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Domain names — An overview of the law

Subject : Information Technology
Month-Year : Nov 2004
Author/s : Marylou Billawalla
Advocate and Solicitor
Topic : Domain names — An overview of the law
Article Details :

When the immortal bard William Shakespeare in his famous ‘Romeo and Juliet’ penned "What’s in a name ? A rose by any other name would smell as sweet", he did not envisage how in the later and more materialistic times, a name could mean everything and for many a business and consumer today, a rose by any other name does smell less sweet. Shakespeare and his contemporaries can hardly be blamed for not being able to foresee the importance of a name in the modern day concept of branding. Branding is, however, not a new phenomenon and has commenced many centuries ago (A brand or trademark is a name used upon or in relation to goods or services to distinguish the goods and services of one owner or supplier from those of another.). Goods and services have been bartered since the beginning of human civilisation. The physical branding of products and animals to distinguish their owners or suppliers has a history dating back to pre-Roman civilisation. However, the concept of a brand as comprising both tangible and intangible value is more recent, with the advent of the changing role of marketing. Today, the brand or a trademark used upon and in relation to goods and services denotes value and a representation of quality and a more apt adage would now be "It’s all in a name !"

As they say "Imitation is the best form of flattery !" However, trademark owners are opposed to this form of flattery and have waged many a war to prevent imitation of their famous names and trademarks by unscrupulous copycats, who copy famous trademarks and names for their products with a view to pass off their products as and for those sold or provided under an established brand name. With the advancement of information and technology, unscrupulous website owners are the latest to join the bandwagon of imitators and seek to lure customers and Internet users to their sites by adopting, as part of their domain names, famous or established trademarks.

What are domain names ?

Technically speaking, a domain name is another name for a numeric code. This numeric code is called an Internet Protocol (IP) address. Computers on the Internet use an IP address to find each other (much in the same way we use specific area or pin codes). While computers on the Internet use IP addresses (in the form of numeric codes) to find each other, domain names were created as an alternative name for an Internet address which human beings can communicate and remember.

The domain name system (DNS) operates on the basis of hierarchy of names. The top-level domains (TLDs)1 are divided into two categories :

(i) generic top-level domains (gTLDs)2, and

(ii) country code top-level domains (ccTLDs)3.

The gTLDs, .com, .net, .org, .aero, .biz, .coop, .info, .museum, .name and .pro (the said gTLDs) are managed by registry operators acting under the authority of the Internet Corporation for Assigned Names and Numbers (ICANN)4. ICANN is an international not-for-profit organisation responsible for managing the Internet’s DNS worldwide, including allocating IP address space allocation. Only registrars accredited by ICANN are authorised to register the said gTLDs names in the registry5.

The problem of Cybersquatting :

The awareness that the Internet transcends geographical limitations and national boundaries has made people realise the tremendous business potential of the Internet, and corporate houses and businessmen the world over have registered their trademarks, trade names or at times their corporate names as domain names with the intention of tapping the tremendous business potential of the Internet. Domain names have thus become a valuable asset of any company by acting as a worldwide address of the company easily accessible to its customers and potential customers. This tremendous potential that the Internet has to offer has, however, on the flip side, given rise to opportunists indulging in what is known as ‘Cybersquatting’.

Cybersquatting involves the registration of trademarks and trade names as domain names by third parties, who do not possess rights in such names. Simply put, cybersquatters (or bad faith imitators) 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.

Cybersquatters are, therefore, just like ordinary trademark/trade name infringers, and as the judiciary in India has now decided, deserving of the same treatment.

Cybersquatting and judicial activism in India :

Prior to September 15, 2003, the law relating to infringement of trademarks and passing off was governed by the Trade and Merchandise Marks Act, 19586 (the Trademarks Act, 1958). The Trademarks Act, 1999, came into force on the 15th of September 2003 (the Trademarks Act, 1999).

After the advent of the Internet and the menace of cybersquat-ting, trademark and domain name owners had cause to approach the Courts in India for protection of their trademarks and names against unscrupulous copycats. In spite of the lacuna in statutory law in India relating to trademarks, the Delhi High Court and the Bombay High Court, in various decisions, recognised the importance of protecting domain names and trademarks against cybersquat-ting and held that a domain name is entitled to equal protection as a trademark and is entitled to protection under the law of passing off. [See Yahoo Inc. v. Akash Arora,7 Rediff Communication Ltd. v. Cyberbooth8, Dr. Reddy’s Laboratories Limited v. Manu Kosuri and Anr.9, Acqua Minerals Limited v. Pramod Borse and Anr.10 and Info Edge (India) (P) Ltd. v. Shailesh Gupta11].

The issue as to whether domain names are eligible for the same protection as trademarks and whether the law of passing off would apply with equal vigour to domain names, has finally been laid to rest in the recent judgement of the Supreme Court in Satyam Infoway Ltd. v. Sifynet Solutions (P) Ltd.12. In this matter, the Supreme Court of India has held that the principles of trademark law, and in particular those relating to passing off, will also apply to domain names.

The facts of the case in this matter were as under :

The Appellant (Plaintiff), Satyam Infoway Limited (Satyam) had registered several domain names like www.sifynet, www.sifymall. com; www.sifyrealestate.com, etc. in June 1999 with the internationally recognised registrar ICANN and WIPO. Satyam claimed that the word ‘Sify’ was a word coined by them using elements of its corporate name and Satyam also claimed a wide reputation and goodwill in the name ‘Sify’. The Respondent (Defendant) Sifynet Solutions (P) Ltd. (Siffynet) started carrying on the business of Internet marketing under the domain names www.siffynet.net and www. siffynet.com from 5th June 2001 and claimed to have obtained registration of its two names with ICANN on 5th June 2001 and 16th March 2002, respectively. Since Siffynet refused to stop using the name ‘Siffy’, in spite of being called upon to do so by Satyam, Satyam filed a suit against Siffynet in the City Civil Court, on the basis that Siffynet was passing off its business and services by using Satyam’s business name and domain name and filed an application for temporary injunction. The City Civil Court Judge allowed the application for temporary injunction and granted the injunction in favour of Satyam, on the ground that Satyam was the prior user of Sify, that it had earned a good reputation in connection with Internet and computer services under the name ‘Sify’, that Siffynet’s domain name was similar to the domain name of Satyam and that confusion would be caused in the minds of the general public. In an appeal preferred by Siffynet before the High Court of Karnataka, the High Court stayed the judgement of the City Civil Court. Satyam, accordingly preferred an appeal before the Supreme Court. It was contended by Sifynet before the Supreme Court that registration of the domain name with ICANN does not confirm any intellectual property right and that domain names could not be confused with ‘property names’ such as trademarks. The Supreme Court, however, after analysing various definitions in the Trademarks Act, 1999, came to the conclusion that a domain name can be said to be a word or a name which is capable of distinguishing the subject of trade or service made available to potential users of the Internet. By construction, a domain name would, therefore, fall within the definition of a trademark and within the purview of the Trade-marks Act, 1999 and be eligible for protection thereunder.

The following definitions in the Trademarks Act, 1999 were analysed by the Supreme Court and reproduced in its judgement, in arriving at the above conclusion :

‘Trademark’ has been defined in S. 2(1)(zb) of the Trademarks Act, 1999 as meaning :

"2. (1)(zb) ‘trademark’ means 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".

A ‘mark’ has been defined in S. 2(1)(m) as including ‘a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof’ (emphasis supplied) and a ‘name’ includes any abbreviation of a name [S. 2(l)(k)].

‘Goods’ have been defined in S. 2(1)(j) as meaning ‘anything’ which is the subject of trade or manufacture, and

‘services’ have been defined in S. 2(1)(z) as meaning :

"2. (1)(z) .. service of any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, construction, repair, entertainment, amusement, conveying of news or information and advertising;".

The Supreme Court thus held that the principles of trademark law, and in particular those relating to passing off, would apply in actions relating to the domain names.

However, in order to succeed in such an action of passing off, the following elements should be fulfilled :

1. The Plaintiff will have to establish its reputation in the name which is sought to be protected. In this connection, the Supreme Court observed that "the action is normally available to the owner of a distinctive trademark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the said mark, then the trader who is able to establish as the prior user will succeed. It is not essential for the Plaintiff to prove long user to establish reputation in a passing off action. It would depend upon the volume of sales and extent of advertisement."

2. The second element that must be established by a Plaintiff in a passing off action is misrepresentation by the Defendant to the public. The word ‘misrepresentation’ does not mean that the Plaintiff has to prove any mala fide intention on the part of the defendant. What has to be established is the likelihood of confusion in the minds of the public.

3. The third element of a passing off action is loss or the likelihood of loss to the Plaintiff.

In the above case, the Supreme Court was of the prima facie view that :

(1) there was a visual and phonetic similarity between the two names Sify and Siffy and the addition of ‘net’ to Siffy by Siffynet did not detract from the similarity.

(2) Satyam had established good reputation in connection with the trade name Sify.

(3) Siffynet’s choice of the word Sify was not original, but inspired by Satyam’s business name.

(4) Satyam was the prior user and had the right to debar Siffynet from eating into the goodwill it may have built up in connection with the name Sify.

(5) There was a likelihood of confusion with possible injury to the public and consequential losses to the Appellant, in the form of diverted customers.

Although the Supreme Court did hold that the principles of trademark law, and in particular those relating to passing off, would apply in actions relating to the domain names, in paragraph 18 of its judgement, the Supreme Court stated, "However, there is a distinction between a trademark and a domain name which is not relevant to the nature of the right of an owner in connection with the domain name, but is material to the scope of the protection available to the right. The distinction lies in the manner in which the two operate. A trademark is protected by the laws of a country where such trademark may be registered. Consequently, a trademark may have multiple registrations in many countries throughout the world. On the other hand, since the internet allows for access without any geographical limitation, a domain name is potentially accessible, irrespective of the geographical location of the consumers. The outcome of this potential is worldwide exclusivity, and that national laws might be inadequate to effectively protect a domain name. The lacuna necessitated international regulation of the domain name system (DNS). This international regulation was effected through WIPO and ICANN. India is one of the 171 States of the world which are members of WIPO. WIPO was established as a vehicle for promoting the protection, dissemination and use of intellectual property throughout the world. Services provided by WIPO to its member States include the provision of a forum for the development and implementation of intellectual property policies internationally through treaties and other policy instruments.

The Supreme Court, thus, recognised the lacuna that inevitably would be present in national laws relating to trademarks and acknowledged the role which WIPO and ICANN necessarily play in the trans-border phenomena of the Internet.

Thus, apart from the intervention of the judiciary and relief which can be obtained from the Courts in India, a trademark or domain name owner could also seek redressal against a copycat or a cybersquatter under the provisions of the Uniform Domain Name Disputes Resolution Policy (UDRP).

UDRP :

As mentioned above, since the Internet transcends geographical limitations and national boundaries, the world community realised that national laws may be inadequate to effectively protect a domain name and, therefore, international regulation of the DNS was required. This international regulation was effected through ICANN in the form of the UDRP.

The UDRP basically provides holders of trademark rights with an administrative mechanism for the efficient resolution of cybersquatting disputes.

Pursuant to their accreditation with ICANN, all gTLD registrars agree to abide by and implement the UDRP. The UDRP is incorporated into the standard dispute resolution clause of all domain name registration agreements entered into with ICANN accredited registrars.

Under UDRP, a person seeking to register a domain name is under an obligation to ensure that the domain name he seeks to register does not infringe or violate someone else’s rights13.

Under Clause 3, the UDRP provides that ICANN will cancel, transfer or otherwise make changes to domain name registrations under the following circumstances :

(i) on receipt by ICANN of written or appropriate electronic instructions from the domain name registrant or his duly authorised agent;

(ii) on receipt by ICANN from a Court or arbitral tribunal (of competent jurisdiction), requiring such action and/or

(iii) on receipt by ICANN of a decision by an administrative panel requiring such action in any administrative proceeding to which the domain name registrant was a party and which was conducted under the UDRP.

Clause 4 of the UDRP deals with mandatory administrative proceedings and provides that a domain name registrant has to submit to such proceedings in the event a third party files a complaint (complainant) with a Provider14 against the domain name registrant alleging the following :

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) The domain name registrant has no rights in the domain name; and

(iii) The domain name has been registered in bad faith.

Rule 4(b) has listed by way of illustration the following circumstances, which, if proved to be present, shall be evidence of the registration and use of a domain name in bad faith :

(i) circumstances indicating that the domain name registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the domain name registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or

(iii) the domain name registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the domain name registrant has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the domain name registrant’s website or location or of a product or service on the domain name registrant’s website or location.

The defences available to such a complaint have been particularised ‘without limitation’ in clause Rule 4(c) as follows :

(i) before any notice to the domain name registrant of the dispute, the use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the domain name registrant (as an individual, business, or other organisation) has been commonly known by the domain name, even if the domain name registrant has acquired no trademark or service mark rights; or

(iii) the domain name registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Rule 4(k) of the UDRP, however, provides that an aggrieved party is not compelled to initiate proceedings only under the UDRP and that a domain name registrant or the complainant may, before or after the conclusion of any administrative proceedings, submit the dispute to a Court of competent jurisdiction.

In choosing the remedy, it should be borne in mind that in proceedings under the UDRP, one of the essential ingredients of a complaint against the errant domain name registrant is that the domain name should have been registered in bad faith. On the other hand, in the case of an action in passing off, the aggrieved party does not have to prove bad faith or any mala fide intention on the part of the defendant. What has to be established is the likelihood of confusion in the minds of the public; namely, actual or potential users of the Internet. UDRP also lists certain defences available in the case of an allegation of a ‘bad faith’ registration under Rule 4(d). In the author’s opinion, these defences would not necessarily be available in a passing off action before the Court. Furthermore, there is no provision for award of damages or any other relief under the UDRP other than cancellation of the impugned domain name registration or transfer of the impugned domain name registration to the complainant.

In conclusion, although the Supreme Court has held that the principles of trademark law, and in particular, those relating to passing off would apply in actions relating to the domain names, I would still urge readers to register the distinctive part of your domain names which is coined by you for distinguishing your goods and services from those of others (e.g., in the domain name www.siffynet.net, ‘siffynet’ would be the distinguishing part) under the provisions of the Trademarks Act, 1999 (which now allows the registration of service marks). Thus, in addition to the remedy of a passing off action, an action for infringement of your registered trademark could also lie, in case of any illegal copying of your domain name.

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