In India, the rise in digital marketing and eCommerce has led to a massive growth in demand for an online presence of a business. The growing businesses need a website to reach and connect with more and more customers and for displaying the goods and services produced or manufactured by them. The website is also required to compete in the wide international market. To fulfill the requirement of the website of businesses to compete in global markets, the businesses need a domain name for their website. The domain name will represent the brand of the business and will act as an online identity for the business.
Nowadays, the commercial activities on the internet are increasing day by day, which leads to a growth in the importance and usefulness of the domain names of the business. The domain name growth should be enhanced in all the economic sectors for the purposes of enormous popularity, publicity, and profitability of businesses. In this article, we will discuss the protection by Trademark of Domain Name in India.
What is a Trademark?
A Trademark is a design, word, symbol, or phrase, or any combination of them, which recognizes and differentiates the source of goods or services. The owner of a well-known Trademark retains the exclusive rights for the use of Trademark. The competitors who are in the market are prohibited from using a similar Trademark for selling their same or similar products or services. The Trademark laws[1] of a country helps the businesses to market their products and services and also helps the consumers to associate the products or services they use with a particular Trademark. The consumers of products or services are guaranteed consistency and quality in the products or services they use, once the protection of the Trademark is given to such products or services used by them.
The speedy increase in online business and advertising encouraged a growing demand for domain names that are connected to particular businesses, goods, or services. The tussle to reserve or protect domain names has caused a number of disputes regarding Infringement of Trademark. For instance, when some businesses wished to use their already well-known and established Trademark of Domain Name, discovered that their domain name has already been taken by anyone else. To resolve such disputed, certain measures were taken, and measures were taken to prevent such Infringement of Trademark of Domain Name in India.
What is a Domain Name?
Domain Name is the human-friendly method of Internet Protocol address. The Domain Name is commonly used to find websites of products or services which any consumer wants to explore for information regarding a product or services. It is the online identity of a specific person, creation, or organization. The domain name is the online address of a person, creation, or organization and leads to the page in which the owner of the domain name wants to be viewed by the general public when they visit the Domain of the website of the owner of the domain name.
Generally, in the course of business, companies and traders use the business or trade name used by them as their online identity or domain name. It is a permanent address that can be accessed by anyone from anywhere in the world regardless of the location of the owner of the Domain Name. Thus, Domain Name registration gives a worldwide presence to the online identity of a person or organization.
The Domain Name is formed as per rules and regulations prescribed under the Domain Name System. Any name which is registered in the Domain Name System is a Domain Name. There are only a minimal number of Domains available. Some of the examples are, ‘org’ for Organizations (Non-Profit), ‘gov’ for Government Agencies, ‘edu’ for Educational Institutions, ‘com’ for commercial business, etc.
What are the essential conditions for Trademark of Domain Name in India?
A business can obtain Trademark Registration for its domain name after fulfilling certain conditions. The conditions which are required to be fulfilled are as follows:
- The domain name should be unique.
- The domain name should not be offensive.
- The domain name should have the ability to identify and differentiate the goods and services of the business from other businesses in the market.
- The domain name should not violate any already registered Trademark or any mark for which an application for Trademark Registration has been filed with the Trademark Registry.
After all the necessary conditions are fulfilled, the owner of the domain name can file an application for Registration of Trademark of Domain Name along with all the necessary documents.
What are the different types of disputes related to obtaining a Trademark of Domain Name in India?
The different disputed for which any person can file an application for dispute resolution while obtaining a Trademark of Domain Name in India are as follows:
- The domain name for which application for registration is filed is indistinguishable or confusingly identical to already existing Trademark or to mark for which a Registration application is already filed;
- The owner of the Trademark of Domain Name has no rights or interests in the registered domain name;
- The Trademark of Domain Name is registered or is used in a malafide manner by the owner.
In the cases when any of the such disputes arises, any person can file a complaint to the .IN Trademark Registry. The complaint should be filed in compliance with the Rules and Regulations as prescribed by the Registry. After the complaint is filed by a person, the owner of the Trademark of Domain Name is required to go through Arbitration proceeding for resolving the dispute.
What are the remedies available to the owner of Trademark of Domain Name in India?
After obtaining a Trademark of Domain Name in India, the owner of the Trademark will get the same protection from any violation as compared to the other forms of Trademarks. The owner of a domain name can take the following actions in case of violation of the Trademark of domain name in India:
Trademark Infringement
In case any person is violating a domain name, which is already registered as a valid and subsisting Trademark under the Trademark Law of India, can be held liable for Infringement of Trademark under Section 29 of the Trademarks Act, 1999. For this, an infringement suit of Trademark is required to be filed by the owner of the Trademark.
Passing Off
In the case of Passing-Off, the owner of the domain name can file a suit for passing off for the Registration of Trademark of Domain Name, which is pending with Registrar at the Trademark Registry.
Read our article:Advertisement of Trademark Application in Trademark Journal
What are the case laws related to Trademark of Domain Name in India?
The case laws related to Trademark of Domain Name in India are as follows:
Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd.
In this case, a question for consideration before the Supreme Court (SC) of India was whether Internet domain names are subject to other legal rules which are applicable to other Intellectual Properties such as Trademarks. The SC held that the use of the same or similar domain name could lead to a diversion of users, which will result from such users’ misguidedly accessing one domain name instead of another. Common users in search of locating the functions accessible under one domain name can get be confused if these common users accidentally arrive at a different but same or similar website, which is offering no such products or services.
Such common users can well conclude the fact that the owner of the first domain name has misrepresented its products or services through its publicity activities, and the owner of the first domain name should lose its custom. Therefore, it is apparent that a domain name should have all the characteristics of a Trademark and should also find an action for Passing-off in case a similar Trademark is being used by any other person.
Yahoo Inc vs. Akash Arora
In this case, a party’s domain name ‘Yahoo’ and the defendant’s domain name ‘Yahoo India’ were the subject matter of argument. A request was made to the court to consider that web customers are modern, and that online users know which website they want to visit. The court, in this case, held that though an individual is a sophisticated user of the internet, he/she may be an unsophisticated or inexperienced consumer of information and such person may find his/her way to the internet site of defendant thinking it to be the site of the plaintiff.
Acqua Minerals Ltd vs. Pramod Borse and Another
In this case, the court observed that unless and until any person has reliable explanation as to why did he/she choose any specific name for registration as a domain name or for that purpose as a trade name which was already in prior and prolonged use or existence and has already established its reputation and goodwill in the market. It was clear that the said person wanted to do business in the same name as the trade name, which is used for a very long time before because of the already well-established name along with widespread goodwill and reputation achieved at huge expenses and cost involved in the advertisement.
Casio India co. Ltd vs. Ashita Tele Systems
In this case, the preliminary argument was primarily held on the ground that the company Casio India was a company based in Mumbai, and hence, the jurisdiction to file a suit should be of Mumbai and not Delhi, but in this case, the suit was filed in Delhi. The court in the case held that any objection regarding the territorial jurisdiction needs to be considered in the general context of development and advances in the arena of Information Technology (IT) and not in the normal conventional manner. The access to the questioned domain name of a website could be had from somewhere else; the jurisdiction limits in such a matter cannot be restricted to territorial limits of the defendant’s residence.
Online India Capital Co. Pvt. Ltd. vs. Dimensions Corporate
In this case, the plaintiff who was using the website under the domain nameof ‘www. Mutualfundsindia.com’ took action against the defendant who adopted the domain name ‘MUTUALFUNDINDIA.COM.’ It was held by the court that the domain name of plaintiff domain is descriptive of the character of the services offered by the business of plaintiff and there is no any evidence to show and prove that the word has developed a secondary meaning which was prerequisite for the grant of protection to descriptive names. Hence, the claim of the plaintiff’s claim was dismissed.
Naukri.Com vs. Naukari.Co
In the case, it was held by the court that the domain name was unconventional, as the party had used a Hindi word with English script. There was also validation on record to prove that the area name had obtained secondary meaning by virtue of some extensive business activities.
Conclusion
The importance of internet domain names has now increased diversely in business & commerce on the internet and internet communication. Nowadays, the internet is becoming a highly chosen platform and is enormously popular for an enhanced flow of business-related information of all different types by people and entities in all the economic fields. Hence, there is an imperative need for getting an appropriate protection of the domain names which are unique, like service marks and Trademarks of a business. The Trademark of Domain Name in India is available to the marks with some requirements.
Hence, any person who desires to get his/her domain name registered as a Trademark can do so by following the requirements. The process of Domain Name Trademark Registration is lengthy and time-taking. We at Corpbiz have skillful experts to assist you and help you throughout the process of Trademark Registration. Our experts will ensure the effective and timely completion of your work.
Read our article:Trademark Infringement: Meaning, Types and Remedies
