademark it would be protected the same way a trademark is protected.
Protection of unregistered domain names
Unregistered domain names can claim prior use and well known marks for protection of their domain names. Here as being unregistered they would have to show their existence in the commercial market prior to that of the defendants for availing the passing off common law remedy, if the disputed domain name satisfies the essentials of being a trademark.
Unregistered domain names only have protection against passing off and not infringement as they are protected the same way unregistered trademarks are protected. The protection of unregistered trademark has developed in common law on passing off principle as the Act under Section 27(1) of the which specifically say that to avail protection against infringement the trademark must be registered.
Against which activities, protection is granted to domain names
Domain names are given protection whenever there has been an unauthorised use of these marks. Following are considered to be the unauthorised use of domain names:
Infringement.
Infringement is defined under Section 29 of the Trademarks Act, 1999, in accordance to which if a person is not the proprietor of a trademark or has not been granted any sort of permission by the proprietor to use and uses the same or uses a mark similar to such trademark irrespective of knowing if such action of his would cause confusion amongst the target audience. If the actions similar to ones described above are done with respect to a domain name the registered proprietor of the trademark, has the exclusive right to sue for infringement of the trademark as per Section 28(1) of the Act. Domain names have been given this protection under the Act by the courts. In this regard, a reference can be made to the Rediff Communication Limited v. Cyberbooth & Anr (1999), where the court had observed that by using a similar domain name the defendants have infringed upon the plaintiff’s registered domain name.
Passing off
Passing off is a common law remedy laid down in the case of Perry v Truefitt (1842) which is based on the principle that “nobody has the right to represent his goods as the goods of somebody else.” When a domain name identical or similar to that of the other business entity, is used and is creating an impression that the identical or similar domain name is of the latter then it is said to be passing off. This is the only remedy available to trademarks which are not registered because as per Section 27 (1) of the 1999 Act, no person shall have the right to sue for the infringement of an unregistered trademark. In Yahoo!, Inc. vs. Akash Arora & Anr (1999), as the domain name yahoo.com wasn’t registered in India though being registered in other countries, the defendants were made liable for passing off and not infringement.
Cybersquatting
Cybersquatting hasn’t been defined under any statue nor has there been any reference as to cybersquatting in any of the statutory laws. This is a recent concept that evolved in light to the decision of the Kerala High court in the case of Pen Books Pvt. Ltd. v. Padmaraj (2004) where for the very first time, cybersquatting was defined as an act of “obtaining fraudulent registrations with an intent to sell the domain name to the lawful owner of the domain name at premium”. When an entity tries to register a domain name similar to that of a domain name or trademark of a well-known business enterprise with the mere intention to cause confusion amongst the public to such an extent that the business enterprise has to pay them off and buy the domain name, this is called cybersquatting. It doesn’t have specific reliefs defined to it as there are for infringement and passing of under Section 135 of the Act, but is for now covered under passing off and infringement. These are a few of the discovered common unauthorised actions against which domain name proprietors have certain rights and reliefs.
Conclusion
Domain names have developed a distinctive meaning through the growth of the e-commerce sector, this unique characteristic of distinguishing the goods/services provided by an entity from those of others have made them fall under the ambit of trademark and eventually in the world of intellectual property. Domain names is an evolving sect of Intellectual property which is gaining much impetus and importance, there are new aspects of this sect being discovered like cybersquatting which might make cybercrime rules also applicable if certain facts and circumstances of the case touch those laws, and as design was carved out to be a separate intellectual property from patents, domain names might result into being a separate category of intellectual property.
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