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In the world of computers, a connection between two computers is referred to as a "net," facilitated by a net-server. When net servers are connected within a domain, the resulting interconnection is termed the "Internet."
When such an Internet spans globally, it becomes the "World Wide Web" (www). Individuals with a computer may secure a space on the web via web servers, allowing them to assume a unique name, known as an "Internet Domain Name."
Communication between computers relies on domain names, making it essential that each domain name is unique and identifiable without risk of confusion.
Domain name disputes often stem from claims of infringement when a registered name is replicated or closely mimicked. Recently, legal conflicts have escalated, with claimants arguing that domain names constitute trade marks.
Countries are divided in opinion, with some considering domain names equivalent to trade marks, while others disagree.
Conflict in Domain name
Conflict between trade mark law and the domain name system arises when a protected trade mark is used as a domain name on the Internet.
Domain names, as business identifiers, frequently clash with pre-existing identifiers under intellectual property rights, including trade marks.
Global Problem
Many companies utilize their names as trade marks (e.g., Tata) and seek to establish an online presence. However, domain names are allocated on a "first-come, first-served" basis, meaning a company may be unable to use its trade mark online if the domain is already taken.
The bone of contention between trade mark law and domain name system arises when a ‘trade mark’ which is protected under substantive law is used on the internet via ‘domain name.’
The increasing significance of domain names as business identifiers, as such, has come into conflict with the system of business identifiers that existed before the arrival of the Internet and that are protected by intellectual property rights viz. trade marks or trade names of business identification.
Many companies use their names as their trade mark (e.g. Tata); and now it makes sense for them to actively pursue a presence on Internet. But because of the existing naming conventions, the names are limited.
If a company's trade mark has already been registered by someone else (because registration on Internet is based on ‘first-come first-served basis’), the company will be precluded from using its mark in Internet Network Address.
Trade mark law allows concurrent use of identical marks across different goods or services, provided geographical separation minimizes consumer confusion.
This flexibility is absent from Internet registration, where domain names cannot be distinguished by capitalization, format, or font style, unlike traditional trade marks.
The appeal of using a trade mark or company name on the Internet is heightened by the web's "search and locate" feature.
Domain Pirating
Domain name disputes are intricate, as individuals register names for varied reasons: business setup, public information, personal identity, or even profit-motivated "pirating." Given the finite number of domain names, policy decisions about their allocation are challenging.
No laws currently provide exclusive rights to domain names. Courts have applied trade mark law principles to Internet domain names, a domain the law does not explicitly address.
Trademark Act and Domain Name
India's Trade Marks Act, 1999, aimed at trade mark protection, lacks extraterritorial authority, thus falling short in safeguarding domain names.
However, the Supreme Court of India views domain names as eligible for protection under "passing off" laws.
In India, it is now settled that domain names warrant protection akin to trade marks.
The term "passing off" implies preventing a defendant from misleading the public by using a trade mark, trade name, or now, a domain name, to represent its goods or services as those of the plaintiff.
Case Laws
In Titan Industries Ltd. v Prashant Kooapati (2000), the defendant registered the domain name "tanishq.com."
The plaintiff, who owned the trade mark "Tanishq" for watches, alleged passing off, contending that the defendant's domain name would cause confusion and harm the plaintiff's goodwill.
The Delhi High Court issued an injunction barring the defendant from using "TANISHQ" on the Internet.
In REDIFF COMMUNICATION LTD. v CYBERBOOTH (AIR 2000 BOM 27), the plaintiffs sought an injunction to prevent the defendants from using the "REDIFF" domain name.
The controversy in the present case centres around the domain name on the Internet. The plaintiffs using the mark/domain name “REDIFF” sought an injunction to restrain the defendants from using the domain name “REDIFF”. It was contended that the manner of watching for information on the Internet is such that there is every likelihood of deception or confusion between ‘www.rediff.com’ and ‘www.radiff.com.’
The High Court noted that domain names serve as unique identifiers and function similarly to trade marks, granting them equivalent protection.
The Court emphasized that a domain name transcends a mere Internet address, likening it to a company’s name in trade mark disputes.
Likewise, in Marks & Spencer PLC v One in a Million (1998 FSR 265), it was held that deliberate domain name registration resembling a company’s trade mark invites injunctions against passing off.
In Yahoo Inc. v Abash Arora [1999 PTC (19) 201], the Delhi High Court upheld that the Indian Trade Marks Act applies to domain names.
The court dismissed arguments that sophisticated Internet users would not confuse similar domain names.
The Judge highlighted that even experienced Internet users might be unsophisticated in discerning information sources, risking confusion between similar sites.
Sify v Siffy
In Satyam Infoway Ltd. v Sifynet Solutions (P) Ltd. [(2004) 6 SCC 145], the Supreme Court held that domain names are not solely website addresses; they distinguish web sites.
In.‘the present case, apart from the close visual similarity between “Sify” and “Siffy”, there is phonetic similarity between the two names. The addition of “net” to “Siffy” does not detract from this similarity.
Further, the respondent’s choice of the word “Siffy” is not original but inspired by the appellant’s business name and that the respondent’s explanation for its choice of the word “Siffy” as a corporate and domain name is an invented post-rationalisation.
With the Internet's evolution, domain names serve as business identifiers, enhancing their commercial relevance. Unlike trade marks, domain names necessitate global exclusivity due to their universal reach, a factor national laws may inadequately address.
Domain names could embody trade mark characteristics, supporting passing off actions. Similar or identical domain names might redirect users, potentially diverting them to an unintended site, especially in areas of business overlap.
As online commerce grows, domain names gain value, leading to increased disputes. Unlike trade marks, which may coexist across various sectors, domain names demand distinctiveness due to their global exclusivity.
The Supreme Court underscored the importance of unique domain names for exclusive identity in business.
In Pen Books Pvt. Lid. v Padmaraj, Emily Estate, Kalpetta [2004 (4) RAJ 336 (Ker.)], it was held that the domain name is said to be used in bad faith when:
there is an attempt to attract for financial gain internet users to the domain name holders website or other online location, by creating confusion with the trade or services mark of the complainant.
the domain name has been registered in order to prevent the owner of the trade or service mark from reflecting the mark in a corresponding domain name, provided that a pattern of such conduct has been established on the part of the domain name holder; or
when the domain name is registered to disrupt the business of the competitor.
The courts recognize domain names as valuable corporate assets, entitled to trade mark-like protection. With the Internet’s global reach, vigilance and strict measures are crucial to protect service providers from passing off. The Supreme Court affirmed that a domain name represents more than an address, warranting a high level of protection in the era of boundless digital connectivity.
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