Articles

Internet Domain Names are entitled to be protected as Trade Marks

Intoduction: Internet use is growing. Now a house hold word, Internet has become accessible virtually to anyone with a Computer, Modem and Telephone. Recently the accessibility has extended to almost everyone because of the mushrooming of “cyber café” in every city and major towns in the country. The internet has revolutionized the computer and the communication world like never before. It has wide range of users from professionals, Government, commercial organizations and companies etc. The user can communicate instantaneously by sending E-mail to any remote address in the world, upload information, download information from the WWW – World Wide Web. It is estimated that the Internet connects Computer network in over 50 countries across the world and thus has made nation state boundaries meaningless and has succeeded in integrating the world into a global community. Need for Domain Name System: One reason for the rapid development of Internet is the acceleration of the Commercial interest on the net. This was mainly due to the development of the HTML (Hyper Text Markup Language) and also the rapid technological development of the net to host graphics, images, sound, movie files and other “multimedia capabilities”. Slick advertisements , including graphics, sound, video, movies can be published and made available to the browsing public. With tremendous potential available, the world business community have been scrambling to take advantage and many businesses are now creating a presence on the internet by establishing an “internet site” or “web site”. One main advantage that the business community world over gained from these capabilities was “its” virtual global presence. The Internet placed the sole proprietor, small business firm and a multinational corporation on the same footing. The business entrepreneur , by having his own “web site” could publish multimedia information and also text with relative ease and at a fraction of the normal cost and advertise his services or products by which he had a true global presence. Today unobtrusive advertising is tolerated on the Net. The advantage of global presence at a very meager expense also saw virtual business boom on the internet which introduced the emergence of e-commerce or paperless transactions being conducted. The presence of huge number of web sites on the net had to be identified and for the purpose “lengthy numeric addresses” were given. However this system proved confusing and not successful. This practical difficulty prompted the creation of “Domain name system”.

WHAT IS DOMAIN NAME : The domain name system allows each Internet site to have a unique easy-to-remember alphanumeric “domain name”. Domain names consist of multiples levels. The top level domain domains are generally designated to the types of Organizations being “.com” for commercial, “.org” for organization, “.gov” for Government, “.edu” for colleges and universities, “.net” for internet infrastructure and “.mil” for military organizations. The second level domain name is the part usually designated by the domain name holder.

Domain names used in e-mails and WWW Addresses are assigned on first come first served basis and the domain name is unique. Domain names can be filed electronically with organizations like NSI, INTERNIC etc. Since no substantive procedure for examination of domain name applications, generic and descriptive names are Registerable as long as they are not identical with an existing domain name.A practice has slowly emerged amongst the entrepreneurs, whereby the domain name used by him “identifies and distinguishes” the services or goods offered, the source and sponsorship of such services or goods. Thus Domain names are being used in order to qualify as a trade mark of the goods and services offered by the Entrepreneur. Additional promotion such as advertising the Domian name or using the domain name in a conspicuous manner – using the mark some where in the web page - apart from the address was sufficient to show the use of Domain name as Trade mark. Thus domain names emerged from being a simple protocol address to identifiers of business on the net and have given themselves the identifying capacity and equate themselves to distinctive signs. Thus Domain names, lately, are made up of traditional trade marks owned by a company. The reason why most of the corporate entities adopt such a practice is, it makes it easier for a prospective customer to remember the Company’s World Wide Web address and log on to the site more quickly and avoid the exercise of search on the net.

If a domain name that is picked and adopted, is not a existing trade mark of the company it may become a trade mark only after some use and advertising. Before adopting such name for its domain name, it is advised that the entity give some thought as the proposed names strength or weakness as a Trade Mark.

As a result of the above development Domain names have increasingly come into conflict with trade marks, more particularly because of the lack of connection between the system of registering domain names on one hand and the system of registering the trade marks on the other. The emergence of the dual function of a domain name has challenged the conceptual base of intellectual property, especially the Trade Marks . These difference have been exploited by persons or entrepreneurs in the form of cyber squatting or by cyber trafficking – who have made it a practice to register variety of trade marks and trade names as internet domain names and for a resale to the trade mark owner at a “fair” price. While courts through out the world have held these practices to be unlawful, and have issued injunctions against “cyber squatting” the problem is still acute in countries where litigation takes a very long time and/or where the costs of litigation are exorbitant.

In India, not much of importance is given to the domain name in relation to it being identified with the Trade Mark of the Company, though, however recently there had been some healthy development in this aspect. The nexus between the domain name and it being used as trade mark has been discovered and appreciated by entrepreneurs. Needless to say the problem of “cyber squatting” or “cyber piracy” also followed, with cyber traffickers exploiting the situation to make some money, by offering the domain names of famous trade marks to the right holder.

In this scenario the recent decision of the Honourable High Court of Bombay, holding that the “Internet Domain Names are entitled to be protected as Trade Mark” is a shot in the arm for the genuine entrepreneur who is on the net and who proposes to be on the net. While rendering the above Judgment the Honourable High Court of Bombay relied upon a previous Judgment pronounced by the Honourable High Court of Delhi in the case of

Yahoo Inc Versus Akash Arora and another 1991(1) Arb. LR OR 1999 PTC (19) 201.

For your immediate reference and appreciation of the above, I quote some of the relevant paragraphs from the Judgment of the Honourable High Court of Bombay: AIR 2000 Bombay 27

Rediff Communications Ltd Versus Cyberbooth and another.

The Honourable High Court in the above Judgment has held that Internet Domain Names are entitled to be protected as trade mark. The Honourable Court while delivering the Judgment in the above case examined the various authorities placed before it for its consideration, by the Counsels, and held that:

“Internet Domain Names are of importance and can be valuable Corporate asset. A domain name is more than an Internet Address and is entitled to equal protection as trade mark. With the advancement and progress in technology , the services rendered in the site have also come to be recognized and accepted and are being given protection so as to protect such provider of service from passing off the service rendered by others as his service”At page 30 para 11.Referring to the law relating to passing off as contemplated under the Trade and Merchandise Act, (43 of 1958), the Honourable Court held that:

“The main bone of contention between the parties before me is whether the defendants by adopting the domain name “RADIFF” which is deceptively similar to the plaintiff mark/domain name “REDIFF” have been passing off their services and goods as that of the Plaintiffs. To that end it would be appropriate to recapitulate some well established principles. The law relating to passing off is fairly well settled. The principle underlying the action is that no one is entitled to carry on his business in such a way as to lead to the belief that he is carrying on the business of another man or to lead to believe that he is carrying on or has any connection with the Business carried on by another man”.

In the light of the above decision domain names can now function as Trade Mark and thus establish proprietary rights. Vide this Judgment, the nexus between Trade Mark and internet domain name has been defined thus enabling the Domain names to be protected as Trade Marks.

Apart from the above very important observations these two cases achieved a very important milestone in the legal history of the country in that:

  • The courts relied upon the common law rights in issuing the country’s first rulings on domain name, since either in India or in other parts of the world, there are no statutes that deal with domain names
  • The principle of passing off was applied by the courts in both the cases, where under no man is entitled to carry on a business in such a way as to lead to the belief that he is carrying on the business of another man. Ad interim injunctions were granted to the Plaintiff’s restraining the Defendants from operating any business or selling, offering for sale, advertising and or in any manner dealing with the goods or dealing in the services on the Internet or otherwise under the Trademark/Domain name of the plaintiff.
  • Ad interim injuction was also granted on a sufficient ground that the person who intends to visit the site of plaintiff, may reach the site of the Defendants’ owing to the similarity in the domain names.
  • That the internet domain names are important and valuable corporate assets and are entitled to be protected as trade marks.

As already stated, this decision by the Honourable High Courts, are not only a short in the arm for the “genuine entrepreneur” , but would enable these entities to approach the Court of Law with the hope that domain name grabbers and domain name traffickers be dealt with severely.

- Ashok Ram Kumar