In this article, Shraddha Tiwari of Bharati Vidyapeeth New Law College, Pune discusses the Trademark issues related to Internet Domain Names.

ABSTRACT

Ancient Greeks and Romans scribbled on various goods as a mark of identification. As the civilizations grew, new and better techniques of business demanded unique recognition to their products. Trademark facilitated this need. After emergence of e-commerce, business entities have started flourishing and expanding their activities on internet. However, a company cannot directly enter the cyber space without an identity. DNS was introduced as a substitute to the all numeric traditional IP address. Trademark and Domain name although sound similar are distinct but both are interrelated. Sometimes, well-known trademarks are used as domain names by hoaxers so as to deceive the customers. This act is known as “cyber squatting”. United States Patent and Trademark Office (USPTO) allows registration of domain name as trademark under certain circumstances. Courts have laid down Sleekcraft test to determine acts of trademark infringement. Trademark infringement in cyber space can be in the form of Linking and Framing, Meta tagging, Trademark dilution etc. A domain name contains Top Level and Second Level Domain names which can be registered with ICANN approved registrars such as WIPO. Settlement of domain name disputes can be through various means like ADR mechanism, agreement and Court proceedings. ICANN has set up the Uniform Dispute Resolution Policy (UDRP) to settle domain names disputes at an international level. However, the main issue while settling a domain name and trademark dispute is the jurisdictional issue because internet has no boundaries. Issues as to which court the matter should be brought, whether the decision of the court is binding on the parties who are registrants in two different countries.  

INTRODUCTION

In the modern day scenario, information technology has become a vital part of our lives. The development of internet and the exchange of data amongst different computers led to major technological as well as telecommunication revolutions. However, technology can be a boon as well as a bane. ICT has majorly contributed to the increasing number of cyber crimes in the society. 2016 report of PWC emphasized that at a global level cyber crime is the second most reported crime in the world. According to Indian Computer Emergency Response Team (CERT), 27,482 cases of cyber crime were reported from January, 2017 to June, 2017. [1]With the increasing number of cyber crimes which poses a threat to individual as well national security, there’s a need to re-invent technology which could easily tackle cyber attacks or re-frame even more stringent laws to reduce such activities. Intellectual Property (IP) and Information Technology (IT) go hand in hand and are called “sister laws”. Patent, trademark and copyrights have now occupied cyber space at a large front.

Ancient Greeks and Romans scribbled on various goods as a mark of identification. As the civilizations grew, new and better techniques of business demanded unique recognition to their products. Trademark facilitated this need. These are basically the style mark of a particular company, the manner in which they differentiate their products from that of other companies. The company can use colors, designs, numbers and various other symbols to give a unique identity to their product and distinguish it from other pirated products offered by hoaxers. The importance of trademark at a global level was first recognized in Paris convention which was subsequently followed by another agreement i.e. Trade Related Aspects of Intellectual Property Rights (TRIPS). There has been much debate on Benelux Trademark Legislation that whether the said legislation can be interpreted as conferring a function on trademarks that trademark is nothing but an investment of company’s goodwill.

After emergence of e-commerce, business entities have started flourishing and expanding their activities on internet. However, a company cannot directly enter the cyber space without an identity. Unique Internet Protocol (IP) addresses were not catchy and difficult to remember due to its all numeric characteristics. This led to the development of Domain Name Systems (DNS). DNS was introduced as a substitute to the all numeric traditional IP address. DNS basically functions to convert complex IP addresses of e-mails and websites into simple domain names for easy access by average user. Domain names are now also referred to as valuable corporate assets carrying goodwill. Some examples of Domain Name-

• .com for commercial
• .int for organizations established by international treaties.
• .net for computers of network providers.

TRADEMARK AND DOMAIN NAME

While trademark provides unique identity to a product, domain names can be called as internet resource locators. Domain can also be regarded as the internet address of a company which after many years of use becomes the identity for their diversified products lines. Hence, the question here is that whether domain name can be regarded as trademarks and vice versa?  However, there has been much fuss about the resemblance of the two within the cyber world. Company has to consider number factors while applying for a domain name, which also includes inclusion of the trademark within the domain name. Domain name can be regarded as trademark and trademark can be used while registering a domain name but it is only beneficial if the same company does so. Sometimes, well-known trademarks are used as domain names by hoaxers so as to deceive the customers.

Taking example of a Dutch case law- Where a company got a trademark registered as thuisbezorgd.nl in the year 2000. Another company engaged in the same business activity under the domain name thuisbezorgen.nl. The Trademark owner filed a suit against the domain name owner contending that it deceived the customers to think that the site was theirs and that the goodwill of the company was being used by the domain name owners to earn profit. On the contrary, the domain name owner contended that the trademark lacked distinctiveness. However, the Court ruled that since the trademark was registered before the domain name, the defendants were at fault. Thus, most of the times, the company grows such a reputation that the courts grant recognition of trademark as domain name.[2]

Another case of stolen domain name being Amazon.com Inc v. Royal responder IncCivil Action CV’03 1634PHXDKD wherein defendants were charged for sending e-mails using Amazon’s domain name Amazon.com and making the customers believe that the goods/services were of Amazon. The defendants were neither affiliates of Amazon nor were doing so with the prior permission of the company. Amazon has wide range of customers all over the world and is also famous for its services both online and offline. It became a fortune 500 company after commencing operations in 1995 on the World Wide Web. Hence, it can be concluded that the domain name of the company became valuable corporate asset. Court held the defendants liable.

Thus, through the above case studies, it can be concluded that both domain names and trademarks are interrelated which ultimately affects the goodwill of the company.  United States Patent and Trademark Office (USPTO) allows registration of domain name as trademark under certain circumstances.[3] However, Domain name and trademark sound similar; there are number of differences between the two like –

• Trademark operates in the real world while domain name operates in the cyber world.
• The Registration of trademark is generally at a national level but domain name registration is at a global level.
• Different persons residing in different countries can have same trademark for different goods and services since it does not generally have global impact but domain name operate at a global level and hence, two companies/persons cannot have same domain name. For instance, “Delta” is used by a number of companies like Delta Airlines, Delta Dental etc but the domain name com is used only by the airline industries.
• Dispute with regards to trademark can be easily settled because there are no jurisdiction issues but domain name disputes are hard to settle because internet has no boundaries.
• Trademark can refer to or relate to a specific category of a product or product line but domain names are not provided for every single product offered by a company. There can be a domain name for the entire company within which the company can have range of products.

REGISTRATION OF DOMAIN NAME

With the increasing use of internet in almost every field, there was need to have a regulating body in order to grant and maintain records of IP Address. Internet Assigned Numbers Authority (IANA) was set up under the supervision of US Government to carry out the functions such as-

• Allocations of IP addresses.
• Setting up protocol parameters to ensure that computers can communicate with each other.
• Maintaining registries and making it available for general public use.

In December 1992, their contractual agreement between National Science Foundation and Network Solutions Inc (NSI) after which NSI registered domain name sites through InterNic site.In 1998 IANA was transferred to private sector when US government came up with the policy of establishing Internet Corporation for Assigned Names and Numbers (ICANN). In October 1998, ICANN superceded IANA by taking over all the functions of IANA. ICANN maintains high standards and procedures with respect to assignment and maintenance of domain name records. Any member of the ICANN community if aggrieved by ICANN staff, board or any other constituent body of ICANN can file a complaint to the Ombudsman. Article 5 of Bylaws for ICANN provides for maintaining a full-time position office of an Ombudsman who shall act as a neutral dispute resolution body to settle such disputes.

A domain name is divided into Top Level Domain (TLD) and Second Level Domain (SLD). The TLD is further divided into Generic (gTLD) and Geographic (also called country code represented as CcTLD). The nature of generic domain name is international, for example – .edu for educational institutions, .com for commercial use etc. Geographic domain name are just opposite to generic ones i.e. they are for specific countries like “.in” for India. Recently, ICANN also came up with the policy of Internationalized Domain Name (IDN) which enables registration of a domain name in local language and scripts like Arabic, Devanagari etc. which are encoded by the Unicode Standard.

Example of domain name-In www.wipo.org, “wipo” is the SLD and “.org” is the TLD. Hence, the first step before registering a domain name is to decide the TLD and SLD. Domain names are generally registered on “first come first serve basis”. Decision of SLD is of the registrant provided that it is not registered by any other company and that its name does not clash with the name of any other company. In case a domain name is already registered; the registrant can either alter the SLD or purchase it from the already registered ones via bidding, auction etc. The process of re-selling of domain names is carried on by registrars who are authorized by registries to sell the domain names. ICANN maintains a record of all the registered domain names and the process begins by checking whether the domain name for which the candidate applied is available or not. ICANN has also set up certain guidelines as to who can apply for some specific type of TLD. For example- gTLD like .com, .org are open for everyone to apply but gTLD like .AERO, .MOBI, .TEL etc are not open for all and the qualification of the candidate plays a major role in assignment of these gTLD. [4]

The registrar can be any company authorized by ICANN to do so. InterNIC website of ICANN provides detailed information about domain name registration services. After the above steps are completed the registrar takes the contact and other necessary information from the registrant and then sends the information to the registry responsible for maintaining the directory of that TLD.  For Example- The Public Interest Registry is operated by .org registry. The registrant has duty to reveal all the information including information regarding registering, managing, renewing etc of domain names to the registrar for publication in WHOIS Directory. The registrar has the power to cancel or suspend the registration of a domain name if the information provided by registrar is not accurate or of it is not renewed by the registrar.

INDIA- In India, National Centre for Software Technology (NCST) is the body that regulates country level domain name registration. On September 26, 2000 NCST added two more domain names “ind.in” (for individuals) and “gen.in” (for organizations) to facilitate registration of individuals and organizations under the .in category. The two new categories of domain name do not require the applicant’s presence in the country as an essential requirement for registration. Earlier, the applicant had to compulsorily have their offices in India to register domain name under “co.in” & “org.in” category. On October 26, 2004, the Government of India declared National Internet Exchange of India (NIXI) as the registrar of .in domain. [5]NIXI was rendered with the function of collaborating with companies who are adept registrars and fulfill the international standards of domain name registration.

SETTLEMENT OF DOMAIN NAME DISPUTES

Domain name disputes became rampant mainly because of the jurisdictional issues within the cyber space. 2016 was the year in which cyber squatting cases hit record. [6] US is the first country to introduce a legislation which is specifically for trademark infringement in cyberspace known as Anticybersquatting Infringement Act, 1999. In general, domain name disputes can be solved in the following manner-

• By ADR mechanism such as Arbitration and Mediation.
• By Court Proceedings
• By agreement between the parties (Example- The parties may arrive at a mutual conclusion for some consideration).
• By conforming to procedure for settlement of disputes as entered in the domain name registration agreement entered between registrar and registrant.

In order to overcome the problems of settling disputes, ICANN came up with the Uniform Dispute Resolution Policy (UDRP) as a mechanism to settle domain name disputes. This policy enables a trademark owner to challenge the legitimacy of a domain name. The first UDRP case was of worldwrestlingfederation.com which was filed in December 1999. The dispute came before Mediation and Arbitration Centre of World Intellectual Property Organization (WIPO) which was also the first dispute resolution provider approved by ICANN. After WIPO, ICANN expanded the application of UDRP to other organizations like Asian Domain Name Dispute Resolution Centre, National Arbitration Forum, Arab Centre for Domain Name Dispute Resolution (ACDR) etc. Organizations approved by ICANN for settlement of domain name disputes enjoy wide powers which includes-

• Cancellation of domain names created by cyber squatters.
• Changing the registration of domain names
• Transferring the domain name to the complainant

UDRP under Paragraph 4 (c) expressly gives remedy to the registrants who have not acquired any trademark or service mark rights but they commonly known by the domain name involved in dispute. The process begins when a complaint is filed by a trademark owner in any one of dispute resolution service providers regarding misuse of their trademark to which the respondent has to submit response within 20 days of compliant being filed. Paragraph 4 (a) of UDRP mentions that it is the duty of the registrar to submit “mandatory administrative proceeding” in the court on behalf of the complainant. It must be noted that the fee charged in order to settle the disputes depends upon the number of panelists and the number of domain names being challenged. It is the duty of the provider to notify the parties regarding the decision of the panelists which has to be implemented within ten days after receiving the notification. The number of panelist can be either one or three. The burden of proof is on the complainant to show that-

• The other party is misusing the complainant’s trademark which is similar to the trademark of complainant.
• The other party does not have any legitimate interest with respect to the said domain name.
• The other party is using the domain name in bad faith. ( circumstances regarded as evidence of use of domain name in bad faith are mentioned under paragraph 4 (b) of UDRP)

UDRP is by default applicable in all countries where domain name registrars are accredited by ICANN and it does not apply in countries where the managers do not apply for the same. For Example- Singapore has its own Singapore Domain Name Dispute Resolution Policy and hence, cases are settled by Singapore Courts according to the terms and conditions of their policy. The first case settled under the Singapore Dispute resolution policy was Viacom International v. Elitist Technologies Co. where Viacom, an entertainment company incorporated in Dealware, a State of USA. The company had wide divisions and the MTV Networks was one of its divisions operating globally engaged in telecasting television programmes globally. The complainant also had registered trademark with the initials MTV. The respondent registered a domain name in Singapore with the name www.mtv.com.sg which had close resemblance with complainant’s trademark. The complainant demanded transfer of domain name but respondent did not agree. The Court however had another view and decided that the use of the domain name by the respondent for offering e-mail services and entertainment links to customers definitely left an impact that the same was done by the complainant company which operated at a global level. Hence, the court ordered the respondent to transfer the same to the complainant.[7]

CYBER SQUATTING – The act by which one party earns profit and attracts customer by misusing the trademark of other party. The misuse can be in the form of registering a domain name having resemblance to or exactly similar to the trademark of a well-known company having goodwill. Cyber squatting is a big hindrance in the growth of e-commerce companies. Most of the time, cyber squatters coerce popular e-commerce companies to pay huge sum of money to protect their companies goodwill and also their trademark. For example, a Canadianyouth registered the name Appleimac to sell it back to Apple; several other web reporters bought back their domain name for $700 which was registered by cyber squatters as domain sites. [8]

The concept of cyber squatting can be better understood by a famous case – Intermatic Incorporated v. Dennis Toeppen[9] where the company Intermatic was the exclusive owner of the trademark “Intermatic” after registering it with US Patent and Trademark Office. The company brought an action against “Dennis Toeppen” alleging that the use of domain name “intermatic.com” by the respondent company violates section 32(1) of Federal Trademark Infringement Act, Section 43(1) of Federal Trademark dilution Act, 1995 etc. The respondent company’s contention was that they were the first ones to register with the said domain name and hence, they had priority rights over the same following the “first come first serve” rule in domain name registration.

The court however decided in the complainant’s favor mentioning that Intermatic was a famous company operating at a global level. The trademark was used by the company for almost over a period of 50 years which definitely meant that the use of the same by the respondent would lead to dilution of their trademark. Also, the respondent company did not have sufficient evidence to prove their contention. Hence, the case was decided in favor of complainant.

CASE STUDIES

Bennett Coleman & Co. Ltd v. Long Distance Telephone Company D-2000-0015, Adm Panel Decision, WIPO

This was the first on its kind case where an Indian Company got relief under ICANN’s URDP mechanism. The complainant company was engaged in the publication of Articles in Daily newspapers like “The Economic Times” and “The Times of India”. The complainant also published online version of their respective newspapers under the domain name “economicstimes.com” and “timesofindia.com” The respondents registered domain name “theeconomictimes.com” and “thetimesofindia.com”. The complainant contended that the SLD of the respondent company was same as theirs and that it was meant to attract customers using complainant’s goodwill. Hence, the use of the respective domain names similar to that of complainant was in bad faith.

The matter came before the panel of Mediation and Arbitration Centre of WIPO and the panel decided that the two domain names of respondent should stand transferred to complainant. It must be noted that this case was decided in a span of just 45 days by the help of E-magistrate mechanism. The whole procedure took place online.

Yahoo! Inc v. Akash Arora & Anr IIAD 229 (Delhi High Court:1999)

The defendants were using “yahooindia.com” as for providing internet related services. The petitioner was the owner of the trademark “Yahoo!” and also had their registered domain name “yahooindia.com”. The plaintiff registered its domain name with different countries like “yahoo.ca” for Canada. Hence, the domain name “yahoo.india could be perceived as an extension of services of “Yahoo!”. The Court treated the matter as “passing off” and did not consider the mentioning of disclaimer as a sufficient remedy. The Court granted injunction restraining the defendant under the domain name “yahooindia.com”.

Rediff Communication Ltd v. Cyberbooth and Anr AIR 272 (Bombay High Court:2000)

A judge of Bombay High Court stated “A Domain Name is more than an internet address and is entitled to equal protection as trademark”. The case was of “deceptive similarity” wherein the plaintiff filed the case claiming that the domain name “radiff.com” of defendant was deceptively similar to theirs “rediff.com”. The Court recognized that there was common “intention to deceive”. The Court held that the domain name is definitely an infringement of the plaintiff’s trademark and that it was used by defendants in bad faith.

TRADEMARK INFRINGEMENT IN CYBERSPACE

Infringement of trademark occurs when one company generally uses the trademark of another company or trademark similar to that of other company in the course of trade of goods and services to deceive the customers and earn profit by using the goodwill of other company. With the advent of internet, this process of trademark infringement has become even easier. The rival companies create websites and register domain names to deceit the customers. The concern about infringement of trademarks has been in existence since common law times. This is evident from the fact that during the common law times, the Courts laid down the various tests to determine trademark infringement like Sleekcraft test[10]. Following are the factors to be considered that under the Sleekcraft test to check whether the trademark has been infringed or not-

• The popularity of plaintiff’s mark. The more famous the mark, the more are the chances of infringement.
• The use of plaintiff’s trademark by defendant. If the trademark is used by defendant for similar goods within same jurisdiction as that of plaintiff, it will be easier to deceive the customers.
• The intention of the defendant. If the defendant does so without the prior permission of the trademark owner and earns profit by the company’s goodwill then the same will fall within the ambit of trademark infringement.
• The line of marketing that the defendant chooses. Example- The defendant sells the goods bearing plaintiff’s trademark in the same outlet or the defendant advertises the goods on internet by registering a domain name reflecting a link or which is same as plaintiff’s trademark.

One of the important factors to be considered while deciding whether there was trademark infringement or not is to see within which ambit/jurisdiction, the plaintiff’s trademark is being used. In Euromarket Designs Incorporated v. Peters and Another[11] , the claim of plaintiff was rejected wherein the plaintiff contended that defendant’s internet address “crateandbarrel-ie.com” and “crateandbarrel.ie” was infringing their trademark. The reason that the court relied on was that the plaintiff’s trademark was registered in US and it was not so famous globally. Hence, the defendant’s use of same trademark in Dublin did not leave an impression on any of plaintiff’s customers that the site was of plaintiff. Therefore, there was no trademark infringement. The case was different from that of Amazon Case wherein the company although registered in USA had a global presence and reputation.

The Trademark infringement disputes, in earlier days, were settled by the Courts based in the traditional principles of trademark law. Federal Trademark Law was enacted which basically dealt with trademark infringement in cyber space in three different ways which were cyber squatting, trademark dilution and trademark infringement. Apart from these issues various other issues concerning trademark infringement in cyberspace came before the court such as infringement by way of linking or framing, Meta tagging etc.

LINKING & FRAMING – When a user accidently or knowingly clicks on a link highlighted on a webpage known as “hypertext reference link”, a totally different webpage appears which transports the user to a new location. This whole process is termed as “linking”. Trademarks are also misused by this process of linking. Fake companies copy the trademark of well-known brands and put them in the hyperlinks highlighted on various websites. This is to deceit the consumers into believing that the website belongs to the original trademark owners. Framing is another such site wherein the developer of the webpage can guide a user to a number of new sites using hyperlinks. The first trademark infringement case with respect to linking and framing was- Washington Post v. Total News[12]wherein total news, a company allowed the users to visit external sites that was linked to their main site using hyperlink. The external sites were viewed by users within a frame full of advertisements and logos of the total news company. The plaintiff’s contention was that the links were located at such places that contained famous trademark icons of the plaintiff companies. Allegations such as trademark infringement, federal trademark dilution, false advertising were put on the company. The parties however, decided to settle the matter out of court and arrived at the conclusion that the news company must take prior permission from the plaintiff’s in order to link their sites.

META TAGGING – Every site has a keyword field. Meta tagging is nothing but manipulation of this keyword field of a search engine. The manipulators insert a word in the keyword field of a site which manipulates the search engine so that the user returns to the same site although the site may have nothing to do with the search engine. Meta- tags can also be called hidden texts which although not visible but manipulates the search engine. In In ReOppedahl & Larson v. Advanced Concepts[13], Oppendahl and Larson was a famous lawfirm with the domain name “patents.com”. They filed a case against three companies contending that the companies used Meta tagging of the words “Oppehdahl” and “Larson” to drive traffic to their sites. Court regarded this act of defendant as trademark infringement and unfair competition.

However, not all the cases of Meta tagging are regarded as trademark infringement. Only those cases wherein the plaintiff has proved that the use of their trademark in defendant’s website is in bad faith will be regarded as infringement. In Playboy Enter Inc v. Welles SD Cal 1998, The Court did not regard use of metatags as trademark infringement since it qualified the test of “fair use”. The Court said that “legitimate editorial use” of Meta tags must be allowed since these are necessary to guide the customers to the respective sites.

JURISDICTIONAL ISSUES

Internet has no boundaries. Crimes can be committed sitting at a distant place using internet. Thus, one of the major issues surrounding these crimes is the jurisdictional issue. The same is the case with trademark infringement. It may be possible that trademark is registered at a particular place and operative only in that particular jurisdiction area. In such a situation, the same trademark registered at other place in good intention cannot be said to be infringing the first one. However, there are always exceptions attached to the rule, such as the case of Amazon where although the Amazon trademark was registered at some other place, the same had a global presence. The use of the same by any other company would make the customers believe that the product is offered by that company. Hence, this would be considered as infringement. Following are the issues that come up when up comes to deciding cases with respect to trademark infringement in cyber space-

• First and the foremost issue is of the court as to in which court the proceeding must be brought. It may be a possibility that both the complainant and respondent reside in different countries and also the trademark and domain name are registered in two different countries.
• Secondly, whether the judgment given by a court outside the jurisdiction of the domain name registration authority be binding on that authority.
• Every country has different laws with respect to settling disputes. In such a scenario, what is the law on which country’s law the court would rely in order to settle dispute.
• The decision of jurisdiction also depends on the fact that whether the internet website or domain name in question is guided targeting only a particular population. Just because a website is open for everyone to access, does not mean that the infringement has taken place in every country of the world.

Playboy Enterprises Inc v. Chuckleberry Publishing Inc, Tattilo Editrice , S.p.A, Publishers Distributing Corporation, and Arcata Publications Group [14]–Since 1953 PEI published a male-entertainment magazine named “PLAYBOY” globally. The magazine was available in different languages and was circulated in different countries of the world. In 1967, in Italy, Tattilo started publishing and circulating a male entertainment magazine with an English Title “PLAYMEN”. Although, the magazine had an English name, the same had content written in Italian. In July, 1979 Tattilo published and started circulating the same in USA. PEI, the plaintiff, filed a suit against Tattilo for trademark dilution, trademark infringement, unfair competition etc and requested the Court to grant injunction.

In 1981, U.S. Court issued injunction on publication and distribution of the magazine in US, and said that it had competency to do so since the magazine, although Italian, was circulated widely in US also. In January 1996, Tattilo started an internet website with the SLD “playmen.it”. The site was allowed to be accessed even by citizens of USA. The matter again went before the Court and the issue was that whether this activity was in violation of courts order of injunction. Since, the injunction was granted fifteen years ago and that the World Wide Web did not existed when the injunction was granted. The main argument of the defendant was that since the internet actually did not existed at the time when injunction was issued, the same cannot be barred now and that the injunction order does not apply to the company’s activities now.

The Court ordered the following to Tattilo-

• Shut the users’ accounts of the citizens of US and refund the amount taken for the same.
• Remit all the gross profit earned by Tattilo to PEI because the same was earned by using a name infringing their trademark.
• Abstain from accepting any new subscription from US users.
• Pay all the litigation expenses to PEI.

The paralysis of the decision of the above-mentioned case definitely reveals that although the company started and registered domain name in Italy, the same was permitted to be tried in US Court and that the decision of US court was binding on the Italian Company. Light must also be thrown on the fact that the judgment of U.S Court was solely restricting the company from performing the operation within the territorial boundaries of US because it was violating the trademark of another company which had registered its trademark in US.

CONCLUSION

With the expanding activities within the cyber world, various thought provoking issues are being raised now and often. The jurisdictional issue being one of the most widely discussed issues. Domain name and Trademarks have become a wide part of the ever-increasing e-commerce business activities. Domain names indentify a company’s presence on internet and now-a-days considered as valuable corporate assets. Domain names are generally given on “first come first serve basis” and registrars like NSI who are collaborated with National Science Foundation have got veto power towards assignment of domain name. However, these agencies can exercise the same only if the domain name in for registration is exactly similar to the other one and that the registration of this one would infringe the rights other.

Now various questions have knocked the doors of Court with respect to the same like whether domain name can be regarded as trademark? How to solve the jurisdictional issues relating to trademark infringement in cyberspace and also domain name disputes? The “PLAYBOY” case clearly indicates that the Courts can declare a judgment and can grant injunction even if the defendant company have registered their domain name in some other country. The study of “Amazon” case clearly indicates the popularity if the company is of great importance while considering case of cyber squatting. “Piracy” issues are increasing day by day. The best part about the settlement of domain name disputes is that it can be settled by any means including ADR, agreements etc. This helps the company escape lengthy court proceedings.

References

[1] Chethan Kumari, One Cyber Crime in India every 12 minutes, The Times of India, July 22, 2017, available athttps://timesofindia.indiatimes.com/india/one-cybercrime-in-india-every-10-minutes/articleshow/59707605.cms (Last seen Feb 1, 2018 at 1:00 a.m.)

[2] Stefan Kuipers, Faculty of law: Lund University, The Relationship between Domain Names and Trademarks/ Trade Names available athttp://lup.lub.lu.se/luur/download?func=downloadFile&recordOId=5470120&fileOId=5470125 (Last seen Feb 4, 2018 at 2:00 a.m.)

[3] Eric Misterovich, Domain Names as Registered Trademarks, available at https://revisionlegal.com/trademark-attorney/domain-names-as-registered-trademarks/ (Last seen Feb 4, 2018 8:30 p.m.)

[4] Nandan Kamath, Computer Internet and E-Commerce, Fifth edition, Page no. 172

[5] Thomas K. Thomas, NIXI To be Registrar for .in Domain Name, October 27, 2004, available athttp://www.thehindubusinessline.com/2004/10/27/stories/2004102701720700.htm (Last seen at Feb 6, 2018 at 2:00 p.m)

[6] Wipo Cyber Squatting Cases Hit record, available athttp://www.wipo.int/pressroom/en/articles/2017/article_0003.html (Last seen Feb 6, 2018 at 2:00 p.m)

[7] Hsiao Chung Phang, Resolving Domain Name Disputes- A Singapore Perspective, 14 SAcLJ 85 (2002), available at http://heinonline.org/HOL/PDFsearchable?handle=hein.journals/saclj14&collection=journals&section=9&id=91&print=section&sectioncount=1&ext=.pdf&nocover=&grab=A5A78889n2&uname=bharatividyapeeth.edu (Last seen Feb 8, 2018 at 2:00 pm)

[8] Tracy Kraft- Tharp, Domain Names and Trademark Law, 18 Preventive L Rep. 10 (1999) available athttp://heinonline.org/HOL/PDFsearchable?handle=hein.journals/prevlr18&collection=journals&section=9&id=10&print=section&sectioncount=1&ext=.pdf&nocover=&grab=B5B7889098&uname=bharatividyapeeth.edu (Last seen Feb 8, 2018 at 2:00 pm)

[9] 96 C, 1982 (7^th Cir.:1996)

[10]http://www3.ce9.uscourts.gov/jury-instructions/node/244

[11] 96 F.2d 824, 288 (E.D.I : 2000)

[12] 97 Civ 1190 (S.D.N.Y : 1789)

[13] 373 F. 3d ,1171 (Fed. Cir. : 2004)

[14] 939 F.,1032 (S.D.N.Y :  1997)