With the globalization and commercialization of the Internet, Domain names have taken on a new connotation as business identifiers. When the internet was in its infancy, domain names were created to serve as useful mnemonic means of locating specific computer system on the Internet. Domain names are now highly visible in real space as well showing up on television com mercials, billboard, magazine ads, and even on the sides of buses etc. The basic structure of internet is Internet Protocol which is used for computer server communication in the numeric form and known as IP address in common parlance. Since these numeric IP addresses are not mesmeric, due to which it becomes tedious and difficult to remember such IP addresses. Introduction of domain names have played a great role in recollection and now considered as corporate asset. Thus, a domain name is an easy alternative for all numeric IP addresses and is known as the ‘Domain Name System’.
Domain is a part of the Cyberspace which is a virtual world, which exists only in Computer memory. Cyberspace is a living organism; constantly changing as more people join the pioneers of this brave new world every moment. India has drastically moved in this direction and the laws in India towards these social changes have already been adopted.1 The advent of trademark can be traced back to the beginning of the trade itself. Due to human endeavors the manufacturers have started differentiating their goods from others; the manufacturers started symbolizing their goods with marks and logos. Now in today’s time where people have less time to scrutinize a product/ goods the trademark helps them to go for the best buy at cheaper rate by comparatively spending lesser time.2 Thus in this era of information technology it becomes pertinent to address this issue of online infringement of trademark with utmost care and approach towards the correct solution and application of law for such protection.
Trademark and domain names
A domain name is part of the address and location of a site on the internet. While trademark have been around for a long time, domain names are comparatively a recent phenomenon attracting public attention. Disputes over ownership of the domain names have arisen for a number of reasons. The domain name has been considered as akin to a trademark. Therefore those who own the mark for the no-internet business wish to use the same on the internet; it is seen as a valuable addition to the branding of goods or services as a whole. Trademark law is territorial whereas internet is global. Therefore, different business trading under the same mark in various parts of the world may have what they consider to be the same legitimate claim to a particular domain name, as no domain name can be identical therefore only business house can have a particular name.3
Domain Name Assignment Procedure
For the registration of domain name, a request is made to the organization having power to allocate the domain names. Before 1999 a company known as Network Solutions Inc. (NSI) was the only organization for the registration of the domain name under .com, .net, .org etc. To avoid arbitration between two parties who choose the same domain name, NSI decided to simplify the procedure by applying a first come, first serve arrangement with respect to allotment of such overlapping domain names. In this simple procedure introduced by NSI, there are no reasoning questions on applicant’s right to adopt that particular domain name; rather they would simply allot the requested domain name if available with the organization.
Under this liberal policy, NSI created a procedure under which a third party can challenge the right of a domain name owner to use a particular domain name. If the challenge were successful, the domain names would be suspended. This policy only protected parties that had a nationally registered trademark identical to another party’s domain name. An owner of unregistered trademark could not initiate an action under this policy, nor could an owner of a trademark that was confusingly similar (but not identical). Now the registrar of domain names are accredited by the Internet Corporation for Assigned Names and Numbers (ICANN), a non-profit corporation formed specifically to control Internet Domain name management and similar functions. NSI continues to assign domain names, but now they are just one many domain name registrar.
Initially the domain name disputes in United States were decided through Courts by applying three primary trademark laws.
- Firstly, claim in traditional trademark infringement, which requires that the alleged infringing use cause a likelihood of consumer confusion.
- Secondly the cause of action, which is to assertion that a domain name ‘dilutes’ the value of the mark.
- Finally the claim proved is unfair competition, where the trademark is not federally registered.
Due to the above lengthy process an alternative to court system was introduced commonly known as ICANN. It is an organization responsible to administer and manage the domain names. It also implemented the universal procedure known as Universal Dispute Resolution Procedure (UDRP) which will govern specific disputes related to the domain names. UDRP has been proved to be one of the most successful procedures which work as a model for arbitration proceeding with slight modifications. The most common disputes with are decided by the UDRP are cyber squatting and cyber piracy used by registrant of the domain name through illegal means.4
ICANN Uniform Domain Name Dispute Resolution Policy
In 1999, a new Uniform Domain Name Dispute Resolution Policy (UDNDRP) was promulgated by ICANN. It works under the close supervision by the U.S Department of Commerce. There is a great difference between the old NSI policy and the UDNDRP. The ICANN policy forbids registration of the domain name if:
- The domain name is identical or confusingly similar to another’s mark.
- The entity registering the domain name has no legitimate right to it.
- The domain name was registered and used in bad faith.
The disputes under ICANN rules are referred to one or three member administrative panel that decides the dispute promptly and publishes the decision. The administrative decision is final and binding on the registrar and registries subject to ICANN control, but it can be superseded by Court actions. The proceeding is fast and inexpensive, which can be conducted through e-mail with no personal appearances, and to require minimal production of documents. The policy permits the arbitrators to rule that the complaint was brought in bad faith to ‘reverse hijack’ the domain name or to harass the domain name holder. Relief for such conduct is confined to a declaration of abuse of the administrative proceeding.
In India, the domain name disputes are administered and managed by the Indian Domain Name Dispute Resolution Policy (commonly as .INDRP Registry). The INDRP has its own set of rules and policies under which the complaint is filed against the domain name infringement. The INDRP have their list of panel members to decide the complaints. The procedure is simple and rapid and inexpensive under the INDRP rules and policy which more or less works on the principles laid down the WIPO.
The network of computers called the internet, which had a modest beginning, has grown by leaps and bounds. The growth of the internet has been explosive; the number of internet has increased tremendously since its introduction. Due to which the crime rate is booming with double alacrity and thus to protect the interest of the millions of potential victims the protective laws have been made in the country and interestingly the redressal of complaint is quick and cheaper. The decision by the panel is always unbiased and the confidentiality level is high under such dispute resolution registry. It is the best way to solve the dispute within a less period of time without any hassle of litigation. This domain name dispute resolution has been proved to be the most excellent way of Alternative Dispute Resolution involving mediation and arbitration for domain name disputes. The issue concerning protection of domain names came up before the Supreme Court of India in the case of Satyam Infoway Ltd. vs. Sifynet Solutions P. Ltd5, was of the view that internet domain names are subject to the same legal norms applicable to other Intellectual Properties such as trademarks. It was further held by the Supreme Court of India that:
“The use of the same or similar domain name may lead to a diversion of users which could result from such user mistakenly accessing one domain name instead of another. This may occur in e-commerce with its rapid progress and instant (and theoretically limitless) 5 (2004(28) PTC 566) accessibility to users and potential customers and particularly so in areas of specific overlap. Ordinary consumers/users seeking to locate the functions available less than one domain name may be confused if they accidentally arrived at a different but similar website which offers no such services. Such users could well conclude that the first domain name owner had misrepresented its goods and services through its promotional activities and the first domain owner would thereby lose their custom. It is apparent therefore that a domain name may have all the characteristics of a trade mark and could found an action for passing off.”