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Protecting Domain Names as Trademarks

INTRODUCTION

In the age where every business runs through the internet, Domain names have now become much more than mere identification of internet resources. All large companies and the services they offer can now easily be known by visiting their websites. However, there are instances where two companies are using nearly same domain name and that’s where the Trade Marks Act 1999 came into play. The first ever dispute over a domain name occurred in 1993, over the name mtv.com. According to Bill Gates, the founder of Microsoft, “Domains have and will continue to go up in value faster than any other commodity ever known to man”. Broadly, the functions of domain names are now quite similar to the functions of a trademark or service mark, for these purposes.

 

TRADE MARK v DOMAIN NAME

“Trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from choose of others and may include shape of goods, their packaging and combination of colors , and in relation to Chapter XII (other than section 107), a registered trade mark or 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 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 to 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. Whereas a domain name is an Internet resource name that is universally understood by Web servers and online organizations and provides all pertinent destination information. To access an organization’s Web-based services, website users must know the precise domain name.

There is a distinction between a trademark and a domain name, which is not relevant to the nature of the right of an owner in connection with the domain name, but is material to the ’scope of the protection’ available to the right. The distinction lies in the manner in which the two operate. A trademark is protected by the laws of a country where such trademark may be registered. Consequently, a trademark may have multiple registrations in many countries throughout the world. On the other hand, since the internet allows for access without any geographical limitation, a domain name is potentially accessible irrespective of the geographical location of the consumers. The outcome of this potential for universal connectivity is not only that a domain name would require worldwide exclusivity but also that national laws might be inadequate to effectively protect a domain name.

Satyam Infoway Ltd vs Siffynet Solutions Pvt. Ltd

In this famous case, the matter for consideration before the Apex Court of India was whether Internet Domain Names are recognizable as other Intellectual Properties such as Trademarks?

The appellant in the Supreme Court action, Satyam Infoway Ltd., alleged that the respondent, Sifynet Solutions Pvt. Ltd., had intentionally registered and operated a domain name that was confusingly similar to one owned by Satyam Infoway. Satyam Infoway claimed that it had in 1999, registered several domain names pertaining to its business: sifynet.com, sifymall.com, sifyrealestate.com, with the Internet Corporation for Assigned Names and Numbers (ICANN) and the World Intellectual Property Organization (WIPO). It submitted that the word “Sify” – which was an amalgam of elements of its corporate name “Satyam Infoway” – was a “fanciful” term, and that it had further garnered substantial goodwill in the market. Meanwhile, Sifynet Solutions had started using the word “Siffy” as part of the domain names under which it carried on internet marketing (namely siffynet.com and siffynet.net), claiming to have registered them with ICANN in 2001.

Satyam Infoway alleged that Sifynet Solutions was attempting to pass off its services as those belonging to Satyam Infoway by using a deceptively similar word as part of its domain name. Satyam Infoway claimed that this would cause confusion in the minds of the relevant consumers, who would mistake the services of Sifynet Solutions as belonging to Satyam Infoway.

Sifynet Solutions contended that unlike a trade mark, the registration of a domain name did not confer an intellectual property right in the name. It averred that a domain name is merely an address on the computer, which allows communications from the consumers to reach the owner of the business, and confers no comparable property rights in the same.

Because of a lacuna in the intellectual property laws of India, there was no law which specifically addressed disputes relating to domain names. Therefore, members of the Internet community asked the courts to apply trade mark law as an effective avenue of redress for their disputes. The High Court responded and held that domain names could be adequately protected under the doctrine of passing off referred to in the Indian law of trade marks. This doctrine was applied to resolve domain name disputes in Rediff Communication Ltd. v. Cyberbooth & Anr., Yahoo Inc. v. Akash OP Aurora, Acqua Minerals Ltd. v. Pramod Borse & Anr., Dr. Reddy’s Laboratories Ltd. v. Manu Kosuri. The Supreme Court in Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., affirmed the law laid down by these various High Courts, and established a modicum of certainty with regard to the law in this contentious sphere.

City Civil Court

The court ruled in favour of Satyam Infoway and granted the temporary injunction. It stated that Satyam Infoway was the prior user of the word “Sify”, and that it had garnered immense popularity in respect of the sale of internet and computer services sold under the same. It further found that Sifynet Solutions’ domain name was confusingly similar to that of Satyam Infoway, and would consequently create confusion in the minds of the public with respect to the source of the services.

High Court

Aggrieved by the decision of the City Civil Court, the Respondent approached, the High Court, which reversed the order of the City Civil Court, on the following grounds:

  • The balance of convenience was in favour of the Respondent;
  • The business of the Appellant and Respondent was dissimilar;
  • The Respondent had invested a large amount in establishing its business and has enrolled 50,000 members,
  • The Respondent would be put to greater hardship, inconvenience and irreparable injury.

 

Supreme Court

The appellants went for an appeal before the Supreme Court of India. The case was decided by a division bench comprising Justices Ruma Pal and P. Venkatarama Reddi. It set aside the decision of the High Court and ruled in favor of the appellants. It held that though no there was no law in India which explicitly deals with the domain names, it falls within the ambit of the Trade Marks Act. It further observed that a domain name enjoyed all features of a trademark. Accordingly, it ruled that if the respondent was allowed to further continue using the domain names it would in all likelihood create a confusion in the minds of the general public. A user could be diverted to the website containing the unauthorized domain name. And upon his arrival at the website, if he does not find the goods or services associated with the mark, he might think that the legitimate owner was misrepresenting the claims. This would result in the loss for the legitimate owner, thereby affecting his goodwill and brand name.

Thus the apex court granted an injunction in favor of the appellants, thereby restraining the respondents from further using the domain names in their business transactions.

CONCLUSION

With law very often lagging behind technology, the existing body of law proves to be inadequate. Solutions have to be pieced together by deriving them from a variety of sources, thereby sidestepping the traditional practice of placing reliance on only those laws that are the ‘commands of the sovereign’ in the positivist conception. The Supreme Court of India, in this decision, refers to international organisations such as the WIPO and private bodies such as the ICANN which are involved in formulating technology law. In a rather radical move, which appears to address a void in the law, the Court also mixes a purely private dispute resolution policy (the UDRP) with national laws. In doing so, the Supreme Court of India gives an example of a modern decision in an interconnected world, further reinforcing its place in the international judicial network.

This article has been written by Rohit Magesh

Gyan Tripathi

Gyan is Editor, Information Technology for Metacept and has a keen interest in tech and the evolution of cyber policy and tech laws. Tweets @Gyan_Tripathi_

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