Domain Name
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Domain Names: Addresses or Trademarks-A Legal Analysis
Sanu Rani Paul 1. INTRODUCTION The word Internet is not just an expression to connote one of the electronic media rather it is a notion of wider amplitude. To get a better explanation of this the origin of the same should be looked into. The idea of Internet, though considered by a number of countries including United Kingdom, was initially developed by the U.S. with the substantial funding from ARPA in 1964. The space race that was prevailed during the IInd World War can be identified as a catalyst for the development of Internet. The connection between space race and the Internet is less known but equally significant. The fist artificial satellite Sputnik was launched in 1957 to great consternation in the U.S. defense establishment. As part of its response the Advanced Research Projects Agency (ARPA) was established under the auspices of the Department of Defense with the remit of establishing U.S. leadership in areas of science and technology which might possess military application. Thus the concept of internet was evolved. The project was based upon ideas drawn up by Paul Baran of the RAND Corporation, an organization described as America¶s foremost Cold-War Think-Tank. Its genesis lay in the desire to find a method of enabling the US military and government to maintain communications after nuclear war1. The earlier ARPA formed the ARPANET, linked computers and computer networks owned by the military, defense contractors and university libraries conducting defense related research 2 . Another development was the introduction of TCP/IP 3 protocols which enable any user to connect to the internet. In 1972 U.S. Defence Research Project Agency (DARPA) initiated a research programme the objective was to develop communication protocols that would allow networked computers to connect transparently across multiple, linked packet networks. This was called the ³Internet ting Project´ and the system of networks that emerged from the research was known as ³Internet´. In the year 1975 the ARPANET was transformed by DARPA to the Defence Communication Agency (DCA) as Operational Networks and in 1979 USENet was introduced. Subsequently, due to the growth of the host database, the hosts were no longer possible on one computer. There took place the genesis of domain name system which allowed the database to be distributed on many individual servers.
In fact, the Internet was conceived by U.S. Defense Department military strategies, whose aim was to build a decentralized computer network resilient to hostile attacks. The theory was that a distributed network would be more resilient to repeated attacks than a centralized network. 2 ARPANET was a network that connected major computers at the University of California at Los Angels, the University of California at Santa Barbara, Standford Research Institute and the University of Utah. For details http://info.iso.org/internet /brief.html 3 The TCP component is responsible for converting messages in to streams of packets whilst the IP is responsible for addressing and routing the packets in to their intended destination.
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In the year 1986 the US National Science Foundation (NSF) initiated the development of the NSFNet, and exponential growth of the Internet commenced4. In 1990 the ARPANet was replaced by NSFNet and the world came online (world.std.com), becoming the first commercial provider of Internet dial-up access5. In 1992 the US Congress gave the NSF statutory authority to allow commercial activity on the NSFNet. The subsequent relationship between NSFNet and commercial Internet Service Providers (ISPs) became the Internet, as we know it today6. 2. COMMERCIAL SIGNIFICANCE OF THE INTERNET The Internet evolved from an academic and military resource to a global market place. Now well in its way to becoming a mainstream communication medium, the Internet has broken consciousness of governments and law enforcing agencies around the world. The clash of national jurisdictions in the cross border world of the Internet has given rise to much debate about the appropriate regime for deciding Internet disputes and the possible need for an international convention 7 . The growth of the Internet has raised questions about the enforceability of intellectual property and other legal rights in the cyber world8. Most major international companies have or shortly will have websites. The Internet and in particular the World Wide Web 9 is from a commercial point of view a combination of a shop window and an advertising hoarding10. Powerful brands are imperative for successful trading on the Internet. The new branding issue, which arises with the Internet, is the question of domain names. Realizing the importance of domain names many companies are envisaging strategies to register a domain name with their best-known brands. The growth of the commercial activity on the Internet is built around the web. These special features of the Internet entail several consequences for the formulation of policy in relation to any fact of the Internets operation and one of the major points of controversy in this process is the conflict between domain names and trademarks11.
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By the beginning of the next year ie; 1987 Email link had been established between Germany and China using CSNET protocols, with the first message from china sent on 20 September. 5 This network provides connections to some 4000 research and educational institutions. 6 Murdoch University Electronic Journal of Law, Vol.6 No.1 (March 1999) 7 Graham J.H Smith: Internet Law and Regulation, 2nd Ed (London: Sweet & Maxwell) at 101. 8 V K Unni, Trademarks and the emerging Concepts of Cyber Property Rights, 1 Ed. 2002, at p.15 9 The World Wide Web or simply Web is a way of accessing information over the medium of the Internet. It is an information-sharing model that is built on the top of the Internet. 10 Graham J.H Smith: Internet Law and Regulation, 2nd Ed (London: Sweet & Maxwell) at p. 43. 11 V.K. Unni, Trademarks and the emerging Concepts of Cyber Property Rights, 1 Ed. 2002, at p.15
3. THE CONCEPT OF DOMAIN NAME SYSTEM Domain Names can be termed as the address of computers connected to the Internet. To explain the term more systematically, they act as a short cut to enter in to the head of the system because computers connected to the Internet are defined by unique 32 bit numbers known as Internet Protocol Address. Such addresses are usually represented as four sets of numbers converted in to decimal form and separated by periods, such as ³129.174.101.116´12. These four parts of IP address specify a particular location on the Internet. It is nothing but a replacement for an IP address so that it can be easily remembered by the human intellect. It is the name that one has to type in to the browser to locate any particular website13. A Domain Name has two parts, a name and an extension. A name is a combination of letters A to Z and digits 0 to 914. (E.g.: 007hollywood.com). LEVELS OF A DOMAIN NAME Domain Names themselves consist of two separate parts or levels; a top-level domain name and a second level domain name. For example, in the domain name <arbiter.wipo.int>, which is the location of the WIPO Center's web site, ´int´ is the top-level domain, ³wipo´ is the second level domain and ³arbiter´ is the third-level domain. Top Level Domain Top Level Domain tries to identify the type of entity that operates the individual network attached to the Internet at that particular site. The domain name system allows for two categories of TLD¶s. Generic TLD¶s and country code TLD (gTLD¶s and ccTLD¶s). GTLD¶s describes the type of organization which has a domain name. At present there are seven gTLDs. Out of these three are ³open´ in the sense, there are no restrictions on the person who may register their names in them i.e., any person or entity may register their names in the. They are µ.com¶, µ.org¶ and µ.net¶. The remaining four gTLDs are not so freely available i.e; only selected persons or entities are entitled to register these kinds of gTLD, after they fulfill certain criteria. These TLDs are .int, .edu, .gov, .mil. Generic TLDs .com Description for commercial and personal site
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In this IP address 129 address 129 refers to network, 174 and 101 refers to sub-network and 116 is the computer itself. 13 For instance, to reach the website of www.indlaw.com having a particular IP address, a person must type in to his browser the above-mentioned domain name instead of its difficult IP address 14 Pankaj Jain & Pandey Sangeet Rai; ³Copyright and Trademark laws relating to Computers´, (Eastern Book Company) at p.90
.org .net .edu .gov .mil
for non-profit organizations for companies involved in internet infrastructure for educational institutions for governmental organizations for military agencies
Along with these common TLDs there are also some TLDs depending upon geographical locations. They are generally termed as cc TLD15. At present there are more than 250 cc TLDs all over the world. Many of them are based on the country names in their concise forms and are thus known as cc TLDs. they are, µ.in¶ for India, µ.br¶ Brazil, µ.au¶ for Australia, µ.us¶ for USA etc16. On the 16th November 2000 the Internet Corporation for Assigned Names and Numbers which is the authority responsible for registration of domain names decided to commence negotiations on the seven new TLD17 proposals. The selected proposals are of two types. Four proposals (.biz, .info, .name and .pro) are for relatively large unsponsored TLDs. the other three proposals (.aero, .coop and .museum) are for smaller ³sponsored´ TLDs18. Second Level Domain (SLD) Second level domain names identify what site on the Internet a user is visiting. They are allotted to the parties for making a brand specific or to differentiate a body from other similar entities or competiters. The name .indlaw becomes the SLD in the URL http://www.indlaw.com//. No other entity can have the same SLD with that of same TLDs, so the main difficulty with the SLDs is the allotment of one specific name, which couldn¶t be used if needed any other body or entity as it is possible in the case of TLD. For domain names to be useful there must be a means of translating domain names in to corresponding IP address. That function is performed by machines known as ³Domain Name Servers´ which are part of a distributed database that replicates the structure of the domain name system itself. At the top of the hierarchy are thirteen ³root servers´ each of which holds a list of IP addresses of domain name servers that contain authoritative
Each of these domains bear a two-letter country code derived from standard 3166 of the International Standard organization (ISO 3166). 16 Copyright and Trademark laws relating to computers Pankaj Jain & Pandey Sangeet at p.92 17 Among these new TLDs .aero is for Air transport industry. .biz for Business ,.coop for cooperatives, .info for unrestricted use, .museum for museums, .name for registration by individuals, .pro for use of acountants,lawyers and physicians 18 An un sponsored TLD functions under policies made by the global internet community functions under the ICANN process while a sponsored TLD is a specialized TLD that is most affected by the TLD. For details http://www.icann.org/Hds/
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information for each of the TLDs. In turn the TLD name servers hold lists of IP address for domain name servers containing authoritative information for the second level domain name within that TLD. Every time an Internet connected computer needs to resolve a domain name in to an IP address, its client software queries a default local domain name server. If the user wishes to connect to the site www.yahoo.com the local domain name server checks its cache to determine whether it already holds the IP address corresponding to the particular domain name; if not, it queries another domain name server. The local domain name server contains a file holding the IP addresses of each of the root servers. The local domain name sever can query one of the root servers to find the IP address of a name server that hold authoritative information for the .com domain. Once the local server receives that information, it queries the .com name server on to find the IP address of a second level domain name server holding authoritative information for the yahoo.com domain. It then contacts that second level domain name server, which returns the IP address for the host machine www.yahoo.com. After an IP address has been determined, the user can interact with the web server to access specific pages. 4. RELEVANCE OF DOMAIN NAME IN THE E-ECONOMY In the new e-economy, it is vital that prior to entering in to any sort of business activity a company must be traceable relatively easily on the Internet i.e.: it must have an address in the cyberspace19. This would require its registration under a particular domain name and website. This has been made possible with the emergence of the Domain Name System (DNS). Such registration would enable the company to conduct on-line transaction, as well as make it easily traceable by customers, suppliers etc. The entire basis of the Internet is the Internet Protocol (IP), used for inter computer/server communication. Each computer/server has its own unique all-numeric IP addresses. The fact that all numeric addresses are difficult to remember and not catchy has had a major role to play in the development of the DNS and the emergence of domain names as important corporate assets. Thus, a domain name is a popular substitute for the all-numeric IP address of a particular server. These names do not have any correspondence with the original numeric address20. The systematic recognition of proxy names, explained above is called the ³Domain Name System´. With the advent of e-business, organizations had to cater to new markets and new philosophies, in the fulfillment of which the Internet is to play a profound role. As a result, protection of company¶s right to use it is aspects that every organization has
This may be linked to a company having its Registered Office to which all communication is usually directed. From a technical standpoint, the domain name is a mnemonic term an Internet user uses to instruct a computer to obtain the Internet Protocol number of the desired website, the IP address being the numerical address code needed to find and communicate with a computer anywhere in the world ³hosting´ a website. The use of a site name serves to enable the computer to locate the ID number of the site, to communicate with the website and enable the user to view the web pages.
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to confront21. Domain names now carry goodwill, reputation and high recall value. Further, by the representation of both name and address in the online context, a domain name can serve the classic trademark function of symbolizing a company¶s recognition and goodwill in the marketplace. Domain names are therefore, relevant, because consumers often perceive them as performing in electronic commerce, much the same role as trademarks and trade names historically have played in more traditional modes of business22. 5. DOMAIN NAME AS TRADE MARK Makers of goods throughout the ages have put their names on things they produced. Trademarks are law¶s recognition of the psychological function of symbols 23 . Apart from identifying the source of a product, they also serve a communicative/ psychological function, by which they help to indicate the quality of a product or service24. Under common law trademark is always considered as an inseparable part of the goodwill of the business in which it is used25. There is an argument that the assigned domain names are just addresses and not trademarks or trade names at all since they are merely the mnemonic equals of a web¶s actual identifying address in the Internet system26. But the real fact is that in the virtual space a domain name performs all functions done by a trademark in the real world. As a real space analogy, telephone numbers could act as both names and logical addresses. For example, the word ³LAWYERS´ is the mnemonic for 5299377, which could be the phone number of law firm. These letters correspond to the letters on each button of a telephone instrument. The issue that arises here appears, at a preliminary glance, to be similar to those of domain names; i.e., whether these numbers are protectable as trademarks of the ³owner´. Interestingly, decisions on this issue suggest that domain names could be protectable as trademarks 27 . A comparison between telephone mnemonics and domain names reveals a number of similarities. Both are the alphanumeric equivalence of numbers; both are available to only one user at any point of time; and both serve as means of communication. Further, the use of both can be broadly said to be in relation to goods or services i.e., both have the characteristics of trademark28.
Mitchell Zimmerman & Sally M Abel; ³Securing and Protecting a Domain Name for your Website: Trademarks, Trade Names and Domain Names in Cyberspace´, at http://www.fenwick.com/pub/domain.htm> 22 Since consumers cannot sample a product physically on the Internet, considerable reliance is placed on the prior reputation and goodwill of the person advertising the product on the Internet. This enhances the assurance value that domain names possess. 23 Mishawaka Mfg. Co v. Kaesge Co 316 US 203, 205(1942) 24 Neil J Wilkoff: Trade Mark Licensing (London Sweet & Maxwell, 1995) ch.1. 25 Narayanan P.; Law of Trademarks and Passing off, 5Ed.2000, (Eastern Law House), at p.7. 26 Jain, Pankaj and Pandey Sangeet Rai: Copyright and Trademark Laws relating to Computers, 1 Ed. 2005 (Eastern Book Company),p. 96 27 Holiday Inns v. 800 Reservation 838 F. Supp Tenn. 1993)1247 (E.D.) 28 Decision of April 4 1997 (34 91/96) Cited from, Tortsen Bettinger, ³Trademark Law in Cyberspace- the Battle for Domain Name´, at http://www.inet.de/denic/bettinger-engl.html
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In American Civil Liberties v. Reno29, it was held that, Internet domain names are similar to telephone mnemonics, but they are of greater importance, since there is no satisfactory Internet equivalent to a telephone company white pages or director assistance, and domain names may be a valuable corporate asset, as it facilitates communication with a customer base. Further in Card Service International Inc. V. Mc Gee 30 , it was held that the domain name serves function as the trademark and is not a mere address or like finding number on the Internet and, therefore, it is entitled to equal protection as domain name31.Also in Mark & Spencer V. One in a Million32 , it was held that that if any person who personally registers a domain name on account of its similarity to the name, brand name or trademark of an unconnected commercial organization the public is likely to be deceived and an action for passing off, and the injunction will lie in terms which will make the name commercially useless to the dealer. In India, till recently not much importance was given to the domain name in relation to it being identified with the trademark of the company of the company, though recently there have been some healthy developments in this field and recovering the domain names squatted by others. The decision of Indian courts holding that the Internet domain names are entitled to be protected as trademark is a short gun in the arm for the genuine entrepreneur who is on the Internet and also those who propose to be on the Internet. In this respect the famous cases of Delhi High Court -Yahoo Inc. v. Akash Arora33, and another and that of the Bombay High Court- Rediff Communication Ltd v. Cyber Booth,34 are the most referred ones. In the landmark case of Rediff Communication Ltd v. Cyber Booth35, the court found that ³Internet domain names are of importance and can be valuable corporate asset. A domain name is more than an Internet address and is entitled to equal protection as trademark .With the advancement and progress in technology, the services rendered on the sites have also come to be recognized and accepted and are being given protection so as to protect such provider of service from passing off the service rendered by others as his service´. In Satyam Infoway Ltd v. Sifynet solutions Pvt.Ltd 36 held that a domain name may have all the characteristics of a trademark and could found an action for passing off. Further it was also held that a domain name is entitled to legal protection equal to that of a trademark. Therefore, the domain name not only serves as an address for Internet communication but also identifies the specific Internet site. It was further held that ³ordinary consumers/users seeking to locate the functions available in one domain name may be confused if they accidentally arrived at a different but similar website which offers no such services. Such users could well conclude that the first domain-owner would thereby lose its
929 F.Supp. 824, (830-845) (E.D. P. 1996) 950 F. Supp. 737 (E.D. V. 1997) 31 It was further held that a domain name is more than a mere Internet address for it also identifies the Internet site to those who search it, much like a persons name identifies a particular person or more relevant to trademark disputes, a company¶s name identifies a specific company. 32 1998 FSR 265 33 1999 PTC (19) 210 (Delhi) 34 AIR 2000 Bom.27 35 AIR 2000 Bom.27 36 2004 (6) SCC 145
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customers. It is apparent, therefore, that a domain name may have all the characteristics of a trademark and could found an action for passing off´ 37. Through these and various other decisions, the Indian judiciary has established the nexus between trademark and domain names, thus enabling the domain names to be protected as trademarks. 6. DOMAIN NAME DISPUTES Thus, the discovery of the importance of a domain name has ensured that organizations are willing to devote to the acquisitions of these names, a considerable amount of time and money. This quest has led to the only-to-be-expected conflicts over the registration of domain names. Broadly domain name disputes have arisen in two contexts. In the first, an individual or organization with no other rights to a name may register for reasons-extortion, appropriation of goodwill, diversion of web-traffic, defamation etc. The second kind of conflict arises between persons who are equally entitled to a name ± a situation that often, given the global nature of the Internet. The first and crucial type of domain name disputes is cyber squatting. Cyber squatting refers to the practice of registering a trademark as a domain name with the intent of profiting from it by selling it, usually to the trademark owner. As long as the cyber squatting owns the domain name the trademark owner cannot register its own trademark as domain name. In this sense, the cyber squatter breaches the legal rights of a trade marks owner to use its trademark. This often happens with well known companies. These companies will be forced to buy the domain name similar to their trade mark for high prices demanded by the domain name holder as it will prejudicially affect their business. Panasonic, Tata, Bennet & Coleman, Fry¶s Electronics. Hertz, Mc Donalds, Coke, Nasdaq, Viacom, MTV, Levis B.datton, Readers Digest and Avon were amongst the first victims of cybersquatters. Political cybersquatting is yet a type of cybersquatting. Political cybersquatting is a term used to describe the situation where an entity advocating a particular, social, political, or other opinion registers a domain name that will induce individuals with the opposite opinion to visit to its site38. The second problem associated with the domain name system is profit grabbing. In this kind of domain name dispute, the defendant indulges in the registration of a domain name similar to the name in order to gain profits act of such business. In Profit grabbing the domain name registrant uses the trade name of the original owner in its domain and reaps high profit from
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Also see, Yahoo Inc v. Akash Arora (1999) 19 PTC 201, Niton Corp. V. Radiation Monitoring Devices, Inc 27F Supp. 2d (102) D Mass. 1998, Marks Spencer PLC v. One in a Million 1998 FSR 265,in all these cases the Court enjoined the defendant from using its website to imply any association between itself and plaintiff.
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Planned Parenthood Federation of America Inc. v. Bucci 42 USPQ 2d (BNA) 1430, U.S. Dist. Lexis 3338 (SDNY 1997).
constructing the website in such a fashion that leads the user to believe that real owner of the trade name is the domain name registrant and no other person. People generally get confused between the concepts of cyber squatting and profit grabbing39. However, in certain cases both may occur. For example, the defendant initially uses the disputed domain name similar to the plaintiff¶s mark and subsequently offers it for40. The domain name system provides the opportunity for others to obtain a second level domain with only as slight variation of some one else¶s well known or not so well-known domain names. They generally make a minor change in the existing domain name which has already established its goodwill and then proceed in getting profits with the use of such domain names leading to confusion and misrepresentation in the minds of the general public with regard to the owner of such domain name. This practice is generally called ³typosquatting´. Indian courts have applied the principle of passing off in deciding misspelling or identical domain name disputes or otherwise called typo squatting41.Another variation in domain name litigation with respect to typo squatting occurs when someone uses a famous trademark in the post domain name µpath¶ of a URL in order to increase the number of visits to its webpage. The post domain path of a URL appears after the domain name in the URL as a user delves further into the pages of a website. It shows how the websites data is organized within the host computers file42. In Concurrent claims43 parties are involved in a dispute over a domain name where each party claims that they are the true and legitimate owners of the acquired domain name on account of similar mark being used by both of them in their respective businesses or products. In the real world different people can use the same trade name for their respective businesses in their own countries. However when such people enter the cyber world, both cannot get the benefit of their traditional trade name as their domain name. There can never be two registrations for the same domain name44. This unique feature of domain name also has given way for disputes45.
7. MEASURES FOR THE PROTECTION OF DOMAIN NAMES (i) INTERNATIONAL (a) Uniform Dispute Resolution Policy
Satyam Infoway Ltd. Sifynet Solutions Pvt. Ltd (2004) 6 SCC 145 Maruti Udyog Hd & Suzuki motor corporation v. World Information pages 2000 PTC 636 (WIPO). 40 Pankaj Jain & Pandey Sangeet Rai; ³Copyright and Trademark laws relating to Computers´, (Eastern Book Company) at p.119 41 Rediff Communications Ltd.V. Cyberbooth AIR 2000 Bom. 27, Online India Capital Co. Pvt. Ltd V. Dimensions Corporate: 2000 PTC 396 (Del.), Yahoo!Inc. v. Akash Arora & Anr. 1999 (19) PTC 210 (Del.), Invest Smart India Ltd. v. ICICI; suit no.1040 of 2000;notice of motion no. 860 of 2000, Info Edge (India) Pvt. Ltd v. Shailesh Gupta 2002 (24) PTC 355, Manish Vij v. Indra Chugh AIR 2002 Del. 243. For example, in www.xyz.com/path=xyz/>,¶/path=xyz¶ is the post domain name path. Also called string conflicts or twins 44 For instance, there may exist two owners of one trade name i.e., Lighthouse Metals and Lighthouse Chemicals. 45 Nissan Motors Co. Ltd. v. Nissan Computer Corporation AIR 2002 Del. 243
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In response to the growing concerns relating to intellectual property issues associated with domain names and the increasing number of abusive domain name registrations, a White Paper was produced by the United States Department of Commerce,46 which called on WIPO to conduct a study and make recommendations for a uniform approach to resolving trademark/domain name disputes involving cybersquatting 47 . In addition, the Internet Corporation for Assigned Names and Numbers, a non-profit California-based corporation was formed in 1998 for the purpose of, among other things, addressing the management of the domain name system48. After consideration and approval by the WIPO Member States, the First WIPO Report was submitted to ICANN for its review. In August 1999, ICANN resolved to adopt the Uniform Domain Name Dispute Resolution Policy 49 which, essentially, implements the above WIPO recommendations. ICANN also appointed dispute resolution service providers to administer disputes that are brought under the UDRP, the WIPO Arbitration and Mediation Center being the first such dispute resolution service provider. The UDRP came into effect on December 1, 1999. Since its entry into force, the UDRP has been widely used as a tool to combat the abusive registration of domain names by cyber squatters, with some 7,000 gTLD cases filed under the procedure by the end of 2002. (b) World Intellectual Property Organisation The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations. It is dedicated to developing a balanced and accessible international intellectual property (IP) system, which rewards creativity, stimulates innovation and contributes to economic development while safeguarding the public interest. WIPO was established by the WIPO Convention in 1967 with a mandate from its Member States to promote the protection of Intellectual Property throughout the world through cooperation among states and in collaboration with other international organizations. Its headquarters is in Geneva (Switzerland). Although there are four authorized dispute resolution service providers 50 , WIPO handles the bulk of disputes. As soon as the Uniform Domain Name Dispute Resolution Policy came into effect the first dispute was filed with the WIPO Arbitration and Mediation center. (ii) NATIONAL LEVEL
(a) Legislative Measures
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Management of Internet Names and Addresses, 63 FED, REG 31,741 (June 10, 1998), available at http;//www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm 47 As opposed to conflicts between trademark holders with legitimate competing rights. 48 Documentation concerning ICANN can be found at ICANN¶S WEB SITE, at http;//www.icnn.org 49 Uniform Dispute Resolution Policy, adopted on August 26, 1999, available at http://www.icann.org/udrp-policy24oct99.htm. 50 Apart from WIPO, providers approved by ICANN are: (a) The National Arbitration Forum (b) The C.P.R. Institute for Dispute Resolution (c) Disputes Resolution Consortium.
In India, there is no specific law dealing with registration, control, protection and regulation of domain names and domain name disputes. In resolving domain name disputes Indian courts are extensively applying the traditional law of passing off. The courts have also granted injunction against the defendant on the basis of prima facie cases established by the plaintiff. The passing off common law action has far reaching effects. It can be smoothly applied in domain name cases. In India the law regarding passing off and infringement is well governed under the provisions of the Trademarks Act 1999. The definition of the terms 'mark' and 'trademark' is so widely given that it conveniently covers domain name51. (c) Judicial Approach Indian courts have, over the last few years, been the scene of quite a spate of domain name disputes. The traditional method of resolving legal conflict court litigation is largely organized on a territorial basis. Each country has its own courts, which may be called upon to rule upon disputes falling under their jurisdiction, mostly on the basis of the application of local laws. This territoriality based dispute resolution model faces a number of challenges when applied to disputes arising on the Internet, where activity occurs with little regard for physical boundaries. Indian courts have been extremely vigilant in protecting the interests of the trademark owners who have been at the receiving end of cybersquatters52. 8. CONCLUSION. ³What is in a name? That which we call a rose by any other name would smell as sweet´ . This question has proved ironical for companies/ individuals and such other entities who want a domain in the cyber world. The emergence of cyberspace is creating far reaching effects in all most all fields of human activity. With the emergence of e-commerce domain names are no longer merely considered as addresses of computers. Domain name is having all attributes of a trademark in cyberspace. Domain name is globally accepted to have the status of a trademark. It is a business identifier of companies in the Internet. Due to the importance of
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Sections 2(1) (m) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof; Section 2 (zb) "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and- (i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark. 52 For instance see, Titan Industries Ltd. v. Prashant Kooapati Delhi High Court, Interlocutory Interim Application No. 787 of 1998 in Suit No. 179 of 1998, Yahoo!Inc. v. Akash Arora & Anr 1999 PTC (19) 210 (Delhi), Rediff Communication Ltd v. Cyber Booth 2000 PTC 209. 53.William Shakespeare : Romeo and Juliet, act ll, sc.1 seen at Lewis Henry: Best Quotations for all occasions, 1st Ed.(New York: Ballantine Bokks,1986)at 311
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domain name in virtual space its abusive practice is also increasing day by day. The global community is trying to face domain name disputes in many ways. In India, in a large number of domain name disputes, courts have generally applied the law of passing off in resolving such disputes. The object of the law of passing off is to protect some form of property-usually goodwill of the plaintiff in his business or in the work which produces or something of that kind. The provisions of the Trademarks Act, 1999 Act are in conformity with the TRIPS Agreement and the W.T.O provisions. But no courts have the power to grant a remedy in passing off action of transferring the domain name back to the plaintiff. Section 135 of the Act restricts the courts from such transfers and only enables them to restrain the defendants from use of such domain names which might be similar or identical to the plaintiffs or which might have been acquired with no legitimate right .Thus the only solution is the formulation of a new remedy empowering the courts to transfer domain names to the legitimate owners or the plaintiffs if they are so. The main advantage of the UDRP procedure when compared with court litigation is that it typically provides a faster and cheaper way of resolving a dispute regarding the registration and use of an Internet domain name. The procedure is considerably more informal than litigation and the decision-makers are experts in such areas as trademark law, domain name issues, electronic commerce, and the Internet and dispute resolution. Practice shows that in the absence of exceptional circumstances it takes on average no more than two months to resolve a UDRP dispute. Another advantage of the UDRP is that, in contrast to national court decisions, which require time-consuming enforcement procedures, a UDRP decision merely needs to be notified to the registrar, which is then required to implement the Administrative Panel finding. Despite the fact that the ICANN policy is resolving the disputes in coordination with various panels like WIPO, e-Resolution, etc. which are extensively engaged and occupied in resolving disputes of domain names and then transferring the same to the plaintiffs from the defendant, keeping in mind the increasing number disputes of their nature, courts must also be empowered in the near future to transfer domain name back to the legitimate owners with proper reasons for their finding. In addition to these in all the cases concerning domain name hijacking courts should be allowed to grant initial relief to the affected parties. Also there should be made a uniform law regulating the registration of domain names, in that case InterNic have to revert its policy of first come first save in domain name registration. The other possible solution for minimizing domain name disputes is the creation of a global directory that would map the name of a company to its web page. The entire user would have to do would be to type in the name of the business, and possibly the products they provide. The directory service would find the requested web site by looking up the IP address.
Sanu Rani Paul 1. INTRODUCTION The word Internet is not just an expression to connote one of the electronic media rather it is a notion of wider amplitude. To get a better explanation of this the origin of the same should be looked into. The idea of Internet, though considered by a number of countries including United Kingdom, was initially developed by the U.S. with the substantial funding from ARPA in 1964. The space race that was prevailed during the IInd World War can be identified as a catalyst for the development of Internet. The connection between space race and the Internet is less known but equally significant. The fist artificial satellite Sputnik was launched in 1957 to great consternation in the U.S. defense establishment. As part of its response the Advanced Research Projects Agency (ARPA) was established under the auspices of the Department of Defense with the remit of establishing U.S. leadership in areas of science and technology which might possess military application. Thus the concept of internet was evolved. The project was based upon ideas drawn up by Paul Baran of the RAND Corporation, an organization described as America¶s foremost Cold-War Think-Tank. Its genesis lay in the desire to find a method of enabling the US military and government to maintain communications after nuclear war1. The earlier ARPA formed the ARPANET, linked computers and computer networks owned by the military, defense contractors and university libraries conducting defense related research 2 . Another development was the introduction of TCP/IP 3 protocols which enable any user to connect to the internet. In 1972 U.S. Defence Research Project Agency (DARPA) initiated a research programme the objective was to develop communication protocols that would allow networked computers to connect transparently across multiple, linked packet networks. This was called the ³Internet ting Project´ and the system of networks that emerged from the research was known as ³Internet´. In the year 1975 the ARPANET was transformed by DARPA to the Defence Communication Agency (DCA) as Operational Networks and in 1979 USENet was introduced. Subsequently, due to the growth of the host database, the hosts were no longer possible on one computer. There took place the genesis of domain name system which allowed the database to be distributed on many individual servers.
In fact, the Internet was conceived by U.S. Defense Department military strategies, whose aim was to build a decentralized computer network resilient to hostile attacks. The theory was that a distributed network would be more resilient to repeated attacks than a centralized network. 2 ARPANET was a network that connected major computers at the University of California at Los Angels, the University of California at Santa Barbara, Standford Research Institute and the University of Utah. For details http://info.iso.org/internet /brief.html 3 The TCP component is responsible for converting messages in to streams of packets whilst the IP is responsible for addressing and routing the packets in to their intended destination.
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In the year 1986 the US National Science Foundation (NSF) initiated the development of the NSFNet, and exponential growth of the Internet commenced4. In 1990 the ARPANet was replaced by NSFNet and the world came online (world.std.com), becoming the first commercial provider of Internet dial-up access5. In 1992 the US Congress gave the NSF statutory authority to allow commercial activity on the NSFNet. The subsequent relationship between NSFNet and commercial Internet Service Providers (ISPs) became the Internet, as we know it today6. 2. COMMERCIAL SIGNIFICANCE OF THE INTERNET The Internet evolved from an academic and military resource to a global market place. Now well in its way to becoming a mainstream communication medium, the Internet has broken consciousness of governments and law enforcing agencies around the world. The clash of national jurisdictions in the cross border world of the Internet has given rise to much debate about the appropriate regime for deciding Internet disputes and the possible need for an international convention 7 . The growth of the Internet has raised questions about the enforceability of intellectual property and other legal rights in the cyber world8. Most major international companies have or shortly will have websites. The Internet and in particular the World Wide Web 9 is from a commercial point of view a combination of a shop window and an advertising hoarding10. Powerful brands are imperative for successful trading on the Internet. The new branding issue, which arises with the Internet, is the question of domain names. Realizing the importance of domain names many companies are envisaging strategies to register a domain name with their best-known brands. The growth of the commercial activity on the Internet is built around the web. These special features of the Internet entail several consequences for the formulation of policy in relation to any fact of the Internets operation and one of the major points of controversy in this process is the conflict between domain names and trademarks11.
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By the beginning of the next year ie; 1987 Email link had been established between Germany and China using CSNET protocols, with the first message from china sent on 20 September. 5 This network provides connections to some 4000 research and educational institutions. 6 Murdoch University Electronic Journal of Law, Vol.6 No.1 (March 1999) 7 Graham J.H Smith: Internet Law and Regulation, 2nd Ed (London: Sweet & Maxwell) at 101. 8 V K Unni, Trademarks and the emerging Concepts of Cyber Property Rights, 1 Ed. 2002, at p.15 9 The World Wide Web or simply Web is a way of accessing information over the medium of the Internet. It is an information-sharing model that is built on the top of the Internet. 10 Graham J.H Smith: Internet Law and Regulation, 2nd Ed (London: Sweet & Maxwell) at p. 43. 11 V.K. Unni, Trademarks and the emerging Concepts of Cyber Property Rights, 1 Ed. 2002, at p.15
3. THE CONCEPT OF DOMAIN NAME SYSTEM Domain Names can be termed as the address of computers connected to the Internet. To explain the term more systematically, they act as a short cut to enter in to the head of the system because computers connected to the Internet are defined by unique 32 bit numbers known as Internet Protocol Address. Such addresses are usually represented as four sets of numbers converted in to decimal form and separated by periods, such as ³129.174.101.116´12. These four parts of IP address specify a particular location on the Internet. It is nothing but a replacement for an IP address so that it can be easily remembered by the human intellect. It is the name that one has to type in to the browser to locate any particular website13. A Domain Name has two parts, a name and an extension. A name is a combination of letters A to Z and digits 0 to 914. (E.g.: 007hollywood.com). LEVELS OF A DOMAIN NAME Domain Names themselves consist of two separate parts or levels; a top-level domain name and a second level domain name. For example, in the domain name <arbiter.wipo.int>, which is the location of the WIPO Center's web site, ´int´ is the top-level domain, ³wipo´ is the second level domain and ³arbiter´ is the third-level domain. Top Level Domain Top Level Domain tries to identify the type of entity that operates the individual network attached to the Internet at that particular site. The domain name system allows for two categories of TLD¶s. Generic TLD¶s and country code TLD (gTLD¶s and ccTLD¶s). GTLD¶s describes the type of organization which has a domain name. At present there are seven gTLDs. Out of these three are ³open´ in the sense, there are no restrictions on the person who may register their names in them i.e., any person or entity may register their names in the. They are µ.com¶, µ.org¶ and µ.net¶. The remaining four gTLDs are not so freely available i.e; only selected persons or entities are entitled to register these kinds of gTLD, after they fulfill certain criteria. These TLDs are .int, .edu, .gov, .mil. Generic TLDs .com Description for commercial and personal site
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In this IP address 129 address 129 refers to network, 174 and 101 refers to sub-network and 116 is the computer itself. 13 For instance, to reach the website of www.indlaw.com having a particular IP address, a person must type in to his browser the above-mentioned domain name instead of its difficult IP address 14 Pankaj Jain & Pandey Sangeet Rai; ³Copyright and Trademark laws relating to Computers´, (Eastern Book Company) at p.90
.org .net .edu .gov .mil
for non-profit organizations for companies involved in internet infrastructure for educational institutions for governmental organizations for military agencies
Along with these common TLDs there are also some TLDs depending upon geographical locations. They are generally termed as cc TLD15. At present there are more than 250 cc TLDs all over the world. Many of them are based on the country names in their concise forms and are thus known as cc TLDs. they are, µ.in¶ for India, µ.br¶ Brazil, µ.au¶ for Australia, µ.us¶ for USA etc16. On the 16th November 2000 the Internet Corporation for Assigned Names and Numbers which is the authority responsible for registration of domain names decided to commence negotiations on the seven new TLD17 proposals. The selected proposals are of two types. Four proposals (.biz, .info, .name and .pro) are for relatively large unsponsored TLDs. the other three proposals (.aero, .coop and .museum) are for smaller ³sponsored´ TLDs18. Second Level Domain (SLD) Second level domain names identify what site on the Internet a user is visiting. They are allotted to the parties for making a brand specific or to differentiate a body from other similar entities or competiters. The name .indlaw becomes the SLD in the URL http://www.indlaw.com//. No other entity can have the same SLD with that of same TLDs, so the main difficulty with the SLDs is the allotment of one specific name, which couldn¶t be used if needed any other body or entity as it is possible in the case of TLD. For domain names to be useful there must be a means of translating domain names in to corresponding IP address. That function is performed by machines known as ³Domain Name Servers´ which are part of a distributed database that replicates the structure of the domain name system itself. At the top of the hierarchy are thirteen ³root servers´ each of which holds a list of IP addresses of domain name servers that contain authoritative
Each of these domains bear a two-letter country code derived from standard 3166 of the International Standard organization (ISO 3166). 16 Copyright and Trademark laws relating to computers Pankaj Jain & Pandey Sangeet at p.92 17 Among these new TLDs .aero is for Air transport industry. .biz for Business ,.coop for cooperatives, .info for unrestricted use, .museum for museums, .name for registration by individuals, .pro for use of acountants,lawyers and physicians 18 An un sponsored TLD functions under policies made by the global internet community functions under the ICANN process while a sponsored TLD is a specialized TLD that is most affected by the TLD. For details http://www.icann.org/Hds/
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information for each of the TLDs. In turn the TLD name servers hold lists of IP address for domain name servers containing authoritative information for the second level domain name within that TLD. Every time an Internet connected computer needs to resolve a domain name in to an IP address, its client software queries a default local domain name server. If the user wishes to connect to the site www.yahoo.com the local domain name server checks its cache to determine whether it already holds the IP address corresponding to the particular domain name; if not, it queries another domain name server. The local domain name server contains a file holding the IP addresses of each of the root servers. The local domain name sever can query one of the root servers to find the IP address of a name server that hold authoritative information for the .com domain. Once the local server receives that information, it queries the .com name server on to find the IP address of a second level domain name server holding authoritative information for the yahoo.com domain. It then contacts that second level domain name server, which returns the IP address for the host machine www.yahoo.com. After an IP address has been determined, the user can interact with the web server to access specific pages. 4. RELEVANCE OF DOMAIN NAME IN THE E-ECONOMY In the new e-economy, it is vital that prior to entering in to any sort of business activity a company must be traceable relatively easily on the Internet i.e.: it must have an address in the cyberspace19. This would require its registration under a particular domain name and website. This has been made possible with the emergence of the Domain Name System (DNS). Such registration would enable the company to conduct on-line transaction, as well as make it easily traceable by customers, suppliers etc. The entire basis of the Internet is the Internet Protocol (IP), used for inter computer/server communication. Each computer/server has its own unique all-numeric IP addresses. The fact that all numeric addresses are difficult to remember and not catchy has had a major role to play in the development of the DNS and the emergence of domain names as important corporate assets. Thus, a domain name is a popular substitute for the all-numeric IP address of a particular server. These names do not have any correspondence with the original numeric address20. The systematic recognition of proxy names, explained above is called the ³Domain Name System´. With the advent of e-business, organizations had to cater to new markets and new philosophies, in the fulfillment of which the Internet is to play a profound role. As a result, protection of company¶s right to use it is aspects that every organization has
This may be linked to a company having its Registered Office to which all communication is usually directed. From a technical standpoint, the domain name is a mnemonic term an Internet user uses to instruct a computer to obtain the Internet Protocol number of the desired website, the IP address being the numerical address code needed to find and communicate with a computer anywhere in the world ³hosting´ a website. The use of a site name serves to enable the computer to locate the ID number of the site, to communicate with the website and enable the user to view the web pages.
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to confront21. Domain names now carry goodwill, reputation and high recall value. Further, by the representation of both name and address in the online context, a domain name can serve the classic trademark function of symbolizing a company¶s recognition and goodwill in the marketplace. Domain names are therefore, relevant, because consumers often perceive them as performing in electronic commerce, much the same role as trademarks and trade names historically have played in more traditional modes of business22. 5. DOMAIN NAME AS TRADE MARK Makers of goods throughout the ages have put their names on things they produced. Trademarks are law¶s recognition of the psychological function of symbols 23 . Apart from identifying the source of a product, they also serve a communicative/ psychological function, by which they help to indicate the quality of a product or service24. Under common law trademark is always considered as an inseparable part of the goodwill of the business in which it is used25. There is an argument that the assigned domain names are just addresses and not trademarks or trade names at all since they are merely the mnemonic equals of a web¶s actual identifying address in the Internet system26. But the real fact is that in the virtual space a domain name performs all functions done by a trademark in the real world. As a real space analogy, telephone numbers could act as both names and logical addresses. For example, the word ³LAWYERS´ is the mnemonic for 5299377, which could be the phone number of law firm. These letters correspond to the letters on each button of a telephone instrument. The issue that arises here appears, at a preliminary glance, to be similar to those of domain names; i.e., whether these numbers are protectable as trademarks of the ³owner´. Interestingly, decisions on this issue suggest that domain names could be protectable as trademarks 27 . A comparison between telephone mnemonics and domain names reveals a number of similarities. Both are the alphanumeric equivalence of numbers; both are available to only one user at any point of time; and both serve as means of communication. Further, the use of both can be broadly said to be in relation to goods or services i.e., both have the characteristics of trademark28.
Mitchell Zimmerman & Sally M Abel; ³Securing and Protecting a Domain Name for your Website: Trademarks, Trade Names and Domain Names in Cyberspace´, at http://www.fenwick.com/pub/domain.htm> 22 Since consumers cannot sample a product physically on the Internet, considerable reliance is placed on the prior reputation and goodwill of the person advertising the product on the Internet. This enhances the assurance value that domain names possess. 23 Mishawaka Mfg. Co v. Kaesge Co 316 US 203, 205(1942) 24 Neil J Wilkoff: Trade Mark Licensing (London Sweet & Maxwell, 1995) ch.1. 25 Narayanan P.; Law of Trademarks and Passing off, 5Ed.2000, (Eastern Law House), at p.7. 26 Jain, Pankaj and Pandey Sangeet Rai: Copyright and Trademark Laws relating to Computers, 1 Ed. 2005 (Eastern Book Company),p. 96 27 Holiday Inns v. 800 Reservation 838 F. Supp Tenn. 1993)1247 (E.D.) 28 Decision of April 4 1997 (34 91/96) Cited from, Tortsen Bettinger, ³Trademark Law in Cyberspace- the Battle for Domain Name´, at http://www.inet.de/denic/bettinger-engl.html
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In American Civil Liberties v. Reno29, it was held that, Internet domain names are similar to telephone mnemonics, but they are of greater importance, since there is no satisfactory Internet equivalent to a telephone company white pages or director assistance, and domain names may be a valuable corporate asset, as it facilitates communication with a customer base. Further in Card Service International Inc. V. Mc Gee 30 , it was held that the domain name serves function as the trademark and is not a mere address or like finding number on the Internet and, therefore, it is entitled to equal protection as domain name31.Also in Mark & Spencer V. One in a Million32 , it was held that that if any person who personally registers a domain name on account of its similarity to the name, brand name or trademark of an unconnected commercial organization the public is likely to be deceived and an action for passing off, and the injunction will lie in terms which will make the name commercially useless to the dealer. In India, till recently not much importance was given to the domain name in relation to it being identified with the trademark of the company of the company, though recently there have been some healthy developments in this field and recovering the domain names squatted by others. The decision of Indian courts holding that the Internet domain names are entitled to be protected as trademark is a short gun in the arm for the genuine entrepreneur who is on the Internet and also those who propose to be on the Internet. In this respect the famous cases of Delhi High Court -Yahoo Inc. v. Akash Arora33, and another and that of the Bombay High Court- Rediff Communication Ltd v. Cyber Booth,34 are the most referred ones. In the landmark case of Rediff Communication Ltd v. Cyber Booth35, the court found that ³Internet domain names are of importance and can be valuable corporate asset. A domain name is more than an Internet address and is entitled to equal protection as trademark .With the advancement and progress in technology, the services rendered on the sites have also come to be recognized and accepted and are being given protection so as to protect such provider of service from passing off the service rendered by others as his service´. In Satyam Infoway Ltd v. Sifynet solutions Pvt.Ltd 36 held that a domain name may have all the characteristics of a trademark and could found an action for passing off. Further it was also held that a domain name is entitled to legal protection equal to that of a trademark. Therefore, the domain name not only serves as an address for Internet communication but also identifies the specific Internet site. It was further held that ³ordinary consumers/users seeking to locate the functions available in one domain name may be confused if they accidentally arrived at a different but similar website which offers no such services. Such users could well conclude that the first domain-owner would thereby lose its
929 F.Supp. 824, (830-845) (E.D. P. 1996) 950 F. Supp. 737 (E.D. V. 1997) 31 It was further held that a domain name is more than a mere Internet address for it also identifies the Internet site to those who search it, much like a persons name identifies a particular person or more relevant to trademark disputes, a company¶s name identifies a specific company. 32 1998 FSR 265 33 1999 PTC (19) 210 (Delhi) 34 AIR 2000 Bom.27 35 AIR 2000 Bom.27 36 2004 (6) SCC 145
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customers. It is apparent, therefore, that a domain name may have all the characteristics of a trademark and could found an action for passing off´ 37. Through these and various other decisions, the Indian judiciary has established the nexus between trademark and domain names, thus enabling the domain names to be protected as trademarks. 6. DOMAIN NAME DISPUTES Thus, the discovery of the importance of a domain name has ensured that organizations are willing to devote to the acquisitions of these names, a considerable amount of time and money. This quest has led to the only-to-be-expected conflicts over the registration of domain names. Broadly domain name disputes have arisen in two contexts. In the first, an individual or organization with no other rights to a name may register for reasons-extortion, appropriation of goodwill, diversion of web-traffic, defamation etc. The second kind of conflict arises between persons who are equally entitled to a name ± a situation that often, given the global nature of the Internet. The first and crucial type of domain name disputes is cyber squatting. Cyber squatting refers to the practice of registering a trademark as a domain name with the intent of profiting from it by selling it, usually to the trademark owner. As long as the cyber squatting owns the domain name the trademark owner cannot register its own trademark as domain name. In this sense, the cyber squatter breaches the legal rights of a trade marks owner to use its trademark. This often happens with well known companies. These companies will be forced to buy the domain name similar to their trade mark for high prices demanded by the domain name holder as it will prejudicially affect their business. Panasonic, Tata, Bennet & Coleman, Fry¶s Electronics. Hertz, Mc Donalds, Coke, Nasdaq, Viacom, MTV, Levis B.datton, Readers Digest and Avon were amongst the first victims of cybersquatters. Political cybersquatting is yet a type of cybersquatting. Political cybersquatting is a term used to describe the situation where an entity advocating a particular, social, political, or other opinion registers a domain name that will induce individuals with the opposite opinion to visit to its site38. The second problem associated with the domain name system is profit grabbing. In this kind of domain name dispute, the defendant indulges in the registration of a domain name similar to the name in order to gain profits act of such business. In Profit grabbing the domain name registrant uses the trade name of the original owner in its domain and reaps high profit from
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Also see, Yahoo Inc v. Akash Arora (1999) 19 PTC 201, Niton Corp. V. Radiation Monitoring Devices, Inc 27F Supp. 2d (102) D Mass. 1998, Marks Spencer PLC v. One in a Million 1998 FSR 265,in all these cases the Court enjoined the defendant from using its website to imply any association between itself and plaintiff.
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Planned Parenthood Federation of America Inc. v. Bucci 42 USPQ 2d (BNA) 1430, U.S. Dist. Lexis 3338 (SDNY 1997).
constructing the website in such a fashion that leads the user to believe that real owner of the trade name is the domain name registrant and no other person. People generally get confused between the concepts of cyber squatting and profit grabbing39. However, in certain cases both may occur. For example, the defendant initially uses the disputed domain name similar to the plaintiff¶s mark and subsequently offers it for40. The domain name system provides the opportunity for others to obtain a second level domain with only as slight variation of some one else¶s well known or not so well-known domain names. They generally make a minor change in the existing domain name which has already established its goodwill and then proceed in getting profits with the use of such domain names leading to confusion and misrepresentation in the minds of the general public with regard to the owner of such domain name. This practice is generally called ³typosquatting´. Indian courts have applied the principle of passing off in deciding misspelling or identical domain name disputes or otherwise called typo squatting41.Another variation in domain name litigation with respect to typo squatting occurs when someone uses a famous trademark in the post domain name µpath¶ of a URL in order to increase the number of visits to its webpage. The post domain path of a URL appears after the domain name in the URL as a user delves further into the pages of a website. It shows how the websites data is organized within the host computers file42. In Concurrent claims43 parties are involved in a dispute over a domain name where each party claims that they are the true and legitimate owners of the acquired domain name on account of similar mark being used by both of them in their respective businesses or products. In the real world different people can use the same trade name for their respective businesses in their own countries. However when such people enter the cyber world, both cannot get the benefit of their traditional trade name as their domain name. There can never be two registrations for the same domain name44. This unique feature of domain name also has given way for disputes45.
7. MEASURES FOR THE PROTECTION OF DOMAIN NAMES (i) INTERNATIONAL (a) Uniform Dispute Resolution Policy
Satyam Infoway Ltd. Sifynet Solutions Pvt. Ltd (2004) 6 SCC 145 Maruti Udyog Hd & Suzuki motor corporation v. World Information pages 2000 PTC 636 (WIPO). 40 Pankaj Jain & Pandey Sangeet Rai; ³Copyright and Trademark laws relating to Computers´, (Eastern Book Company) at p.119 41 Rediff Communications Ltd.V. Cyberbooth AIR 2000 Bom. 27, Online India Capital Co. Pvt. Ltd V. Dimensions Corporate: 2000 PTC 396 (Del.), Yahoo!Inc. v. Akash Arora & Anr. 1999 (19) PTC 210 (Del.), Invest Smart India Ltd. v. ICICI; suit no.1040 of 2000;notice of motion no. 860 of 2000, Info Edge (India) Pvt. Ltd v. Shailesh Gupta 2002 (24) PTC 355, Manish Vij v. Indra Chugh AIR 2002 Del. 243. For example, in www.xyz.com/path=xyz/>,¶/path=xyz¶ is the post domain name path. Also called string conflicts or twins 44 For instance, there may exist two owners of one trade name i.e., Lighthouse Metals and Lighthouse Chemicals. 45 Nissan Motors Co. Ltd. v. Nissan Computer Corporation AIR 2002 Del. 243
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In response to the growing concerns relating to intellectual property issues associated with domain names and the increasing number of abusive domain name registrations, a White Paper was produced by the United States Department of Commerce,46 which called on WIPO to conduct a study and make recommendations for a uniform approach to resolving trademark/domain name disputes involving cybersquatting 47 . In addition, the Internet Corporation for Assigned Names and Numbers, a non-profit California-based corporation was formed in 1998 for the purpose of, among other things, addressing the management of the domain name system48. After consideration and approval by the WIPO Member States, the First WIPO Report was submitted to ICANN for its review. In August 1999, ICANN resolved to adopt the Uniform Domain Name Dispute Resolution Policy 49 which, essentially, implements the above WIPO recommendations. ICANN also appointed dispute resolution service providers to administer disputes that are brought under the UDRP, the WIPO Arbitration and Mediation Center being the first such dispute resolution service provider. The UDRP came into effect on December 1, 1999. Since its entry into force, the UDRP has been widely used as a tool to combat the abusive registration of domain names by cyber squatters, with some 7,000 gTLD cases filed under the procedure by the end of 2002. (b) World Intellectual Property Organisation The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations. It is dedicated to developing a balanced and accessible international intellectual property (IP) system, which rewards creativity, stimulates innovation and contributes to economic development while safeguarding the public interest. WIPO was established by the WIPO Convention in 1967 with a mandate from its Member States to promote the protection of Intellectual Property throughout the world through cooperation among states and in collaboration with other international organizations. Its headquarters is in Geneva (Switzerland). Although there are four authorized dispute resolution service providers 50 , WIPO handles the bulk of disputes. As soon as the Uniform Domain Name Dispute Resolution Policy came into effect the first dispute was filed with the WIPO Arbitration and Mediation center. (ii) NATIONAL LEVEL
(a) Legislative Measures
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Management of Internet Names and Addresses, 63 FED, REG 31,741 (June 10, 1998), available at http;//www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm 47 As opposed to conflicts between trademark holders with legitimate competing rights. 48 Documentation concerning ICANN can be found at ICANN¶S WEB SITE, at http;//www.icnn.org 49 Uniform Dispute Resolution Policy, adopted on August 26, 1999, available at http://www.icann.org/udrp-policy24oct99.htm. 50 Apart from WIPO, providers approved by ICANN are: (a) The National Arbitration Forum (b) The C.P.R. Institute for Dispute Resolution (c) Disputes Resolution Consortium.
In India, there is no specific law dealing with registration, control, protection and regulation of domain names and domain name disputes. In resolving domain name disputes Indian courts are extensively applying the traditional law of passing off. The courts have also granted injunction against the defendant on the basis of prima facie cases established by the plaintiff. The passing off common law action has far reaching effects. It can be smoothly applied in domain name cases. In India the law regarding passing off and infringement is well governed under the provisions of the Trademarks Act 1999. The definition of the terms 'mark' and 'trademark' is so widely given that it conveniently covers domain name51. (c) Judicial Approach Indian courts have, over the last few years, been the scene of quite a spate of domain name disputes. The traditional method of resolving legal conflict court litigation is largely organized on a territorial basis. Each country has its own courts, which may be called upon to rule upon disputes falling under their jurisdiction, mostly on the basis of the application of local laws. This territoriality based dispute resolution model faces a number of challenges when applied to disputes arising on the Internet, where activity occurs with little regard for physical boundaries. Indian courts have been extremely vigilant in protecting the interests of the trademark owners who have been at the receiving end of cybersquatters52. 8. CONCLUSION. ³What is in a name? That which we call a rose by any other name would smell as sweet´ . This question has proved ironical for companies/ individuals and such other entities who want a domain in the cyber world. The emergence of cyberspace is creating far reaching effects in all most all fields of human activity. With the emergence of e-commerce domain names are no longer merely considered as addresses of computers. Domain name is having all attributes of a trademark in cyberspace. Domain name is globally accepted to have the status of a trademark. It is a business identifier of companies in the Internet. Due to the importance of
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Sections 2(1) (m) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof; Section 2 (zb) "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and- (i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark. 52 For instance see, Titan Industries Ltd. v. Prashant Kooapati Delhi High Court, Interlocutory Interim Application No. 787 of 1998 in Suit No. 179 of 1998, Yahoo!Inc. v. Akash Arora & Anr 1999 PTC (19) 210 (Delhi), Rediff Communication Ltd v. Cyber Booth 2000 PTC 209. 53.William Shakespeare : Romeo and Juliet, act ll, sc.1 seen at Lewis Henry: Best Quotations for all occasions, 1st Ed.(New York: Ballantine Bokks,1986)at 311
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domain name in virtual space its abusive practice is also increasing day by day. The global community is trying to face domain name disputes in many ways. In India, in a large number of domain name disputes, courts have generally applied the law of passing off in resolving such disputes. The object of the law of passing off is to protect some form of property-usually goodwill of the plaintiff in his business or in the work which produces or something of that kind. The provisions of the Trademarks Act, 1999 Act are in conformity with the TRIPS Agreement and the W.T.O provisions. But no courts have the power to grant a remedy in passing off action of transferring the domain name back to the plaintiff. Section 135 of the Act restricts the courts from such transfers and only enables them to restrain the defendants from use of such domain names which might be similar or identical to the plaintiffs or which might have been acquired with no legitimate right .Thus the only solution is the formulation of a new remedy empowering the courts to transfer domain names to the legitimate owners or the plaintiffs if they are so. The main advantage of the UDRP procedure when compared with court litigation is that it typically provides a faster and cheaper way of resolving a dispute regarding the registration and use of an Internet domain name. The procedure is considerably more informal than litigation and the decision-makers are experts in such areas as trademark law, domain name issues, electronic commerce, and the Internet and dispute resolution. Practice shows that in the absence of exceptional circumstances it takes on average no more than two months to resolve a UDRP dispute. Another advantage of the UDRP is that, in contrast to national court decisions, which require time-consuming enforcement procedures, a UDRP decision merely needs to be notified to the registrar, which is then required to implement the Administrative Panel finding. Despite the fact that the ICANN policy is resolving the disputes in coordination with various panels like WIPO, e-Resolution, etc. which are extensively engaged and occupied in resolving disputes of domain names and then transferring the same to the plaintiffs from the defendant, keeping in mind the increasing number disputes of their nature, courts must also be empowered in the near future to transfer domain name back to the legitimate owners with proper reasons for their finding. In addition to these in all the cases concerning domain name hijacking courts should be allowed to grant initial relief to the affected parties. Also there should be made a uniform law regulating the registration of domain names, in that case InterNic have to revert its policy of first come first save in domain name registration. The other possible solution for minimizing domain name disputes is the creation of a global directory that would map the name of a company to its web page. The entire user would have to do would be to type in the name of the business, and possibly the products they provide. The directory service would find the requested web site by looking up the IP address.
