The growing use of the internet as a means to represent commercial products and services has made domain names a very important business asset. Domain names operate as an extension of business goodwill, helping users to identify and distinguish a company on the internet. Because of its universal connectivity, a domain name has to be exclusive worldwide; however, national laws may be inadequate to effectively protect a domain name that is applicable in all jurisdictions. Hence, international regulation of the domain name system has been established, and continues to be undertaken, by the World Intellectual Property Organization (WIPO) and the Internet Corporation for Assigned Names and Numbers (ICANN).
The domain name system is set to undergo considerable change, as ICANN has announced plans to expand the existing number of generic top-level domains (gTLDs). Besides the common domains like .com and .net, and country domains like .us and .in, ICANN plans to introduce more gTLDs, including .brand and .sports. These will afford companies greater opportunities to improve their brand recognition on the internet. This change is in addition to new domain names in local language characters – including Chinese, Arabic and Hindi – which were recently launched and are now operational.
WIPO will continue to collaborate with ICANN in resolving tensions between the domain name system and the IP system, in order to safeguard existing IP rights following the introduction of the new gTLDs. Such a robust system of cooperation is important, as the launching of additional domains will have significant trademark-related ramifications.
Domain names are closely connected to trademarks because they contain or indicate the trademark or trade name of the enterprise in some form. In Rediff Communications v. Cyberbooth and Anr in 2000, Bombay High Court explained that domain names are covered unfder trademark law. If the impugned domain name is similar or identical to an existing trademark, a clear case of infringement is evident. However, if the similarity is not apparent, a comparison is made to determine whether the essential features of the plaintiff’s trademark or domain name are being used by the defendant.
There has been an increasing number of domain name disputes in India. Delhi High Court recently restrained the operation of a website, “revonbeauty.com”, that was infringing the trademark rights of the cosmetics manufacturer Revlon. The defendants in this case were operating the website, which they used to feature a beauty magazine called Revon. The court directed the defendants not to use the mark Revon, or any other mark similar to Revlon, in any manner.
In a similar case, Telenor ASA v Dr Prashant Shukla, a dispute had arisen regarding the domain name “telenor.in”, which was similar to the plaintiff’s trademark Telenor, which is a well known brand in many countries. The plaintiff had also registered many other domain names containing the name “telenor”. The court held that the defendants’ adoption of a domain name that was identical to a registered trademark was done in bad faith, and the domain name was transferred to the plaintiffs by order of the National Internet Exchange of India, which operates the registry of .in domain names.
Google’s domain name was successfully protected in India when the site “googblog.com”, which was being operated by an individual who used it to post technology news, music, software information, greetings and lyrics, was taken out of operation. WIPO handed over the domain name – which was part of Google’s listing on NASDAQ – to Google. WIPO held that the operation of such a site was an attempt to exploit the popularity of a company’s existing domain name in order to divert traffic to the site.
A different kind of domain name issue arose in Plus Inc v Consim Info Private Limited and Network Solution Inc, in which Bombay High Court held that the words “India” and “Property” were descriptive and generic, and so did not qualify as trademarks or brandable names. These two words, in their various forms, would be a natural choice for companies dealing with property in India to use when registering domain names. Moreover, the users of such sites would be likely to conduct business through them using an assigned user ID and password, which would reduce the chance of users confusing one company for another. The court said: “Once [a] site is open, the respective logo, the basic graphics, branded words or trade marks, shape or design, shape of the page and colour combination and words itself separate the website/site from the respective business and purpose. There is no question of any confusion or wrong impression.”
Domain names are indeed highly valuable business assets. Besides giving a company extraordinary power to reach its customers worldwide, a domain name enables instant identification of the company by the customer, and offers an inviting and convenient means for the two to communicate and conduct business. Domain names are inherently connected to the trademark identity of an enterprise. Hence it is vital to restrain conduct that is irresponsible and in bad faith, to enhance the security and stability of the domain name system.
Abhai Pandey is a lawyer with Lex Orbis IP Practice, a law firm specializing in intellectual property issues.
709/710 Tolstoy House, 15-17 Tolstoy Marg
New Delhi – 110 001
Tel: +91 11 2371 6565
Fax: +91 11 2371 6556