International Sector Panel
Protection of Trade Marks in Domain Names As more and more commercial enterprises have started trading and/or advertising their presence on the web, domain names have become even more valuable and similarly the potential for a domain name dispute is equally high. A Domain Name is a quite user-friendly form of an Internet Protocol (IP) address. Addresses to the Internet Web Servers are assigned and managed through the Domain Name System, the globally distributed internet database administered by ICANN. A domain name can also be registered as a trade mark if it satisfied the requirements of registration as stipulated under the Trade Marks Act, 1999 and the Trade Marks Rules, 2002. It is worth noting here that since a trade mark is protected by the local laws of each country, therefore a trademark may have multiple registrations in various countries throughout the world because of different reasons like they are associated with different products falling in different classes of registration or they belong to businesses in different jurisdictions etc. 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, hence the distinctive nature of the domain name providing global exclusivity is much sought after and can be registered only by one trader across the globe. Currently the domain names are available on a first come first served basis. Hon’ble High Court Delhi in the case of Yahoo Inc. vs. Akash Chopra 78 (1999) DLT 185 held that “a domain name serves the same functions as a trade mark and so is entitled to equal protection.” The decision was followed by a different bench of the High Court of Delhi in the case of Info Edge (I) Pvt Ltd Vs. Shailesh Gupta 98 (2002) DLT 499 wherein the Hon’ble Court held that “Both the domain names of the Plaintiff and of the Defendant, depicting the nature and type of business activity they carry on are identical or confusingly similar trade mark or service marks. It is also a possibility for an internet user while searching for the website of the Plaintiff to enter into the website of the Defendant through only a small mis-spelling of the domain name and, in fact, such incident has occurred in the case of the Plaintiff itself vis-avis the Defendant in proof of which a document is also placed on record. Such diversion of traffic with the sole intention of ulterior gain in the similar business activity by a competitor, requires protection. A court discharging equitable justice should come in aid and for protection of the honest user as opposed to a dishonest user acting on bad faith.” The Hon’ble Supreme Court of India has also expressed its opinion that the domain name performs the same function as that of a trade mark and therefore should be given equal protection in the case of Satyam 28
October 2016 Corporate INTL
Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd. AIR 2004 SC 3540. The said judgments have constantly been followed by various Courts in India in plethora of cases. The right holder can also initiate proceedings before the National Internet Exchange of India or NIXI which is the adjudicating authority in India for any domain name related dispute. The NIXI is a Not-for-Profit Company incorporated under section 25 of the Indian Companies Act, 1956, with an objective of facilitating improved internet services in the country. Any dispute with respect to the domain name have .in cCLTD which is India’s top level domain name on the internet is to be submitted before the NIXI under the .IN Domain Name Dispute Resolution Policy (INDRP) which is the governing policy under which the domain name dispute are resolved in India. A domain name complaint for a domain name having India’s top level cCTLD extension is to be filed with the NIXI under the INDPR policy and the rules framed thereunder claiming infringement of a trade mark in any domain name by the right holder. The right holder is required to satisfy the following three requirements in order to file the complaint: a) The domain name is identical and confusingly similar to the Complainant’s trademark b) The Respondent has no rights or legitimate interests in respect of the disputed domain name c) The domain name was registered and is being used in bad faith Upon receipt of a complaint, the NIXI appoints an Arbitrator to adjudicate upon the complaint, who issues notice to the Respondent with a direction to file its reply to the complaint within a fixed period of time. Thereafter the Complainant is also given the opportunity of filing its rejoinder to the Response filed by the Respondent and the Arbitrator subsequently pronounces its order based on the pleadings of the parties and documents filed in support of the same. On the other hand, a complaint against the international Generic top level domain name (gTLDs) like .com, .org etc. is to be filed before the WIPO as per the Uniform Domain Name Disputes Resolution Policy (UDRP Policy).
Lall Lahiri & Salhortra Mr Rahul Chaudhry Managing Partner Tel: +91 11 4350 0000 gpo@lls.in www.lls.in