Friday, 3 January 2014

Internet Domain Names are entitled to be protected as Trade Marks



Intoduction:
 Internet use is growing. Now a house hold word, Internet has become accessible virtually to  anyone with a Computer, Modem and  Telephone. Recently the accessibility has extended to  almost everyone because of the mushrooming of  “cyber café”  in every city and major towns in the country.  The internet has revolutionized the computer and the communication world like never before. It has  wide range of users  from professionals, Government, commercial organizations and companies etc.  The user can communicate instantaneously  by sending E-mail to any remote  address in the world, upload information, download information  from the WWW – World Wide Web.  It is estimated that the Internet connects  Computer network  in over 50 countries across the world and thus has made  nation state boundaries meaningless and has succeeded in integrating the world into a global community.Need for Domain Name System: One  reason for the rapid development of Internet  is the acceleration of the  Commercial interest on the net. This was mainly due to the development of the HTML  (Hyper Text Markup Language) and also the  rapid technological development of the net  to host  graphics, images, sound, movie files and other “multimedia capabilities”. Slick advertisements , including graphics, sound, video, movies can be published and made available to the browsing public. With tremendous potential  available, the world business community have been scrambling to take advantage  and many businesses  are now creating  a presence on the internet by establishing an “internet site” or “web site”. One main advantage that the business community world over gained from these  capabilities was  “its”  virtual global presence. The Internet placed  the sole proprietor, small business firm and  a multinational corporation on the same footing. The business entrepreneur , by having his own “web site”  could publish multimedia information  and also text  with relative ease and at a fraction  of the normal cost and  advertise his services or products by which he had a true global presence. Today unobtrusive advertising is tolerated on the Net.  The advantage  of global presence at a very meager expense  also saw virtual business boom on the internet  which introduced the  emergence of e-commerce   or paperless transactions being conducted.  The presence of huge number of web sites on the net  had to be identified and for the purpose “lengthy numeric addresses” were given.   However this system proved confusing and not successful.  This practical difficulty  prompted the creation of “Domain name  system”.

WHAT IS DOMAIN NAME  :  The domain name system allows each  Internet site  to have a unique easy-to-remember alphanumeric “domain name”. Domain names consist of multiples levels. The top level domain  domains are generally  designated to  the types of Organizations being “.com” for commercial, “.org” for organization, “.gov” for Government, “.edu” for  colleges and universities, “.net” for internet infrastructure and “.mil” for  military organizations.  The second level domain name  is the part  usually designated by the domain name holder.

Domain names used in e-mails and WWW Addresses are  assigned on first come first served basis and the domain name is unique. Domain names  can be  filed electronically with  organizations like NSI, INTERNIC etc. Since no substantive procedure for examination of  domain name applications, generic and descriptive names are Registerable  as long as they are not identical with  an existing  domain name.
A practice has slowly emerged amongst the  entrepreneurs, whereby  the domain name used by him  “identifies and distinguishes” the services or goods offered, the source and sponsorship of such services or goods. Thus Domain names are being used  in order to qualify as a trade mark  of the goods and services offered by the Entrepreneur.   Additional promotion  such as advertising  the Domian name or  using the domain name in a conspicuous manner – using the  mark some where in the web page -  apart from the address  was sufficient to show the use of Domain name as Trade mark. Thus domain names emerged  from being  a simple protocol address to   identifiers of business on the net and have given themselves the  identifying capacity  and equate themselves to distinctive signs. Thus  Domain names, lately, are made up of traditional  trade marks owned  by a company. The reason why most of the corporate  entities  adopt  such a practice is, it  makes it easier for a prospective  customer to remember the Company’s World Wide Web  address and log on  to the site more quickly  and avoid  the exercise  of search on the net.

If a domain name that is picked and adopted, is not  a existing  trade mark of the company it may become  a trade mark  only after some use and advertising. Before adopting  such name  for its domain name, it is advised  that the entity give  some thought   as the proposed names  strength or weakness as a Trade Mark.

As a result of the above development Domain names  have increasingly  come into conflict with trade marks, more particularly because of  the lack of  connection between  the system of registering domain names on one hand and the system of registering the  trade marks  on the other. The  emergence of the dual function of a domain name   has challenged the conceptual  base of intellectual property,  especially the  Trade Marks . These  difference have been exploited  by persons  or  entrepreneurs in the form of  cyber squatting or by cyber trafficking – who  have made it a practice  to register variety  of trade marks and trade names as internet domain  names  and for a resale  to the trade  mark owner at a “fair” price. While courts through out the world  have held these practices to be unlawful, and have issued injunctions against “cyber squatting” the  problem is still acute in  countries where litigation  takes a very long time and/or  where the costs of litigation are exorbitant.

In India, not much of importance  is given  to the domain  name in relation to it being identified with the Trade Mark  of the Company, though, however  recently there had been some healthy development in this aspect. The nexus between the domain name and  it being  used as  trade mark has been discovered and appreciated by entrepreneurs. Needless to say  the problem of “cyber squatting” or “cyber piracy” also followed, with cyber traffickers exploiting the situation to make  some  money, by offering  the  domain names of famous trade marks to  the right holder.

In this scenario the recent  decision  of the  Honourable  High Court of Bombay, holding that the  “Internet  Domain Names are entitled to be protected as Trade Mark” is a  shot in the arm  for the  genuine entrepreneur who is  on the net  and who proposes to be on  the net. While rendering the above Judgment the Honourable High Court of Bombay  relied upon a previous Judgment pronounced by the Honourable High Court of Delhi in the case of 
Yahoo Inc

Versus

Akash Arora and another
1991(1) Arb. LR  OR  1999 PTC (19) 201.
For your immediate reference  and appreciation of  the above, I quote  some of the  relevant paragraphs  from the  Judgment of the Honourable High Court of Bombay:
AIR 2000 Bombay 27                Rediff Communications Ltd
                                                                        Versus
                                                            Cyberbooth and another.
The Honourable High Court in the above Judgment has held that Internet Domain Names are entitled  to be protected as trade mark. The Honourable Court while delivering the Judgment in the above case examined  the various authorities placed before it  for its consideration, by the Counsels, and held that:

“Internet Domain Names are of importance and can be valuable  Corporate asset. A domain name  is more  than an Internet Address and is entitled to equal protection  as trade mark. With the advancement  and progress in technology , the services rendered  in the site  have also come to  be recognized and accepted  and are being given protection  so as to protect such provider of service from passing off the service  rendered  by others as his service”
At page 30 para 11.Referring to the  law relating to passing off as contemplated  under the Trade and Merchandise Act, (43 of 1958), the Honourable Court held that:

“The  main bone of  contention between  the parties before me is whether the defendants by adopting  the domain name “RADIFF” which is deceptively similar to the plaintiff mark/domain name  “REDIFF” have been passing off their services and goods as that of  the Plaintiffs. To  that end it would be  appropriate to recapitulate  some well established principles. The law relating to  passing off is fairly well settled. The principle underlying  the action is  that no one  is entitled to carry on  his business in such a way  as to lead  to the belief  that he is carrying on the business  of another man or to lead to believe that he is carrying on  or has  any connection with the Business carried on by another man”.

In the light of the above decision domain names  can now  function as Trade Mark and thus establish  proprietary rights. Vide this Judgment, the  nexus between Trade Mark and internet domain name  has been defined  thus enabling the Domain names to be protected as Trade Marks.

Apart from the above very important  observations these two cases achieved a very important milestone in the legal history of the country in that:
  1. The courts relied upon the common law rights in issuing the country’s first rulings on domain name, since  either in India or in  other parts of the world, there are no statutes that deal with domain names
  2. The principle of passing off was applied by the courts in both the cases, where under no man is entitled to  carry on a business in such a way as to lead  to the belief that he is carrying on the business of another man.  Ad interim injunctions were granted to  the Plaintiff’s restraining the Defendants  from operating any business or selling, offering for sale, advertising and or in any manner dealing with the goods or dealing in the services on the Internet or otherwise under the Trademark/Domain name of the plaintiff.
  3. Ad interim  injuction  was also granted on a sufficient ground that the person who intends to visit the site of plaintiff, may reach the site of the Defendants’ owing to the similarity in the domain names.
  4. That the internet domain names are important and valuable corporate assets and are entitled to be protected as trade marks.
As already stated, this decision by the Honourable  High Courts, are not only a short in the arm for the “genuine  entrepreneur” , but  would  enable these entities to  approach the Court of Law with the hope that domain name grabbers and  domain name traffickers be dealt with severely.

The above two decisions  have laid down that Domain Names  can now function as  Trade Marks and thus enable the owner to establish proprietary rights.  The nexus  between  the domain name and Trade marks  has been clearly defined  in as much as domain names are now considered as  valuable business assets.
 It is advised that every entrepreneur wishing to retain his  true global presence on the net and who  wishes to conduct  a secure  and profitable e-business on the net register  “his” Domain name  as Trade mark with the  Registrar  of Trade marks and  be proactive against trade mark and domain name piracy.
Ashok Ram Kumar.Copyright- © A. Ram Kumar

Ashok Ram Kumar is the Senior partner at IP Markets and can be contacted at ram@ipmarkets.in