Domain Name Protection and Trademark Rights

Domain names are user-friendly forms of internet addresses commonly used to find websites. Domain names are created as per the procedures and rules of the Domain Name System (DNS), and the names registered in the DNS are domain names. 

A domain name is an identity of one’s business online.  Every web server requires a DNS server to translate domain names into Internet Protocol (IP) addresses. Since domain names are easy to use and remember, they have become business identifiers.

A trademark is a mark capable of distinguishing the services and goods of one person from those of others and being represented graphically. It may consist of the shape of goods, their packaging and a combination of colours. It includes a brand, logo, label, name, signature, letter, word, numeral, packaging or combination of colours.

Functions of Domain Name

Domain name performs the same functions as that of a trademark. A domain name serves the same functions online that a trademark performs offline in business dealings and transactions. A trademark is a graphic signifier of the company product or service, while the domain name is a navigator of the company on the internet and the virtual image of the business. A registered and protected trademark and the domain name offers the following benefits: 

• A trademark protects and promotes the brand name, while a registered domain name protects unauthorised use by any entity or person.
• Trademark supports the face value of a profession or business, while a domain name increases the contact value of the business from any remote place of the world. 
• A trademark makes a product or service prominent in the market, while a domain name can deliver the service or product to customers worldwide.

The registered proprietors of a trademark get the exclusive right to use the mark regarding the goods and services. It serves to distinguish the company products from those of their competitors in trade. Therefore, a trademark and domain name serves the same function as business identifiers. 

A well-protected domain name is beneficial for the security and profitability of a business, just like an internationally protected trademark. Thus, registration of both the trademark and domain name is necessary.

However, the procedure of acquiring a domain name involves no examination of whether it is capable or distinctive of distinguishing itself, unlike trademarks. Descriptive words can be registered as domain names. Some businesses use their registered trademarks as domain names.

Thus, once a domain name is chosen, the holder can apply to obtain trademark protection for the domain name to prevent any third party from using the name. In the absence of a particular law governing domain names, the Trademark Law applies for the same.

Trademark Registration for Domain Name

Domain names obtain trademark registration at both the national and international levels, provided the domain names satisfy all the conditions required to obtain a trademark registration. A unique internet name capable of distinguishing and identifying services or goods from others can be registered as a trademark.

The domain name must act as a reliable source identifier for the business goods and services on the internet to be registered as a trademark. A domain name as a trademark must be unique from all other well-known trademarks and domain names on the internet so that it does not deceive or mislead customers of other companies or violate morality or public order. 

In a case before the Supreme Court of India, ‘Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd.’, the matter for consideration was whether Internet Domain Names are recognisable as other Intellectual Properties such as Trademarks. The Supreme Court, in its judgement, held as follows – 

“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 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. It is apparent, therefore, that a domain name may have all the characteristics of a trademark and could found an action for passing off.”

Domain Name Protection in India

A domain name is not protected under any law in India. Thus, any person or business obtains protection to a newly created domain name in India under the Trade Marks Act, 1999 and the Trade Marks Rules, 2002. At the international level, the domain names as trademarks are registered by only the ICANN (Internet Corporation for Assigned Names and Numbers) organisation. 

At the international level, the domain names as trademarks are protected by the ICANN along with the diverse International Trademark Treaties of the world and the directly concerned national Trademark Law. 

After the domain name is registered as a trademark under the Trademarks Act, 1999 (‘Act’), the registered domain name owner will have all rights and authorities that the registered trademark owners avail in India. It will be granted protection as a trademark under the Act’s provisions, including the right to sue for infringement or passing off.

Any person using a domain name registered as a valid and subsisting trademark under the Act in an unauthorised manner will be held liable for infringement of the trademark of the domain name under Section 29 of the Act.

The owners of unregistered trademarks are also entitled to the protection of trademark if they are the prior user of the mark and it has acquired distinctiveness. When there is a misrepresentation of the unregistered mark by anyone else representing them to be his/her goods, and it is likely to deceive the relevant public, the unregistered trademark owner can sue for passing off.

Domain names serve as significant elements in trade and any commercial activity on the internet. Especially the businesses that work solely on the online platform require the protection of their domain names. In India, the Trademarks Act, 1999, confer protection to the domain names in the world. Thus, registered domain names can obtain the protection of trademark infringement, and the unregistered domain name can get the protection of passing off under the Act.

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