DOMAIN NAMES AS TRADEMARKS: BEYOND URLs

MEANING AND FUCNTIONS OF TRADEMARK

Intellectual property rights realm aims at securing exclusive rights of individuals on generation of one’s mind. In commercial world, trademarks act as a pillars of distinction which enable the businesses to safeguard their unique identity in the competitive market. Section 2(1)(zb) of the Trademarks Act, 1999 defines trademarks 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. To summarise, the essential functions performed by a trademark include:
1. It identifies the goods and services of one trader and distinguish them from goods and services sold by others;
2. It signifies that all goods and services bearing a particular trademark come from a single source,
3. It signifies that all goods and services bearing a particular trademark are of an equal level of quality; and
4. It acts as a prime instrument in advertising and selling the goods and services.
The main functions of a trademark are, therefore, identification, source, quality and advertising.

MEANING OF DOMAIN NAMES

Domain names serve as the digital equivalent of physical addresses, guiding users to specific web locations where businesses store information and offer services. For example, in the web address https://www.jpassociates.co.in, “jpassociates.co.in” is the domain name. These names are extremely pivotal in navigating commerce in the online sphere, but their significance transcends mere addresses.

OVERLAP BETWEEN TRADEMARK AND DOMAIN NAMES

With the boom of internet and onset of the digital era, internet’s pervasive role in commerce has led to the expansion of the definition of trademarks to encompass domain names, which have evolved beyond mere web addresses. Domain names end up effectively fulfilling all the functions of a trademark as elaborated in the foregoing paras i.e., identification, source, quality and advertising. Therefore, in light of the changing times, the law has also evolved time and time again to include domain names as a legitimate form of trademark for the reason that:

Firstly, a domain name acts as a source identifier, akin to a traditional trademark’s role which is distinguishing products or services. It helps establish the identity of a business in the digital space, making it crucial to maintain exclusivity in online presence.

Secondly, the internet has become a thriving hub for commercial activity. Therefore, the popularity and fame of a brand or entity on the internet hold as much weight as their presence in the physical marketplace. This transformation underscores the importance of safeguarding a brand’s online identity, including its domain name, to prevent unauthorized use or exploitation.

Thirdly, when a domain name is associated with services provided by its owner, it falls under the purview of Section 2(1)(z) of the Trademarks Act, 1999. This recognition establishes the domain name’s eligibility for trademark protection, similar to tangible goods or services.

JUDICIAL PRONOUNCEMENTS

In light of the foregoing reasons, the courts have taken a liberal and expansive view while interpreting the term ‘Trademark’ and have repeatedly adjudged the inclusion of domain name in the purview of the definition of trademarks. Through the years, in several Judicial pronouncements inter alia that of Yahoo Inc. V. Akash Arora, (1999) 19 PTC 210 (Del); Rediff Communication Ltd. v. Cyberbooth, AIR 2000 Bom 27; Tata Sons Lid. v. Manu Kosuri, 2001 PTC 432 (Del); Acqua Minerals Ltd. v. Pramod Borse, 2001 PIC 619 (Del); Dr. Reddy’s Laboratories Ltd. v. Manu Kosuri, 2001 PTC 859 (Del); Vishwa Nirmala Dharma a.k.a. Sahaja Yoga v/s Sahaja Yoga Ex-Members Network and SD Montford 2002 (24) PTC 257 and Hindustan Lever Limited v/s Vikram Chachra 2002 (24) PTC 547, have been the ones where the courts have considered the wider scope trademark to include domain names and emphasized on the protection of domain names. Some notable ones amongst those have been the cases of

1) Celador Productions Ltd. vs. Gaurav Mehrotra , which illustrates this convergence of domain names and trademarks. The defendant started using the domain name, crorepatrikaun.com, which had striking similarity with the plaintiff’s game show name, KAUN BANEYGA CROREPATI, along with a similar logo, font, and voice. The court ruled that a domain name surpasses being merely a web address; it provides vital information about the owner’s goods or services. Consequently, the owner has the right to protect its domain name against such infringements.

2) Hon’ble Supreme Court in the case of Satyam Infoway Ltd. vs. Siffynet Solutions , while answering the question as to whether domain names are recognizable as intellectual property, such as trademarks, held, “The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet has 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, and distinguishes specific businesses or services of different companies. Consequently, a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical. As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high.”

3) In a more recent judgement the Calcutta High Court in the case of Rajat Agarwal vs. Spartan Online Pvt. Ltd. , underscored the dual role of domain names as not just mere facilitators of internet navigation but also as the identifiers of businesses or services. Emphasizing the necessity of distinctiveness and exclusivity, the judgment highlighted that a domain name must be unique to a business. However, departing from prior rulings, the court did not restrain the defendants from using spartanpoker.com, citing the plaintiffs’ lack of substantial investment in developing the associated digital presence despite registering the domain name. This case stresses the importance of not just registration but also substantial investment and development in establishing exclusive rights over domain names, underscoring the nuanced considerations in their protection within commercial contexts.

4) In the case of Rediff Communication Ltd. v. Cybertooth & Another was the one which arises from the registration of well-known brand names with slight alterations in spellings. For example: “CocoCola.com” and “Macdonald.com,” aimed at redirecting traffic to their site through typographical errors. A fundamental purpose of a domain name is to clearly identify the entity owning the website. Any domain name should not mislead consumers about the source of goods or services, undermining trademark laws. In the aforesaid case of Rediff Communications Ltd. v. Cybertooth & Another, the Bombay High Court issued an injunction, prohibiting the defendants from using the domain name ‘RADIFF’ or any similar name and while doing this, the court held that “When both domain names are considered there is every possibility of internet users being confused and deceived into believing that both domain names belong to one common source and connection although the two belong to two different persons.”

Protecting domain names under trademark law becomes imperative to prevent unauthorized individuals or entities from capitalizing on a brand’s goodwill. Cybersquatting, infringement, or trafficking of domain names could harm a brand’s reputation and confuse consumers, leading to unfair advantages for those unaffiliated with the trademark.

DIFFERENCE BETWEEN TRADEMARK AND DOMAIN NAME

The distinction between a trademark and a domain name lies in their operational framework. While trademarks are safeguarded by individual country laws where they are registered, allowing for multiple registrations in various countries globally. Conversely, the internet is of a borderless nature which enables universal access to domain names, transcending geographical limitations. This universal accessibility necessitates worldwide exclusivity for domain names, surpassing the protective scope of national laws. In order to address this gap, international regulation of the domain name system was established through collaborative efforts between the World Intellectual Property Organization (WIPO) and the Internet Corporation for Assigned Names and Numbers (ICANN).

NATIONAL DISPUTE RESOLUTION

In India, domain names may be granted protection as a trademark or service mark under the provisions of Trademarks Act, 1999, provided that the domain name fulfils all requirements to be properly registered under the Act as elaborated hereinabove. Once registered, the registered proprietor of a domain name will have all those legitimate rights and authorities which are commonly availed by the owners of registered trademarks or services marks in India. For the protection of one’s rights vested in the domain name, the existing law offers two options.
1) Suit for Infringement (Statutory Protection)
2) Suit for Passing off (Common Law Protection)

INTERNATIONAL DISPUTE RESOLUTION

The lacuna in international regulation of domain names led to collaborative efforts between the World Intellectual Property Organization (WIPO) and the Internet Corporation for Assigned Names and Numbers (ICANN). The resultant Uniform Domain Name Dispute Resolution Policy (UDRP), adopted on October 24, 1999, aims to resolve issues like cyber piracy and trademark dilution. It establishes a structured mechanism for resolving disputes involving domain names through Administrative Panels within the WIPO Arbitration and Mediation Centre.

Under the UDNDR Policy, complaints can address domain names that closely resemble a trademark, are used in bad faith, or infringe on a trademark under Rule 4(a). Rule 4(b) outlines evidence of bad faith registration, including intentions to sell, prevent trademark owners from obtaining a corresponding domain, disrupt competitors, or confuse users for commercial gain.
Given the internet’s global accessibility, domain names necessitate worldwide protection, surpassing the capabilities of national laws. Rule 4(c) provides defences for accused domain owners, such as using the domain for genuine business purposes, being commonly associated with the domain name, or engaging in non-commercial, fair use without intending to mislead or harm the trademark. In summary, the UDNDR Policy addresses disputes over domain names concerning similarity, bad faith, and trademark infringement, while offering defences related to legitimate use and association with the domain name.

CONCLUSION

In conclusion, the intersection of domain names and trademarks marks a pivotal moment in the legal landscape, acknowledging the digital evolution of commercial activity. Safeguarding domain names under trademark law becomes indispensable to ensure integrity, prevent exploitation, and maintain the exclusivity of a brand’s digital identity in an increasingly interconnected world.