It is very important for an organization in the rising era of cyber world to have a place in the cyberspace. This would require its registration under a particular domain name and website. As each computer has its own unique all-numeric Internet Protocol (IP) address and it’s very complex to remember all numeric addresses which has given rise to the essence of Domain Name System (in brief: DNS). Thus, the systematization of recognition of the proxy names is called the “Domain Name System”. Domain Names are virtually taking place of trademarks because consumers often perceive them as performing, in electronic commerce, much the same role as trademarks and trade-names have played in more traditional modes of business. Similar to the concept of trademarks disputes had arisen between the companies wanted to adopt the same domain name. As in the case of domain name only one owner can possess a particular domain name. In contrast, identical trademarks may be owned by numerous persons at a time till they have some sort of differentiation, which mark them off from each other. Under the current Internet system, one of the companies will not be able to include its trade mark in its domain name, since there can be only one domain name.

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 in crease 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 name. Thus a domain name may pertain to provision of services within the meaning of Section 2(z) of the Trade Marks Act. A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online Internet location. 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.

India has a top level domain (TLD) (.in) as listed in the ISO Standards. The second level subdomains registered under the (.in) domain are (.ernet), (.nic), (.net), (.res), (.ac), (.co), (.gov), (.mil) and (.org). The primary question, which in most cases, seeks answer of the question that “Whether domain names are equivalent to trademark, i.e., could the use of a domain name amounts to a trademark infringement?” Still it is not been clearly said by the judiciary that domain name is a form of property. Even if domain names are property, there remains question as to ownership and control. With the traditional notion of property, a domain name differs.

Now domain name disputes has also hit the Indian Courts. The most serious dispute among them is “Cybersquatting”, which is use of domain name by a person with neither trademark registration, nor any inherent right, to the name. There are many ways in which someone on the Internet could trigger the ire of an owner of a trademark or some other form of intellectual property. A web site could contain someone’s registered trademark. A web site could pluck an image (a trademark, or an image) from some other site and incorporate the image into its own web page. A web site could contain material protected by copyright that has been copied from elsewhere without the permission of the copyright owner. A domain name could be similar to (but not identical to) some trademark. A third-level domain name (e.g. southcanara.bank.com) could be identical to a famous domain name. Or a second-level domain name (e.g. southcanara.com) could be identical to some trademark.

Each trade mark domain name dispute includes three parties i.e. the domain name owner, the trademark owner, and the registration authority. Each party has interests differing greatly from those of the others. The domain name owner; for a domain name owner the predominant interest is predictability. The domain name owner doesn’t want its domain name to be taken away precipitously any more than it wants to be evicted from its physical space or cut off from electrical power. For many Internet-related businesses, in fact, physical eviction or loss of electric power would be far more easily remedied than loss of the domain name. For a trademark owner there are really two interest areas. The first arises if trademark infringement is going on, in which case the trademark owner would like to get the infringement stopped right away; a subsidiary concern is reducing the cost of getting it stopped. The second interest area arises solely as a consequence of the NSI policy, and involves the trademark owner that wishes it could have a particular domain name, and learns that the domain name has already been taken by someone else who isn’t infringing the trademark owner’s trademark. The domain name registration authority. The main interest of a domain name registration authority (of which there are several hundred around the world, one for each top-level domain) is getting its job done well. At present, about half a million domain names have been registered in the top-level domains administered by NSI; by comparison all of the other domain name registration authorities of the world combined probably account for only a few tens of thousands of domain names. This makes NSI’s interests of particularly great concern, and NSI has stated many times in recent months that it is not only interested in getting its job done well, but is also interested in trying to avoid being sued.

In the case of Nokia Corporation vs. Uday Lakhani, where a person named Uday Lakhani, resident of London registered a website with the name of nokias.com. During the hearing of the case at WIPO Arbitration and Mediation Center, it was held that, the domain name “nokias.com” is confusingly similar to Complainant’s trademark “Nokia,” that Respondent has no rights or legitimate interests in respect of the domain name and that Respondent’s domain name has been registered and is being used in bad faith.

Over the last few years the increased user of the internet has led to a proliferation of disputes resulting in litigation before different High Courts in India. The Courts have consistently applied the law relating to passing off to domain name disputes. Some disputes were between the trademark holders and domain name owners. Some were between domain name owners themselves. These decision namely Rediff Communication Ltd. v. Cyberbooth and Anr. 2000 AIR(Bom) 27), Yahoo Inc. v. Akash Arora (1999 PTC (19) 201), Dr. Reddy’s Laboratories Ltd. v. Manu Kosuri 2001 PTC 859 (Del), Tata Sons Ltd. v. Manu Kosuri 2001 PTC 432 (Del)), Acqua Minerals Ltd. v. Shailesh Gupta and Anr. 2002 (24) PTC 35.5 (Del). In the case of Rediff Communication Ltd. v. Cyberbooth, the Bombay High Court deliberate upon the Indian Jurisprudence on domain names. The Court said that “A domain name is more than an Internet address and is entitled to the equal protection as trade mark”. In this case the domain name owner of (rediff.com) filed a case asking for the injunction against the use of domain name (radiff.com). The court after looking into the matter said that there was a clear intention to deceive and that is the only purpose of registration by the defendants was to trade on the goodwill and reputation of the plaintiff’s.

The first case that came up before the Indian Courts probably was the case of Yahoo! Inc. v. Akash Arora in which an attempt was made to use the domain name (yahooindia.com) for Internet related services. Yahoo alleged that by using a quite similar domain name and format to their domain name i.e. (yahoo.com), their must be a charge of deceit and “Passing off”. Thus, by looking at the passing off doctrine, the court granted an injunction restraining the domain users from dealing in service or goods on the Internet or under the trademark/domain name (yahooindia.com).

In the case of Titan Industries Ltd. v. Prashant Kooapati, the plaintiff had extensive use of “Tanishq”, although its trademark application in India was pending at the time of 1998 hearing. The Delhi High Court enjoined the defendant from registering a name or operating any business, making, selling, offering for sale, advertisement and in any manner dealing in goods, under the name…or containing the said trade mark as n essential or dominant feature…on the Internet or otherwise.

Then again the case of Investsmart India Ltd. v. ICICI, an injunction was sought by the plaintiff against the use of domain name (invetmartindia.com) because according to them this is similar to their domain name i.e. (investsmartindia.com). Court applied the case of Yahooindia and Rediff and granted the injunction.

Looking upon the number and nature of cases that are coming before the Indian Courts, there is a great need of a proper law with regard to domain name dispute like that of ‘Concept of Dilution’ which the USA has.

The author Sachin Waze is a former police officer of Indian Police. Original article can be read at http://www.knowyourlaw.com

Author: Sachin Waze
Article Source: EzineArticles.com
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