MEANING AND FUCNTIONS OF TRADEMARK

Intellectual property rights, inter alia, secure the exclusive rights that individuals obtain upon having generated anything by way of employing their intellect. In the commercial world, a trade mark acts as pillars of distinction, enabling businesses to safeguard their unique identity in an increasingly cutthroat market.

Section 2(1)(zb) of the Trade Marks Act, 1999 defines the term 'trade mark' as 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.

In a nutshell, the functional characteristics of a trade mark include:

  1. Identification of goods and services and source thereof;
  2. Implication of a particular benchmark of quality;
  3. And advertising and sale of the goods/services in question.

INTRODUCTION TO DOMAIN NAMES

Domain names serve as the digital equivalent of physical addresses, guiding users to specific web locations where businesses store information and offer services. Take for instance, the web address https://www.jpassociates.co.in . Herein, the term "jpassociates.co.in" will be regarded as the domain name. These names are extremely pivotal in navigating commerce in the online sphere and their significance transcends mere addresses.

OVERLAP BETWEEN TRADE MARK AND DOMAIN NAMES

With the boom of internet and onset of the digital era, internet's pervasive role in commerce has led to the expansion of the definition of trademarks to encompass domain names, which have evolved beyond being mere web addresses. Domain names end up effectively fulfilling all the functional characteristics of a trademark as have been elaborated in the preceding paragraphs. Consequently, the law has also evolved time and again to include domain names as a legitimate form of trademark, owing to the fact that:

Firstly, a domain name acts as a source identifier, akin to a traditional trademark's role which is distinguishing products or services. It helps establish the identity of a business in the digital space, making it crucial to maintain exclusivity in online presence.

Secondly, the internet has become a thriving hub for commercial activity. The popularity and fame of a brand or entity on the internet holds as much weight as their presence in the physical marketplace. This transformation underscores the importance of safeguarding a brand's online identity, including its domain name, to prevent unauthorized use or exploitation.

Thirdly, when a domain name is associated with services provided by its owner, it falls under the purview of Section 2(1)(z) of the Trademarks Act, 1999. This recognition establishes the domain name's eligibility for trademark protection, similar to tangible goods or services.

JUDICIAL PRONOUNCEMENTS

In light of the foregoing reasons, the courts have taken a rather liberal and expansive view while interpreting the term 'Trade Mark' and have frequently adjudged the inclusion of domain name in the purview of the definition of trademarks. Through the years, in several such pronouncements, the courts have considered the wider scope trademark to include domain names and emphasized on the protection of domain names. Some notable ones amongst those have been the cases of

  • Celador Productions Ltd. vs. Gaurav Mehrotra1, illustrates the convergence of domain names and trademarks to a considerable degree. The defendant started using the domain name, crorepatrikaun.com, which had striking similarity to the plaintiff's game show name, 'KAUN BANEYGA CROREPATI', along with a similar logo, font, and voice. The court ruled that a domain name surpasses being merely a web address; it provides vital information about the owner's goods or services. Consequently, the owner has the right to protect her domain name against such infringements.
  • In a more recent judgement the Calcutta High Court in the case of Rajat Agarwal vs. Spartan Online Pvt. Ltd.2, highlighted the dual role of domain names as not just mere facilitators of internet navigation but also as the identifiers of businesses or services. Emphasizing the necessity of distinctiveness and exclusivity, the judgment highlighted that a domain name must be unique to a business. However, departing from prior rulings, the court did not restrain the defendants from using spartanpoker.com, citing the plaintiffs' lack of substantial investment in developing the associated digital presence despite registering the domain name. This case further stresses the importance of substantial investment and development in establishing exclusive rights over domain names, underscoring the nuanced considerations in their protection within commercial contexts.
  • In the case of Rediff Communication Ltd. v. Cybertooth & Another3 was the one which arises from the registration of well-known brand names with slight alterations in spellings. For example: "Cococom" and "Macdonald.com," aimed at redirecting traffic to their site through typographical errors. In the aforesaid case, the Bombay High Court issued an injunction, prohibiting the defendants from using the domain name 'RADIFF' or any similar name and while doing this, the court held that "When both domain names are considered there is every possibility of internet users being confused and deceived into believing that both domain names belong to one common source and connection although the two belong to two different persons."

DIFFERENCE BETWEEN TRADEMARK AND DOMAIN NAME

The distinction between a trademark and a domain name lies in the operational framework of both. While trade-marks are safeguarded by the domestic laws of a country upon registration, enabling multiple registrations in various countries concurrently; there exists a universal access to domain names, given the border transcending nature of the internet.

This necessitates a worldwide exclusivity for domain names which would surpass the purview of respective domestic laws. It is with the intention to bridge this gap, that international regulation of the domain name system was established through collaborative efforts between the World Intellectual Property Organization (WIPO) and the Internet Corporation for Assigned Names and Numbers (ICANN). The resolution procedure for the potential disputes arising out of clashes amongst similar domain names has been detailed out under the succeeding heads.

NATIONAL DISPUTE RESOLUTION

In India, domain names may be granted protection as a trade mark or service mark under the provisions of Trade Marks Act, 1999, provided that the domain name fulfils all requirements to be properly registered under the Act as elaborated hereinabove. Once registered, the registered proprietor of a domain name will have all those legitimate rights and authorities which are commonly availed by the owners of registered trademarks or services marks in India. For the protection of one's rights vested in the domain name, the existing law offers two options.

  • Suit for Infringement (Statutory Protection)
  • Suit for Passing off (Common Law Protection)

INTERNATIONAL DISPUTE RESOLUTION

The lacuna of domain names in international regulation led to collaborative efforts between the World Intellectual Property Organization (WIPO) and the Internet Corporation for Assigned Names and Numbers (ICANN).

Result? The Uniform Domain Name Dispute Resolution Policy (UDRP), adopted on October 24, 1999, that aims to resolve issues like cyber piracy and trademark dilution. It establishes a structured mechanism for resolving disputes involving domain names through Administrative Panels within the WIPO Arbitration and Mediation Centre.

  • Under the UDNDR Policy, complainants address domain names that; closely resemble a trade mark and are being used in bad faith, or are in infringement of a trade mark under Rule 4(a).
  • Rule 4(b) outlines evidence of bad faith registration, including intentions to sell, prevent trademark owners from obtaining a corresponding domain, disrupt competitors, or confuse users for commercial gain.
  • Rule 4(c) provides defences for accused domain owners, such as using the domain for genuine business purposes, being commonly associated with the domain name, or engaging in non-commercial, fair use without intending to mislead or harm the trademark.

In a recent case before the Arbitration and Mediation Center, WIPO titled G4S Limited v. Milen Radumilo Case No. DME2023-0010, wherein the order was passed in favour of the complainant after having proved that:

  1. The respondent's Domain Name was indeed identical to the trade mark of the complainant.
  2. The respondent had no rights, neither any legitimate interest in respect of the Domain Name.
  3. And lastly, the Domain Name had been registered and was being used in bad faith by the respondent.

CONCLUSION

The Hon'ble Supreme Court in the case of Satyam Infoway Ltd. vs. Siffynet Solutions4, while answering the question as to whether domain names are recognizable as intellectual property, such as trade mark, held, "The domain name not only serves as an address for internet communication but also identifies the specific internet site, and distinguishes specific businesses or services of different companies. Consequently, a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical. 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."

By now, it is well established that the intersection of domain names and trade-marks signs a pivotal moment in the legal landscape, acknowledging the digital evolution of commercial activity. It can only be added further that protecting domain names under trademark law becomes imperative, so as to prevent unauthorized individuals or entities from capitalizing on a brand's goodwill. Cybersquatting, infringement, or trafficking of domain names could harm a brand's reputation and confuse consumers, leading to unfair advantages for those unaffiliated with the trademark and this article has been an attempt at exploring and elucidating upon the same.

KEYWORDS: Trademark, Domain Name, Intellectual Property, Trademark Act 1999, Brand Protection, Online Commerce, Judicial Pronouncements, Cybersquatting, Domain Name Disputes, UDNDR Policy, WIPO, ICANN, Trademark Law, Digital Identity.

META DESCRIPTION: Explore the evolving relationship between trademarks and domain names in the digital age. Uncover the legal nuances, judicial pronouncements, and international dispute resolution frameworks while understanding the intersection between these crucial elements of brand identity and protection.

Footnotes

1. Celador Productions Ltd. vs. Gaurav Mehrotra, 2003 (26) PTC 140 (Delhi)

2. Rajat Agarwal vs. Spartan Online Pvt. Ltd., AIR 2017, (NOC 846) 287

3. Rediff Communication Ltd. v. Cybertooth & Another, 2000 (20) PTC 209 (Bombay)

4. Satyam Infoway Ltd. vs. Siffynet Solutions, 2004 (28) PTC 566 (SC)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.