A domain name is your website name, where Internet users can access your website. The domain names have become a significant part in the world of internet. Where Information and Technology has evolved and business is possible through internet, domain names have made progress even commercially. Domain names have now attained the status of business identifiers. The commercial activities showing gargantuan success on the internet has made domain names useful for the purpose of popularity and profitability of business enterprises. According to Bill Gates, “Domains have and will continue to go up in value faster than any other commodity ever known to man”.
A domain name makes it easy for the customers to navigate and find information or services. A domain name is required to be unique in relation to its business. This helps the business enterprises in distinguishing its services from others. As we are aware that Trademark registration protects the name and it restricts others from using the same name. Let’s say, I have a company and I name it as business18 and my domain name is business18.in so when I file for registration of the brand name, the registration of my trademark will extend to my domain name as well. This is the case when both brand name and domain name are similar in nature.
When we apply for trademark protection for its brand name and the domain name is in an abbreviated form then possibility of the protection of trademark will be to the extent of the brand name only. For instance, I have a brand name as Indian law cases and I have a domain name as ilc.com then such abbreviated form of trademark may not have protection of domain name as trademark.
For the purpose of protecting your domain name the essential point is to not have a name that is deceptively similar to a well-known trademark. The law recognizes such similarity with an existing trademark applied for registration as cybersquatting. The act of cybersquatting will result in transfer or cancel of domain name and also lead to payment of damages. There are various databases that help in searching on web if your domain name is a registered trademark in a particular country.
The domain names as trademarks or service marks are registered and protected by ICANN (Internet Corporation for Assigned Names and Numbers). The ICANN to attain its main objectives, has with the support of WIPO prescribed two measures a rigorous and a censorious system of registration of domain names, with authorized registrars by ICANN and Uniform Domain Name Disputes Resolution Policy (UDNDR Policy).
For dispute resolution under UDNDR Policy a person or an entity can complain before the competent administration-dispute-resolution services that:
- There is a previously registered domain name which is deceptively similar to the domain name or the trademark of the complainant.
- There is registered domain name that is used in bad faith in order to cause loss to the complainant.
- There is a case of infringement being caused to the complainant.
The domain name registrars authorized by ICANN operate a dispute resolution procedure under the UDNDR Policy. The decisions pronounced under the policy are binding under the Arbitration and Conciliation Act, 1996.
The protection of domain name in India is widely accepted and appreciated. The trademark and service mark is protected by virtue of the Trade Marks Act, 1999. As per Rule 2 of UDNDR Policy, the Applicant has to satisfy the condition of having a domain name that would not violate the rights of another. The domain name should not be similar to any other existing mark. Thus, in accordance with Rule 2 the registrar shall refuse the registration of the domain name if in contravention to Rule 2 of the policy. The domain name even if properly registered as per the requirements of the ICANN it is necessary to have complied with the provisions of the Trade Marks Act, 1999. In case of contradiction of decision between Indian courts having jurisdiction and ICANN, then the decision of the Indian courts with competent jurisdiction will prevail over the decision of ICANN.
In the case of Satyam Infoway Ltd v. Sifynet Solutions Pvt. Ltd. the court held that the role of the domain names has increased commercially and is not only limited to internet communication, but has also extended its scope to be a business identity. Consequently a domain name as an address must necessarily be peculiar and unique. The domain name that is used for business, its value of conserving the exclusive identity becomes critical. With the rapid increase commercial enterprises on web, domain names have become extravagant and the possibility for dispute is high.
In the case of Rediff Communications Ltd. v. Cybertooth & Another the Bombay High court held that when two domain names are considered there is a higher potential of the internet users being confused into believing that both the domain names belong to a common source, although the two belong to different sources.
The protection of the domain name under the Indian legal system is on a higher level as compared to that of the rights of the UDNDR Policy. Presently the protection of domain name under trademark law is considered strong. The decision of the Supreme Court is considered final and is binding on all institutions and persons in India. It cannot be challenged by showing any statutory provision to the contrary. The reason is no statutory provision can override a constitutional provision. In case of conflict, the later will prevail over the former. The growth of internet commercially has made protection of domain names integral. The increase in domain name protection as trademark is achievable under ICANN and WIPO. The brand owners can reduce fraud by adhering to strict policies and monitoring misuse of domain names. This will make domain names more desirable, valuable and trusted.T