5/4/24, 12:53 PM Domain name in the world of intellectual property - iPleaders

Domain name in the world of intellectual

property
By Rachit Garg - April 29, 2023

This article is written by Richi Palesha, pursuing a Certificate Course in Introduction to

Legal Drafting: Contracts, Petitions, Opinions & Articles and has been edited by Oishika
Banerji (Team Lawsikho).

It has been published by Rachit Garg.

Table of Contents

1. Introduction
2. What do you mean by domain name
2.1. Importance of domain name in trade
2.2. Association of domain names with trademarks
3. Trademark registration for a domain name
3.1. Registration criteria for domain names
4. Different managing bodies involved with respect to domain names
5. Protection of domain names
5.1. Protection of unregistered domain names
5.2. Against which activities, protection is granted to domain names
5.2.1. Infringement.
5.2.2. Passing off
5.2.3. Cybersquatting
6. Conclusion

Introduction
A domain name is a term usually familiar with the area of coding, or general computer
science. A domain name is basically an internet address, a unique combination of words
displayed on the address bar of a website, this is said to be that website’s domain name.
Using the said domain name, you can directly access the said website. The terminology
‘domain name’ has recently gained a lot of impetus in the field of marketing and
branding on online portals. This is because, firstly they take the users directly to the

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desired website. Secondly, they make it feasible for the users to identify their desired
brand from the other brands available on the web, making it very easy and feasible for
the customer or the viewer. Thus, due to sudden growth in the e-commerce sector, these
domain names haven’t just remained website addresses but have evolved into business
identifiers or business distinguishers and thereby fall under the ambit of trademark,
which in itself is a type of intellectual property. This article has been written to make the
readers aware of the concept of domain names in the world of intellectual property.

What do you mean by domain name

A domain name is a distinctive set of words or combination of words, letters, numbers
and characters which have a prefix and suffix attached to it. The arrangement of domain
names can be split into two parts, namely:

1. Top level domain (TLD), and

2. Second level domain (SLD).

Nowadays with the rise of commercial activities these domain names especially the SLD
have been made user-friendly and identical to business brands for easier identification of
users, thereby becoming an identifying and distinguishing factor of the business on the
internet and hence have gained importance.

This new understanding of domain names has been added in the legal definition of
domain name through Satyam Infoway Ltd. vs. Siffynet Solutions (2004), the Hon’ble
Court held that “A domain name is easy to remember and use, and 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 online Internet location”. Thus domain name can simply
be understood to be a unique combination which locates a website as well as
distinguishes it from other websites, and helps the viewers in identifying the business
enterprise or any enterprise, the said website it is associated with.

Importance of domain name in trade

The rapid evolution of online commercial activities has opened the door for several
technical terms in the areas of marketing, advertising and promotion of brands. The
technical terms don’t only comprise of the domain name but also include meta tags,
browser words and many more technical terminologies which now play a vital role in the
marketing of brands on the internet. These terminologies are used by the users for the
identification of a particular brand they are in search of. Domain names in particular play
a very vital role as the first thing a person searches for while looking for a brand is the
brand name itself or any name in its association and selects out of the options displayed,
the results having a domain name either as the brand name or similar to it. Thus,
domain names have become a very essential part of the commercial activities of
businesses on the Internet. The domain names are no longer just internet website
addresses but with time are being designated as business identifiers.

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Association of domain names with trademarks

Domain names are now known to be business identifiers; they are often considered to be
a part of a trademark, as trademarks in itself are visual identifiers which differentiate the
products or services of one entity from those of the others. Thereby trademark being an
umbrella term is considered to now include domain names as well, this has been
developed through common law judgements and through statutory interpretation and
inference of provisions which have been explicitly stated under the statutes.

In India domain names are regarded as trademark entities, because as per the definition
of trademark provided under Section 2(zb), any mark which is capable of being
graphically represented and is also capable of showcasing the distinction between goods
and services of one person with that of the other, and may be inclusive of shapes,
packaging and combination of colours in relation to the goods, will be characterised as a
trademark.

The issue that was in the case of Satyam Infoway Ltd. v. Sifynet Solutions (2004)
involved asking the basic question as to if and whether domain names can be considered
a word which is capable of differentiating the trade/service which is supplied to the users
on the internet thereby confirming intellectual property rights. The court opined that the
domain name defines a website address but due to increase in the internet commercial
activities it has gained a different value of being an identifier and distinguisher of
business enterprises. It is used in quite a few commercial activities like for trade,
promotions and advertisement on the web, making domain names more valuable. Its
involvement in trade and commerce has given it a designation under trademarks. The
court also stated that domain names would also be considered as providing a service on
the web/internet and thereby also come under service marks.

In India domain names are governed under trademark law itself, the Trade Mark Act,
1999 and Trade Marks Rules, 2002.

Trademark registration for a domain name

Domain names are registered in the Domain Name System (DNS) nationally as well as
internationally, in accordance with the rules and procedures of DNS. DNS basically stores
these domain names and once accessed by the users i.e, once the domain name is
clicked on, it directs the computer to the website and the domain name changes to an IP

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address. This conversion or transformation is done by the Domain Name System. The
DNS is basically a directory, which regulates the forming and accessing of domain names.
Any name registered under this system is said to be a domain name i.e., any name
which is registered in this system becomes a domain name. This is simply the
registration of domain names in their capacity of being a website address.

Now registration of domain names with respect to them being business promoters,
distinguishers, and identifiers is not governed by a separate statute nationally nor is
there a separate global treaty which deals with domain names exclusively. Hence
nationally, and to a certain extent international domain name is considered to be under
the trademark category of intellectual property and not under a category of its own.
Nationally domain names are governed by the Trade Marks Act, 1999[4] and the Trade
Marks Rules, 2002[5]. Internationally the trademarks are registered under the Internet
Corporation for Assigned Names and Numbers (ICANN).

Registration criteria for domain names

The domain names are registered as a trademark only if they are really the subject
matter of their business identification on the internet. The registration of domain names
as is done in accordance of it being a trademark it has to fulfil all the requirements
present for the registration of trademarks:

o Uniqueness- Are not generic or suggestive, or of any sort with respect to section 9
of the Act.

o Distinguishing factor- It is of such a composition that it distinguishes the goods/

service provided by the individual or entity from that of the other.

o Source of identifier- It is of such a combination that on reading or viewing the

same a person associates it to its source, brand.

It should not also be violative of the provisions of Section 11 of the Act of 1999. The
domain names would be granted registration only if the essentials of a trademark are
fulfilled and once provided with registration all the rights which flow to a trademark
owner would be retained by the owner of such domain names.

Different managing bodies involved with respect to

domain names
1. DNS- Domain Name System

A computer system which sources out domain names that allows individuals to create
domain names. A system in which any name registered if accepted by the System
becomes a domain name. The system is the middleman through which on clicking on the
domain name you go to a website, DNS facilitates that transformation.

2. ICANN- Internet Corporation for Assigned Names and Numbers

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It is a private, non-government, non-profit corporation having participants from all over

the world. It was formulated with the objective to keep the Internet secure and stable. It
is responsible for the management and functioning of the domain name system as well
as the protection of domain names.

3. UNDRP- Uniform Domain Name Dispute Resolution Policy

The policy was formulated by ICANN on the recommendation of WIPO for the protection
of domain names throughout the world.

4. INDRP- .IN Domain Name Dispute Resolution Policy

The Ministry of Information Technology adopted this policy in consultation with UNDPR.
This only allowed domain names with extensions .in and .co.in registration but now
irrespective of such contention registration is granted, if the trademark requirements as
per the act, common law and rules are fulfilled by the domain name claiming
registration.

5. NIXI- National Internet Exchange of India

The organisation is entrusted with the registration of the domain names and are
responsible to maintain the .IN registry. The law has developed much in the field of
domain name, in recent years and has made it very feasible for business enterprises,
individuals, commercial entities or any sort of organisation in general to register their
domain names on fulfilling the required essentials and gain the rights which flow from
them.

Protection of domain names

Domain names being business identifiers need protection from malafide practices carried
out by entities to own profit under the well-established trademark or to create confusion
amongst the viewers, with respect to the source of the website. These deceitful entities
try to generate huge revenues by advertisements on these fake websites. These actions
carried out by entities to deceive the public at large need to be checked as well as justice
has to be done towards the loss of business incurred by the well-established entities or
even upcoming entities or any trademark proprietor in the e-commerce sector.

In the recent matter of Sporta Technologies Pvt. Ltd. and Anr. v. Virat Saxena (2020),
the Hon’ble Court held that the use of domain name “dream11.bet” by the defendant is
capable of causing confusion and association of it to the original mark of the plaintiff and
thus were held liable for infringement and passing off. The domain names when seem to
have the characteristics of a trademark it would be protected the same way a trademark
is protected.

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Protection of unregistered domain names

Unregistered domain names can claim prior use and well known marks for protection of
their domain names. Here as being unregistered they would have to show their existence
in the commercial market prior to that of the defendants for availing the passing off
common law remedy, if the disputed domain name satisfies the essentials of being a
trademark.

Unregistered domain names only have protection against passing off and not
infringement as they are protected the same way unregistered trademarks are protected.
The protection of unregistered trademark has developed in common law on passing off
principle as the Act under Section 27(1) of the which specifically say that to avail
protection against infringement the trademark must be registered.

Against which activities, protection is granted to domain

names
Domain names are given protection whenever there has been an unauthorised use of
these marks. Following are considered to be the unauthorised use of domain names:

Infringement.
Infringement is defined under Section 29 of the Trademarks Act, 1999, in accordance to
which if a person is not the proprietor of a trademark or has not been granted any sort of
permission by the proprietor to use and uses the same or uses a mark similar to such
trademark irrespective of knowing if such action of his would cause confusion amongst
the target audience. If the actions similar to ones described above are done with respect
to a domain name the registered proprietor of the trademark, has the exclusive right to
sue for infringement of the trademark as per Section 28(1) of the Act. Domain names
have been given this protection under the Act by the courts. In this regard, a reference
can be made to the Rediff Communication Limited v. Cyberbooth & Anr (1999), where
the court had observed that by using a similar domain name the defendants have
infringed upon the plaintiff’s registered domain name.

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Passing off
Passing off is a common law remedy laid down in the case of Perry v Truefitt (1842)
which is based on the principle that “nobody has the right to represent his goods as the
goods of somebody else.” When a domain name identical or similar to that of the other
business entity, is used and is creating an impression that the identical or similar domain
name is of the latter then it is said to be passing off. This is the only remedy available to
trademarks which are not registered because as per Section 27 (1) of the 1999 Act, no
person shall have the right to sue for the infringement of an unregistered trademark. In
Yahoo!, Inc. vs. Akash Arora & Anr (1999), as the domain name yahoo.com wasn’t
registered in India though being registered in other countries, the defendants were
made liable for passing off and not infringement.

Cybersquatting
Cybersquatting hasn’t been defined under any statue nor has there been any reference
as to cybersquatting in any of the statutory laws. This is a recent concept that evolved in
light to the decision of the Kerala High court in the case of Pen Books Pvt. Ltd. v.
Padmaraj (2004) where for the very first time, cybersquatting was defined as an act of
“obtaining fraudulent registrations with an intent to sell the domain name to the lawful
owner of the domain name at premium”. When an entity tries to register a domain name
similar to that of a domain name or trademark of a well-known business enterprise with
the mere intention to cause confusion amongst the public to such an extent that the
business enterprise has to pay them off and buy the domain name, this is called
cybersquatting. It doesn’t have specific reliefs defined to it as there are for infringement
and passing of under Section 135 of the Act, but is for now covered under passing off
and infringement. These are a few of the discovered common unauthorised actions
against which domain name proprietors have certain rights and reliefs.

Conclusion
Domain names have developed a distinctive meaning through the growth of the e-
commerce sector, this unique characteristic of distinguishing the goods/services provided
by an entity from those of others have made them fall under the ambit of trademark and
eventually in the world of intellectual property. Domain names is an evolving sect of
Intellectual property which is gaining much impetus and importance, there are new
aspects of this sect being discovered like cybersquatting which might make cybercrime
rules also applicable if certain facts and circumstances of the case touch those laws, and
as design was carved out to be a separate intellectual property from patents, domain
names might result into being a separate category of intellectual property.

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