Domain Names With

Reference to Trademarks
(Issues and Challenges)

Submitted by- Prashant verma

Enrollment number- A03104421085
 INTRODUCTION
As the civilizations grew, new and better techniques of business demanded unique
recognition to their products. Trademark facilitated this need.

The importance of trademark at a global level was first recognized in Paris convention which
was subsequently followed by another agreement i.e. Trade Related Aspects of Intellectual
Property Rights (TRIPS)

After emergence of e-commerce, business entities have started flourishing and expanding
their activities on internet. However, a company cannot directly enter the cyber space
without an identity. Unique Internet Protocol (IP) addresses were not catchy and difficult to
remember due to its all numeric characteristics. This led to the development of Domain
Name Systems (DNS). DNS was introduced as a substitute to the all numeric traditional IP
address. DNS basically functions to convert complex IP addresses of e-mails and websites
into simple domain names for easy access by average user. Domain names are now also
referred to as valuable corporate assets carrying goodwill. Some examples of Domain Name-
.com for commercial
.int for organizations established by international treaties.
.net for computers of network providers.
 TRADEMARK AND DOMAIN NAME
 While trademark provides unique identity to a product, domain names can be called as
internet resource locators. Domain can also be regarded as the internet address of a company
which after many years of use becomes the identity for their diversified products lines.
 Trademark operates in the real world while domain name operates in the cyber world.
 The Registration of trademark is generally at a national level but domain name registration is
at a global level.
 Different persons residing in different countries can have same trademark for different goods
and services since it does not generally have global impact but domain name operate at a
global level and hence, two companies/persons cannot have same domain name. For
instance, “Delta” is used by a number of companies like Delta Airlines, Delta Dental etc but
the domain name com is used only by the airline industries.
 Dispute with regards to trademark can be easily settled because there are no jurisdiction
issues but domain name disputes are hard to settle because internet has no boundaries.
 Trademark can refer to or relate to a specific category of a product or product line but domain
names are not provided for every single product offered by a company. There can be a domain
name for the entire company within which the company can have range of products.
 REGISTRATION OF DOMAIN NAME
With the increasing use of internet in almost every field, there was
need to have a regulating body in order to grant and maintain records
of IP Address. Internet Assigned Numbers Authority (IANA) was set
up under the supervision of US Government to carry out the functions
such as-
 Allocations of IP addresses.
 Setting up protocol parameters to ensure that computers can
communicate with each other.
 Maintaining registries and making it available for general public use.
 Domain name disputes became rampant mainly because of the
SETTLEMENT OF DOMAIN NAME DISPUTES
jurisdictional issues within the cyber space. 2016 was the year in
which cyber squatting cases hit record.  US is the first country to
introduce a legislation which is specifically for trademark
infringement in cyberspace known as Anticybersquatting
Infringement Act, 1999. In general, domain name disputes can be
solved in the following manner-
By ADR mechanism such as Arbitration and Mediation.
By Court Proceedings
By agreement between the parties (Example- The parties may arrive
at a mutual conclusion for some consideration).
By conforming to procedure for settlement of disputes as entered in
the domain name registration agreement entered between registrar
and registrant.
 CYBER SQUATTING
The act by which one party earns profit and attracts
customer by misusing the trademark of other party. The
misuse can be in the form of registering a domain name
having resemblance to or exactly similar to the trademark
of a well-known company having goodwill. Cyber squatting
is a big hindrance in the growth of e-commerce companies.
Most of the time, cyber squatters coerce popular e-
commerce companies to pay huge sum of money to protect
their companies goodwill and also their trademark.
 TRADEMARK INFRINGEMENT IN CYBERSPACE
 Infringement of trademark occurs when one company generally uses the trademark
of another company or trademark similar to that of other company in the course of
trade of goods and services to deceive the customers and earn profit by using the
goodwill of other company. With the advent of internet, this process of trademark
infringement has become even easier. The rival companies create websites and
register domain names to deceit the customers. The concern about infringement of
trademarks has been in existence since common law times.
Following are the factors to be considered that under the Sleekcraft test to check
whether the trademark has been infringed or not-
 The popularity of plaintiff’s mark. The more famous the mark, the more are the
chances of infringement.
 The use of plaintiff’s trademark by defendant. If the trademark is used by
defendant for similar goods within same jurisdiction as that of plaintiff, it will be
easier to deceive the customers.
 The intention of the defendant. If the defendant does so without the prior
permission of the trademark owner and earns profit by the company’s goodwill
then the same will fall within the ambit of trademark infringement.
 The
WIPO WIPO
(World Arbitration
Intellectual and Mediation
Center is internationally
Property Organisation)
recognized as the leading dispute resolution service provider for
challenges related to the abusive registration and use of Internet
domain names, a practice commonly known as “cyber-squatting.”
WIPO is an international agency of the United Nations that was
established in 1967 to promote and develop international aspects of
intellectual property law and policy. WIPO has an Arbitration and
Mediation Center that was established in 1994 to offer services for the
resolution of disputes. Guide to WIPO Domain Name Dispute
Resolution,
 Case law
Yahoo!, Inc. v. Akash Arora & Anr, was the first case
on domain law protection in India. The Delhi High
Court in this case held that domain name served the
same function as a trademark and was therefore
entitled to equal protection. 1999 (19) PTC 201 (Del)
The Bombay High Court, in Rediff Communication
v. Cyberbooth & Anr also observed that the value
and importance of a domain name is like a corporate
asset of a company 2000 PTC 209
 Conclusion
With the expanding activities within the cyber world, various
thought provoking issues are being raised now and often. The
jurisdictional issue being one of the most widely discussed issues.
Domain name and Trademarks have become a wide part of the
ever-increasing e-commerce business activities. Domain names
indentify a company’s presence on internet and now-a-days
considered as valuable corporate assets. Domain names are
generally given on “first come first serve basis” and registrars like
NSI who are collaborated with National Science Foundation have
got veto power towards assignment of domain name. However,
these agencies can exercise the same only if the domain name in for
registration is exactly similar to the other one and that the
registration of this one would infringe the rights other.