Protection of Domain Names as Trademarks in India
Abstract
In the era of digital globalization, protecting domain names as trademarks in India has become a complex legal and regulatory challenge. This paper focuses on the roles played by the Internet Corporation for Assigned Names and Numbers (ICANN), the ongoing issue of cybersquatting, and the evolving judicial approach within the Indian legal system. The protection of domain names as trademarks in India is significantly influenced by ICANN, the international organization regulating the domain name system.
Introduction
Intellectual property rights have expanded, especially in the area of domain names. A domain name is an asset that can be directly linked to a brand’s identity and reputation, serving as a virtual address for businesses on the internet. India, a rapidly growing hub for internet trade and innovation, has recognized the importance of protecting domain names as trademarks.
What is a Domain Name?
A domain name is a unique identifying string that indicates a sphere of administrative autonomy, authority, or control on the internet. Just as every person has a name and a phone number, every computer connected to the internet has an Internet Protocol (IP) address. The Domain Name System (DNS) rules facilitate the creation of domain names. A domain name often denotes an internet protocol resource, such as a computer accessing the internet, a website host, the website itself, or any other service communicating over the internet. For example, “gov” indicates government organizations, “edu” represents educational institutions, “org” stands for organizations (non-profits), and “com” is used for commercial entities.
Simply put, a domain name is the name of a web address that is designed to be easy to remember and identify, like “yahoo.com.” These accessible URLs facilitate communication between computers and users online. Domain names have evolved into business identifiers and, increasingly, trademarks due to their ease of recognition and use. Businesses use domain names such as “sony.com” to attract potential customers to their websites.
What is a Trademark?
According to the Trademark Act, 1999, a trademark is “a mark capable of being represented graphically and distinguishing the goods or services of one person from another.” A trademark can be any combination of words, phrases, symbols, or designs that identify and distinguish the source of a good or service.
Cybersquatting Laws in India
India lacks specific domain name protection regulations for cybersquatting under the Trademark Act, 1999. The Uniform Domain Name Dispute Resolution Policy (UDRP), developed by ICANN, is primarily used to resolve disputes concerning bad-faith registrations. The World Intellectual Property Organization (WIPO) administers domain name dispute resolution services under the UDRP and is the leading organization accredited by ICANN. India is one of the 171 countries that make up WIPO.
A person may file a complaint with one of ICANN’s approved dispute resolution service providers under Rule 4(a) that:
- The domain name is “identical or confusingly similar to a trademark or service mark” owned by the claimant.
- The domain name owner or registrant has no legal or legitimate claims to the name.
- The domain name was registered and used in bad faith.
India has also established its own registry under the National Internet Exchange of India (NIXI), where the .IN Dispute Resolution Policy (INDRP) governs domain name dispute resolution. The policy draws upon relevant provisions of the Indian Information Technology Act, 2000, and generally accepted principles. The INDRP outlines the procedures for filing a complaint, associated costs, and the process for resolution.
Domain Name Protection in India
There is no specific legal protection for domain names in India. However, under the Trademarks Act, 1999, and the Trademarks Rules, 2002, any individual or company can secure protection for a registered domain name. Globally, ICANN registers domain names as trademarks, supported by international trademark treaties and relevant national laws.
In India, once a domain name is registered as a trademark under the Trademarks Act, 1999, the owner gains the same rights and protections available to registered trademark owners. The Act grants the right to sue for passing off or infringement.
Unregistered trademark owners are also entitled to protection if they were the first users of the mark and it has become distinctive. If another party misrepresents their goods under an unregistered mark, the owner may file a passing-off lawsuit.
Laws in India
Unlike many developed nations, India lacks specific domain name protection laws. Cybersquatting cases are addressed under the Trademark Act, 1999. The Supreme Court has acknowledged the gap between trademarks and domain names, as illustrated in Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., but the court applies the Trademark Act’s provisions in the absence of dedicated legislation.
Role of the Judiciary
Although domain names are not explicitly recognized by Indian law, courts have used the Trademarks Act, 1999, to provide remedies for disputes. Two types of remedies are available:
- Infringement, applicable only if the trademark is registered.
- Passing off, which does not require trademark registration.
In the landmark case Yahoo! Inc. v. Akash Arora & Anr., an attempt to use “yahooindia.com” for internet services was contested by “yahoo.com.” The court held that the similarity of domain names could lead to confusion, misleading users to believe that the two sources are connected.
Conclusion
The protection of domain names as trademarks in India has become a crucial issue in the rapidly evolving field of intellectual property. Legal recognition of domain names as trademarks marks significant progress in safeguarding IP linked to domain names. Judicial rulings and legislative developments have substantially strengthened this protection.
Authored by Kalpana Kumari