Domain Name as Intellectual Property: An Analysis

Introduction

With the Covid-19 induced boost to internet usage and the subsequently increased online presence of individuals, we all have entered into a new age called the “e-age”. With the continuous development in digital media, the internet-based presence of every platform has obtained incredible importance. All aspects of life, be they personal or professional, have shifted to the online format. In these times, a Domain name is a necessary element of every business that is indulged in digital activities or has an online presence. With time, business activities on the web have expanded, especially in the past two years, and hence the importance and purpose behind Domain names can’t be ignored. Today, Domain names are not simply the names of the sites of various businesses or organizations, but they act as useful business identifiers which hold an essential role in boosting the popularity of that business entity. Therefore, Domain names act as an online manifestation of brand identifiers of businesses in the present times.

What is a Domain name?

Fundamentally, Domain names are comprehensive, catchy, and easy-to-use addresses to help internet users recall and relocate the web address of a particular site again. It is useful in promotional tasks, and for bringing in and retaining customers. Domain names are therefore names for the data’s location on the World Wide Web and are utilized to find information on the Internet[1]. Generally, Domain names are any set of words that are chosen by the business to represent them, and are mandatorily trailed by .com, .org,.int, .net; .gov, .in, .net, and so on.

In specialized language, a web server requires a Domain Name System (DNS) to make an interpretation of Domain Names and to convert them into IP addresses of the devices, as the internet depends on IP addresses to function. A Domain name acts as a mnemonic for an excessively complicated IP address, facilitating memory of the site’s address on the Web.

Need for Domain names

After the widespread availability of the internet and due to the recent lockdown, the online presence of businesses has increased. Be that as it may, an organization can’t directly establish its identity on the Web without a personality. The IP addresses for sites were too lengthy and hard to recall because of extensive numeric attributes. This encouraged the creation of Domain Name Systems (DNS). DNS was acquainted as a substitute with the all-numeric conventional IP address. DNS fundamentally functions with the aim of converting complex IP addresses, locations of mails, messages, and sites into simpler Domain names for easy access by general users. Domain names are presently additionally alluded to as being significant corporate assets containing goodwill.

Domain Name as an Intellectual Property

In general, Domain Name Property refers to the individual or organizations’ property with respect to the Domain name. In particular, Domain Name Intellectual Property refers to the markers through which internet users are able to track down the sites. It acts as an identifier for the business. Like a Trademark, a Domain name is also related to a specific firm and is distinguishable. Domain names can be treated as a Trademark only if they are able to fulfill certain conditions.

Trademarks

The Trademark Act, 1999 defines Trademark as: “trademark 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 the shape of goods, their packaging and combination of colors.”[2]It can include a brand name, label, device, signature, word, heading, letter, numeral, packaging, the shape of goods, the combination of colors, and others.

The proprietor of a trademark acquires an exclusive right to use the mark on his goods and services, successfully distinguishing them from those of his competitors in the market. A trademark also enables the consumers to associate a particular good or service with a certain mark, and this helps in retaining customers. In this manner, fundamentally, a trademark and a Domain name serve in a similar capacity, of being ‘identifiers’ of a business.

Domain names as Trademarks

A differentiating factor between trademarks and Domain names is that the process of acquiring a Domain name does not involve any examination concerning the distinctiveness of capacity to distinguish itself, unlike for trademarks. Any set of descriptive words or even common names can be registered as Domain names, but these may not be distinctive enough to be treated as a trademark. A few organizations have utilized their trademarks as Domain names, like nike.com, gucci.com, etc. Alternatively, an organization can also choose to trademark its Domain name and get it protected against unauthorized usage. Due to the lack of any specific law in place for the governance of Domain names, the Trademark Act, 1999 applies to it.

Domain names can be enrolled as trademarks after they satisfy every one of the conditions that are needed to be enlisted as a trademark. This requires the Domain name to be:

• Unique,
• Competent of identifying and distinguishing itself and the business’s goods and services from those of others in the market, and
• Able to operate as a reliable identifier of the web source for the business’s goods and services.

Satyam Infoway Ltd. versus Siffynet Solutions(2004)[3]

This is a landmark case and is the first to discuss the issue of whether Domain names can be granted protection as Trademarks. In the instant case, the Supreme Court of India articulated that the Indian Trade Marks Act, 1999 is operative on Domain names, but it is subject to the Domain name having all the relevant features of the trademark. The reasoning provided by the Court was that a user may get confused between two sites of similar names, and may enter the wrong one. He might find goods and services not associated with the mark and might be led to believe that the legitimate owner was misrepresenting its products, which could lead to the owner suffering a loss of market share and goodwill.

Rajat Agarwal vs. Spartan Online (2017)[4]

In the instant case, the Calcutta High Court, referred to the aforementioned case and held that aDomainname is picked 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 Internet location.”The Court proceeded to express the need for a Domain name to be distinguishable to maintain the uniqueness of the brand of the business.

Why and How to register and protect your Domain name?

Like a trademark, a Domain name also is related to a specific business and makes a novel element. In this day and age, when a large portion of the work is done on the World Wide Web, it can assist with keeping others from deceiving or stealing one’s customers. Consequently, it is vital for a business entity to get one’s Domain name registered.

World Intellectual Property Organization (WIPO) is the foremost body governing IPs across the globe, and it plays an indispensable role in the registration of Domain names and in facilitating Domain names dispute resolution. It does so in alliance with the Internet Corporation for Assigned Names and Numbers (ICANN). The Domain names are registered and protected as trademarks or service marks at the global level solely by the organization ICANN, in addition to the national and international protection provided under the respective national Trademark Laws and other applicable International Trademark Treaties. WIPO and ICANN have together developed a list of registrars concerning Domain name registrations. Further, ICANN had also developed an efficient and effective conflict resolution policy in 1999, called the ‘Uniform Domain Name Disputes Resolution Policy’ (UDNDR Policy).

Therefore, ICANN is answerable for the organization of Top Level Domain Names. The administrator of the Top Level Domain (TLD) allocates the Domain names if the Domain name hasn’t already been taken up. For the Indian Domain names (ending with ‘.in’), the administration and activities of .IN Registry is superintended by the National Internet Exchange of India (NIXI)[5].

In India, the Domain names are allowed protection as per the provisions of the Trademarks Act, 1999, given that the Domain name appropriately and satisfactorily fulfills all requirements to be registered under the aforesaid Act. When registered, the Domain name owner can enjoy all the rights that a trademark owner or a service mark owner enjoys in India. This likewise comprises the option to sue for infringement or passing off.

1. For infringement: If any individual uses a validly registered trademark without the consent of the owner, he will be held liable for trademark infringement under Section 29 of the Trademarks Act.
2. For passing off: a proprietor of a brand mark, who hasn’t yet got it registered, is also entitled to protection if he:
3. Had used that mark earlier,
4. His mark has gained uniqueness, and
5. There is deception by any other person with regard to his goods which might potentially deceive the public.

So if a Domain name is available and not already protected by some other company engaged in a business similar to that of the applicant, an applicant can register the Domain name to get it trademarked. ICANN provides a list of approved registrars. The applicant can register under any of them by paying a fee and providing relevant personal information. Once the Domain name is registered, the enlisted proprietor obtains the right to exclusively use that address for his business, but this right in itself does not bar other entities in the market from using the name for a business or product.

The People Interactive (India) Pvt. Ltd. vs. Vivek Pahwa & Ors (2016)[6]

In the instant case, the Bombay High Court opined that the Domain name, “[…] is the Internet equivalent of a physical or terrestrial address. It directs a user to a particular part of the Web where a Domain name registrant stores and displays his information, and offers his services.” It also managed to establish the principle in passing off the debate between shaadi.com and secondshaadi.com. The court held that ‘shaadi’ is a nonexclusive term, and that ‘shaadi.com’ is protected only as a Domain name for usage on the web, and not as a general term. Both ‘shaadi.com’ and ‘secondshaadi.com’ were held to be valid, distinguishable, and descriptive Domain names, capable of being trademarked.

Bigtree Entertainment v Brain Seed Sportainment(2018)[7]

In the instant case, the Delhi High Court denied the Plaintiffs, owners of the site ‘bookmyshow.com’, a stay order against the Defendant’s utilization of the Domain name ‘bookmysports.com’. The court, taking into account that the  prefix ‘bookmy’ of the Plaintiff’s brand name ‘bookmyshow’ was not distinguishable and had not gained uniqueness in the eyes of the public, the Defendants cannot be restricted from using the same.

It is of utmost importance to know that the Domain name dispute doesn’t fall under Trade and Merchandise Marks Act, 1958 or the Information Technology act, 2000 of India^[8].

.IN Domain Dispute Resolution Policy (INDRP) in India

The.IN Domain Dispute Resolution Policy (INDRP) has been adopted by NIXI, incorporated by reference to the Registry Accreditation Agreement (RAA), and it sets forth the terms and conditions that govern any disputes that happen in relation to ‘.IN’ or ‘.Bharat’ Domain name.

Any individual with a belief that a certain registered Domain name conflicts with his legitimate legal interest and rights may complain to the .IN Registry on the following premises:

1. The registered Domain name is either identical, or confusingly similar, or both, to a Trademark, Service Mark or Name, etc.that the Complainant holds ownership of,
2. The Registrant holds no rights with respect to the Domain name, and
3. The Registrant’s Domain name has been registered wrongfully or is being used in bad faith or for illegal purposes^[9].

In the cases of misuse, the .IN Registry appoints an Arbitrator to the case to facilitate Dispute Resolution Process out of the list of Arbitrators published on the .IN Registry’s website (www.registry.in). The Arbitrator so appointed then conducts the proceedings as per the Arbitration & Conciliation Act, 1996, inclusive of the amendments made by the Arbitration & Conciliation (Amendment) Act, 2019, and read with the Arbitration & Conciliation Rules and the INDRP Policy and Rules. The arbitral award is subsequently delivered which may include cancellation of the Registrant’s Domain name, its transfer to the Complainant’s name, and/or levying costs. These awards are executed by NIXI or .IN Registry as specified by the relevant Law in a particular case.

Conclusion

It is crystal clear that Domain names fill in as significant components for any business activities that take place on the web. Particularly, for those organizations, who work exclusively in a digitalized manner, the protection and security of their Domain names are of vital significance. Since Domain names rise above geological limits, an amicable global law on the security of Domain names is fundamental, notwithstanding the protection provided by national Trademark Laws in different countries separately.

This article is authored by Tejaswini Kaushal, student at Dr. Ram Manohar Lohiya National Law University, Lucknow

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[1]https://iprindia.org/why-register-a-Domain-name.html

[2]https://indiankanoon.org/doc/117176/

[3]https://indiankanoon.org/doc/1630167/

[4]https://indiankanoon.org/doc/104432461/

[5]https://iprindia.org/why-register-a-Domain-name.html

[6]https://indiankanoon.org/doc/9121927/

[7]https://indiankanoon.org/doc/83169999/

[8]https://www.wipo.int/export/sites/www/amc/en/docs/wipointaudrp.pdf

[9]https://www.registry.in/IN%20Domain%20Name%20Dispute%20Resolution%20Policy%20%28INDRP%29

What is a Domain name?

Domain names are comprehensive, catchy, and easy-to-use addresses to help internet users recall and relocate the web address of a particular site again.

What type of Intellectual property is a Domain name?

A Domain name can be protected as a trademark as it acts as a distinct identifier for a business.

What is a Trademark?

The Trademark Act, 1999 defines Trademark as: “trademark 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 the shape of goods, their packaging and combination of colors.” It can include a brand name, label, device, signature, word, heading, letter, numeral, packaging, the shape of goods, the combination of colors, and others.

What are the requirements for a Domain name to be registered as a Trademark?

To be registered as a trademark, a Domain name needs to be:
(i) Unique,
(ii) Competent of identifying and distinguishing itself and the business’s goods and
services from those of others in the market, and
(iii) Able to operate as a reliable identifier of the web source for the business’s goods and
services.

What are the major bodies regulating Domain name registrations?

WIPO is the foremost body governing IPs across the globe. Specifically for Domain names, ICANN, in alliance with WIPO, controls the registration of and dispute regulation regarding Domain names. India, NIXI is the organization concerning disputes regarding Domain names ending with .IN and .Bharat.