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TRADEMARK LAW IN RELATION TO DOMAIN NAME DISPUTES

Article submitted by Aathmaja Menon, SASTRA Deemed to be University.


TRADEMARK:


Trademark deals with symbols, designs, phrases or logos that give a distinct value and differentiates a product from the other products present in the market, and the Trademark Law deals with the protection of these trademarks from infringement or passing off. The Indian Trademark law, as embodied in the Trademarks Act, 1999, allows concurrent use of the same trademark by multiple parties, provided such use does not create a likelihood of consumer confusion. The Trademarks Act, 1999 was introduced to make amendments and consolidation of rules and laws regarding trademarks. This Act replaced the Trademark Act, 1958. This Act safeguards the trademarks from infringement. Under Section 2(zb) of the Act, “trade mark” is defined as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours…”

DOMAIN NAMES AS TRADEMARKS:

Any domain name that is known to be unique, and which distinguishes and identifies itself and its goods and services from others, and acts as a reliable source identifier of concerned goods and services on the internet maybe registered as a trademark. It establishes a combination of typographic characters used to describe the location of specific location online and it is known as Uniform Resource Locator (URL). For example; ebay.in, olx.in, airtel.in etc. All domain name registrars must follow the ICANN’s Uniform Domain name dispute Resolution Policy (UDRP). The Internet Corporation for Assigned Names and Numbers (ICANN) is a non-profit organization that is responsible for the maintenance and procedure of different name spaces and numerical databases of the internet to ensure the stability and security of the network’s operations.

Under the UDRP policy most types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar cancels, suspends, or transfers a domain name. World Intellectual Property Organization (WIPO) is the most popular dispute resolution organization since the introduction and establishment of UDRP. Disputes alleged to arise from abusive registration of domain names may be addressed by expedited administrative proceedings that the holder of trademark rights initiates by filing a complaint with an approved dispute-resolution service provider. The Internet accessible computers actually read a series of communication format used on the internet known as the Internet Protocol (IP) numbers. Because these numbers are difficult to remember and recollect, the US Government developed a system which links each IP number to a specific domain name. The domain name is planned to be more significant to individuals than the arrangement of numbers.

Domain name disputes can be broadly divided into three categories:

(1) Infringement

(2) Concurrent claim

(3) Cybersquatting


INFRINGEMENT:


This includes disputes regarding the domain name, when the original registrant deliberately trades off the similarity between the domain name and the trademark. Later on, the registrant tries to cash on the goodwill and the reputation of the trademark holder by running a business corresponding to that of the trademark holder. In such a case, the usage of the domain name is considered to be illegal under the existing trademark law, regardless of how the breach occurred.

Under traditional trademark law, the standard factors that determine infringement are:

(i) The strength of the trademark

(ii) The deluding similarity between the plaintiff’s and the defendant’s domain name

(iii) The chances of having confusion in the minds of people.

CONCURRENT CLAIM:

There is more than one legitimate user of the domain name under concurrent claims of domain name disputes. There is no intention to trade off a trademarked name and little or no potential for confusion between the products of the conflicting claimants. Both parties have a particular trademark of their own or a valid reason to use a particular domain name. Concurrent claims arise when two legitimate parties are involved in a dispute over the same domain name, where each party claims legitimate ownership of the acquired domain name, without any intention to pass off.

CYBERSQUATTING:

When a registered domain name is sold or used with the intention of getting profit from the goodwill of someone else’s trademark in bad faith, it is called Cybersquatting. It can cause real damage to the trademark by decreasing the distinctiveness of the mark or using it in a way detrimental to the holder of the mark.

Domain name disputes are of four categories:

(i) Cybersquatters: Where the offenders register trade-marks, trade names, business names and so on, belonging to third parties with the common motive of trading on the reputation and goodwill of such third parties by either confusing customers or potential customers, and at times, to even sell the domain name to the rightful owner at a profit.

(ii) Cyber twins: When the holder and the challenger of the domain name, both have an equal legitimate claim on a domain name.

(iii) Cyber parasites: They are a bit similar to cyber squatters but they get their financial gains through the use of the domain name. In some cases, a famous domain name will be used by another or in some other cases; a misspelt version of the famous domain name is used.

(iv) Reverse Domain Name Hijacking (RDNH): when in a bad faith a trademark holder takes control of a domain name from another person who is not in breach of any trademark laws and who has a legitimate interest in the domain name.

CYBERSQUATTING IN INDIA:

Domain names are not particularly characterized under any Indian law or under any enactment but the Indian courts have connected the Trademark Act 1999 to such cases.

In such cases under Trademark Act 1999, two reliefs are available:

(i) Remedy of infringement: Trade mark Act permits owner of the trade mark to avail the remedy of infringement only when the trade mark is registered.

(ii) Remedy of passing off: No enrollment of the trade stamp is required in the event that the proprietor intends to secure relief by instituting a suit for passing off.

In India, victims of cybersquatting have been provided with a number of ways to deal with it, such as:

  • Sending cease-and-desist letters to the cybersquatter.

  • Opting for arbitration under ICANN’s rules,

  • Going for a trial to a state or federal court.

CASES IN INDIA REGARDING DOMAIN DISPUTES

In the landmark case, Yahoo! Inc. v. Akash Arora & ors (2), the Court held that domain names serve the same function as a trademark and are, thus, entitled to equal protection under the trademark law. The Court observed that usually the degree of the similarity between the marks is vital in an action against passing off as in such a case there is every possibility and likelihood of confusion and deception.

In the case, Dr Reddy's Laboratories Limited Vs Manu Kosuri and Anr(3); the High Court of Delhi Court held that " It is a settled legal position that when a defendant does business under a name which is sufficiently close to the name under which the plaintiff is trading and that name has acquired a reputation the public at large is likely to be misled that the defendant's business is the business of the plaintiff or is a branch or department of the plaintiff, the defendant is liable for an action in passing off and it is always not necessary that there must be in existence goods of the plaintiff with which the defendant seeks to confuse his own domain name passing off may occur in cases where the plaintiffs do not in fact deal with the offending goods. When the plaintiffs and defendants are engaged in common or overlapping fields of activity, the competition would take place and there is grave and immense possibility for confusion and deception and, therefore, there is probability of sufferance of damage. Plaintiff and defendants are operating on the Website. The domain name serves same function as the trademark and is not a mere address or like finding number of the Internet and, therefore, plaintiff is entitled to equal protection as trade mark.

CONCLUSION:

Cybersquatting is a major concern especially for the domains having financial transactions since the cyber squatters’ illegally and fraudulently gain by obtaining their Credit Card details. There are many IT teams dedicated to have a timely check on such domains. The present Information Technology Act in India has no specific provisions for punishing cyber squatters. On account of the problems, Indian jurisdiction faced and the various jurisdictions looked into, there is an urgent need to draft a new legislation in India which would expressly deal with cybersquatting and domain name disputes.



Case Laws:

(I) 2010 (42) PTC 514 (Del)

(II) 1999 II AD (Delhi)

(III) 2001 (58) DRJ241

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