DOMAINNAME DISPUTESV.SANTHOSH*ABSTRACTThe intellectual property right is alegal property right given to the creations of the mind, both artistic andcommercial. Owners are granted certain exclusive rights to intangible assets,such as musical, literary, artistic works, ideas, discoveries, inventions,words, phrases, symbols and designs under intellectual property law. Thecreators of original works are provided with economic incentive to grow andshare ideas through a form of temporary monopoly.
The domain names help usersidentify people easily. They are business identifiers and fall under thecategory of intellectual property rights. It consists of two parts namely TopLevel Domain (TLD) and Second Level Domain (SLD).
The disputes regarding domainnames is largely comprised of cyber squatting, which means registration ofsomeone’s trademark or business name by third parties as their domain names. The domain names areentitled to a strong, continuous and instantaneous protection under all the legalsystems of the world, including our country. The domain name system is atpresent administered by Internet Corporation for Assigned Names and Numbers(ICANN). There is no legislation or provision relating domain names disputes orcyber squatting. The Trademarks Act, 1999 plays a very important role in decisionof the courts in India.KEYWORDS: Domainnames, trademark, cyber squatting, original, internet, websites.INTRODUCTIONIn this modern era, internet isbeing significantly used for business, banking, research, education andentertainment. A domain name is used to provide an address for computers on theinternet and also as a business identifier.
The use of internet and rampantgrowth of websites has given rise to many domain name disputes. Companies whichhave invested significant amount of money in their trademark and domain nameare facing many issues like domain hijacking, cyber squatting, domain kitting,DNS hijacking and domain tasting. There is a need to legally protect the domainnames from cyber crimes and other internet related offences. A person who is registering adomain name is called the registrant or the owner of that domain name.
Theagency which registers the said domain name is called registrar. All the domainnames are registered with domain name registrars. There are number of Agenciescalled Domain Name Registrars which are authorized by the governing bodies toregister a domain name and keep a track of all information like renewal,transfer and address details of the registrant in respect of Domain name.
Allsuch data about relating to registration of a domain name is available in theWHOIS record of the domain. The Internet Corporation forAssigned Names and Numbers (ICANN) on 26th August, 1999 adopted theUniform Domain Name Dispute Resolution Policy (UDRP) based on recommendationsmade by World Intellectual Property Organization (WIPO). Under UDRP, a trademarkholder can give a complaint against a domain name registrant, if he considersthat a registration of a particular domain name infringes his/her trademark. Thearbitration Panel appointed by WIPO Arbitration and Mediation Center appoints.The panelist decides on the complaint.
The decision of UDRP is implemented inten days. The aggrieved party can go to court within said period of ten days.The Panelist appointed by WIPO Arbitration and Mediation Center, under UDRP hasno right to pass injunctive reliefs or cost damages.
“.in”is the India’s country code Top Level Domain (ccTLD). The disputes regarding itare resolved in accordance with .IN Dispute Resolution Policy (INDRP)formulated by .IN registry and INDRP rules of procedure. The Ministry ofInformation Technology, Government of India, liberalized the policies forregistration of country code Top Level Domains from 1st January,2005 and enabled general public at large to register a domain name in respectof their trade or service mark with .IN and .
CO.IN extensions. This is appliesto brands that has registered trade/service mark in India. The entities which arenot present in India can also register these domains.1DOMAIN NAME SYSTEM (DNS)Domain names are forms of an InternetProtocol addresses that are commonly used to find web sites. It is the onlineidentity of a particular person, establishment or organization. It is theonline address of an establishment and leads to the page which the registrantof the domain name wants to be viewed by general public when they visit their domain.
Generally traders and companies use their business or trade name as theironline identity or domain name. It is a permanent address that can be accessedfrom anywhere in the world irrespective of the location of the registrant. Thedomain name system or DNS is a system by which the domain names are allocatedan Internet Protocol (IP) addresses which is unique and has actual physicallocation on internet. The domain name is the alias name of a numeric IPaddress. Domain names have two parts, Top Level Domain (TLD) and Second LevelDomain (SLD).
For example, in domainname.com, “.com” is the Top LevelDomain and “domainname” is the Second Level Domain. The gTLD (genericTop Level Domains) includes .
Com, .Net, .Org, .
aero (for the entire aviationcommunity), .biz (for business purposes), .coop (for cooperatives), .info(unrestricted), .jobs (for human resources), .museum (for museums), .name (forpersonal names), .pro (for professionals), .
travel (for the global travelcommunity). The rTLD (restricted Top Level Domains) includes .Biz and .US. TheccTLD (country code Top Level Domain) is .in (for India). 2UNIFORM DOMAIN NAMEDISPUTE RESOLUTION POLICYThe Internet Corporation forAssigned Names and Numbers (ICANN) on 26th August, 1999 adopted theUniform Domain Name Dispute Resolution Policy (UDRP) based on recommendationsmade by World Intellectual Property Organization (WIPO). Rule 2 of the UDRP requiresthe applicant to make sure that the domain name for which registration is soughtfor, does not infringes or violates someone else’s rights.
If the domain nameproposed to be registered infringes another person’s “trademark rights”, itwill violate Rule 2 of the UDRP. In such a case, the Registrar is can refuse toregister that domain name. This shows that a domain name, though properlyregistered as per the requirements of ICANN, still it is subject to the TrademarksAct, 1999 if a person proves that he has “rights” flowing out of the TrademarksAct, 1999. According to the UDRP, the registration of a domain name shall beconsidered to be abusive when all the following conditions are met:1) Thedomain name is identical or misleadingly similar to a trade or service mark inwhich the complainant has rights.2) Theholder of the domain name has no rights or legitimate interests in respect ofthe domain name3) Thedomain name has been registered in bad faith.The term ‘bad faith’ does not simplymean bad judgment but it implies the intentional doing of a wrong with adishonest purpose. Bad faith can be proved if there is an offer to sell, rentor transfer the domain name to the original owner of the trademark or servicemark, or to a competitor of the complainant for money or any other valuableconsideration.
And also in the cases where the respondent registers the domainname in order to prevent the owner of the trademark or service mark fromreflecting the mark in a corresponding domain name. And in cases where a partyhas intentionally attempted to attract, for commercial gain, internet users toits website or other online location by confusing people with the trade orservice mark of the complainant.3RELATIONSHIP BETWEENTRADEMARK AND DOMAIN NAMESSelecting an appropriate domainname is a complicated task. Numerous factors need to be taken intoconsideration in the selection of domain names. One of the major factors is toinclude the trademark within the domain name.4This would foster the establishment of identity of the said enterprise over theInternet.
The general public, who are unaware of specific domain name of anenterprise, can easily find the enterprise by typing its well known trademark. Thetrademark performs the function of recognition of enterprises in the realworld, also can perform similar function in the virtual world in the form ofdomain names. Trademark is registered forprotecting the mark from being used by others in the course of trade whereas domainname registration is for commercial or non-commercial use over the internet. Therecannot be more than one registrant of same domain name, since they are globalin operation.
5DOMAIN NAMES RELATEDISSUESCYBER SQUATTINGCyber squatting means the act of registeringa domain name, which genuinely belongs to someone else. It is the registrationof a well-known trademark as domain name by a third person intentionally tosell it back to the original owner of trademark, or to prevent him from usinghis trademark as domain name, or to obtain some other unlawful benefits or tocause harm to the trademark owner.6DOMAIN HIJACKINGDomain Hijacking is a type of theftwhere the attacker takes access of a domain name without the permission of theoriginal registrant. It can take place due to security flaws on your end or theend of your domain/hosting company.7 DNS HIJACKINGIt is a process by which aperson redirects queries to a domain name server (DNS). It can bedone using malicious software or unauthorized modification of a server.Once the person has control of the DNS, they can direct other persons whoaccess it to a web page that looks similar, but contains additionalcontent such as advertisement.
They also direct users to pages that contain malware ora third-party search engine.8DOMAIN NAME KITTINGIt is the process of registering adomain name to check its financial outcomes and then, if it doesn’t make adequateadvertising revenue, canceling it within the 5 days grace period for a fullrefund.9Manypersons register a domain name for and cancel it within 5 days and re registerit for another five days.
This process is repeated so that their domain name isregistered but they need not pay for it.CASE LAWSInfo Edge (India) Pvt.Ltd. vs Shailesh Gupta And Anr. 98 (2002) DLT 499The plaintiff in this caseregistered the name ‘NAUKRI.
COM’ in 1997 and was carrying on the business. In1999, defendant registered two domain names ‘JOBSOURCEINDIA.COM’ &’NAUKARI.COM’ and carried on a business similar to that of the Plaintiff. SoPlaintiff filed a suit for passing off against the defendant and claimed anad-interim relief. Plaintiff said that Defendant did this in bad faith. Courtheld that, a name used to identify an internet service is called a domain name.
The domain name serves the same function as the trademark and is not a mereaddress. Though the word ‘Naukri’ is generic as it denotes and describes thenature of work and business offered by the plaintiff, plaintiff has gotgoodwill and reputation over that name. The defendant has adopted asimilar word as one of his two marks to induce and confuse innocent internetusers to come to the website of the Defendant, which shows his dishonest intention and bad faith. Injunctionwas granted in favor of the plaintiff and the defendant was restrained fromusing the domain name ‘NAUKARI.
COM’.10Rediff Communication Ltdv. Cyberbooth & Anr. AIR 2000 Bombay 27Plaintiff registered the domainname ‘REDIFF.COM’ on 8th Feb 1997. Defendants have obtained registered thedomain name ‘RADIFF.
COM’ in 1999. Plaintiff filed a suit for permanentinjunction restraining the defendants from using the mark/domain name ‘RADIFF’or any other similar name. Court held that when both domain names areconsidered it is clearly seen that two names being almost similar in naturethere is every possibility of internet user being confused and deceived inbelieving that both domain names belong to one common source and connectionalthough two belong to different persons. A domain name is more than anInternet address and is entitled to the equal protection as trade mark. Courtgranted permanent injunction restraining the defendants from using themark/domain name ‘RADIFF’ or any other similar name.11Yahoo! Inc. v.
AkashArora & Anr. 1999 PTC (19) 201 (Delhi)Plaintiff owned the trademark’Yahoo!’ and domain name ‘Yahoo.Com’. The defendants adopted the name ‘Yahooindia’for similar services. Plaintiff filed a suit against the defendants seeking apermanent injunction for passing off and asked for an ad interim temporaryinjunction restraining the Defendants from operating any business on internetor otherwise under the domain name ‘Yahooindia.
Com’ or any name which isidentical or similar to the Plaintiff’s trademark. By adopting a deceivingly similartrademark ‘Yahooindia’ defendants are passing off their services as that of theplaintiff. Trademark/domain name ‘Yahoo!’ of the Plaintiff is not registered inIndia.
The defendants have been using disclaimer to avoid any chances ofdeception. Court held that the principle underlying the action for passing offis that no man is entitled to carry on his business in such a way as to lead tothe belief that he is carrying on the business of another man or to lead tobelieve that he is carrying on or has any connection with the business carriedon by another man. Injunction was granted in favor of the Plaintiff.
12CONCLUSIONThe growth of Internet has alteredthe lifestyle of humans. Using this highly developed technology for manypurposes has made it a salient feature in different aspects of human life. Thedomain names are the most important elements in the cyberspace. With theradical change and development in the concept of property, there is an unendingdebate over the issue of virtual property status of domain names. Stretchingthe concept of property to such an extent so as to include domain names seemsto be impracticable and not viable. The similarities between the domain namesand the trademarks have brought them together in the virtual world. Theconflicts between domain name and trademark have compelled the law makers to modifytraditional trademark laws and create new cyber laws.
India doesn’t have aspecific legislation for domain names. Cases are being decided using precedentsand the Trade Mark Act, 1999. Steps are being taken both in the national andinternational levels to find legal solution to the conflict between trade markand domain names. *15BLB1035, 3rd year, BBA.LLB(Hons), VIT Chennai Campus1Chadha & Chadha IP, India:Domain Name Laws, Mondaq,(Jan.
26, 2018, 4:30 PM) http://www.mondaq.com/article.asp?articleid=519662.2 Id3 Priyanka Sharma, Domain NameProtection In India, Cyber laws inIndia, (Jan.
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7 Anand Khanse, What is domainhijacking and how to recover a stolen domain name, The Windows Club, (Jan. 28, 2018, 10:30 AM) http://www.thewindowsclub.com/domain-hijacking.8 Computer Hope, DNS Hijacking,Computer Hope, (Jan 28, 2018,10:38 AM) https://www.
computerhope.com/jargon/d/dnshijac.htm9 GoDaddy, What is domain namekiting?, GoDaddy, (Jan. 28,2018, 10:59 AM) https://in.
godaddy.com/help/what-is-domain-name-kiting-367610 Info Edge (India) Pvt. Ltd. vsShailesh Gupta, (2002) 98 DLT 499(India)11 Rediff Communication Ltd v.Cyberbooth & Anr, A.I.R. 2000 Bombay 27(India)12 Yahoo! Inc.
v. Akash Arora . (1999) 78 D.L.
T. 285 (India)