University Institute Of

Legal Studies

PROJECT TOPIC :
TRADEMARK ISSUE IN
CYBER SPACE

Submitted To : Dr. Amita Verma

Submitted By : Ravina
Class : B.A.LLB.(10 th
Sem.)
Roll No : 236/13

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 ACKNOWLEDGEMENT

This project was made as part of the Internal Assessment for 10th Semester
during the course year 2017-2018 under the auspices of our subject teacher
Dr. Amita Verma. I would like to extend my heartfelt gratitude to Dr. Amita
Verma for making an immense effort in imparting lectures and providing clarity
of the topics. Lastly, I would like to thank our library staff for their co-
operation.

Thanking you,

Ravina.

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 Index
Introduction…………………………………………….………….4

What is trade mark?...................................................................... 4

Indian law relating to trademark………………………..………… 4

What is domain name?...................................................................5

Dispute between trademark and domain name…………………….5

Trademark Issues…………………………………………..………. 6

Domain name distribution……………………………………..…….9

Domain name disputes……………………………………..………. 9

Issues in trademark……………………………..…………………… 9

Other issues………………………………………………………….. 11

Judgements……………………………………………………………12

Conclusion and recommendation……………………………………. 14

Bibliography…………………………………..………………………15

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Introduction
Trade mark have existed as long as the trade itself. Once human economies
progressed to the point where a merchant class specialised in making goods for
others, the manufactures and the sellers of goods began to mark their wares with
a word or symbol to identify the maker. Consumers rely most on the trade
marks when it is difficult to inspect a product quickly to determine its quality.
Thus it is imperative that a common business man would ne impressive about
the trade mark infringement on internet/ virtual world as he is outsider. So this
era of information technology, it becomes pertinent to address this issue of
online infringement of trademarks with almost care. 1

What is Trademarks?

Trademark is defined under section- 2 (1) (zb) of trademark act 1999. Basically
it means a mark capable of being represented graphically and which is capable
of distinguishing the goods or services from those of others and may include
shape of goods, their packaging and combination of colours. The purpose of
trademark law is not to confer monopoly on a right to use a specific word or
symbol, instead it allows the first user to have some exclusive right, which
exclude some other entities from adopting a similar work.

Consumers rely on the strong brand presence and brand performance for the
confidence in engage in e- commerce. While trademarks are of great
importance, they are also vulnerable to infringement, dilution and anti-captive
practices.

Indian Law Relating To Trademark

1
Merges Menell Lemley, Intellectual Property in the new technological age (2007)(Trademark Law)

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In India, prior to 1940 there was no statutory law relating to trademark.
However the law that was applicable to trademark was based on common law.

For the first time the Trade Mark Act, 1940 was enacted in India which
introduce the system of registration of trademarks and thus provided a
protection for the right of owner of a trademark. Subsequently it was replaced
by Trade Merchandize Marks Act, 1958.however due to various development at
international level, specially the globalisation of trade and commerce and other
developments, need for some compressive legislation on the subject was felt. As
a result Trade Mark Act, 1999 was passed which précised providing registration
of trademarks for goods, provides for registration of trademark services.

What Is A Domain Name?

A domain name is the linguistic counter part of what we call an Internet

Protocol address (IP address) it is the address where internet users can access
are websites. Computer use IP address which are a series of number. However it
is difficult for human to remember. Because of this domain name were
developed and use to identify entities on the internet rather than using IP
address. A domain name can be any combination of letters and number; it can
be used in combination of various domain name extensions such as .com, .net
and more. 2

Dispute between Trade Mark and Domain Name

The trademark Act 1999, has been in acted with an object to amend and
consolidate the law related to trademarks for goods and services and for the
prevention of use of fraudulent marks. However trademark owner desires of
using their mark or domain name have found that such domain name have been
recognised by unauthorized parties as a deliberate attempt to violate the rights
of original trademark owner. Domain names are register on first come first
2
www.website.com/beginnerguide/domainnames/what-is-a-domain-name , visited on 21/3/2018

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bases which leads many a time to abusive registration that is registration by a
person of a domain name containing a trademark in which such person/ entity
has no legitimate right or interest.

Trademark Issues

1. Domain name dispute and resolution

2. Other issues in digital medium

Domain name dispute in resolution

It is consider to be the main trademark issue in digital media.

Domain name system

Every computer or server has its own unique address commonly known as
Internet Protocol Address (IP address). IP address is all numeric number
consisting of four parts, each part is between 0-255 and separated by dot ( .) or a
period , each part of the IP address is known as octet and is eight bits long.

Domain Name Hierarchy

Domain name consist of different parts or level separated by dot (.) indicating
hierarchy. Each level is a string with maximum 633 characters. However total
character in a DNS should not exceed 255. The difference parts are 3

 Top level domain (TLD) or first lever domain (suffix)

 Second level domain (SLD)
 Third level, forth level and other level domain
 Host (prefix)

Example: www.yahoo.com

 www- host(prefix)

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Docs.manupatra.in/newsline/articles/upload, visited on 21/3/18

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  yahoo- second level domain (SLD)
 .com – first level domain (TLD)

Top- Level Domain

This part is on extreme right of domain name and it is common all over the
globe and we have 2 TLD

1) Generic TLD (gTLD)

2) Country code TLD (uTLD) or geographical TLD

Generic TLD:

 .edu- For education institution

 .org- for miscellaneous and non profit organisation
 .com- for commercial use
 .net- for network providers
 .gov- for government
 .mil- for military organisation
 .int- for international treaty organisation

Country code TLD:

 .in- India
 .cn- China
 .au- Australia
 .uk- United Kingdom
 .us- United States
 .jp- Japan
 .it- Italy

Second Level Domain (SLD)

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This is the part directly to the left of the top level domain and this part is to be
chosen by the person registering the name. Two identical SLD cannot exist
under the same TLD.

Example: even though both Delta Faucet Company and Delta Airlines would
like the ‘delta.com’ domain name, only one Delta company can have Delta.com.

Second Level Sub Domain

It generally comes between Second Level Domain and Top Level Domain.

Example- www.puchd.ac.in

 www-host
 puchd-SLD
 .ac-SL Sub Domain
 .in- CCTLD

Third/Fourth etc Level Sub Domain

Higher level main be added to a domain name to make it more specific. These
parts of the domain name giving addition indication or information come
between host and SLD are called sub domain. A sub domain provides a space
for registering organisation names or organisation acronyms.

Example: Domain name of Panjab University, Chandigarh is www.puchd.ac.in

and it has its on hierarchy i.e www.laws.puchd.ac.in

 www-host
 laws- third level domain
 puchd- SLD
 .ac- SL sub domain
 .in- CCTL

Host (prefix)
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Some of the commonly used host names are www, mail, ftb, pcl, network,
news, admin etc. these names are usually given according to the services they
provide. Example www.zeetv.com , FTP Server ftp://ftp.microsoft.com

Domain name Distribution

The allocation of IP address and domain name worldwide is done centrally.

Earlier the Network Solution Inc (NIC) has been registering domain names
since 1992 and it worked successfully till 1998.

However in 1999, the Internet Corporation for Assigned Names and Numbers
(ICANN) took the responsibility of domain name system management.

In India, National Internet Exchange of India (NIXI) has been setup to facilitate
exchange of domestic internet traffic within the country, and also the
responsibility of setting up .in country code top level domain.

Domain Name Disputes

As the registration of domain name is on first come first serve bases, the
ICANN or NSI do not evolutes or pre- screen whether second level domain is
same or deceptively similar to already registered trademark, hence creates
various problems like:

1) Cyber squatting

It is registering various famous names or trademarks as domain names with the

hope of selling them at a profit.

Example-Sony is the trademark of the company. Before domain name was

registered by Sony company , Mr A registered www.sony.com so that it can sell
that a domain name to Sony company at higher price. Here sony company will
have fear that it is trademark could be misused by present domain name
owner(Mr A) .therefore in such situation only option with the trademark owner

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Sony company is to pay handsome amount to the current domain name owner
and get the same for his company or organization.

2) Typo squatting

It is registered a domain name which is minor variation or common

typographical permutations of already registered domain names so as to divert
internet users to their website by typing errors.

Example-

 registering www.radiff.com or www.redif.com where www.rediff.com is

already registered.
 Registering www.siffy.com where www.sify.com is already registered.

3) Identical SLD is domain names registered by different registries in

different countries.

Example- www.nokia.com may already be registered but still in India

www.nokia.co.in may be registered which is not affiliated to www.nokia.com .

4) Reverse Domain Name Hijacking

It means a depriving a domain name owner of his domain name. generally a

powerful company tries to force a genuine domain name user (owner) to give up
his domain name which was acquired by him in good faith. Such reverse
domain name hijacking dispute must be settled on merit basis, considering the
fact whether such person has trademark or not.

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Other Trademark Issues:

Meta- tag

A user who wants to access a site has to enter his domain name in the web
browser address window. Where the user does not know the domain name, he
can use commercial search engine can associate a user keyword with the
indexed website.

Therefore meta-tagging is process hereby a website owner place certain words

on his website so that his site appears on search engines when a search of that
particular word is made.

Linking

Linking is a process whereby a user connects from one site of the internet to
another site. A link is an embedded electronic address that point to another
location and takes the user there.

Generally a link implies an association between linking and linked site.

Therefore .when actually such an association is lacking, the link could
constitute trademark infringement.

Spamdexing

This word comes from a combination of the word ‘spam’ and indexing. Here
either the company trademark is placed in the text of webpage instead of meta-
tag ,or placed in white print text so that it is technically part of the web page,
but not visible to the readers. Either way the motive of spamdexing is to cause
search engines to find the websites based on the popularity of trademark and
thus give the website and higher hit rate. This places it on the top of lift in
response to an internet search and drive additional traffic.

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Spoofing

A web user who has an email id sometimes may discover an unwanted message
from some undesirable sites, example some pornographic site, such mails are
called spams and now days most of the web sites provide for the filters which
automatically junk such mails. But sometimes there blocked sites with the help
of the method where they use the name of some well establish websites so that
these mails can easily pass through the filters. The method is known as spoofing
.Here one websites acquires the identity of another.

Framing

Framing is a process whereby a websites (framing sites) links to another site

displaying that site within a window or frame. This allows it to offer the other
sites content within the frame on the developers own site. Thus framing is
equated with picture in picture televisions because main sites along with its logo
remain intact as main frame or border of the linked sites. 4

Land Mark Judgements

1) Yahoo!Inc v. Akash Arora and another 5

Yahoo Inc contended that Akash Arora adopted the domain name of Yahoo to
offer services similar to those of Yahoo Inc and had attempted to cash in on the
good will generated by Yahoo Inc. because there was every possibility of an
Internet user getting confused and deceived, believing that both the domain
names, Yahoo and Yahoo India belong to Yahoo Inc.. Therefore, Yahoo Inc.
argued that Akash is liable for passing off. As the two trademarks/domain
names ‘Yahoo!’ and ‘Yahoo India!’ were almost similar and the latter offered
services similar to those offered by the former and as the latter passed them off
as being offered by Yahoo Inc., the court held Akash liable for passing off and
4
www.lawyersclubindia.com/articles/online-infeigenment-of-trademark-2883.asp, visited on 22/3/2018
5
1999 Arb.L.R.620(Delhi High Court)

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restrained him from using the deceptively similar domain name.
The decision of the court in this case is based on the rationale that where the
value of a name lies solely in its resemblance to the name or trade mark of
another organization, the public is likely to be deceived by the use of such name
and such act would amount to passing off.

2) Tata Sons Ltd & Anr v. Arno Palmen & Anr 6

The suit was instituted by plaintiffs against the defendant seeking permanent
injunction against the defendant from using the trademark/ domain name
www.tatainfotech.in or any other mark/ domain name which is identical with or
similar to the plaintiffs trademarks ‘tata’ & ‘tata infotech’ as tata is derived
from its founder Mr. Jamsetji Nuserwanji Tata. The court held in favour of
plaintiffs.

Conclusion and Recommendations

As intellectual property is one of the valuable assets of any person, it should be

protected at any cost since a person put his skills and labour for the creation of
6
563/.2005,(Delhi High Court)

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intellectual property. On the other hand there is a urgent need for the strict laws
in this field so that these crimes related to IPR could be avoided in the future.

The new domain name dispute law should be indented to give trademark and
services mark owners legal remedies against defendant who obtain domain
names in bad faith that are identical or confusingly similar to a trademark.7

BIBLIOGRAPHY

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Docs.manupatra.in/newsline/articles/upload visited ob 22/3/2018

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 Merges Menell Lemley, Intellectual Property in the new technological age (2007)(Trademark
Law)
 www.website.com/beginnerguide/domainnames/what-is-a-domain-name
 docs.manupatra.in/newsline/articles/upload
 www.lawyersclubindia.com/articles/online-infeigenment-of-trademark-2883.asp

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