domain name

In this article, Ritika Das who is currently pursuing M.A. IN BUSINESS LAWS, from NUJS, Kolkata, discusses Regulations related to the domain name and how domain name disputes are resolved in India.

Regulations related to domain name and how domain name disputes are resolved

The innovation of a Computer is one of the most valued endowments of science. The wide utilization of the computer prompted to the further improvement in many fields of life through the media of Internet[1]. In the early 1990’s Internet was mainly used to send mails and gather information. Now with the rise of e-commerce there is quick development in business activities transpiring through the net. Today, Internet encourages us in all strolls of our life, from online banking, e-wallet, e-governance, online dispute resolution system, information, technology; the internet has been a podium for growth and development in every field.

While the benefits of utilizing Internet are indisputable, it is not free from the negative impacts. The internet has been inclined to various abuses on account of its intrinsic nature of having no limits. It has cleared the path for distinctive sorts of violations and various complexities in the virtual world[2]. In this way, the different parts of Internet have posed challenges not exclusively to the business aspect but in general. One such difficult issue which needs prompt consideration is the domain name-trademarks conflicts[3].

The aim of this article is to break down the aid attainable to domain name holders under the laws and regulations of India.

Introduction

  • Let’s first understand what a domain name is. Domain Name is a unique name provided to the entity using the particular space on the net, much like the telephone numbers provided to different people or organizations. Having a similar number, however, bizarre that maybe, would create a lot of confusion. Much like that having a similar domain name also causes a lot of confusion and causes damage to the original organization[4].
  • Domain name is an alpha-numeric memory aide that can be coined onto an Internet Protocol (“IP”) address to empower clients to “surf the Web” more effectively than if they needed to recall the name and specifications of every IP deliver they needed to visit. Domain name has been defined by Black’s Law Dictionary 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.[5]

Originally a domain names purpose was to act as an address for computers on the web. The Internet has, in any case, created from a mere means to communicate to a method of carrying on business. With the expansion of business on the Internet, a domain name is additionally utilized as an identification of such businesses. In short a domain name is not only for providing an address to an Internet Communication but also is an address for any specific site.

A domain name system is under the rules and regulations of the Internet Corporation for Assigned Names and Numbers (ICANN).

There is a developing weight on trademark owners to get the rights over the domain name for their organization. A large portion of the organizations people still observes the “.com” domain is the most befitting and copacetic for business. Due to over 15 million “.com” “.org” and “.net” names are already catalogued and more often than not the domain name of a company’s choice is already taken, companies don’t mind spending lump sum amount to buy a domain name from a third party. Domain Name is much more than an Internet Address, for it likewise recognizes the Internet website to the individuals who achieve it, much like a man’s name distinguishes a specific individual, or as more pertinent to trademark debate, a Company’s name distinguishes a particular Company[6].

Domain Names in India

  • Choosing a Domain Name is probably the most initial and integral step of a Company or organization towards setting up an individuality in cyberspace. Domain names are like names to a site much like names are to humans, through which the network and computers know who the owner of a particular site is or who has control over the resources.
  • The registration of Domain Names is becoming more and more important for a company to be set up. There are millions of people searching the net and using the search engine to locate companies and their products. To make it easier for customers to find a particular company, the domain name should be similar to the work that is being done by the Company[7].
  • The protection of domain name in India has been in some ways, a great one, on the grounds that the Courts of India have been more patient towards the idea of giving lawful security to domain name as that to trademarks. Domain names are similar to trademark, and are not mere addresses, it is qualified for equivalent safeguard and protection much like the trademark.
  • To make it all the more clear, this piece of the article will investigate couple of imperative cases that are chosen by Indian Courts keeping in mind the end goal to substantiate the above explanation. In the case of Tata Sons Ltd. v. Manukosuri and Others the Hon’ble Court held that domain names ought to be granted protection much like the trademark. Trademark law applies to the exercises or activities that are done on the web, and the simple truth is that the many applicants have not registered their domain names. For the most part in India, the entanglements start when a person gets a domain name enrolled with the Registering Authority, if more often than not happens to be the Trade Name of some other individual. There is no system in the Registry to inquire whether a Domain Name has already been taken or not. It has been observed through a case Minerals Ltd. v. Pramod Borse and Another that the courts law emphasis on the intention of the party to have a particular domain name. A person’s objective is the most important thing to see. If a person had ill intentions while acquiring a name that already has been taken and wanted to be deceptive, then the court will make this a ground for injunction[8].

It has been stated in the aforementioned case 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.[9]

Using a generic name or a mark as a domain name may be granted protection. Although using two generic terms together in a particular way may be infringement. For example, the word “Aaj” and “tak” may be generic terms and may not be monopolized by any individual or company although both of them together would provide for protection as a trademark. A similar observation had been made by the High Court of Kerala in respect to the words “Pen” and “Books”, although a combination of both the words have been granted protection under the Trademark Law[10].

In the year of 2005, India opened up the “.in” nation code, permitting boundless second-level enlistments under “.in.” and boundless enrolments under organized zones which have been existing, for example, “.co.in” and ‘.org.in’. With India’s total national output developing at a rate of more than 8%, and a development spurt in the nation’s carefully wise youthful populace, there was a race to get space names in the “.in” area. This freedom was additionally abused by cybersquatters[11].

To attend to the protests from rights holders, in 2005 the “.in” Registry planned the “.in” Domain Dispute Resolution Policy (INDRP) along the lines of the Uniform Domain Name Dispute Resolution Policy.

The grounds on which an objection can be recorded are as per the following[12]:

  • The registrant’s space name is indistinguishable or confusingly like a name, trademark in which the complainant has the rights to;
  • The registrant has no rights or honest to goodness interests in regard of the domain name; or
  • The registrant’s domain name has been registered or is being used in bad faith[13].

One of the first complaints under the INDRP was recorded in 2006. From that point forward, more than 300 complaints have been recorded and speedily resolved under the INDRP. It is not just foreign brand proprietors -, for example, Google, Dell and Disney – that have effectively gained domain names from cybersquatters under the INDRP. Indian organizations, for example, Airtel and Pantaloons, have likewise utilized this strategy to prevent third party from utilizing domain names[14].

Trademark v. Domain name

  • There is a contrast between a trademark and a domain name, which is not significant to the right of a proprietor regarding the domain name, however is material to the “scope of the protection” accessible to a party. The difference lies in the way in which the two function. A trademark is ensured by the laws of a nation where such trademark might be enrolled.
  • Thus, a trademark may have different enlistments in numerous countries all through the world. Then again, since the web takes into consideration access with no geographical constraint, a domain name is conceivably available regardless of the geological area of the purchasers. The result of this potential for general network is not just that a domain name would require overall exclusivity but also additionally that national laws may be insufficient to successfully ensure a domain name. The lacuna required universal control of the domain name framework (DNS).
  • This universal regulation was affected through WIPO (World Intellectual Property Organisation) and ICANN (The Internet Corporation for Assigned Names and Numbers.). The result of the discussion amongst ICANN and WIPO has brought about the setting up not just of an arrangement for registration of domain names with authorize Registrars, but also additionally the development of the Uniform Domain Name Disputes Resolution Policy (UDNDR Policy) by ICANN on 24th October 1999.
  • To the extent of enrolment is concerned, it is given on a “first come first serve basis”.  Other than that, UDNDR Policy is enlightening with regards to the sort of rights which a domain name proprietor may have upon enrolment with ICANN Registrars[15].

Factors that are considered to decide the nature of deceptive similarity

  1. “Nature of the word marks, the label, or the composite marks.
  2. Nature of the goods.
  3. Similarity in nature, character and performance of goods.
  4. Class of purchasers likely to buy the goods bearing the marks.
  5. The mode of purchasing the goods.
  6. Other surrounding circumstances.” [16].

Domain name and dispute resolution

To attain clarity lets understand what the types of disputes under a domain name are:

Types of dispute

Any Person who looks at that as an enlisted domain name which clashes with his rights or interests may document a Complaint to the .IN Registry on the accompanying premises[17]:

  1. The Registrant’s domain name is indistinguishable or confusingly identical to a name or a trademark in which the Complainant has rights.
  2. The Registrant has no rights or interests in regard of the domain name;
  3. The Registrant’s domain name has been enrolled or is being utilized in a malafide manner[18].

In cases when such disputes arise and a Complainant files a complaint to the .IN Registry in compliance with the Rules and Regulations, the Registrant is required to go through Arbitration proceeding

Procedure of dispute resolutions

The Registry maintains a list of Arbitrators from which the .IN Registry appoints an Arbitrator resolve the said dispute. This list containing the Arbitrators are published online by the .IN Registry on their website: www.registry.in[19].

The Arbitrator should lead the Arbitration Proceedings as per the Arbitration and Conciliation Act 1996 and in compliance with this Policy and rules there under[20].

Registrant’s rights over the domain name

During the proceeding if the Arbitrator finds out any of the following circumstances depending on the evidence gathered shall display the Registrants right to the domain name:

  1. Prior to any notice to the Registrant of the question, the Registrant’s utilization of, or evident arrangements to utilize, the domain name or a name relating to the domain name regarding providing goods and services.;
  2. the Registrant (as an individual, business, or other association) has been ordinarily known by the domain name, regardless of the possibility that the Registrant has procured no trademark.
  • The Registrant is making a genuine reasonable utilization of the domain name, without any goal for business profit to mislead or redirect buyers or use the trademark with malafide intention[21].

Remedies

The remedy accessible to a Complainant’s compliant with any procedure before an Arbitrator might be restricted to requiring the cancellation of the Registrant’s domain name or the exchange of the Registrant’s domain name registration to the Complainant;s Cost as might be considered fit may likewise be granted by the Arbitrator[22].

Dispute resolution through Court proceedings

The documentation of an issue under the UDRP does not keep either party from presenting an argument before a court for a resolution either earlier or in accordance with the completion of procedures before the Administrative Panel. In the event that an Administrative Panel chooses that the domain name enrollment ought to be annulled or exchanged, there is a period of 10 working days granted wherein the documentation of the lawsuit must be sent to the concerned Service Provider[23].

No further move will be made by the Service Provider until it gets[24]:

  1. Fair proof of a resolution of the debate between the parties;
  2. Adequate demonstration that the claim has been expelled or retracted;
  3. An order copy of the Hon’ble Court dismissing the lawsuit or an order that has been passed for eliminating the Domain Name or transferring the same.

It is pertinent to note that Domain Name dispute doesn’t fall under Trade and Merchandise Marks Act, 1958 or the Information Technology Act, 2000 of India[25].

In the case of N. R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714 it had been held that “a man may not sell his own goods under the pretence that they are the goods of another man.” Basing on this ideology the concept of passing off exists[26].

Passing off is a type of unwarranted business rivalry by which one individual seeks to benefit from the notoriety of another entity in a specific trade or business. A passing off activity falls under the law of torts or common law. The TM Act does not determine what a passing off is, but administers the rules, regulations and remedies for passing off[27].

Requirements for a passing off

  1. “The goods of the plaintiff must have acquired distinctiveness.
  2. The nature of activity of both parties are the same or similar (compliance of this requirement is not always insisted).
  3. The goods of the parties, with which the trade mark is associated, are the same or similar(compliance of this requirement is not always insisted).
  4. The use of the trade mark by the defendant is likely to deceive and cause confusion in the public mind and injury to the business reputation of the plaintiff.
  5. The sphere of activity and the market of consumption of goods of the parties are the same.
  6. The customers of the plaintiff inter alia include uneducated, illiterate and unwary customers who are capable of being deceived, confused or misled.
  7. The plaintiff has been using its trading style and trade mark for a long period and continuously, whereas the defendant has entered into the field only recently.
  8. There has not been much delay in filing of the suit for injunction.[28]

Domain names and Court decisions on it

INDRP had been conceivably set by the courts’ for the unmistakable treatment of domain names as trademarks and that laid a foundation of standards for their security[29].

AcquaMinerals Ltd v Pramod Bose

In the case of “AcquaMinerals Ltd v Pramod Bose”, which was concerning the domain name of ‘bisleri’, the Delhi High Court opined that: “with the progression of web correspondence, the domain name has achieved as much legitimate rational and a legality as the Trademark has. Since the administrations rendered in the web are central for any business, the domain name should be safeguarded in order to ensure and avoid infringement. The court further held that: “A domain name is more than an internet address and is entitled to equal protection as a trademark.[30]

Yahoo Inc v Akash Arora

A party’s “Yahoo” domain name and the defendants ‘Yahoo India’ domain name were the subject of argument. The court was made a request to consider that web clients are modern, and that users know which site they would want to visit. The court held that: ““even if an individual is a sophisticated user of internet, he may be an unsophisticated consumer of information and such person may find is/her way to the defendant internet site as that of the plaintiff.[31]

Casio India co Ltd v Ashita Tele Systems

In the case of Casio India’s domain name, the argument was preliminarily held on the ground that it was a Mumbai based company and the jurisdiction should be of Mumbai and not Delhi although that’s where the suit was filed. The court held that: “the objection with regard to the territorial jurisdiction needs to be considered in the overall context of advances and development in the field of information technology and not in the usual conventional manner. The access to the impugned domain name website could be had from anywhere else; the jurisdiction in such matter cannot be confined to territorial limits of the residence of the defendant.[32]

Banyan Tree Holding Pvt Ltd. Vs Murali Krishna Reddy

The law although has changed with this recent Judgement. In Casio India the Court had decided that the existence of a website was reason enough to conjure the jurisdiction of a court. Although the website could be accessed from New Delhi even if the Company was based in Mumbai. In India TV, the court held that for a jurisdiction to be decided the website of a Company must be interactive, allowing the users not only to access the website but also subscribe to the services that are provided by the said Company who fall under the Jurisdiction of the Court[33].

Words describing Domain Name are substantially simpler to discover when looking through websites for data. Be that may, more often than not, not meet all requirements for much trademark security, as found in these two cases.

Mutualfundsindia.Com V Mutualfundindia.Com And Kabadibazar.Com V Kabaribazar.Com

The court inferred that these words were elucidating of the services provided. The materials placed on record missed the mark regarding showing that the words had procured auxiliary significance, which is a precondition for providing protection to a name that is descriptive[34].

Naukri.Com V Naukari.Co

It was held that this domain name was unconventional, as the party had utilized a Hindi word with English script. There was confirmation on record to demonstrate that the area name had procured secondary meaning by virtue of extensive business activities[35].

Satyam Inforway Ltd. v. Sifynet Solutions Pvt. Ltd.

This is a landmark judgement by the Apex court, wherein the question for thought arose before the Honorable Supreme Court of India was whether Internet domain names are liable to be of a legitimate standard pertinent to other intellectual properties, for example, trademarks. The Supreme Court held 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[36].”

Conclusion

It is of great importance that India should revise its legislature in order to add cyber squatting and disputes on domain name, in the Information Technology Act 2000 with the addition of utilizing the Cyber Appellate Tribunal. The Arbitration awards passed by WIPO and Mediation Centre should become binding under the Arbitration and Conciliation Act 1996. Amendments should be made in the Information Technology Act 2000, expressing that the judgement passed by WIPO should go to the High Court much like the awards passed in Arbitration matters in accordance to the Arbitration Act and an execution petitions should be filed to authorize them. Due to such amendments the decisions made by ICAAN and WIPO will put exhausted system of the Indian Judiciary at ease. As to the .IN registry the INDRP arrangement is as of now securing the domain names through the arbitration proceedings. This can in a way be expanded to all TLDs through the previously mentioned revisions or amendments achieving a functional working arrangement. India ought to utilize the WIPO and ICANN instruments for dispute resolution and set a point of reference for different nations over the world. Further, ICANN’s Governmental Advisory Committee (GAC) is a valuable device for national governments to comprehend, receive and contribute towards ICANN strategies relating to particular government interests.

To better the system against domain name disputes the Government should play an active role and must take interest in the GAC. India should become more involved in ICANN’s ambition and guide India in becoming a virtually reliable country[37].  These are certain ways a Domain Name Dispute can be resolved effectively.

References

[1] Catherine Colston and Kirsty Middleton, Modern Intellectual Property Law, Second edition, (London: Cavendish Publishing Ltd, 2005) p. 615

[2] Paul Sugden, „Trademarks and Domain Names‟ in Jay Forder and Patrick Quirk (eds.), Electronic Commerce and the Law, (Australia: John Wiley & Sons, 2001) pp. 199 – 225 at p. 199.

[3]http://www.naavi.org/cl_editorial_04/praveen_dalal/pd_domain_name_nov4.htm

[4] ibid

[5]http://www.selvamandselvam.in/blog/trademark-and-internet-domain-name-and-dispute resolution/&gws_rd=cr&ei=JMetWObrKYvGvgTT0a6IDA

[6] ibid

[7] ibid

[8] ibid

[9] ibid

[10] ibid

[11] http://rnaip.com/wp-content/uploads/2014/09/6403544663news.pdf

[12] ibid

[13] ibid

[14] ibid

[15] http://ptlb.in/ipr/?p=102

[16] http://www.majmudarindia.com/pdf/Domain%20name%20dispute%20resolution.pdf

[17] ibid

[18] ibid

[19] ibid

[20] ibid

[21] ibid

[22] ibid

[23] http://www.wipo.int/export/sites/www/amc/en/docs/wipointaudrp.pdf

[24] ibid

[25] ibid

[26] ibid

[27]ibid

[28]  http://www.majmudarindia.com/pdf/Domain%20name%20dispute%20resolution.pdf

[29] ibid

[30] ibid

[31] ibid

[32] https://indiankanoon.org/doc/418389/

[33]http://www.selvamandselvam.in/blog/trademark-and-internet-domain-name-and-dispute-resolution/

[34] ibid

[35] ibid

[36] ibid

[37]http://www.vaishlaw.com/article/information_technology_laws/the_domain_name_chaos.pdf?articleid=100324

Suggested readings.

Domain Name Disputes

What Is The Procedure To Register A Trademark In India

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