Technological globalization, on account of its international, economical, and accessible character, has forced businesses to shift their business models from physical markets to electronic commerce (e-commerce) portals. In such a scenario, domain names, i.e., the user-friendly form of websites’ IP addresses, form an integral part of businesses as their identifiers in the realm of e-commerce. In other words, a domain name can be used to uniquely identify an entity and can function as a source identifier on the world wide web.
Anatomy of a domain name
A domain name consists of two parts, the first part is the unique name adopted by an entity known as the Second-Level Name and the second part which comes after said unique name is called Top-Level Domain. For example, in ‘google.com’, ‘google’ is the Second-Level Name and ‘.com’ is the Top-Level Domain.
Registration of domain names
The .IN Registry, that has been created by the National Internet Exchange of India (‘NIXI’) accredits registrars that register domain names. The registrars are accredited through an open process of selection on the basis of a transparent eligibility criteria.[1] Additionally, a domain name can also be registered with registrars accredited by the Internet Corporation for Assigned Names and Numbers (ICANN), a community-driven non-profit organization that promotes the concept of ‘One World, One Internet’ that is dedicated towards coordinating domain names and keeping the internet secure, stable, and interoperable.[2] These authorities issue or register domain names on a ‘first come first serve’ basis, sans a thorough conflict check.
It is also of note that the definition of ‘mark’ under Section 2(1)(m) of the Trade Marks Act, 1999 includes the term ‘name’ and, therefore, Second-Level ‘Names’ of the domain names are registerable under the Trade Marks Act, 1999, given that the purpose of a trademark and a domain name are also similar in nature, i.e. source identification.
Dispute resolution in India
As far as India is concerned, there is no specific legislation which explicitly deals with dispute resolution of domain names.[3] However, given the overlap with trademarks, said disputes are majorly covered by the Trade Marks Act, 1999 under the laws relating to passing off and infringement. Additionally, complaints can also be filed under the .IN Domain Name Dispute Resolution Policy (INDRP).
A. .IN Domain Name Dispute Resolution Policy
The .IN Domain Name Dispute Resolution Policy (the ‘INDRP’) sets out the regulatory framework for resolution of dispute(s) between a domain name Registrant and the Complainant, arising out of the registration and use of an .IN domain name. Any person who considers that a registered domain name conflicts with his/her legitimate rights or interests may file a complaint with the .IN Registry for one or more of the following reasons:
(a) the Registrant's domain name is identical and/or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(b) the Registrant has no rights or legitimate interests in respect of the domain name; and
(c) the Registrant's domain name has been registered or is being used in bad faith.
Upon filing of the complaint, an Arbitrator is appointed from the list of empanelled arbitrators maintained by the Registry. The Arbitration Proceedings are conducted in accordance with the Arbitration & Conciliation Act, 1996 and relevant laws thereunder along with the INDRP Policy and Rules. The remedies available to a complainant pursuant to any proceeding before an Arbitrator are limited to praying for the cancellation of the registrant's domain name or the transfer of the registrant's domain name registration to the complainant. Costs as may be deemed fit may also be awarded by the Arbitrator. However, the implementation of such award of cost is not supervised or controlled by .IN Registry.[4] It is also pertinent to mention here that said arbitration proceedings are required to be completed within a time frame of 60 days from the commencement of said proceedings. However, an extension of 30 days may be granted where reasonable cause exists.
B. Trade Marks Act, 1999
As stated herein above, domain names are covered under the definition of a mark as provided under the Trade Marks Act, 1999. If a domain name is registered as a trademark under the Act, then the aggrieved party may institute an action under Section 29 of the Trade Marks Act, 1999 which deals with infringement of registered trademarks. However, in the event a domain name is not registered under the Trade Marks Act, 1999, the aggrieved party can still institute an action for passing off which is a common law remedy.
Here it would not be out of context to divulge into the judicial point of view with respect to domain names. It is a settled principle of law that disputes pertaining to domain names can be tried under the Trade Marks Act, 1999. The judicial system of our country has time and again relied on the principles of Trade Marks Law, such as the use of the mark, the goodwill and reputation accrued by the mark, the mal-intent involved, and the loss incurred, to adjudicate the disputes related to domain names.
Recently, a suit[5] was instituted by Living Media India Limited before the High Court of Delhi wherein it was claimed by the plaintiffs that they are aggrieved as the defendants are using their trademark ‘AAJ TAK’ as a part of their domain name. Accordingly, as per the interim injunction orders dated 24 September 2020 and 6 September 2021, the Court has held that the balance of convenience appears to be in favor of the plaintiffs and the defendants were directed to block/suspend the websites/domain names and also take down any infringing material and/or trademarks/trade devices deceptively similar to the plaintiffs’ trademarks from various social media platforms administered by them including Facebook, Twitter, Instagram, LinkedIn and YouTube.
Given the above, it can be safely said that the judiciary is dealing with domain name infringement cases under the purview of the Trade Marks Act, 1999 and, accordingly, reliefs are being granted to the parties in whose favour the balance of convenience lies. It is also noteworthy that the Judiciary has observed that the only distinction between domain names and trademarks is the scope of protection. While domain name registrations are applicable universally, trademark registration and protection are limited to the national jurisdiction of a country. However, it may be only a matter of time that this distinction slowly withers away with the emergence of the principle of cross-border reputation in the current digital age.
Conclusion
Domain names can act as source identifiers and should be meted out a similar treatment as that meted out to trademarks. However, currently, domain names are allotted on a ‘first come, first serve’ basis without a thorough check, which may lead to conflicting or deceptively similar domain names being registered. While even the registration under the Copyright Act, 1957, for works that can be applied to goods and services, is subject to a Search Certificate being obtained from the Trade Marks Registry, no such mechanism exists for domain names. In other words, for copyright on a work that can also be used for goods and services (as trademarks), a clearance must be obtained from the Trade Mark Registry to ensure that the work does not conflict with existing trademarks. However, domain names are exempt of any such requirement. Disputes regarding domain names are only going to multiply in the coming years and there is the need for a mechanism for assessing domain names being registered to prevent duplicity of domain names and minimize confusion and deception amongst the relevant consumers.
[The authors are Joint Partner, Senior Associate and Junior Associate, respectively, in IPR Team at Lakshmikumaran & Sridharan Attorneys, New Delhi]
[1] https://www.registry.in/about/in-registry
[2] https://www.icann.org/resources/pages/welcome-2012-02-25-en
[3] Satyam Infoway Ltd vs Sifynet Solutions Pvt Ltd, AIR 2004 SC 3540
[4] https://www.registry.in/IN%20Domain%20Name%20Dispute%20Resolution%20Policy%20%28INDRP%29
[5] Living Media India Limited & Anr vs. www.news-aajtak.co.in & Ors.
