INTELLECTUAL PROPERTY RIGHTS IN DOMAIN NAMES IN INDIA

(Project towards partial fulfillment of the assessment in the subject of GPIPR)

18th March, 2014

Table of Contents
ACKNOWLEDGEMENT..3
INTRODUCTION4
TRADEMARK LAW IN A NUTSHELL .7
INDIAN LEGISLATIONS...10
INTERNATIONAL RULES &
PROCEDURES.11
DOMAIN NAME PROTECTION IN
INDIA.18
CONCLUSION..21

Acknowledgement
I take this opportunity to express my profound gratitude and deep regards to my guide
Professor Amit Singh for his exemplary guidance, monitoring and constant
encouragement throughout the course of this thesis. The blessing, help and guidance
given by him time to time shall carry me a long way in the journey of life.

Introduction
As the Internet becomes more and more commercialized, turf wars over domain names
and uses of trademarked names on the web have become commonplace. With the advent
of the Anticybersquatting Consumer Protection Act and the implementation of the
Uniform Dispute Resolution Policy (UDRP) by the Internet Corporation for Assigned
Names and Numbers (ICANN), trademark owners have taken domain name speculators,
cyber squatters and even good-faith domain name users to court and to arbitration to
determine trademark rights.
The Internet is comprised of a network of thousands of independent networks, containing
several million host computers that provide information services. Internet users who wish
to access a particular Internet host computer to obtain or exchange information (e.g., email, computer programs, images, music) must know its unique site address in order to
make a connection. The address of a host is a numeric "IP" (Internet Protocol) address
such as 123.456.123.12. To make an Internet address more user friendly, a unique
numeric address may be matched with a mnemonic domain name (such as
"mcdonalds.com"). Internet users usually "see" only the mnemonic domain name because
on each Internet host resides a conversion table that automatically converts the mnemonic
domain name into the numeric address of the relevant host site.1
Internet users interested in communicating with a particular company, obtaining
information about its products or services, or, increasingly, buying its products and
services, are presented with a significant problem: there is no satisfactory, complete
directory of the domain names of businesses.2 As a result, users often seek to guess the
domain name of a prominent company. For example, an Internet user interested in
discussing a recent mountain climbing expedition with the editors of MOUNTAIN
CLIMBERS, might try "mc.com," "mountcl.com," or "mountainclimbers.com" to locate
this magazine's address. With a domain name that includes a company's trademark, often
1

World Intellectual Property Rights Organization, available at:

http://cyber.law.harvard.edu/property99/domain/ (last accessed: 11th March, 2014)
2

MTV Networks v. Curry, 867 F. Supp. 202, n.2 (S.D.N.Y. 1994); J. Byczkowski, On-line: Internet
Watcher Tries to Uncover Every Little Nook, The Cincinnati Enquirer, October 25, 1994, at B06.

a house mark, a company ensures that its promotions, information, and commercial
offerings are easy to find.
The original role of a domain name was to provide an address for computers on the
Internet. The Internet has, however, developed from a mere means of communication to a
mode of carrying on commercial activity. With the increase of commercial activity on the
Internet, a domain name is also used as a business identifier. Therefore, the domain name
not only serves as an address for Internet communication but also identifies the specific
Internet site. In the commercial field, each domain name owner provides
information/services, which are associated with such domain names. Domain names are
used in various networking contexts and application-specific naming and addressing
purposes. A domain name is an identification label to define a realm of administrative
autonomy, authority, or control in the Internet, based on the Domain Name System
(DNS). The Domain Name Systems (DNS) is a hierarchical naming system for
computers, services or any resource participating in the internet. It associates different
information with domain names assigned to each of the participants. Domain names are
also used as simple identification labels to indicate ownership or control of a resource.
Such examples are the realm identifiers used in the Session Initiation Protocol (SIP), the
Domain keys used to verify DNS domains in e-mail systems, and in many other Uniform
Resource Identifiers (URIs).
An important purpose of domain names is to provide easily recognizable names to
numerically addressed Internet resources.3 This abstraction allows any resource (e.g.,
website) to be moved to a different physical location in the address topology of the
network, globally on the internet or locally in an intranet.
In simple terms, Domain name is the address of a web site that is intended to be easily
identifiable and easy to remember, such as yahoo.com. These user-friendly addresses for
websites help connect computers and people on the Internet. Because they are easy to
remember and use, domain names have become business identifiers and, increasingly,
3

Himanshu Sharma and Rangoli Nigam ,India: Domain Names: The New Virtual Address, available at:
http://www.mondaq.com/india/x/284958/Trademark/domain+nameS+the+new+virtUal+addreSS (last
accessed: 14th March, 2014)

even trademarks themselves, such as amazon.com. By using existing trademarks for

domain names - sony.com, for example - businesses attract potential customers to their
websites.
An important purpose of domain names is to provide easily recognizable names to
numerically addressed Internet resources. This abstraction allows any resource (e.g.,
website) to be moved to a different physical location in the address topology of the
network, globally on the internet or locally in an intranet.
In simple terms, Domain name is the address of a web site that is intended to be easily
identifiable and easy to remember, such as yahoo.com. These user-friendly addresses for
websites help connect computers and people on the Internet. Because they are easy to
remember and use, domain names have become business identifiers and, increasingly,
even trademarks themselves, such as amazon.com. By using existing trademarks for
domain names - sony.com, for example - businesses attract potential customers to their
websites.
Cyber-squatting refers to the bad faith registration of a domain name containing another
persons brand or trademark in a domain name. 4 It can be defined as registering,
trafficking in, or using a domain name with bad-faith i.e. mala fide intent to make profit
from the goodwill of a trademark belonging to someone else. The cyber squatter then
offers to sell the domain to the person or company who owns a trademark contained
within the name at an inflated price. With the domain prices falling and more top level
domains (.biz, .cn, .mob and lately .in) getting accredited, cyber squatters are in business
fulltime.

Trademark Law in a Nutshell

A trademark is a word, phrase, symbol or design, or combination of words, phrases,
symbols or designs, which identifies and distinguishes the source of the goods or services
of one party from those of others. Trademarks identify one seller's goods and services
4

Sanchit Mehta, Cyber Squatting And Its Legal Position,()<

http://www.manupatrafast.com/articles/PopOpenArticle.aspx?ID=e336a09a-aa11-453a-935d
3fbe42492281&txtsearch=Subject:%20Media%20And%20Telecommunication>

from those of others and signify that all goods bearing the same mark come from the
same source and are of equal quality. 5
A mark can only be found to have trademark significance if the mark is "distinctive."
There are four types of marks:

Arbitrary or fanciful marks -- those that are "made up" or are used with unrelated
goods (such as XEROX, or AMAZON for a bookstore);

Suggestive marks -- those that suggest but do not describe the goods and services
(such as GIGALAW for an online provider of legal information);

Descriptive marks -- those that describe the goods and services (such as
NATIONAL BOOK OUTLET for a bookseller); and

Generic marks -- marks that consist of the common name for a good or service
(such as FREE CHECKING for a no-fee checking account).

Arbitrary, fanciful and suggestive marks are considered inherently distinctive.

Descriptive marks may be considered distinctive if the trademark holder can show
"secondary meaning" -- that the public associates the mark with that owner's goods and
services. Generic marks are never distinctive.
Trademark laws are essentially consumer protection laws. State and federal trademark
laws exist to protect consumers from confusion in the marketplace. A later user of the
same or similar mark infringes a trademark if the use is likely to cause confusion as to
source, affiliation, connection or sponsorship. No actual confusion is required.
Because of the "likelihood of confusion" standard, the same trademark can be used on
different goods and services by different users. For instance, separate federal trademark
registrations can coexist for ABC for cosmetics, illuminated display signs and
broadcasting services. Even though each of these trademark owners is using the identical
mark, there is no likelihood of confusion in the marketplace; it is improbable that a

Margaret Smith Kubiszyn ,

When is a Domain name
http://www.gigalaw.com/articles/2001-all/kubiszyn-2001-01-all.html.

considered

as

Trademark?

consumer would buy ABC cosmetics based on her assessment of the quality of Peter
Jennings' newscast on the ABC television network.
A mark need not be registered to be protected under state and federal trademark laws.
Rights in a mark arise from use, not registration. However, federal registration of a mark
gives the owner constructive nationwide use of the mark as of the date of filing.
Therefore, the registration of a mark gives notice to any subsequent users that the
registrant has superior rights in the mark.
Domain Names as Trademarks6
Determining if a domain name should be accorded trademark significance is as simple as
applying the basic principles.

Is the Domain Name Used as a Trademark?

The first and most important inquiry is whether the domain name is actually used as a
trademark. That is, does the domain name function as a source identifier?
A domain name that simply serves to identify the user's location on the Internet does not
function as a source identifier, only as an address. For instance AMAZON.COM serves
as a source identifier, and not merely an address, as the name of the company and the
name on the web site is AMAZON.COM.
Conversely, a law firm's web site is accessible by the domain name "www.barw.com". If
you go to that address, you will see the home page for Bradley Arant Rose & White LLP.
The domain name only serves as an address where you can find the law firm on the web,
and therefore it does not serve as a source identifier.

Is the Domain Name Distinctive?

If a domain name is used as a source identifier and not an address, then we look to the
basic inquiries outlined above. If the domain name is simply a descriptive or generic term
combined with a top-level domain, the domain name fails the test for distinctiveness.

Ibid.

For example, if I owned an online bookseller called NATIONALBOOKOUTLET.COM, I

am actually using the domain name as a source identifier; it is the name of my company.
However, the mark is descriptive, and therefore it will not be accorded trademark
protection.
1.5 What Does it All Mean?
Whether you can claim trademark protection for your domain name is not always a
critical issue. The vast majority of trademark disputes relating to domain names pertain to
the use within a domain name of a term that is identical or confusingly similar to a
trademark.
For

instance,

although

the

World

Wrestling

Federation

does

not

use

WORLDWRESTLINGFEDERATION.COM as a source identifier, the domain name

does contain its registered trademark WORLD WRESTLING FEDERATION. As such,
the WWF was able to obtain a transfer of the domain name under the UDRP from a
cybersquatter with no rights in the name WORLD WRESTLING FEDERATION.
Likewise, the company that owns the Benihana of Tokyo restaurant chain has a federally
registered trademark in BENIHANA OF TOKYO. Even though it doesn't use
BENIHANAOFTOKYO.COM as a source identifier, it was able to wrest the domain
name from an individual who had registered the name in bad faith.
The differences in asserting trademark ownership over an entire domain name and
ownership of the second level domain are subtle and a bit esoteric. It is an important
distinction to make, however, in light of the increasing numbers of "dot-com" trademark
applications.
The Indian legislations
Cyber squatting has been defined as an act of obtaining fraudulent registration with an
intent to sell the domain name to the lawful owner of the name at a premium according
to the court in Manish Vij v. Indra Chugh

and The Satyam Infoway Ltd v. Sifynet

Manish Vij v. Indra Chugh [AIR 2002 Del 243].

Solutions (P) Ltd8case nailed the Indian domain name scenario way back in 2004 stating
thatAs far as India is concerned, there is no legislation which explicitly refers to dispute
resolution in connection with domain names. But although the operation of the Trade
Marks Act, 1999 itself is not extraterritorial and may not allow for adequate protection of
domain names, this does not mean that domain names are not to be legally protected to
the extent possible under the laws relating to passing off.
As far as India is concerned, there is no legislation, which explicitly refers to dispute
resolution in connection with domain names. But although the operation of the Trade
Marks Act, 1999 itself is not extra territorial and may not allow for adequate protection of
domain names, this does not mean that domain names are not to be legally protected to
the extent possible under the laws relating to passing off.9
In India, the Trademarks Act, 1999 (Act) provide protection to trademarks and service
marks respectively. A closer perusal of the provisions of the Act and the judgments given
by the Courts in India reveals that the protection available under the Act is stronger than
internationally required and provided.
Rule 2 of the UDNDR Policy requires the applicant to determine that the domain name
for which registration is sought, does not infringes or violates someone else's rights.
Thus, if the domain name, proposed to be registered, is in violation of another person's
"trademark rights", it will violate Rule 2 of the Policy. In such an eventuality, the
Registrar is within his right to refuse to register the domain name. This shows that a
domain name, though properly registered as per the requirements of ICANN, still it is
subject to the Trademarks Act, 1999 if a person successfully proves that he has 'rights
flowing out of the Act.
The Information Technology Act 2000 of India addresses numerous cybercrimes and has
set up a special cyber crimes cell however the Act oddly ignores the problem of domain
name disputes and cyber squatting. The only saving grace for victims of such offences is
8

The Satyam Infoway Ltd v. Sifynet Solutions (P) Ltd [AIR 2004 SC 3540]
Cyber Squatting: Modern Day Extortion, available at: http://www.thegiga.in/LinkClick.aspx?
fileticket=E4gQQpzzRPE%3D&tabid=589 (last accessed: 10th March, 2014)
9

10

that domain names may be considered trademarks based on use and brand reputation and
so fall under the Trade Marks Act 1999. However not all domain names are trademarks.
Numerous cases including that of Yahoo, Rediff and Satyam have laid down the
following guidelines
1. The defendant should have sold/ offered its goods/ services in a manner that deceives
the public into thinking that the goods/ services of the defendant are in fact the plaintiffs.
2. Misrepresentation by the defendant to the public should be established.
3. Loss/ likelihood of it should be established.

International Rules And Procedures

Internet Corporation for Assigned Names and Numbers (ICANN)

An international Non Profit Corporation, Internet Corporation for Assigned Names and
Numbers (ICANN) formed in 1998 is the internets naming system and technical
coordinator, responsible for developing the policy for the internets unique identifiers and
addresses. ICANN oversees the distribution of unique technical identifiers which are used
in the Internets operations and also delegates Top -Level Domain names (such as .com,
.info, etc) resulting in universal resolvability. In order to register a domain name, one
must first contact the ICANN authorized administrator of the desired TLD through a
service provider. As long as the desired name has not been assigned to any prior
applicant, the requested name will be approved without any requirement towards proof of
ownership, trademark registration or any other form of evidence. However once a domain
name has been registered in the above manner, the same does not ensure trademark status.
A domain name is not itself a trademark. In order to attain trademark status various
factors such as date of use, distinctiveness of the domain name with respect to goods or
services, manner of use etc. will contribute after ensuring that no-one prior existing
identical/ deceptively similar trademark is being violated. ICANN has also provided
guidelines for domain name registration, working towards bonafide registrations.
Since ICANN is the international core of the internet, it is but practical that it
provide a dispute resolution mechanism for domain name disputes in association with

11

The World Intellectual Property Organization (WIPO). The World Intellectual Property
Organization has numerous countries as signatories and international dispute resolution is
a workable solution.

Governmental Advisory Committee (GAC)

ICANNs Organizational Structure includes a Governmental Advisory Committee (GAC)

set up in 1999. The GAC has an open-ended membership driven policy, inviting nations
the world over to partake in ICANNs policymaking activities. It includes Government
representatives, public authorities, and several intergovernmental organizations. ICANN's
activities and policies are considered by the Governmental Advisory Committee (GAC),
pertaining to special government interests and implications in matters involving an
interaction between ICANN's policies and national laws or international agreements. The
GAC typically holds quarterly meetings in conjunction with ICANN meetings. Over 50
national governments, distinct economies, and multinational governmental organizations
such as the ITU and the World Intellectual Property Organization (WIPO) currently
attend the GAC on a regular basis. India is a member country.

Uniform Domain Name Dispute Policy (UDRP)

ICANN implemented the Uniform Domain Name Dispute Policy (UDRP) in 1999, which
has been used to resolve more than 20,000 disputes over the rights to domain names. The
UDRP is designed to be efficient and cost effective. In 2010 alone around 2696 cyber
squatting cases were filed with the WIPO Arbitration and Mediation Centre under this
Policy involving 4370 domain names across 57 countries, according to WIPOs official
website. In cases of cyber squatting, cyber piracy or bad faith registration, the
complaining party can invoke a special administrative procedure before the WIPO
Administrative and Mediation Centre to resolve the dispute. Under this procedure, neutral
persons selected from panels established for that purpose would decide the dispute. The
procedure takes approximately 45 days, costing about $1000 in fees to be paid to the
entities providing the neutral persons and is handled mostly online..

12

Under Rule 4 the disputes are specified for which mandatory administrative
proceedings are held. Rule 4 (a) mentions applicable disputes in the events wherein:
1. The domain name is identical or confusingly similar to a trademark or service
mark in which the complainant has rights;
2. There are no rights or legitimate interests in respect of the domain name;
3. The domain name has been registered and is being used in bad faith.
There are a number of cases before the WIPO Arbitration and Mediation Centre
that show bad faith registrations such as: Benett & Coleman Ltd. v. Steven S. Lalwani10,
wherein

the

two

domain

names

www.theeconomictimes.com

and

www.thetimesofindia.com were being used by the respondents 1998 onwards in bad faith
to redirect Internet surfers to www.indiaheadlines.com providing India related news and
articles. Bennett Coleman and Co. Ltd., the complainant, publishes The Economic Times,
and The Times of India, which are both widely read in India and also holds the domain
names, www.economictimes.com and www.timesofindia.com, using them for the
electronic publication of their respective newspapers. The complainant had already
registered in India, the marks The Times of India and The Economic Times in 1943
and 1973 respectively. The complainant contended that the respondent had no right or
legitimate interest in respect of domain names which were registered in bad faith in order
to attract, for commercial gain, Internet users by creating confusion in their minds. Even
though the respondent contended that the complainant had no relevant trademarks
registered in USA and that there is no likelihood of confusion between the parties
respective sites, the WIPO Panel found that the titles The Economic Times and The
Times of India are used to identify the producer of the newspapers and sites and are not
merely descriptive of content. The only difference between the domain names of either
party is incorporation of the article the in the beginning and so the public will be misled
as the reputation of the complainant is substantial. The WIPO Panel thus ordered the
transfer of both domain names back to the complainant.

10

Benett & Coleman Ltd. v. Steven S. Lalwani Cases No. D2000-0014 and 2000-0015 WIPO

13

APPLICABILITY of UDRP:
If a party initiates any legal proceedings while an administrative proceeding in respect of
a domain name dispute that is the subject of the complaint is still pending, it is to
promptly notify the Panel and the Provider. The Rules specify that in the event of any
legal proceedings initiated prior to or during an administrative proceeding in respect of a
domain name dispute that is the subject of the complaint, the panel shall have the
discretion to decide whether to suspend or terminate the administrative proceeding, or to
proceed to a decision. Thus we see the UDRP as efficient machinery in place for domain
name dispute settlement at an international level. The mechanism provides for either
party to take the dispute to their own countries jurisdiction within 30 days of the
arbitration decision of the WIPO Arbitration and Mediation Centre and this is the loop
hole every respondent seeks.
The fact that the arbitration decision is not binding and that many countries have
their own hierarchy of courts that deal with or choose to ignore such disputes, makes the
entire process quite inefficient and wasteful. National courts, including Indian courts are
not bound to give relevance to the decisions of the WIPO Panel and Arbitration Centre
and trademark owners are the ultimate victims.
One of many examples of failure of the mechanism is the case of Maruti Udyog
against Rao Tella,11.The Indian company Maruti Udyog won the complaint it made
before the WIPO panel against the respondent who had registered the domain name
marutiudyog.com in the United States. The respondent had been stamped as a cyber
squatter 3 times by the WIPO panel in WIPO arbitration cases filed by Onida, Hero
Honda and Maruti. Yet when the case went before the United States courts, the WIPO
panel decisions were considered non binding. Even the United States Anti Cyber
squatting Consumer Protection Act was said not to have applied as according to the court
Maruti did not manufacture or sell cars in the United States and so were not entitled to
protection under the Lanham Act. Unless governments world over make use of the
international ICANN and WIPO mechanism by making their decisions binding, an
efficient resource is going to waste. Complainants tend to approach domestic courts
11

Maruti.com et al. v. Maruti Udyog Ltd. et al., U.S. Dist. Ct. No. L-03-1478

14

instead of using the ICANN machinery without realizing that the WIPO procedure of
ICANN is cost effective and has a faster disposal rate with matters disposed off within 45
days. The WIPO Arbitration panel can even pass interim measures to protect the injured
partys interests at the very outset.It is interesting to note that even though the national
court system does not consider WIPO Arbitration Panel decisions binding, they have
made various findings and judicial decisions based on the ICANNs UDRP Policy. This
shows that courts find the Policy to be a sound authority on domain name cyber squatting
disputes.
One of many examples is the case of Manish Vij v. Indra Chugh12where the plaintiff was
the proprietor of the trademark and domain name www.kabadibazaar.com, dealing with
second hand goods on the internet. Since kabadi means a person who buys second hand
products and bazaar means a market where trading takes place the words suit the
domain name indicating the nature of business on the website. The defendants on the
other hand had been running the website www.kabaribazaar.com a month after the
plaintiff and claimed wider reputation amongst the public, than that of the plaintiffs site.
The plaintiff referred to WIPO Uniform Dispute Resolution Policy, 1999, adopted by
ICANN and argued that the registration of the domain name www.kabaribazaar.com
by the defendants was in bad faith. The Court after referring to Rules 4 (a) and 4(b),
found that both parties had operated their websites within a month and while the plaintiff
was unable to show the quantum of business carried out, it cant be said that the defendant
had not incurred advertisement costs. It held that it was not possible to prove that the
registration of the domain name was in bad faith. Kabadi- bazaar is a common term in
the hindi language and so the plaintiffs domain name had not acquired secondary
meaning. Thus the plaintiffs application was dismissed and the interim injunction order
against the defendant was vacated. National courts can easily shift domain name cases
towards ICANN which is an efficient alternate dispute resolution remedy easing the over
burdened domestic court system of a country
Applicability of INDRP:

12

Manish Vij v. Indra Chugh [AIR 2002 Del 243]

15

India has in a very limited way made some use of ICANNs UD RP Policy by
implementing the .IN Domain Name Dispute Resolution Policy (INDRP) on the same
lines, however restricted to the .IN registry disputes. The National Centre for Software
Technology is the sponsoring organization in India for the .IN Registry, and the
administrative contact for the same is the National Internet Exchange of India (NIXI).
Under NIXI, the IN Registry functions as an autonomous body with primary
responsibility for maintaining the .IN country code top level domain for India.
As per paragraph 10 of the INDRP Policy proceedings before an arbitration panel shall be
limited to the cancellation or transfer of domain name registration to the Complainant.
Under the INDRP rules an arbitration procedure has been provided for dispute resolution
of .in ccTLD domain name disputes and the decision of the same is made binding
under the Arbitration and Conciliation Act 1996 of India. Interim Relief is also available
under Section 17 (1) of the Arbitration and Conciliation Act, 1996, at the request of either
party to be ordered by the Arbitral Tribunal if considered necessary in respect of the
subject matter of the dispute.
An important case of the INDRP Arbitration Panel is that of Bloomberg Finance L.P.,
(BF) vs. Mr. Kanhan Vijay 13. The domain name in question is www.bloomberg.net.in
which was registered by the respondent. The complainant Bloomberg Finance L.P. was
the registered proprietor of the services mark BLOOMBERG in India and abroad, with
rights from 1986 as a trade mark, trade name and corporate identity establishing
widespread reputation and goodwill. The complainant had registered various domain
names under .in CCTLD incorporating "Bloomberg" as the name and is therefore the
prior adopter, user and registrant. The respondent represented a firm Bloomberg
Computers which had no association with the complainant Bloomberg Finance and had
no reason to adopt or register www.bloomberg.net.in as domain name subsequent in time
to the complainants various domain registrations with the name Bloomberg. The
respondents bad faith intent was established by the Panel stating that there was a lack of

13

Christine Chiramel ,THE DOMAIN NAME CHAOS- A LEGAL PERSPECTIVE available at: <
http://www.vaishlaw.com/article/information_technology_laws/the_domain_name_chaos.pdf?
articleid=100324>, (last accessed 11th March, 2014)

16

due diligence or evidence on the part of the respondent towards their claims and that the
domain was to be transferred to the complainant accordingly

Domain Name Protection in India

At present, no specific legislation deals with domain name disputes. However, the
country code for top level domain name '.in' is governed by the '.IN' Domain
Name Dispute Resolution Policy (INDRP) which is formulated on the principles
of the UDNDR policy. A person can also move to the court against the misuse of
his trademarks by filing a suit for infringement/ passing-off, if his trademark is
registered by a third person in his name as domain name.14
The Policies of INDRP are similar to the ICANN's UDRP policies further in the absence
of specific legislations; Indian courts have relied on judicial precedents and
foreign judgments in deciding various disputes regarding Domain Names in India.

14

Domain Name Protection, available at: http://www.articlesbase.com/domain-names-articles/domainname-protection-1832416.html (last accessed: 12th March, 2014)

17

Whether Trade Mark laws are applicable in domain names was answered in the
affirmative in Satyam Infoway Ltd v Sifynet Solutions Pvt Ltd.15 The court, in an
authoritative decision has held that internet domain names are subject to the same
legal norms applicable to other Intellectual Properties such as trademarks. It was
further held that The use of the same or similar domain name may lead to a
diversion of users which could result from such user mistakenly accessing one
domain name instead of another. This may occur in e-commerce with its rapid
progress and instant (and theoretically limitless) accessibility to users and
potential customers and particularly so in areas of specific overlap. Ordinary
consumers/users seeking to locate the functions available less than 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 had misrepresented its goods and services through its
promotional activities and the first domain owner would thereby lose their
custom. It is apparent therefore that a domain name may have all the
characteristics of a trade mark could be found for action for passing off. The court
further held that there is no legislation in India which explicitly refers to dispute
resolution in connection with domain names. The operation of the Trade Marks
Act, 1999 is also not extra territorial and may not allow for adequate protection of
domain names. This does not mean that domain names are not to be protected
legally to the extent possible under laws of passing off It was observed be the
Hon'ble Court that since a domain name should necessarily be peculiar and
unique it becomes necessary to maintain its exclusive identity. Hence, the Hon'ble
Supreme Court held that Trade Mark Law is applicable to domain names, as a
domain name falls within the meaning of the term 'services' as defined under
Section 2(z) of the Trade Marks Act, 1999. Also, since a domain name could
possess all the properties of a Trade Mark, remedies for an action of passing off
are also available in respect of domain names.

15

Satyam Infoway Ltd v Sifynet Solutions Pvt Ltd. AIR 2004 SC 3540

18

The courts in various decisions have established that in order to establish passing off of a
well known trademark, the conditions in Rule 4(a) in the UDNDR Policy should
be fulfilled.
In Acqua Minerals Ltd v. Promod Borsey and Anr16 the Hon'ble court opined that unless a
person is able to establish bonafide intentions for registering a particular name,
which has been in use previously for a long duration such that it has gained
goodwill, as its domain name, it shall be presumed that the registration of such a
name was with the intention to gain from the goodwill of the trade name. The
plaintiff in the instant case was successful in obtaining an injunction against the
defendant for using the mark BISLERI or BISLERI.COM as the plaintiff was its
registered owner.
Also, common English words can be protected under Trade Mark laws if the trademark
has acquired a secondary meaning and people only recognize goods and services
of the owner from the trademark itself. Thus in General media Communications
Inc v. Deepak Daftari17 a complaint to INDRP is filed by the complainant and the
impugned domain name 'www. penthouse.in' was held to be confusingly similar to
the domain name 'www.penthouse.com'. The contention by the respondent that the
word penthouse was generic / common word was set aside by the arbitrator.
Another issue is the registration of names of popular brands with a slight spelling
variation like pesi.com and radiff.com for the sole purpose of diverting traffic to their
website through typing errors. A significant purpose of a domain name is to identify the
entity that owns the website. A domain name should not confuse the consumers as to the
origins of the services or products defeating the principal of trademark law. In Rediff
Communications Ltd. v. Cybertooth & Another 18 the Bombay High Court while granting
an injunction restraining the defendants from using the domain name RADIFF or any
other similar name, held that when both domain names are considered there is every
possibility of internet users being confused and deceived into believing that both domain
16

Acqua Minerals Ltd v. Promod Borsey and Anr AIR 2001 Del 463
General media Communications Inc v. Deepak Daftari INDRP/466 dated 09/05/2013
18
Rediff Communications Ltd. v. Cybertooth & Another 1999 (4) BomCR 278
17

19

names belong to one common source and connection although the two belong to two
different persons. Again the website using the domain name, Naukari.com was held to
be confusingly similar to that of the plaintiff, naukri.com, with a different spelling
variant establishing prima facie inference of bad faith.
In Yahoo Inc v. Akash Arora19 , the plaintiff filed an action against Akash Arora for
passing off its sources on the Internet as those of the plaintiffs by adopting the domain
name yahooindia.com. The court held that although Internet users were technically
educated and literate, this would not reduce the risk of confusion. This case is important
since it delves into the psyche of the consumers where the likelihood of confusion will
arise. The very fact that a person who intends to visit the Internet site of the plaintiff may
reach the defendants site owing to similarity in the domain name, was a factor sufficient
to grant injunction. Even Google had a cyber-squatter whereby www.googl.com, a
cheeky search service was set up in Texas trying to cash in on Googles success.
More recently in Tata Sons Ltd & Anr v Arno Palmen & Anr 20the Hon'ble High court of
Delhi observed that it was a case of cyber squatting as the defendant registered the
domain name in bad faith with the objective of selling the impugned domain
name to the plaintiff. The Court hence granted an injunction in favors of the
plaintiff against using the domain name 'WWW.TATAINFOTECH.IN' as it was
held to be deceptively similar to the plaintiff's trademark 'TATA'. Also, the
defendant no 2, Key- Systems GmBH was directed to cancel the registration of
the impugned domain name in favor of the defendant.

Conclusion

19
20

Yahoo Inc v. Akash Arora 78 (1999) DLT 285

Tata Sons Ltd & Anr v Arno Palmen & Anr, 2013(54) PTC 424 ( Del)

20

There is an urgent need to draft a new legislation in India which would expressly deal
with domain names. The courts have already pushed the envelope by giving a wide
interpretation to the provisions under Trademark law to account for domain name
disputes. There is no adequate protection provided against cyber squatters, this is
clear from the wide ranging prevalence of this menace still. The miscreants devise
new methods to dupe and extort money from the big corporations. the lack of a direct
law furthers their cause as they can easily find loopholes in the law which would
exonerate them from any trial. The trademarks law and the IT Act which are relied
upon by the courts both have their shortcomings and fall short in affording
protection.
The need of the hour is for India to amend its legislature so as to provide for cyber
squatting and domain name related disputes in the Information Technology Act 2000
and the Cyber Appellate Tribunal should be used for such offences as well. All
arbitration decisions of the WIPO Arbitration and Mediation Centre should be made
binding in India under the Arbitration and Conciliation Act 1996. This amendment
can be made in the Information Technology Act 2000 stating that WIPO decisions
can go to appeal before the High Court just like other arbitration decision considered
as decrees under the Arbitration Act and execution petitions can be filed to enforce
them accordingly. This way ICAAN and WIPO decisions will ease the overburdened
Indian court system. With regard to the .IN registry the INDRP policy is already in
place protecting the domain names through the arbitration procedure in force. This
can thus be extended to all TLDs through the above mentioned amendments reaching
a practical working solution. India should use the WIPO and ICANN mechanism of
dispute resolution and set a precedent for other countries across the world. Further,
ICANNs Governmental Advisory Committee (GAC) is a useful tool for national
governments to understand, adopt and contribute towards ICANN policies pertaining
to specific government interests. Governments must take a contributory proactive
interest in the GAC, keeping the best interest of the national and global economy in
mind. This is where India should step up its contributions, become a more active
member of ICANNs initiatives and pave the way for a virtually sound cyber India.

21

BIBLIOGRAPHY
Articles

B. Meeks, Is Your Trademark Fair Game on the Internet?, InterActive Week,

October 10, 1994, at 48.

E. Weise, Name Flap on Internet Raises Question of Trademark Law, Associated

Press, February 21, 1994.

G. Gervaise Davis III, Internet Domain Names and Trademarks, 1996,

http://www.cla.org/internet%20domain%20name.pdf

J. Quittner, Life in Cyberspace: You Deserve a Break Today, Newsday, October 7,

1994, at A05.

M. Betts, Internet Name Game Gets Specific, Computerworld, October 10, 1994,
at 6.

Margaret Smith Kubiszyn , When is a Domain name considered as Trademark?

http://www.gigalaw.com/articles/2001-all/kubiszyn-2001-01-all.html.

Cases

Maruti.com et al. v. Maruti Udyog Ltd. et al., U.S. Dist. Ct. No. L-03-1478

Yahoo Inc v. Akash Arora 78 (1999) DLT 285

Tata Sons Ltd & Anr v Arno Palmen & Anr, 2013(54) PTC 424 (Del)

General media Communications Inc v. Deepak Daftari INDRP/466 dated

09/05/2013

Rediff Communications Ltd. v. Cybertooth & Another 1999 (4) Bom CR 278

Acqua Minerals Ltd v. Promod Borsey and Anr AIR 2001 Del 463

Satyam Infoway Ltd v Sifynet Solutions Pvt Ltd. AIR 2004 SC 3540

22

Manish Vij v. Indra Chugh [AIR 2002 Del 243]

23