Registration of domain name as trademarks
Author: Shubhank Suman, National Law University, Odisha.
The internet “domain name” is now much wider than simply representing website addresses on the internet. In this period of highly developed IT, these domain names have become an identifier and promoter of companies. As the Internet is growing day after day, the importance and utility of “domain name” is also increasing in all the business sectors with the objective of greater publicity, popularity, and profitability. As per the words of Bill Gates, “Domains have and will continue to go up in value faster than any other commodity ever known to man“.[i] Broadly, the domain name’s functions today are very similar to trademark functions. so here the question arises is “domain name” also entitled to get protection like trademarks?
HOW DOMAIN NAME IS SIMILAR TO A TRADEMARK
Internet “domain name” is a combination of the typographical characters in the form of an Internet Protocol (IP) address to denote the identity of a website. Technically “domain name” is known as the “Uniform Resource Locator” or URL which is a globally distributed internet database administered by “Internet Corporation for Assigned Names and Numbers” (ICANN). For instance, we can refer to an example of a “domain name” Blog.org. Here the initial portion of the “domain name” [blog] is termed as the “second-level domain name”, which shall be created or selected by the applicant. The end part of a “domain name” [here, .org] is called the “Top-Level Domain (TLD)” and is further categorized into “Generic Top-Level Domains (gTLDs)” and the “Country-Code Top-Level Domains (ccTLDs)”.[ii]
A “domain name” typically does the same online operation on the internet world as a trademark does in the real world. The trademark is a graphic indicator that enables the client to identify the product source and helps them to differentiate your product from competitors product, while the “domain name” is your company’s internet address and shows your business’s virtual image on the internet, Hence both trademark and “domain name” played an important role in the marketing of your brand and products. When the trademarks and “domain name” are duly registered, The following benefits can be offered
- A trademark promotes and safeguards your brand name, similarly a registered “domain name” safeguards and protects your web address from any unauthorized use by any person or entity.
- Trademarks boost the face value of your company or business, while a “domain name” increases the visibility and accessibility of your business worldwide.
- Trademark enables a customer to identify the sources of product and helps in product differentiation which plays an important role in making the product noticeable in the marketplace concerned, similarly, the “domain name” also plays an important role in making the product noticeable in a market by differentiating your web address from your competitor’s web address through unique URL which in turn helps any company to establish itself in the market concerned.
Thus a well-protected “domain name”, like a well-protected trademark, is undoubtedly of great benefit to the popularity and profitability of a company.
REGISTRATION OF “DOMAIN NAME” AS TRADEMARKS?
“Domain name” can also be registered and protected at the national and international level as a trademark, If “domain name” meet all the requirements that a properly registered trademark required.
Any specific Internet “domain name” that is able to recognize and differentiate products or services of a company from its competitors and can also serve as a credible online source for the goods or services concerned can then, protected as a registered trademark. If the “domain name” comply with all the conditions which are commonly applied to the registration for trademarks and service marks. In this context judgment by the Indian Supreme Court in the case of Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd.[iii] Worth mentioning it. Where recognition of Internet “domain name” as Trademarks was questioned. In the case, the court observed that “The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet has developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site, and distinguishes specific businesses or services of different companies. Consequently, a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical. “[iv]
Therefore, For the registration of domain name, just like a trademark, the name of the “domain name” must be unambiguous and distinctive from all the other domain names and known online trademarks available, so that the customers will not be confused or deceived.
We can refer the case of British Telecommunications v One in a Million[v] for instance Where defendant got a “domain name” registered as “sainsburys.com” which was already registered as a trademark by the plaintiff’s company engaged in the same area of business. Consequently, The holders of the trademark brought a lawsuit against the “domain name” holders alleging that the company’s goodwill was exploited by the “domain name” owners to earn profit by deceiving the users to make them believe that the site was theirs so that the traffic of customers diverted.[vi]
TRADEMARK REGISTRATION VS. DOMAIN NAME REGISTRATION
Trademarks are generally regulated by the country’s own institutions which provide protection only when trademarks are properly registered as per the requirements that a properly registered trademark required in a particular country. Since a trademark is regulated by country’s own institution, It lacks uniformity and world accessibility, on the other hand, there’s only one single institution named ICANN “Internet Corporation For Assigned Names And Numbers” that registers and protects “domain name” like trademarks or service marks on a global scale. No trademark law in any country is fully capable of protecting a “domain name” as trademark law varies from state to state while “domain name” requires uniform worldwide accessibility. Hence to achieve this vital objective, ICANN has prescribed two strong, strict measures[vii]
- A comprehensive and censorious “domain name” registration scheme with ICANN accredited registrars.
- An efficient and effective conflict resolution policy called the “Uniform Domain Name Disputes Resolution Policy” (UDNDR Policy).
Since earlier there was no requirement of mandatory registration of “domain name”, it is given on the basis of the concept of “first come, first served”. This has created disputes between the trademark’s owner and the owner of “domain name” as many speculators began registering common and popular names as “domain name” to resell them to trademark owners at a higher price. Since, the “domain name” registration system follows the policy of “first come, first served” policy, once a person registers a “domain name” identical to a trademark, another person is denied the registration of a “domain name” similar to that trademark as unlike trademarks, “domain name” has universal application hence the existence of two or more identical “domain names” can cause confusion in the mind of customers. This means that only one user can use a specific “domain name” and any other application will not be allowed to use the same “domain name”. This situation has given rise to the following problems [viii]
- Cyber Squatting – The word “cybersquatting” refers to the practice where someone speculatively registered a well known “domain name” in advance primarily for the sale of the “domain name” to the Trademark’s actual owner with the similar or same name for a considerable amount of profits. [ix]
- Cyber Parasites – cyber parasites is also like cyber squatters which make profits through inappropriate use of “domain name”, however, unlike cyber squatters, cyber parasites use similar or mistyped version of a well-known trademark to deceive the visitors and divert the traffic.[x]
- Cyber Twins– The word “cyber twins” refers to the situation when both the holder of the “domain name” and the defiant have equal and legitimate interests over the concerned domain name.
These situations created lots of unnecessary litigation and also court was proved to be ineffective in handling these cases as a domain name is based on the system of internet hence there was no settled rule where jurisdiction lies and also there are difficulties in enforcement if foreign jurisdiction is involved. Hence in order to tackle these problems, ICANN in 1999 came up with a dispute resolution method known as the UDNDR Policy, Whereby an individual or organization may formally complain to the competent service providers for dispute resolution. [xi]This policy also laid down certain criteria as per Rule 4(a) of ICANN [xii]
- “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 certain case of trademark infringement against the complainant”
These UDNDR policies introduced by the ICANN, In order to have secure and effective remedies against bad faith and fraudulent domain registration, which are in violation of the complainants’ trademark rights, played an important role in recognizing “domain name” as separate intellectual property rights and promote its distinct identity from a trademark.
In light of the above discussion, we can say that registration of “domain name” as a trademark is a little bit ambiguous and at its infancy stage. Since the internet ‘s role in marketing is now at its peak, the scope of “domain name” is needed to be tapped in order to cope up with the current realities. However, we should also not ignore the difficulties associated with the registration of “domain name” as trademarks like cybersquatting, cyber parasites. It must be properly analyzed and resolved. Therefore, the need of the hour is to come up with balanced laws that provide a broader scope for registrability of “domain name” as trademarks along with maintaining its viability in the current scenario.
[i] Hemant Goyal, Protection Of Domain Name As A Trademark, ( Jul 14, 2014), https://www.mondaq.com/india/trademark/327272/protection-of-domain-name-as-a-trademark.
[ii] IP Issues Relaed to Internet Domain Names, (2013), https://www.wipo.int/sme/en/e_commerce/domain_names.html.
[iii] Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd., 2004 Supp(2) SCR 465.
[iv] Protection Of Domain Name As A Trademark, (2016), https://www.indialawoffices.com/legal-articles/protection-of-domain-name-as-a-trademark.
[v] British Telecommunications Vs One in a Million,  F.S.R. 1.
[vi] Protection Of Domain Name As A Trademark, supra note 1.
[vii] Pratibha Ahirwar, Domain Name Disputes and Cybersquatting in India – Part I, (Feb 22, 2019), https://www.mondaq.com/india/trademark/783958/domain-name-disputes-and-cybersquatting-in-india-part-i.
[ix] Copyright and Trademark in Cyberspace, (2018), https://www.ijser.org/paper/Copyright-and-Trademark-in-Cyberspace.html.
[xi] Nitsimar Gulian, Domain name and Trademark rights in India, (Jul 31, 2018), https://www.lexology.com/library/detail.aspx?g=daaafca2-6a68-4134-bd29-27aa941a1f03.
[xii] Sourabh Ghosh, Domain Name Disputes and Evaluation of The ICANN’s Uniform Domain Name Dispute Resolution Policy 16 (2004).