In the context of the development of e-commerce, the importance of a domain name and its protection to a modern-day businessman is immense. A domain name consists of a top-level domain name and a second-level domain name. The top-level domain name in the above example would be ‘.com’ whilst the second-level domain name would be ‘kodak’. A common practice these days is to have a second-level domain name which consists of the trade mark and/ or trade name of the business as is evident from the said example. Hence, the wrongful use by a third person of a domain name could be extremely harmful to the goodwill, reputation and business of the owner of the domain name. Thus, the primary question which arises is whether a domain name which may consist of a trade mark or trade name can be protected as a form of intellectual property.
However, before dealing with the law on the aspect of protecting domain names, it would be important to have a basic understanding from the technical standpoint as to how the Internet functions and what is the role of a domain name, etc. in order to effectively understand the role of a domain name in practice.
Working of the Internet
As is well known, the Internet is a network of networks. Hence, a fundamental requirement would be that there must exist a system of locating one another as in locating different computers.
The system as it currently exists is that at one end is the user accessing the Internet from, usually, a computer. At the other end is a server, on which is stored in electronic form, the website which the user wishes to access. The user gains access to the Internet at a gateway, either via an internet service provider (ISP) or via a smaller, usually internal, network called an Intranet. In the middle is a highly sophisticated network comprising router and other computers linked together. Each computer connected to the Internet has a unique numerical address known as the Internet Protocol address (for example, 1.256.123.123) so that electronic information is delivered to the right place. To make these identification numbers more user-friendly, they can be associated with identifiers consisting of alphanumeric characters. These identifiers are Internet domain names. Because they are made up from alphanumeric characters, it is possible for the sequence of characters to spell out words and hence trade marks or other signs used by businesses2.
When the Internet was in its infancy, the system of registering domain names was done through a department of the Government of United States of America. However in the 1990s the United States Government put together an interagency working group to formulate a policy on privatising the domain name system. The idea of a new private non-profit corporation to administer the domain name system evolved into the setting up of the ICANN (Internet Corporation for Assigned Names and Numbers). ICANN was formed in 1998 and is a corporation with participants from all over the world dedicated to keeping the Internet secure, stable and interoperable. The ICANN allows different registrars to register domain names for use on the internet. ICANN, however does not control the content on the domain.
Law in India
Now let us examine the legal position in India on the protection of a domain name as a form of intellectual property. The issue is no longer res integra and has been answered categorically by the Supreme Court in the case of Satyam Infoway Limited v. Sifynet Solutions Private Limited3. The respondent in the said appeal had raised the defence that a domain name is merely an address on the Internet. The registration of a domain name with ICANN could not confer any intellectual property right, since the same was a contract with a registration authority allowing communication to reach the owner’s computer via Internet links channelled through the registration authority’s server which was in a way akin to registration of a company name which is a unique identifier of a company but by itself confers no intellectual property rights. The Apex Court, however, negatived the said contention and held, inter alia, as under;
“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. In the commercial field, each domain name owner provides information/services which are associated with such domain name. Thus a domain name may pertain to provision of services within the meaning of section 2(z). A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online Internet location. 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. “As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high. Whereas a large number of trademarks containing the same name can comfortably co-exist because they are associated with different products, belong to business in different jurisdictions, etc., the distinctive nature of the domain name providing global exclusivity is much sought after. The fact that many consumers searching for a particular site are likely, in the first place, to try and guess its domain name has further enhanced this value”. The answer to the question posed in the preceding paragraph is therefore an affirmative.”
The Apex Court, further held that the use of the same or similar domain name may lead to a diversion of users. Diversion of users means that a person may be directed to another website instead of the website he desires to access. To illustrate consider a case where a user is searching for www.kodak. com, but inadvertently types www.kodake.com into the Internet browser or a search engine and is then directed to the webpage of some third party, this would mean that he has been diverted away from the webpage he sought access to. This would be a form of passing of wherein the user of the mark ‘kodake’ is using the goodwill of the mark ‘kodak’ to divert customers to his website. This could impact e-commerce and its features of instant accessibility to users and potential customers and particularly so in areas of overlap between the two domains. Ordinary consumers/ users seeking to locate the functions available under 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 name owner had mis-represented its goods or services through its promotional activities and the first domain owner would thereby lose their custom. It is apparent therefore that a domain name may have all the characteristics of a trade mark and could be protected as such.
Thus, the Apex Court squarely holds that a domain name can be protected as a trade mark. Hence, the proprietor of a trade mark may prevent a wrongful use of a domain name which is identical with and/or deceptively similar to its trade mark by filing proceedings for infringement and/ or passing off.
One factor which must be noted though is that whilst a trade mark is territorial, inasmuch as it would normally be registered within each country separately and protected by the laws of that country, a domain name is registered and used in cyberworld bereft of national boundaries. Thus protection under the national legal system of a country may not always suffice.
To illustrate if Kodak Corporation filed a suit in India against an infringer for injunctive orders against the use of the domain name ‘kodak. com’, the order of the Indian Courts would only be effective within the territory of India and not beyond, even though the infringing website can be accessed from anywhere in the world. Hence, in order to provide a solution to overcome this hurdle, the ICANN adopted the Uniform Dispute Resolution Policy (UDRP).
Uniform Dispute Resolution Policy
The UDRP is a dispute resolution mechanism set up by the ICANN based on the report of the World Intellectual Property Organisation (WIPO). India is one of the 171 countries of the world, who are members of WIPO. WIPO was established as a vehicle for promoting the protection, dissemination and use of intellectual property throughout the world.
The UDRP is incorporated by reference into every agreement for registration of a domain name. The UDRP states that if a third party complainant asserts to the relevant Registrar of domain name that the impugned domain name is identical or confusingly similar to the complainant’s trade mark or that the alleged registrant of the domain name has no rights or legitimate interests in respect of the domain name or that the domain name is being used in bad faith, then the dispute will be submitted to a mandatory administrative proceeding.
Thus, under the UDRP a complaint may be filed by any party based on the criterion required by the policy for either cancellation or transfer of the domain name. The proceedings are heard and decided by the members of the administrative panel. It may be relevant to note that the said mandatory administrative proceeding does not bar recourse to Courts and that the policy provides that either the complainant or the registrant may approach a Court of competent jurisdiction for independent resolution of the disputes before the administrative proceedings are commenced or after they are concluded. In fact, even an order of the administrative panel is not to be executed for a period of 10 days after it is passed to enable the registrant to approach a Court of competent jurisdiction. In such a case, the panel’s decision would normally stand stayed till the outcome in the lawsuit4.
Thus, any person aggrieved by the wrongful use of a domain name has in principle two routes available to him. The person aggrieved may initiate an action for infringement and passing off under the trade mark law in a Court of competent jurisdiction, if the other requirements are met and may also file a complaint under the UDRP for cancellation and/or transfer of the impugned domain name.
Cybersquatting
At this juncture, before concluding, I would like to draw attention to one of the most common problems faced with respect to wrongful use of domain names i.e., cybersquatting. Cybersquatting (also known as domain squatting), according to the United States federal law ‘Anticybersquatting Consumer Protection Act’, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trade mark belonging to someone else. The cybersquatter then offers to sell the domain to the person or company who owns a trade mark contained within the name at an inflated price5.
This is a very nefarious and prevalent practice. Cybersquatters register several trade-marks as domain names and then hoard them, so that the true owner cannot register a domain name in consonance with its trade mark. At this stage the cybersquatter would then offer to sell the domain name to the true owner of the trade mark thereby making a wrongful profit. A recent illustration of this in the Indian context would be the case of Mr. Arun Jaitley. Mr. Jaitley wanted to register a domain name with his name, but was informed that the domain name www. arunjaitley.com was already registered. The Delhi High Court after considering the several facts involved in that matter was pleased to direct transfer of the domain name and grant punitive damages6.
Another form of cybersquatting would be where the top-level domain name is changed to make several different domain names, such as www.arunjaitley.in or www.arunjaitley.org. In such cases also protection may be sought as in the earlier case.
The problem of cybersquatting is rampant and very serious, hence in addition to the protection already available under the law relating to trade marks and under the UDRP, it may be important to draft a specific legislation to meet with and provide an efficacious remedy against such cyber-squatters. The primary need for such a legislation is obvious inasmuch as the prevalent laws do not deal with such situations, but Courts have by broadly interpreting the prevalent statutes carved out remedies.
Considering the importance and prevalence of the Internet in our lives today, it stands to reason that a domain name is a very valuable property. Second-level domain names which normally tend to consist of the trade mark of a business are the key identifiers to enable a consumer to reach the address/ webpage he wishes to access. There may be cases where a consumer reaches a website only to find that the webpage does not belong to the host he is looking for however, the damage of diversion is already done. Hence, it is imperative that all trade mark owners even if they do not maintain a presence in cyberspace ensure that no wrongful use and/ or deceptive use of their trade mark is being used. Such vigilance is necessary to ensure protection of the trade mark and the goodwill and reputation therein as also to prevent unwary consumers from being deceived.
