Domain Names as Trademark

Domains have and will continue to go up in value faster than any other commodity ever known to man’- said by Bill Gates  Since the online businesses and commercial activities are increasing every day, the usefulness and purpose of domain names cannot be ignored.

Author: Praharshi Jain

March 26, 2020

Domain Names as Trademark

Domains have and will continue to go up in value faster than any other commodity ever known to man’- said by Bill Gates 
Since the online businesses and commercial activities are increasing every day, the usefulness and purpose of domain names cannot be ignored.
Domain names are not just names of websites of different entities, but it also serves as business identifiers. 

What is Domain Name? 

Domain Names are easy to remember addresses that internet surfers use to locate any website. In simple words, a Domain name is an online identity of any business. In a technical sense, the internet is based on IP addresses, and every web server requires a Domain Name System(DNS) server to translate domain names into IP addresses. Each website has a domain name that serves as an address to access the website.
Domain names are formed as per the rules and procedures of the Domain Name System (DNS). Any name registered in it is a domain name.

Examples of Domain Names are- 

.com for commercial 
.edu for education 
.int for international organizations
.org for non profit organisations etc.

What is Trademark?

A trademark is a mark capable of being represented graphically and which is capable of distinguishing the goods and services of one person from those of others and may include the shape of products, color combination, and packaging of goods.
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A mark includes a device, heading, label, brand, ticket, name, signature, phrase, design, word, numeral, shape of goods, packaging, and color combination.
The owner of a registered trademark has exclusive rights to use it, and competitors are prohibited from using a similar trademark to sell the same kinds of goods and services.
Trademark laws help consumers to associate with the product they enjoy with a particular mark. Trademark acts as a guarantee for consumers that they will continue to receive quality in the products they purchase. 
A trademark and domain name serves the same function i.e., business identifiers. The process of acquiring a domain name is easier than a trademark because it doesn’t involve any examination as to whether a domain name is distinctive or not. 
Some people also register their business trademark as domain names. In the absence of special law governing domain names, Trademark law is applied.

Domain Names as Trademarks 

Domain Names can be registered as a Trademark by fulfilling all the conditions that are required to be registered as a trademark. 
Conditions are – 
The domain name must be unique.
It should be capable of identifying itself.
The domain name must distinguish its goods and services from other’s goods and services.
The domain name is required to act as a reliable source identifier of concerned goods and services on the internet.
Any Domain name which will fulfill the conditions as mentioned above may be registered as a trademark.

Global Protection of Domain Names

The Domain names as Trademarks are registered and protected at the global level supremely by 
Internet Corporation for assigned Names and Numbers (ICANN).Any National and International trademark law is not fully capable of protecting a domain name in the whole world. To meet this objective the ICANN with the support of the World Intellectual Property Organization (WIPO) prescribed the following two strong and strict measures- 

Registration of domain names with accredited registrars by ICANN 
Effective and efficient dispute resolution policy named the Uniform Domain Name Dispute Resolution Policy (UDNDR Policy). 
For a dispute resolution under the UDNDR policy,1999 a person or entity may formally complain before the competent administrative-dispute- resolution services providers [ listed by ICANN under rule 4(a)] that: 
Any specified domain name is very strikingly or confusingly similar to a previously registered domain name or trademark of the complainant.

Any accused domain name has been registered and is blatantly being used in bad faith.  
There exists any specific case of trademark infringement against the complainant. 
Rule 4(b) has listed by way of illustration the following four circumstances as evidence of registration and use of a domain name in bad faith. 

Circumstances indicating that the domain name owner has registered or the domain name owner has acquired the domain name primarily for selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration over the documented out -of- pocket costs directly related to the domain name, or
The domain name owner has registered the domain name to prevent the owner of the trademark or service mark for reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct, or 
The domain name owner has registered the domain name primarily to disrupt the business of a competitor. 
By using the domain name, the domain name owner has intentionally attempted to attract, for commercial gain internet users, to its website or other online location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation or endorsement of the domain name owner website or the site or a product or service on its website or location.
The defense available to a complainant who has been particularized “but without limitation,” in rule 4(c) as follows- 
Before any notice to the domain name owner the use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with bona fide offering of services or goods, or
The domain name owner (as an individual, business or organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights, or
The domain name owner is making a legitimate noncommercial or fair use of the domain name, without intent to commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue. 

Protection of Domain Names in India 

In India, domain names are protected as trademarks or service marks under Trademarks Act,1999. Once registered, the owner of the domain name will have all legal rights and authorities, which are commonly availed by owners of registered trademarks or service marks. This also includes the right to sue for – 
Infringement- Any person violating a domain name that is registered as a valid and subsisting trademark under the Indian Trademark Law 1999, will be held liable for breach of the trademark under section 29 of the act.
Passing off- an owner of a trademark who has not registered his mark is also entitled to the protection of his mark if he is the prior user, his mark has acquired distinctiveness, and there is misrepresentation by someone else concerning his goods or services which is likely to deceive the relevant public.

Landmark cases- 

People Interactive pvt.ltd. v. Vivek Pahwa &ors.
In this case, the Bombay High Court held ‘Domain Name is the internet equivalent of a physical and terrestrial address. It directs the user to a particular part of the Web where a domain name registrants stores and displays his information and offers his service.’
Rajat Agrawal v. Spartan online
In 2017, the Calcutta High court held that ‘a domain name is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding internet location.’
Conclusion- 
Hence, it can be seen that domain names serve as an essential part of trade and commercial activities on the internet. The protection of domain names becomes vital for those businesses that solely work on online platforms. Since domain names go beyond geographical boundaries, a harmonious international law (other than rules under UDNDR policy) on the protection of domain names is required, in addition to the protection offered by Trademarks Law,1999.
 

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These articles are provided freely as general guides. Do not rely on information provided here without seeking expericed legal advice first. If in doubt, please always consult a lawyer.

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