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LEGAL WRITING AND RESEARCH RESEARCH PAPER ON DOMAIN NAMES FOR 9 T H SEMESTER, BALLB(H)

LEGAL WRITING AND RESEARCH

RESEARCH PAPER ON DOMAIN NAMES FOR 9 TH SEMESTER, BALLB(H) AT USLLS, GGSIP UNIVERSITY

Submitted by-Aditya Narayan Mahajan

0261653808

Mentored by-Mr. Zubair Ahmed Khan

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CONTENT

Certificate

3

Acknowledgment

Chapter 1- Introduction

4

5

Chapter 2-The problem of notoriety: famous and well known marks

16

Chapter 3-Domain name and Intellectual Property Rights

23

Chapter 4-Problem Of Uniqueness: Technical measures for

Coexistence of similar names

29

Chapter 5-Domain Name- Judicial View

40

Chapter 6-Domain Names- A Comparative Study

50

Conclusion

66

Bibliography

67

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CERTIFICATE

This is to certify that the research paper entitled Domain Names done by Mr.Aditya Narayan Mahajan , Roll no -0261653808 is an authentic work carried out by him at the University School of Law and Legal Studies, Guru Gobind Singh Indraprastha University, Sector 16-C Dwarka , New Delhi, under my guidance. The matter embodied in this project has not been submitted earlier to the best of my knowledge.

(Mentor- Mr. Zubair Ahmed Khan )

University School Of Law and Legal Studies

Guru Gobind Singh Indraprastha University

Sector 16-C Dwarka, New Delhi-110075

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ACKNOWLEDGEMENT

I am highly obliged to my research paper mentor Mr. Zubair Ahmed Khan,

Assistant Professor at University School Of Law and Legal Studies, Guru Gobind Singh Indraprastha University, for his continuous guidance, suggestions, help and cooperation, without which it would have been impossible to achieve

the completion and success in the work allotted to me. I express my sincere thanks to him for giving his kind attention at all times.

I would also like to thank my Dean Professor Dr Suman Gupta for giving me suggestions and her kind attention at all times.

Aditya Narayan Mahajan

Roll No.-0261653808

BALLB(H)

University School Of Law And Legal Studies

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CHAPTER 1

INTRODUCTION

What is Domain name?

A domain name is an identification string that defines a realm of administrative autonomy, authority, or control on the Internet. Domain names are formed by the rules and procedures of the Domain Name System (DNS).

The domain name system (DNS) serves the central function of facilitating users ability to navigate the Internet. It does so with the aid of two components; the domain name and its corresponding Internet Protocol (IP) number. A domain name is the human-friendly s address of a computer that is usually in a form that is easy to remember or to identify, such as www.wipo.int. An IP number is the unique underlying numeric address, such as 192.91.247.53. Distributed databases contain the lists of domain names and their corresponding IP numeric addresses and perform the function of mapping the domain names to their IP numeric addresses for the purpose of directing requests to connect computers on the Internet. The DNS is structured in a hierarchical manner which allows for the decentralized administration of name-to-address mapping. This last new characteristic has provided the basis for the remarkable speed at which new computers can be added to the Internet, while ensuring their accurate name resolution

Domain names are used in various networking contexts and application-specific naming and addressing purposes. In general, a domain name represents an Internet Protocol (IP) resource, such as a personal computer used to access the Internet, a server computer hosting a web site, or the web site itself or any other service communicated via the Internet.

Domain names are organized in subordinate levels (sub domains) of the DNS root domain, which is nameless. The first-level set of domain names are the top-level domains (TLDs), including the generic top-level domains (GTLDs), such as the prominent domains com, info, net and org, and the country code top-level domains (cc TLDs). Below these top-level domains in the DNS hierarchy are the second-level and third-level domain names that are typically open for reservation by end-users who wish to connect local area networks to the Internet, create other publicly accessible Internet resources or run web sites. The registration

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of these domain names is usually administered by domain name registrars who sell their

services to the public.

There are, at present, seven GTLDs. Three of these are open, in the sense that there are no

restrictions on the persons or entities that may register names in them. These three GTLDs are .com, .net and .org. The other four GTLDs are restricted, in the sense that only certain entities meeting certain criteria may register names in them. They are .int, which is restricted to use

by international organizations; .edu, which is restricted to use by four-year, degree-granting

colleges and universities; .gov, which is restricted to use by agencies of the federal government of the United States of America; and.mil, which is restricted to use by the military

of the United States of America.

Although the Domain Name System is case-insensitive, to better fit in with the flow of textual information, domain names are usually written in lowercase.

Domain name serve as humanly memorable names for Internet participants, like computers, networks, and services. A domain name represents an Internet Protocol (IP) resource. Individual Internet host computers use domain names as host identifiers, or host names. Host names are the leaf labels in the domain name system usually without further subordinate domain name space. Host names appear as a component in Uniform Resource Locators (URLs) for Internet resources such as web sites (e.g., en.wikipedia.org).

Domain names are also used as simple identification labels to indicate ownership or control of

a resource. Such examples are the realm identifiers used in the Session Initiation

Protocol (SIP), the Domain Keys used to verify DNS domains in e-mail systems, and in many

other Uniform Resource Identifiers (URIs).

An important function of domain names is to provide easily recognizable and memorizable names to numerically addressed Internet resources. This abstraction allows any resource to be moved to a different physical location in the address topology of the network, globally or locally in an intranet. Such a move usually requires changing the IP address of a resource and the corresponding translation of this IP address to and from its domain name.

Domain names are often referred to simply as domains and domain name registrants are frequently referred to as domain owners, although domain name registration with a registrar does not confer any legal ownership of the domain name, only an exclusive right of use.

The use of domain names in commerce may subject them to trademark law. In 2010, the number of active domains reached 196 million. Functionally, there is no distinction between

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the GTLDs and the CCTLDs. A domain name registered in a CCTLD provides exactly the same connectivity as a domain name registered in a GTLD. Nor can it be said that the GTLDs are open, whereas the CCTLDs are restricted. As mentioned, there are open GTLDs and CCTLDs, which contain no restrictions on use, and restricted GTLDs and CCTLDs, which restrict use to persons or entities meeting certain criteria.

History

The practice of using a name as a simple memorable abstraction of a host's numerical address on a computer network dates back to the ARPANET era, before the advent of today's commercial Internet. In the early network, each computer on the network retrieved the hosts file (host.txt) from a computer at SRI (now SRI International) which mapped computer host names to numerical addresses. The rapid growth of the network made it impossible to maintain a centrally organized hostname registry and in 1983 the Domain Name System was introduced on the ARPANET and published by the Internet Engineering Task Force as RFC 882 and RFC 883.

When the first computers began connecting to each other over Wide Area Networks (WAN's), like the ARPANET in the 1960's, a form of identification was needed to properly access the various systems. At first the networks were composed of only a few computer systems associated with the U.S. Department of Defence and other institutions. As the number of connections grew, a more effective system was needed to regulate and maintain the domain paths throughout the network. In 1972 the U.S. Defense Information Systems Agency created

the Internet Assigned Numbers Authority (IANA). IANA was responsible for assigning unique 'addresses' to each computer connected to the Internet. By 1973, the Internet Protocol

or IP addressing system became the standard by which all networked computers could be

located. The new Internet continued to grow throughout the 70's with the creation of

electronic mail (e-mail) and newsgroups.

Greater numbers of users networking with each other created a demand for a more simple and easy-to-remember system than the bulky and often confusing IP system of long, cumbersome strings of numbers. This demand was answered by researchers and technicians at the University of Wisconsin who developed the first 'name server' in 1984. With the new name server, users were no longer required to know the exact path to other systems. And thus the birth of the current addressing system in use today.

A year later the Domain Name System was implemented and the initial top-level domain

names, including .com, .net, and .org, were introduced. Suddenly 121.245.078.2 became

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'company.com'.

In 1990, the Internet exploded into commercial society and was followed a year later by the release of the World Wide Web by originator Tim Berners-Lee and CERN. The same year the first commercial service provider began operating and domain registration officially entered the public domain.

Initially the registration of domain names was free, subsidized by the National Science Foundation through IANA, but by 1992 a new organization was needed to specifically handle the exponential increase in flow to the Internet. IANA and the NSF jointly created InterNIC, a quasi-governmental body mandated to organize and maintain the growing DNS registry and services.

Overwhelming growth forced the NSF to stop subsidizing domain registrations in 1995. InterNIC, due to budget demands, began imposing a $100.00 fee for each two-year registration. The next wave in the evolution of the DNS occurred in 1998 when the U.S. Department of Commerce published the 'White Paper'. This document outlined the transition of management of domain name systems to private organizations, allowing for increased competition.

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Domain Name Space

Today, the Internet Corporation for Assigned Names and Numbers (ICANN) manages the top- level development and architecture of the Internet domain name space. It authorizes domain name registrars, through which domain names may be registered and reassigned. The hierarchical domain name system, organized into zones, each served by domain name servers.

The domain name space consists of a tree of domain names. Each node in the tree holds information associated with the domain name. The tree sub-divides into zones beginning at

the DNS root zone.

Domain name syntax

A domain

conventionally concatenated, and delimited by dots, such as example.com.

name

consists

of

one

or

more

parts,

technically

called labels,

that

are

The

right-most

label

conveys

the top-level

domain;

for

example,

the

domain

name www.example.com belongs to the top-level domain.com.

 

The hierarchy of domains descends from the right to the left label in the name; each label to

the

left specifies a subdivision, orsubdomain of the domain to the right. For example: the

label example specifies a node example.com as a subdomain of the comdomain, and www is a label to create www.example.com, a subdomain of example.com. This tree of labels may consist of 127 levels. Each label may contain from 1 to 63 octets. The empty label is reserved

for

the root node. The full domain name may not exceed a total length of 255 characters. In

practice, some domain registries may have shorter limits.

 

A hostname is a domain name that has at least one associated IP address. For example, the domain names www.example.com and example.com are also hostnames, whereas

the

com domain is not. However, other top-level domains, particularly country code top-level

domains, may indeed have an IP address, and if so, they are also hostnames.

 

Hostnames impose restrictions on the characters allowed in the corresponding domain name. A valid hostname is also a valid domain name, but a valid domain name may not necessarily be valid as a hostname.

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Top-level domains

The top-level domains such as .com and .net and .org are the highest level of domain names of the Internet. A top-level domain is also called a TLD. Top-level domains form theDNS root zone of the hierarchical Domain Name System. Every domain name ends in a top-level or first-level domain label.

When the Domain Name System was devised, in the 1980s, the domain name space was divided into two main groups of domains 1 . The country code top-level domains (ccTLD) were primarily based on the two-character territory codes of ISO-3166 country abbreviations. In addition, a group of seven generic top-level domains (gTLD) was implemented which represented a set of categories of names and multi-organizations 2 . These were the domains Gov[ernment], Edu[cation], Com[mercial], Mil[itary], Org[anisations], Net[work], andInt[ernational].

During the growth of the Internet, it became desirable to create additional generic top-level domains. As of October 2009, there are 21 generic top-level domains and 250 two-letter country-code top-level domains. In addition, the ARPA domain serves technical purposes in the infrastructure of the Domain Name System.

During the 32nd International Public ICANN Meeting in Paris in 2008, ICANN started a new process of TLD naming policy to take a "significant step forward on the introduction of new generic top-level domains." This program envisions the availability of many new or already proposed domains, as well a new application and implementation process. Observers believed that the new rules could result in hundreds of new top-level domains to be registered. 3

IANA has published an annotated list of top-level domains in the root zone database. Wikipedia holds a list of Internet top-level domains.

Second-level and lower level domains

Below the top-level domains in the domain name hierarchy are the second-level domain (SLD) names. These are the names directly to the left of .com, .net, and the other top-

1 "Introduction to Top-Level Domains (gTLDs)". Internet Corporation for Assigned Names and Numbers. (cited from http://en.wikipedia.org/wiki/Domain_name)(last visited on 10 th November 2012) 2 , Domain Requirements, J. Postel, J. Reynolds, The Internet Society (October 1984)( cited from http://en.wikipedia.org/wiki/Domain_name)(last visited on 10 th November 2012)

3 ICANN Board Approves Sweeping Overhaul of Top-level Domains, CircleID, 26 June 2008.

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level domains. As an example, in the domain example.co.uk, co is the second-level domain.

Next are third-level domains, which are written immediately to the left of a second-level domain. There can be fourth- and fifth-level domains, and so on, with virtually no limitation.

An example of an operational domain name with four levels of domain labels is www.sos.state.oh.us. The www preceding the domains is the host name of the World-Wide Web server. Each label is separated by a full stop (dot). 'sos' is said to be a sub-domain of 'state.oh.us', and 'state' a sub-domain of 'oh.us', etc. In general, subdomains are domains subordinate to their parent domain. An example of very deep levels of subdomain ordering are the IPv6 reverseresolution DNSzones,e.g.,1.0.0.0.0.0.0.0.0.0.0.0.0.0.0.0.0.0.0.0.0.0.0.0.0.0.0.0 .0.0.0.0.ip6.arp which is the reverse DNS resolution domain name for the IP address of a loopback interface, or the localhostname.

Second-level (or lower-level, depending on the established parent hierarchy) domain names are often created based on the name of a company (e.g., bbc.co.uk), product or service (e.g., hotmail.com). Below these levels, the next domain name component has been used to designate a particular host server. Therefore, ftp.wikipedia.org might be an FTP server,www.wikipedia.org would be a World Wide Web server, and mail.wikipedia.org could be an email server, each intended to perform only the implied function. Modern technology allows multiple physical servers with either different (cf. load balancing) or even identical addresses (cf. anycast) to serve a single hostname or domain name, or multiple domain names to be served by a single computer. The latter is very popular in Web hosting service centers, where service providers host the websites of many organizations on just a few servers.

The hierarchical DNS labels or components of domain names are separated in a fully qualified name by the full stop (dot).

Internationalized domain names

The character set allowed in the Domain Name System is based on ASCII and does not allow the representation of names and words of many languages in their native scripts or alphabets. ICANN approved the Internationalized domain name (IDNA) system, which maps Unicode strings used in application user interfaces into the valid DNS character set by an encoding called Punycode. For example, københavn.eu is mapped to xn--kbenhavn-54a.eu. Many registries have adopted IDNA.

The first commercial Internet domain name, in the TLD .com, was registered on 15 March 1985 in the name symbolics.com by Symbolics Inc., a computer systems firm in Cambridge, Massachusetts.

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By 1992, fewer than 15,000 .com domains had been registered.

In December 2009 there were 192 million domain names. A large fraction of them are in the .com TLD, which as of March 15, 2010 had 84 million domain names, including 11.9 million online business and e-commerce sites, 4.3 million entertainment sites, 3.1 million finance related sites, and 1.8 million sports sites. As of July 2012 the .com TLD has more registrations than all of the others combined.

Administration

The right to use a domain name is delegated by domain name registrars, which are accredited by the Internet Corporation for Assigned Names and Numbers (ICANN), the organization charged with overseeing the name and number systems of the Internet. In addition to ICANN, each top-level domain (TLD) is maintained and serviced technically by an administrative organization operating a registry. A registry is responsible for maintaining the database of names registered within the TLD it administers. The registry receives registration information from each domain name registrar authorized to assign names in the corresponding TLD and publishes the information using a special service, which isthe protocol.

Registries and registrars usually charge an annual fee for the service of delegating a domain name to a user and providing a default set of name servers. Often, this transaction is termed a sale or lease of the domain name, and the registrant may sometimes be called an "owner", but no such legal relationship is actually associated with the transaction, only the exclusive right to use the domain name. More correctly, authorized users are known as "registrants" or as "domain holders".

ICANN publishes the complete list of TLD registries and domain name registrars. Registrant information associated with domain names is maintained in an online database accessible with the WHOIS service. For most of the 250 country code top-level domains (ccTLDs), the domain registries maintain the WHOIS (Registrant, name servers, expiration dates, etc.) information.

Some domain name registries, often called network information centers (NIC), also function as registrars to end-users. The major generic top-level domain registries, such as for theCOM, NET, ORG, INFO domains and others, use a registry-registrar model consisting of hundreds of domain name registrars (see lists at ICANN or VeriSign). In this method of management, the registry only manages the domain name database and the relationship with

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the registrars. The registrants (users of a domain name) are customers of the registrar, in some cases through additional layers of resellers.

Technical requirements and process

In the process of registering a domain name and maintaining authority over the new name space created, registrars use several key pieces of information connected with a domain:

Administrative contact. A registrant usually designates an administrative contact to manage the domain name. The administrative contact usually has the highest level of control over a domain. Management functions delegated to the administrative contacts may include management of all business information, such as name of record, postal address, and contact information of the official registrant of the domain and the obligation to conform to the requirements of the domain registry in order to retain the right to use a domain name. Furthermore the administrative contact installs additional contact information for technical and billing functions.

Technical contact. The technical contact manages the name servers of a domain name. The functions of a technical contact include assuring conformance of the configurations of the domain name with the requirements of the domain registry, maintaining the domain zone records, and providing continuous functionality of the name servers (that leads to the accessibility of the domain name).

Billing contact. The party responsible for receiving billing invoices from the domain name registrar and paying applicable fees.

Name servers. Most registrars provide two or more name servers as part of the registration service. However, a registrant may specify its own authoritative name servers to host a domain's resource records. The registrar's policies govern the number of servers and the type of server information required. Some providers require a hostname and the corresponding IP address or just the hostname, which must be resolvable either in the new domain, or exist elsewhere. Based on traditional requirements (RFC 1034), typically a minimum of two servers is required.

Domain names may be formed from the set of alphanumeric ASCII characters (a-z, A-Z, 0-9), but characters are case-insensitive. In addition the hyphen is permitted if it is surrounded by a

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characters or digits, i.e. it is not the start or end of a label. Labels are always separated by the full stop (period) character in the textual name representation.

Business models

Domain names are often seen in analogy to real estate in that (1) domain names are foundations on which a website (like a house or commercial building) can be built and (2) the highest "quality" domain names, like sought-after real estate, tend to carry significant value, usually due to their online brand-building potential, use in advertising, search engine optimization, and many other criteria.

A few companies have offered low-cost, below-cost or even cost-free domain registrations

with a variety of models adopted to recoup the costs to the provider. These usually require that domains be hosted on their website within a framework or portal that includes advertising wrapped around the domain holder's content, revenue from which allows the provider to recoup the costs. Domain registrations were free of charge when the DNS was new. A domain

holder can give away or sell infinite number of subdomains under their domain name. For example, the owner of example.org could provide subdomains such

as foo.example.org and foo.bar.example.org to interested parties.

Because of the popularity of the Internet, many desirable domain names are already assigned and users must search for other acceptable names, using Web-based search features,

or WHOIS and dig operating system tools. Many registrars have implemented Domain name suggestion tools which search domain name databases and suggest available alternative domain names related to keywords provided by the user.

Re-sale of Domain Name

The business of resale of registered domain names is known as the domain aftermarket. Various factors influence the perceived value or market value of a domain name.

Most of the million dollar domain deals are carried out privately and go unreported. As of 2011, the most expensive domain name sales on record were:

1. Insure.com $16 million in 2009;

2. Sex.com for $14 million in October 2010;

3. Fund.com 2008 £9.99 million;

4. Porn.com 2007 $9.5 million;

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5. Fb.com for $8.5 million in November 2010 4 ;

6. 99India.com for $.5 million in November 2012

Use in Web Site Hosting

The domain name is a component of a Uniform Resource Locator (URL) used to access web sites, for example:

URL: http://www.example.net/index.html

Top-level domain name: net

Second-level domain name: example.net

Host name: www.example.net

A domain name may point to multiple IP addresses in order to provide server redundancy for the cybernetic services to be delivered; such multi-address capability is used to manage the traffic of large, popular web sites. More commonly, however, one server computer, at a given IP address, may also host web sites in different domains. Such address overloading enables virtual web hosting, commonly used by large web hosting services to conserve IP address space. IP-address overloading is possible through a feature in the HTTP version 1.1 protocol, but not in the HTTP version 1.0 protocol, which requires that a request identify the domain name being referred for connection.

Domain Name Confusion

Intercepting is often used to emphasize the meaning of a domain name. However, DNS names are case-insensitive, and some names may be misinterpreted in certain uses of capitalization. For example: Who Represents, a database of artists and agents, chose whorepresents.com, which can be misread as whore presents. Similarly, a therapists' network is named therapistfinder.com. In such situations, the proper meaning may be clarified by use of hyphens in the domain name. For instance, Experts Exchange, a programmers' discussion site, for a long time used expertsexchange.com, but ultimately changed the name to experts- exchange.com.

Intellectual property entrepreneur Leo Stoller threatened to sue the owners of StealThisEmail.com on the basis that, when read as stealthisemail.com, it infringed on claimed (but invalid) trademark rights to the word "stealth".

4 Irvine, Chris (10 Mar 2010). "Top 10 most expensive domain names". The Telegraph. Retrieved 23 November

2011

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CHAPTER 2

THE PROBLEM OF NOTORIETY: FAMOUS AND WELL-KNOWN MARKS

Fame brings with it attention in many forms, amongst them imitation, by those who wish to benefit from its perceived advantages; association, on the part of those who wish to share in its perceived benefits; and criticism, by those who wish to question the status given to the one who enjoys fame. Not surprisingly, therefore, on the open and efficient medium of communication that the Internet is, fame attracts attention and provokes various forms of reactions.

In the commercial area, fame is most often manifested in reputation, and reputation is most often attached to the expression of identity of the enterprise: its trademarks. Famous and well-known marks have been the special target of a variety of predatory and parasitical practices on the Internet. The consultations held throughout the WIPO Process and the submissions made in them have confirmed the singular nature of these predatory and parasitical practices with respect to famous and well-known marks.

Because of the special attention that fame attracts, famous and well-known marks have for a long time been considered in intellectual property laws to warrant special protection, over and above that accorded to other, ordinary marks. That special protection is well established in widely accepted international agreements on the multilateral level.

In the WIPO Interim Report, it was recommended that the international norms for the protection of famous and well-known marks should be given expression in the DNS through a mechanism whereby the owner of a famous or well-known mark could obtain an exclusion prohibiting any third party from registering the mark as a domain name.

The proposed mechanism for exclusions was widely supported in the commercial and intellectual property sectors as an appropriate means of reflecting established international principles in the DNS. Many commentators from these sectors viewed exclusions as an indispensable safeguard in relation to the expansion of the DNS through the addition of new

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gTLDs. They feared the repetition of the experience of the last five years, in which the owners of famous and well-known marks have had to invest large amounts of human and financial resources in defending their marks against abusive domain name registrations.

On the other hand, a number of commentators opposed having any mechanism for exclusions. They regarded exclusions as extending the protection accorded to famous and well-known marks and feared the erosion of the DNS through the removal of large numbers of names from its ambit. They considered that the owners of famous and well-known marks had sufficient resources to defend their interests without a systemic mechanism for that purpose.

In this Final Report, WIPO maintains the essence of the recommendations contained in the Interim Report, namely, that a mechanism for granting exclusions to famous and well-known marks should be established.

INTERNATIONAL PROTECTION OF FAMOUS AND WELL-KNOWN MARKS

The international protection of famous and well-known marks is recognized in two multilateral treaties: the Paris Convention for the Protection of Industrial Property (the Paris Convention), to which 154 States are party, and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), by which 134 States are bound.

The protection of famous and well-known marks in the Paris Convention is provided for in Article 6bis, section (1) of which provides as follows:

The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well- known mark or an imitation liable to create confusion therewith. 5

5 Article 6bis also contains the following two provisions:

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Four features of the protection provided for in Article 6bis of the Paris Convention may be noted:

(i)

The protection accorded to famous and well-known marks is a protection against the registration and use of a trademark that constitutes a reproduction, imitation or translation, liable to create confusion, of a well-known or famous mark or an essential part of such a mark.

(ii)

The protection in Article 6bis extends only to trademarks, that is marks that are used in respect of goods, and does not extend to service marks which are used in respect of services. By virtue of the Trademark Law Treaty (TLT), however, the provisions of the Paris Convention relating to trademarks are extended to service marks. The TLT was concluded only in 1994 and, while an increasing number of States are manifesting their interest in becoming party to the TLT, at the present date only 22 States are party to it.

(iii)

The protection extends to registration or use in respect of identical or similar goods. This feature is usually known as the principle of specialty, a principle of trademark law under which protection for a trademark extends only to the same or similar goods as are covered by the registration or use of the trademark.

(iv)

Article 6bis is silent on what constitutes a well-known mark. The appreciation of whether a mark is well known is left to the competent authority of the country where the illegitimate registration or use occurs.

(2)

cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.

A period of at least five years from the date of registration shall be allowed for requesting the

(3)

registered or used in bad faith.

No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks

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The provisions of Article 6bis of the Paris Convention are confirmed and extended by the TRIPS Agreement. Article 16.2 and 16.3contain the following provisions:

Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of theknowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.

Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.

Three features of Article 16.2 and 16.3 of the TRIPS Agreement may be noted:

(i)

Article 16.2 builds on the work of the TLT in extending the protection of Article 6bis of the Paris Convention to famous and well-known service marks.

(ii)

Article 16.2 of the TRIPS Agreement provides a non-exhaustive guide to the competent authorities of countries in appreciating whether a mark is well known. In this respect it provides that, in determining whether a trademark is well known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.

(iii)

Article 16.3 of the TRIPS Agreement provides for protection that extends beyond the normal protection under the principle of specialty. It provides for the protection under Article 6bis of the Paris Convention to apply to goods and services which are not similar to those in respect of which a trademark is registered

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on two conditions: first, that the use of the allegedly infringing mark in relation to those other goods or services would indicate a connection between those other goods or services and the owner of the famous mark, and, secondly, that the interests of the owner of the famous mark are likely to be damaged by such use. This extended protection reflects a distinction that is made in many national laws between, on the one hand, famous marks, which represent that class of well-known marks that are so famous that they require protection against infringing use in respect of any goods or services, and, on the other hand, well-known marks, which require protection against infringing registration or use in respect of the same or similar goods or services for which the well-known mark is registered or used. The terminology and practice relating to this distinction differ somewhat around the world. 6 For this reason, in this Chapter, except where a distinction is deliberately made, the collective term famous and well-known marks is used, since it is in any case agreed that well-known marks are the subject of a special form of international protection.

THE IMPLEMENTATION OF PROTECTION FOR FAMOUS AND WELL-KNOWN MARKS IN CYBERSPACE

In considering how the international protection for famous and well-known marks can be given expression in respect of domain names, there are four areas of conceptual difficulty that need to be borne in mind.

First, it is to be noted that the provisions of the Paris Conventions and the TRIPS Agreement are directed at the protection of famous and well-known marks against the registration or use of other infringing marks. Domain names, of course, are not the same thing as marks and are used for many purposes other than the identification of a producer or seller of goods or services. They are, however, also used as a means of identifying goods and services with the producer or seller of those goods and services.

6 Frederick W. Mostert, Famous and Well-Known Marks (Butterworths, 1997), pages 19 to 21.

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Secondly, the protection of famous and well-known marks under the Paris Convention and the TRIPS Agreement extends to those countries where the competent authority considers that the mark is famous or well-known.

Thirdly, while there is an international obligation to accord protection to famous and well- known marks, there is not an established treaty definition of what constitutes such a mark. It is left to the appreciation of the competent authority in the country where protection is asserted. As noted, however, Article 16.2 of the TRIPS Agreement provides some guidance as to the criteria that such a competent authority must take into account in forming its appreciation. In addition, such criteria have been developed in national case law and regulatory practices and decisions around the world.

Fourthly, while the protection of famous marks has increasingly been implemented at the national level by laws directed at prohibiting any use of famous marks by third parties that dilutes the integrity and reputation of such marks, the protection of well-known marks exists often only in respect of the registration or use of a confusingly similar mark in relation to the same goods or services as those for which the well-known mark is registered or used. At the present time, the gTLDs are largely undifferentiated. Insofar as some differentiation does exist, there is no enforcement mechanism to ensure that those who have registered domain names in open gTLDs confine their use of the domain name to the broad purposes of the gTLD. Thus, one can have a domain name registered in .com without undertaking any commercial activity, or a domain name registered in .net while undertaking commercial activity that is completely unrelated to the provision of Internet or network services. There is a lack of connection between the underlying theoretical foundations of differentiation in the registration and use of trademarks and differentiation in the registration and use of domain names, since differentiation is intended to serve a different purpose in each case.

The researcher considers that the administrative procedure in respect of bad faith, abusive registrations of domain names, which was discussed in the previous chapter, should provide an efficient means for suppressing many of the predatory and parasitical practices to which famous and well-known marks are subject. The administrative procedure is, however, rightly available to all and does not give expression to the separate international protection that already exists for famous and well-known marks. The ensuing part of this Chapter addresses

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two mechanisms designed for this purpose, which seek to take into account the conceptual problems in implementing protection for famous and well-known marks discussed above and the comments received throughout the WIPO Process. The two mechanisms are:-

(i)

a mechanism for obtaining and enforcing an exclusion of the use of a famous or well-known mark; and

(ii)

an evidentiary device for ensuring that the protection afforded by an exclusion can be extended to misleadingly similar, as well as the same, domain name registrations.

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CHAPTER 3

DOMAIN NAME AND INTELLECTUAL PROPERTY RIGHTS

What are Intellectual Property Rights? Intellectual property consists in a series of rights in intellectual creations and in certain forms of identifiers. Generally speaking, there are two main policy bases that underlie intellectual property rights.

The first is the policy of encouraging new intellectual creations. This is the main policy basis of patents, industrial designs and copyright. A patent, an industrial design or a copyright confers an exclusive right on the owner, for a finite period, to prevent others from exploiting its subject matter an invention, a design or a literary or artistic work. The exclusive right enables the owner to recover a reward for originality and investment in the creation of originality, and thus serves as an incentive to further investment in the development of new intellectual creations. The second main policy basis is the orderly functioning of the market through the avoidance of confusion and deception. This is the main policy basis of trademarks, rights in geographical indications and protection against unfair competition.

A trademark enables consumers to identify the source of a product, to link the product with its manufacturer in widely distributed markets. The exclusive right to the use of the mark, which may be of indefinite duration, enables the owner to prevent others from misleading consumers into wrongly associating products with an enterprise from which they do not originate.

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Intellectual property has become a central element in economic and cultural policy in a world in which the source of wealth is increasingly intellectual, as opposed to physical, capital and in which markets are distributed across the globe. By becoming members of WIPO, 171 States have subscribed to the importance of promoting the protection of intellectual property. Many of these have also adhered to some or all of the 16 other multilateral treaties administered by WIPO, which establish international frameworks for each of the rights that make up intellectual property or systems for obtaining protection in multiple countries. In addition, the 134 States that are members of the World Trade Organization (WTO) have subscribed to a comprehensive, complementary code of intellectual property protection in the Agreement on the Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement).

The discipline of intellectual property is concerned not simply with the establishment of rights, but also with the definition of the proper scope of those rights and their relation with other areas of public policy. It is concerned thus, for example, with defining the boundary between unfair and unjustified misappropriation of another s intellectual creations or business identifiers, on the one hand, and fair use or justified experimental and non-commercial use, on the other hand. It is equally concerned, for example, with regulating any areas of tension between competition policy and intellectual property policy. This definition of the proper scope of intellectual property rights and their relation to other areas of public policy is the subject of case law and legislation that have been developed over many decades throughout the world.

Cyber Squatting of Domain Names According to Wikipedia Squatting means occupying an abandoned or unoccupied space or building, usually residential, that the squatter does not own, rent or otherwise have permission to use.So Cyber-squatting refers to the bad faith registration of a domain name containing another person s brand or trademark in a domain name. It can be defined as registering, trafficking in, or using a domain name with bad-faith i.e. mala fide intent to make profit from the goodwill of a trademark belonging to someone else. The cyber squatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price. With the domain prices falling and more top level domains (.biz, .cn, .mob and lately .in) getting accredited, cyber squatters are in business fulltime.

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Categories of Cyber Squatting Cyber squatting can be of various categories, most commonly seen is typo squatting, when a cyber squatter registers domain names containing variant of popular trademarks. Typo squatters rely on the fact that Internet users will make typographical errors when entering domain names into their web browsers. Some common examples of typo squatting include:

The omission of the dot in the domain name: wwwexample.com;

A common misspelling of the intended site:

 

exemple.com

A

differently

phrased

domain

name:

 

examples.com

A different top-level domain: example.org.

Daniyal Waseem of Quetta in Pakistan was using the domain name rediffpk.com . To this, the NASDAQ-listed Indian firm had contended that the disputed Internet site was identical in part and confusingly similar as a whole to the Rediff trademark, for which it has rights. Finding that Waseem had no rights to the REDIFF mark the WIPO Panel concluded the proceeding by transferring Rediff.com.pk to the Indian REDIFF trademark owner Rediff.com India Ltd.Moreover cyber squatters also rely on the fact that trademark holders often forget to re-register their domain names, because domain registration is for a fixed period and if the owner does not re-register the domain name prior to expiration, then the domain name can be purchased by anybody. Cyber squatters will snatch up a domain name as it becomes available. This process is often referred to as renewal snatching.

Legal Scenario of Cyber Squatting Some countries have specific laws against cyber squatting beyond the normal rules of trademark law. The United States, for example, has the U.S. Anti-cyber squatting Consumer Protection Act (ACPA) of 1999. This expansion of the Lanham (Trademark) Act (15 U.S.C.) is intended to provide protection against cyber squatting for individuals as well as owners of distinctive trademarked names. A victim of cyber squatting in the United States has two options:

a. sue under the provisions of the Anti-cyber squatting Consumer Protection Act (ACPA), or b.use an international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN).

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In court system, jurisdiction is often a problem, as different courts have ruled that the proper location for a trial is that of the plaintiff, the defendant, or the location of the server through which the name is registered. Recognizing the problems raised by clash between domain name system and trademarks, the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre has developed an online Internet based system for administering commercial disputes involving intellectual property. This Dispute Resolution Mechanism is unique in that it is designed to be used online both for document exchange and for filing of evidence. However, the original documentary evidence will still be needed to be filed in a physical form. The dispute resolution is simply signed and thus, providing an inexpensive and efficient service and does not in any way seek to take the place of national jurisdiction. A successful complainant s remedy is limited to requiring the cancellation of the registrant s domain name or the transfer of domain name registration to the complainant. The procedure will be handled in large part online and is designed to take less than 45 days with a provision for the parties to go to courts to resolve their disputes or contest the outcome of the procedure.Internationally, the United Nations copyright agency WIPO (World Intellectual Property Organization) has, since 1999, provided an arbitration system wherein a trademark holder can attempt to claim a squatted site. In 2006, there were 1823 complaints filed with WIPO, which was a 25% increase over the 2005 rate. In 2007 it was stated that 84% of claims made since 1999 were decided in the complaining party s favor. WIPO is the UN s specialized agency for developing a balanced and accessible international system in the field of intellectual property rights

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Position of Cyber Squatting in India

In India victims of cyber-squatting have several options to combat cyber squatting. These

options include: sending cease-and-desist letters to the cyber squatter, bringing an arbitration

proceeding under ICANN s rules, or bringing a lawsuit in state or federal court. Whatever strategy a victim of cyber squatting elects to use, that person should not dismiss the serious effects that cyber squatting can have if left unchecked.

A case could be filed with the .in registry handled by National Internet Exchange of

India(NiXI) who brings the matter to fast track dispute resolution process whereby decisions

are transferred within 30 days of filling a complaint.

Like always our legal system is silent on this matter too, there is no provision in the current or proposed Information Technology Act in India to punish cyber-squatters, at best, the domain can be taken back. Though there is no legal compensation under the IT Act, .in registry has taken proactive steps to grant compensation to victim companies to deter squatters from further stealing domains. Most squatters however operate under guise of obscure names.

Under NIXI, the IN Registry functions as an autonomous body with primary responsibility for maintaining the .IN ccTLD (country code top-level domain) and ensuring its operational stability, reliability, and security. It will implement the various elements of the new policy set out by the Government of India and its Ministry of Communications and Information Technology, Department of Information Technology.

The clash of the new technology with preexisting trade mark rights resulted in several high profile decisions as the courts of many countries tried to coherently address the issue (and not always successfully) within the framework of existing trade mark law. As the website itself was not the product being purchased, there was no actual consumer confusion, and so initial interest confusion was a concept applied instead.

Most courts particularly frowned on cyber squatting, and found that it was itself a sufficiently commercial use (i.e., "trafficking" in trade marks) to reach into the area of trademark infringement. Most jurisdictions have since amended their trademark laws to address domain names specifically, and to provide explicit remedies against cyber squatters.

This international legal change has also led to the creation of ICANN (International community for assigned names and numbers), Uniform Domain-Name Dispute-Resolution Policy (UDRP), which attempt to streamline the process of resolving who should own a

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domain. This is particularly desirable to trade mark owners when the domain name registrant may be in another country or even anonymous.

Registrants of domain names also sometimes wish to register the domain names themselves (e.g., "XYZ.COM") as trade marks for perceived advantages, such as an extra bulwark against their domain being hijacked, and to avail themselves of such remedies as confusion or passing off against other domain holders with confusingly similar or intentionally misspelled domain names.

As with other trade marks, the domain name will not be subject to registration unless the proposed mark is actually used to identify the registrant's goods or services to the public, rather than simply being the location on the Internet where the applicant's web site appears. Amazon.com is a prime example of a protected trademark for a domain name central to the public's identification of the company and its products.

The World Intellectual Property Organisation (WIPO) Arbitration and Mediation Center deals with domain name disputes under the new Uniform Dispute Resolution Policy applicable to generic top-level domain names adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999. The WIPO Center s Domain Name Dispute Resolution service has been established specifically to administer domain name disputes with the availability of electronic case filing facilities and a well developed case administration system.

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CHAPTER 4 THE PROBLEM OF UNIQUENESS: TECHNICAL MEASURES FOR COEXISTENCE OF SIMILAR NAMES

For operational reasons, a domain name is a unique address. This characteristic creates the difficulty that common words that form part of marks can be coveted as domain names by a number of different persons or enterprises. The difficulty is exacerbated in undifferentiated domains, since similar marks with common elements can coexist in relation to different classes of goods or services without confusion, whereas only one of the owners may use the mark or the common element alone as a domain name in a large undifferentiated domain. Examples of such common elements are national, united or generic descriptions like telecom.

There are several means that can be used to overcome the difficulty of uniqueness. Directory and listing services assist in ensuring that an interested person can locate the exact address that it is seeking, and many commentators supported the further development of such services. 7 The gateway or portal page is also a measure that finds widespread support. Under such a gateway, a list of names using a common element is produced with links to the various addresses and information to distinguish the addresses and their owners from each other. These measures are deployed under the Internet ONE system, a directory service with a shared name depository, which enables entities sharing common elements in domain names to coexist on the Internet.

Measures which allow coexistence while providing users with the information to distinguish between the owners of the similar names represent a viable and useful way of reducing conflict. They are, however, voluntary measures that parties can choose as a means of resolving an intractable shared desire for the same name. They can also constitute a recommended solution for the consideration of such parties within the context of litigation or an alternative dispute resolution procedure such as mediation.

7 Lockheed Martin Corporation v. Network Solutions, Inc., 985 F. Supp.949, 968 (C.D. Cal. 1997) (court commented favorably on the use of directories, stating [t]he solution to the current difficulties faced by trademark owners on the Internet lies in this sort of technical innovation, not in attempts to assert trademark rights over legitimate non-trademark uses of this important new means of communication ).

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The WIPO Interim Report noted that there was resistance to making such measures compulsory. No recommendation was made for their compulsory adoption. This position was broadly supported in the comments received on the Interim Report. Many owners of marks clearly wish to preserve their unique identity and do not wish to countenance sharing it, even through a portal, with another.

RESOLVING CONFLICTS IN A MULTIJURISDICTIONAL WORLD WITH A GLOBAL MEDIUM: A UNIFORM DISPUTE-RESOLUTION POLICY

There is widespread support for the adoption of a number of practices in the administration of domain name registrations as a means of reducing friction between such registrations and intellectual property rights. There also appears to be widespread support, however, for the view that those practices should not interfere with the functionality of the DNS as a cheap, high-speed, high-volume system for obtaining an Internet address. For this reason, as mentioned previously, such measures as requiring registration authorities to search applications against previously registered trademarks, which might reduce friction even further, attracted little or no support.

While the vast majority of domain names are registered in good faith for legitimate reasons, even with enhanced practices designed to reduce tension, disputes are inevitable. Not more than five years ago, before graphical Internet browsers became popular and there was little or no commercial activity on the Internet, a trademark infringement stemming from the registration and use of a domain name was not regarded as a serious issue, as long as no significant business activity was taking place on the Internet, any potential for harm was offset by the near invisibility of the network at least when compared to infringements in mainstream media such as television, the press and billboards. This changed, however, when business investments, advertising and other activities increased on the Internet, and companies began to realize the problems that may occur when a website using their trademark as a domain name was operated in an infringing manner without permission. Disputes have now become numerous, while mechanisms for their settlement, outside of litigation, are neither satisfactory nor sufficiently available.

Intellectual property right owners have made it clear throughout the WIPO Process that they are incurring significant expenditures to protect and enforce their rights in relation to domain names. Existing mechanisms for resolving conflicts between trademark owners and domain name holders are often viewed as expensive, cumbersome and ineffective. The sheer number

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of instances precludes many trademark owners from filing multiple suits in one or more national courts. Moreover, registration authorities have frequently been named as parties to the dispute in litigation, exposing them to potential liability and further complicating their task of running the domain name registration process.

Disputes over domain name registrations and intellectual property rights present a number of special characteristics:

(i)

Because a domain name gives rise to a global presence, the dispute may be multijurisdictional in several senses. The global presence may give rise to alleged infringements in several jurisdictions, with the consequence that several different national courts may assert jurisdiction, or that several independent actions must be brought because separate intellectual property titles in different jurisdictions are concerned.

(ii)

Because of the number of gTLDs and ccTLDs and because each gives the same access to global presence, essentially the same dispute may manifest itself in many TLDs. This would be the case, for example, if a person sought and obtained abusive registrations in many TLDs of a name which was the subject of corresponding trademark registrations held throughout the world by a third party. In order to deal with the problem, the intellectual property owner may need to undertake multiple court actions throughout the world.

(iii)

In view of the ease and speed with which a domain name registration may be obtained, and in view of the speed of communication on the Internet and the global access to the Internet that is possible, the need to resolve a domain name dispute may often be urgent.

(iv)

A considerable disjunction exists between, on the one hand, the cost of obtaining a domain name registration, which is relatively cheap, and, on the other hand, the economic value of the damage that can be done as a result of such a registration

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(v)

and the cost to the intellectual property owner of remedying the situation through litigation, which may be slow and very expensive in some countries.

(vi)

The registration authority has often been joined in domain name disputes because of its role in the technical management of the domain name.

Because of the special features of domain name disputes, considerable support has been expressed for the development of expeditious and inexpensive dispute-resolution procedures, which are comprehensive in the sense of providing a single means of resolving a dispute with multiple jurisdictional manifestations. At the same time, discussions and consultations have revealed a natural level of discomfort in placing complete trust in a system which is new and which has the capacity to affect valued rights. There has been, in consequence, in some quarters, a reluctance to abandon all possibilities of resort to litigation as a result of the adoption of new procedures, at least in the first stage before experience of a new system.

In the WIPO Interim Report, it was stated that, in considering options for dispute resolution, the draft recommendations of that report were guided by the overall consideration of finding a balance between, on the one hand, the preservation of the long-tried right to seek redress through litigation, and, on the other hand, the desire to proceed to develop a workable system that can fairly, expeditiously and cheaply resolve the new type of disputes that arise as a consequence of the arrival of the Internet. The majority of commentators found this formulation to be too broad insofar as the draft recommendations suggested that domain name applicants be required to submit to a mandatory administrative dispute-resolution procedure in respect of any intellectual property dispute arising out of the domain name registration. In particular, those commentators considered, in relation to such a comprehensive procedure:

(i)

that it might unfairly expose domain name applicants acting in good faith to costs in responding to complaints brought against them;

(ii)

that it might lead to the harassment of domain name holders acting in good faith by trademark owners seeking to acquire a domain name that is being used in a way which did not infringe the trademark owner s rights ( reverse domain name hijacking );

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(iii)

that it would be preferable to commence a new procedure in a less ambitious way and with reference to disputes concerning the known and certain forms of offensive behavior, rather than with respect to all forms of disputes;

(iv)

that, in opening the procedure to all forms of dispute, the Interim Report failed to address specifically the most egregious problem, namely, the problem of cybersquatting or deliberate, bad faith, abusive registrations of domain names in violation of others rights;

(v)

that, because of the lack of international harmonization in the application of trademark laws, it would be preferable, at least initially, to avoid mandatory submission to the procedure in respect of disputes over competing, good faith rights to the use of a name.

In view of the weight of opinion against mandatory submission to an administrative procedure in respect of any intellectual property dispute arising out of a domain name registration, the final recommendations of the WIPO Process contain two major changes in respect of the suggested administrative dispute-resolution procedure:

(i)

First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or cybersquatting and is not applicable to disputes between parties with competing rights acting in good faith.

(ii)

Secondly, the notion of an abusive domain name registration is defined solely by reference to violations of trademark rights and not by reference to violations of other intellectual property rights, such as personality rights.

The discussion and the recommendations in the remainder of this Chapter are organized under the following headings:

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achievable amelioration to the use of court litigation as a means of resolving disputes;

guiding principles in the design of the administrative dispute-resolution policy;

mandatory administrative procedure for abusive registrations;

the availability of voluntary arbitration; and

the role of mediation.

Court Litigation Court litigation is governed by the civil law of sovereign States. The WIPO Process, which will result in recommendations to the private, not-for-profit corporation that will manage the DNS (ICANN), is not properly concerned with matters that fall within the purview of those civil laws, except insofar as those laws, in accordance with recognized international principles, leave open areas of choice.

Preservation of the Right to Litigate The first area of such choice, where the recommendations of the Process might have an influence, is the abandonment of the right to litigation in respect of a dispute, which is recognized in the majority of countries as the effect of agreeing to submit a dispute to arbitration. That effect of an arbitration agreement is recognized in the arbitration laws of countries and in the obligations assumed by more than one hundred countries by becoming party to the New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards of 1958 (the New York Convention). If submission to arbitration by domain name applicants in respect of any dispute relating to the domain name registration were, for example, to be a requirement of the domain name registration agreement, the effect would be to require the domain name applicant to abandon the right to litigate such a dispute if called to arbitration by the other party to the dispute. As mentioned above, however, the discussions and consultations in the WIPO Process indicated considerable reluctance to subscribe to such a solution, at least in the initial stage of the new management of the DNS. The WIPO Interim Report recommended that any dispute-resolution system alternative to litigation that might be adopted for domain name disputes should not deny the parties to the dispute access to court litigation. This recommendation met with the support of virtually all commentators.

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Inter-relationship between Domain Name & Intellectual Property Rights

Now, the question that arises is that, how are Domain Names and Intellectual Property rights (IPR) inter-related? The answer lies in the understanding of Intellectual property rights. So what are these rights? Intellectual property (IP) is legal property right over creations of the mind, both artistic and commercial, and the corresponding fields of law. Under intellectual property law, owners are granted certain exclusive rights to a variety of intangible assets, such as musical, literary, and artistic works; ideas, discoveries and inventions; and words, phrases, symbols, and designs. The intellectual property rights provide creators of original works economic incentive to develop and share ideas through a form of temporary monopoly.

Originally, Domain Names were conceived and intended to function as an address, but with an increasing number of cases of registered domain names being illegally occupied (cyber squatting), it has posed additional problems in how to handle trademark disputes in cyberspace. Cyber squatting as an offence relates to the registration of a domain name by an entity that does not have an inherent right or a similar or identical trademark registration in its favour, with the sole view and intention to sell them to the legitimate user in order to earn illegal profits. An address in the cyber-space is imperative in the new e-economy for companies and individuals to be easily traceable by their consumers with the emergence of the Internet as an advertising forum, recruiting mechanism, and marketplace for products and services whereby companies doing business have a strong desire to register domain names akin to their products, trade names or trademarks. For example, owners of famous trademarks, such as Haier, typically register their trademarks as domain names, such as www.haier.com. Domain names may be valuable corporate assets, as they facilitate communication with a customer base. With the advancement of Internet communication, the domain name has attained as much legal sanctity as a trademark or trade name and, therefore, it is entitled to protection.

Another issue is the registration of names of popular brands with a slight spelling variation

like pesi.com and radiff.com for the sole purpose of diverting traffic to their website through typing errors. A significant purpose of a domain name is to identify the entity that owns the website. A domain name should not confuse the consumers as to the origins of the services or products defeating the principal of trademark law

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Domain name protection: Legal aspect As stated earlier, the constant increase in the use of internet for commercial purposes has greatly increased the level of cyber crimes and other internet related offences. Thus, the legal protection of such domain names is a serious issue which must be dealt with. In order to do so, the Internet Corporation for Assigned Names and Numbers ( ICANN ), a domain name regulatory authority, adopted a Uniform Domain Name Dispute Resolution Policy ( UDRP ), which is incorporated into the Registration Agreement, and sets forth the terms and conditions in connection with a dispute between the registrant and any party other than the registrar over the registration and use of an Internet domain name registered. Upon entering into the Core Registration Agreement with ICANN while registering a domain name, one agrees to submit to proceedings commenced under ICANN s Uniform Domain Name Dispute Resolution Policy. According to the ICANN policy, the registration of a domain name shall be considered to be abusive when all the following conditions are met:

(a) The domain name is identical or misleadingly similar to a trade or service mark in which the complainant has rights.

(b) The holder of the domain name has no rights or legitimate interests in respect of the domain name; and

(c) The domain name has been registered in bad faith.

The term bad faith does not simply mean bad judgment but it implies the conscious doing of a wrong with a dishonest purpose. In order to prove bad faith, the following circumstances, if found, are sufficient evidence of bad faith registration:

(a) When there is an offer to sell, rent or otherwise transfer the domain name to the owner of the trademark or service mark, or to a competitor of the complainant for valuable consideration.

(b)When the respondent registers the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.

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(c) When by using the domain name, a party has intentionally attempted to attract, for commercial gain, internet users to its website or other online location by creating a likelihood of confusion with the trade or service mark of the complainant.

INTA has consistently sought to protect domain names in the cyberspace in the same way as in any other media as these domain names can and often do work as trademarks. For the very same reason, INTA seeks to achieve the following six objectives:

(a)

establishment of specific minimum standards for domain name registration;

(b)

a publicly accessible domain name database, which contains up-to-date and accurate contact information;

(c)

a uniform and easy-to-use dispute resolution policy which renders administrative not legal decisions;

(d)

a reasonable mechanism whereby exclusions can be obtained and enforced for famous marks;

(e)

a go-slow approach on the addition of new generic top-level domains ( gTLDs ); and

(f)

a voice for trademark owners in the formulation of domain name policy.

INTA believes that when the above-mentioned six objectives are achieved, it would safeguard the trademark rights, which in this case would be the domain names.

Dispute Resolution INTA believes that a reasonable administrative dispute resolution policy is an essential element of any plan for the administration of domain names on the Internet. Discretion for domain name policy should neither reside with the domain name registrars, nor with the registries. Any dispute policy needs to be consistent across the gTLD space. A lack of uniformity and specificity will only lead to confusion on the part of trademark and domain name holders, fundamental unfairness in the unequal treatment of rights in domain names and therefore inconsistent policies and precedent, chaos in the Internet community. If the goal is to create a system which is fair and predictable, and a relief to the current confusion and uncertainty, there can only be a single uniform system. There is no division among trademark

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holders on this point. A global marketplace and community requires a single set of global rules.

Therefore, any dispute resolution policy should be limited, at least during an appropriate interim period, to alleged instances of bad-faith activity by the domain name registrant.

Resolving Domain Name Disputes:

Domain name dispute may be resolved in one of the following ways:

A. Court proceedings or litigation

Generally, courts all over the world have applied Trademark Laws in order to resolve domain name disputes. Normally the following factors are taken in account by the courts in case of an infringement and/or passing off action with respect to domain name dispute:

Whether the domain name in dispute is:-

i. Identical or deceptively similar with the already registered trademark;

ii. Identical or deceptively similar to a mark that has acquired reputation in the market;

iii. Deceptively similar to already existing domain name;

iv. Adopted in a bad faith;

v. causing confusion or likely to cause confusion in the mind of general public with respect to real owner

vi. Causing damage or likely to cause damage in terms of business and goodwill.

B. Administrative Proceeding

Uniform Domain Name Dispute Resolution Policy commonly known as UDRP provides the trademark owners an effective mechanism for resolving the disputes arising out of domain name registered and use in bad faith. UDRP is an international body, formed based on the recommendation of World Intellectual Property Organization (WIPO) that provides for resolving domain name dispute regardless of where the registrar, the domain name registrant or complaining trademark owner is located. Under UDRP trademark owner may submit dispute arising from alleged abusive registration of domain name by way of filing a complaint with the approved dispute resolution service provider requesting the resolution of domain name dispute.

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In UDRP proceeding with respect to domain name dispute, complainant has to ensure the presence of all the three below mentioned elements:

That the impugned Domain name is identical or confusingly similar to his trademark or service mark in which he has rights;

That the claimant of impugned domain name has no rights or legitimate interests in it; and that the impugned domain name has been registered and is being used in bad faith.

For constituting that domain name has been registered and is being used in bad faith following elements may be taken as evidence:

a. circumstances indicating that impugned domain name has been registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the bona fide owner of the trademark or service mark or to a competitor of that owner, for valuable consideration in excess of documented out-of- pocket costs directly related to the domain name.

b. impugned domain name is registered in order to prevent the bona fide owner of the

trademark or service mark from reflecting the mark in a corresponding domain name,

provided that the allegee has engaged in a pattern of such conduct.

c. impugned domain have been registered primarily for the purpose of disrupting the business of the bona fide owner of the trademark or service mark.

d. by using the impugned domain name, allegee intentionally attempted to attract, for

commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the bona fide owner of the trademark or service mark as to the source, sponsorship, affiliation or endorsement of his website or location or of a product or service on his website or location.

It is recommended that while choosing and adopting a domain name proper availability searches should be conducted. It includes pre-launch trademark searches and domain name searches in order to avoid conflicts and legal hassles. Once a domain name is adopted and business is commenced under it one can incur losses with the onset of any such conflict.

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CHAPTER 5 DOMAIN NAME: JUDICIAL VIEW

With the advancement of e-commerce, the domain names have come to acquire the same value as a trademark or the business name of a company. The value attached to domain names makes it lucrative for cyber criminals to indulge in domain name infringements and the global nature and easier and inexpensive procedure for registering domain names further facilitates domain name infringements. When a person gets a domain name registered in bad faith, i.e. in order to make huge profits by registering a domain name corresponding to a trademark of another person, with an intent to sell the domain name to the trademark owner at a higher price, such activities are known as cyber squatting. The IT Act does not deal with the domain name issues. In India the domain name infringement cases are dealt with according to the trademark law. The issue concerning protection of domain names came up before the Supreme Court of India in the case of Satyam Infoway Ltd. vs. Sifynet Solutions P. Ltd 8 . The court, in an authoritative decision has held that internet domain names are subject to the same legal norms applicable to other Intellectual Properties such as trademarks. It was further held by the Supreme Court of India that:

The use of the same or similar domain name may lead to a diversion of users which could result from such user mistakenly accessing one domain name instead of another. This may occur in e-commerce with its rapid progress and instant (and theoretically limitless) accessibility to users and potential customers and particularly so in areas of specific overlap. Ordinary consumers/users seeking to locate the functions available less than one domain name may be confused if they accidentally arrived at a different but similar website which offers no such services. Such users could well conclude that the first domain name owner had misrepresented its goods and services through its promotional activities and the first domain owner would thereby lose their custom. It is apparent therefore that a domain name may have all the characteristics of a trade mark and could found an action for passing off.

The court further held that there is no legislation in India which explicitly refers to dispute resolution in connection with domain names. The operation of the Trade Marks Act, 1999 is also not extra territorial and may not allow for adequate protection of domain names. This

8 (2004(28) PTC 566)

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does not mean that domain names are not to be protected legally to the extent possible under laws of passing off.

However, with most of the countries providing for specific legislations for combating and curbing cyber squatting, India also needs to address the issue and formulate legal provisions against cyber squatting. For settlement of Disputes, WIPO has introduced a new mechanism called ICANN (Internet Corporation for Assigned Names and Numbers) for settlement of disputes relating to domain names. As the parties are given the right to file the case against the decision of ICANN in their respective jurisdictions, the decisions of ICANN is having only persuasive value for the domain users.

A domain name is easy to remember and use, and is chosen 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 online internet location. Consequently 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. Whereas a large number of trademarks containing the same name can comfortably co-exist because they are associated with different products, belong to business in different jurisdictions etc, the distinctive nature of the domain name providing global exclusivity is much sought after. The fact that many consumers searching for a particular site are likely, in the first place, to try and guess its domain name has further enhanced this value.

The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are:

Honesty and fair play are, and ought to be, the basic policies in the world of business.When a person adopts or intends to adopt a name in connection with his business or services, which already belongs to someone else, it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury

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Thus, a Domain Name requires a strong, constant and instant protection under all the legal systems of the world, including India. This can be achieved either by adopting harmonization of laws all over the world or by jealously protecting the same in the municipal spheres by all the countries of the world .Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. was the first case to be decided by the Supreme Court of India on the issue of domain name protection, and dealt with two businesses employing variations on the same mark ("Sify" ) in their respective domain names.

In the case, the Supreme Court pronounced that the Indian Trade Marks Act, 1999 is applicable to the regulation of domain names. The decision in favour of Satyam Infoway was premised on the court's observation that domain names may have all the features of trademarks. The court considered the confusion that may result in the market due to the use of identical or similar domain names. In such a situation, instead of being directed to the website of the legitimate owner of the name, a user could be diverted to the website of an unauthorized user of a similar or identical name. Upon arrival at the unauthorized site, customers might not find the goods or services customarily associated with the mark, and might be led to believe that the legitimate owner was misrepresenting its wares. This could result in the domain name's owner suffering a loss of market share and goodwill.

Facts of Satyam Info way case:-

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.

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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 9 ., Yahoo Inc. v. Akash Arora 10 , Acqua Minerals Ltd. v. Pramod Borse& Anr. 11 , Dr. Reddy's Laboratories Ltd. v. Manu Kosuri 12 . 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 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.

The High Court based its decision on a consideration of where the balance of convenience lay. The High Court stated that Sifynet Solutions had already invested heavily in securing a customer base for the business (about 50,000 members), and would consequently suffer immense hardship and irreparable injury if the court found in Satyam Infoway'sfavour. It noted that the business that the two parties were involved in were

9 (AIR 2000 Bombay 27)

10 [1999 PTC (19) 201]

11 [2001 PTC 619 (Del)]

12 [2001 PTC 859 (Del)]

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disparate, and therefore there was no possibility of the customers being misled by similar domain names. [1] Further, since Satyam Infoway also had that name to use in trade, the

High Court believed that it would not cause them considerable hardship to deny the temporary injunction.

The Supreme Court analogized domain names to trade marks. After an elaboration of sections 2(zb),2(m), and 2(z), the court stated that a domain name in the contemporary era has evolved from a mere business address to a business identifier. Therefore, a domain name is not merely a portal for internet navigation, but also an instrument which distinguishes and identifies the goods or services of the business, while simultaneously providing the specific internet location. This feature of domain names in the modern era allows them to be likened to trade marks, and concomitantly to be included within the purview of the Trade Marks Act.

Benett& Coleman Ltd case:-

In Benett & Coleman Ltd. v. Steven S. Lalwani, wherein the two domain names www.theeconomictimes.com and www.thetimesofindia.com were being used by the respondents 1998 onwards in bad faith to redirect Internet surfers to www.indiaheadlines.com providing India related news and articles. Bennett Coleman and Co. Ltd., the complainant, publishes The Economic Times, and The Times of India , which are both widely read in India and also holds the domain names, www.economictimes.com and www.timesofindia.com, using them for the electronic publication of their respective newspapers. The complainant had already registered in India, the marks The Times of India and The Economic Times in 1943 and 1973 respectively.

The complainant contended that the respondent had no right or legitimate interest in respect of domain names which were registered in bad faith in order to attract, for commercial gain, Internet users by creating confusion in their minds. Even though the respondent contended that the complainant had no relevant trademarks registered in USA and that there is no likelihood of confusion between the parties respective sites, the WIPO Panel found that the titles The Economic Times and The Times of India are used to identify the producer of the newspapers and sites and are not merely descriptive of content. The only difference between the domain names of either party is incorporation of the article the in the beginning and so the public will be misled as the reputation of the complainant is substantial. The WIPO Panel thus ordered the transfer of both domain names back to the complainant.

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Maruti Udyog Ltd case:- 13 One of many examples of failure of the mechanism is the case of Maruti Udyog against Rao Tella, namely Maruti.com et al. v. Maruti Udyog Ltd. et al. The Indian company Maruti Udyog won the complaint it made before the WIPO panel against the respondent who had registered the domain name marutiudyog.com in the United States. The respondent had been stamped as a cyber squatter 3 times by the WIPO panel in WIPO arbitration cases filed by Onida, Hero Honda and Maruti. Yet when the case went before the United States courts, the WIPO panel decisions were considered non binding. Even the United States Anti Cyber squatting Consumer Protection Act was said not to have applied as according to the court Maruti did not manufacture or sell cars in the United States and so were not entitled to protection under the Lanham Act. Unless governments world over make use of the international ICANN and WIPO mechanism by making their decisions binding, an efficient resource is going to waste. Complainants tend to approach domestic courts instead of using the ICANN machinery without realizing that the WIPO procedure of ICANN is cost effective and has a faster disposal rate with matters disposed off within 45 days. The WIPO Arbitration panel can even pass interim measures to protect the injured party s interests at the very outset. It is interesting to note that even though the national court system does not consider WIPO Arbitration Panel decisions binding, they have made various findings and judicial decisions based on the ICANN s UDRP Policy. This shows that courts find the Policy to be a sound authority on domain name cyber squatting disputes.

Manish Vij case:- 14 One of many examples is the case of Manish Vij v. Indra Chugh where the plaintiff was the proprietor of the trademark and domain name www.kabadibazaar.com , dealing with second hand goods on the internet. Since kabadi means a person who buys second hand products and bazaar means a market where trading takes place the words suit the domain name indicating the nature of business on the website. The defendants on the other hand had been running the website www.kabaribazaar.com a month after the plaintiff and claimed wider reputation amongst the public, than that of the plaintiff s site. The plaintiff referred to WIPO Uniform Dispute Resolution Policy, 1999, adopted by ICANN and argued that the registration of the domain name www.kabaribazaar.com by the defendants was in bad faith.

13 [U.S. Dist. Ct. No. L-03-1478]. 14 [AIR 2002 Del 243]

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The Court after referring to Rules 4 (a) and 4(b), found that both parties had operated their websites within a month and while the plaintiff was unable to show the quantum of business carried out, it cant be said that the defendant had not incurred advertisement costs. It held that it was not possible to prove that the registration of the domain name was in bad faith. Kabadi- bazaar is a common term in the hindi language and so the plaintiffs domain name had not acquired secondary meaning. Thus the plaintiff s application was dismissed and the interim injunction order against the defendant was vacated. National courts can easily shift domain name cases towards ICANN which is an efficient alternate dispute resolution remedy easing the over burdened domestic court system of a country.

INDRP:

India has in a very limited way made some use of ICANN s UDRP Policy by implementing the .IN Domain Name Dispute Resolution Policy (INDRP) on the same lines, however restricted to the .IN registry disputes. The National Centre for Software Technology is the sponsoring organization in India for the .IN Registry, and the administrative contact for the same is the National Internet Exchange of India (NIXI). Under NIXI, the IN Registry functions as an autonomous body with primary responsibility for maintaining the .IN country code top level domain for India. As per paragraph 10 of the INDRP Policy proceedings before an arbitration panel shall be limited to the cancellation or transfer of domain name registration to the Complainant. Under the INDRP rules an arbitration procedure has been provided for dispute resolution of .in ccTLD domain name disputes and the decision of the same is made binding under the Arbitration and Conciliation Act 1996 of India. Interim Relief is also available under Section 17 (1) of the Arbitration and Conciliation Act, 1996, at the request of either party to be ordered by the Arbitral Tribunal if considered necessary in respect of the subject matter of the dispute.

The INDRP

at

www.registry.in/Policies/Dispute%20Resolution and explain the entire procedure of arbitration including the manner of complaint, communication, time periods, relevant documents, schedule of fees being a maximum of Rs. 14,000, notification, appointment of panel etc. Rule 12 provides that In person hearing is only allowed in exceptional circumstances on the arbitrator s sole discretion. A list of authorized arbitrators being

Rules

of

Procedure

are available

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esteemed members of the intellectual property legal community have been listed out by the Registry for dispute resolution and are open to applications.

Bloomberg Finance L.P case:- An important case of the INDRP Arbitration Panel is that of Bloomberg Finance L.P., (BF) vs. Mr. Kanhan Vijay of 2009. The domain name in question is www.bloomberg.net.in which was registered by the respondent. The complainant Bloomberg Finance L.P. was the registered proprietor of the services mark BLOOMBERG in India and abroad, with rights from 1986 as a trade mark, trade name and corporate identity establishing widespread reputation and goodwill. The complainant had registered various domain names under .in CCTLD incorporating "Bloomberg" as the name and is therefore the prior adopter, user and registrant. The respondent represented a firm Bloomberg Computers which had no association with the complainant Bloomberg Finance and had no reason to adopt or register www.bloomberg.net.in as domain name subsequent in time to the complainants various domain registrations with the name Bloomberg . The respondent s bad faith intent was established by the Panel stating that there was a lack of due diligence or evidence on the part of the respondent towards their claims and that the domain was to be transferred to the complainant accordingly.

Passing off

The court delineated the elements of an action for passing off that Satyam Infoway would have to prove in order to succeed. Firstly, Satyam Infoway had to prove accumulated goodwill in the name "Sify", such that it would be apparent that the consumers associated the name "Sify" with the services offered by Satyam Infoway. Satyam Infoway discharged this burden by demonstrating that the name "Sify" had acquired immense repute in the market in association with their services. Satyam Infoway argued that it had 840 cyber cafés, five lakh (five hundred thousand) subscribers, and 54 units of presence all over India. Moreover, it adduced evidence to indicate that it was the first Indian internet company to be listed on the NASDAQ stock exchange in 1999, and that it had expended an enormous amount of money towards the same. It further presented several newspaper articles which had specifically referred to Satyam Infoway company as "Sify", and further various advertisements developed to promote their services which had also prominently referred to Satyam Infoway as "Sify".

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Secondly, Satyam Infoway had to establish that Sifynet Solutions had misrepresented its services to the consumers, such that a likelihood of confusion was created in the minds of the consuming public that the services offered by Sifynet Solutions belonged to Satyam Infoway.

Thirdly, Satyam Infoway was required to prove that a likelihood of confusion in the minds of consumers would inevitably be a result due to the use of a similar domain name by Sifynet Solutions, and further, that such confusion would cause injury to the public and definite loss to Satyam Infoway. The standard applied by the court to assess likelihood of confusion was that of an unwary consumer of "average intelligence and imperfect recollection". The court expressed the opinion that in the field of internet services, the difference in the nature of services offered by businesses may not be of much consequence due to the method of operation on the internet. The court discussed this facet at length and explained that the accessibility of domain names to a wide spectrum of users underscores the point that similarity in domain names would lead to confusion and also receipt of unsought for services.

Distinction between trade mark and domain name

The court proceeded to distinguish between the nature of a trade mark and a domain name. It stated that the distinction is important to determine the scope of protection available to the rights of an owner of either of the two. The court indicated that they can be distinguished primarily on the basis of the method of operation. While, a trade mark upon registration in a particular country acquires rights which are purely national in character, the operation of a domain name cannot be contained within a specific country. Thus, due to this facet of domain names, the court expressed the opinion that it would be difficult to protect them effectively under national laws. In this regard, the court expressed that the International Registrars, i.e., WIPO, and ICANN, had provided a modicum of effective protection to domain names.

Balance of convenience

The Supreme Court disagreed with the High Court on the issue of where the balance of convenience lay. The court stated that no irreparable injury would be caused to Sifynet Solutions by proscribing him from using the domain name. It instead believed that Satyam Infoway had garnered immense goodwill associated with its business, and therefore denying it the use of its domain name would render injustice to it.

The court also ruled that the right to use similar domain names could not be conferred upon both the parties in equal measure, since upon evidence adduced during the proceedings it was

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reasonable to conclude that Sifynet Solutions had adopted Satyam Infoway's mark with a dishonest intention to pass off its services as those of Satyam Infoway's.

Subsequent developments

While the decision was appreciated for the finality it introduced in respect of the law regulating domain name disputes, it was also criticized by some in the legal circles for failing

to notice the significant distinctions between trade marks and domain names. The decision has

also been criticized because it is believed that the Trade Marks legislation is not equipped to

deal with the myriad disputes that arise in the domain name realm. Further, it is also believed that even the Information Technology Act, 2000, has failed to fill in the lacunae in the Trade Marks Act with respect to domain names.

In late 2004, the Indian legislature introduced a significant change in the administration of the

.INRegistry. The INRegistry is now the official .IN domain name Registry.'.in' is India's top-

level domain on the internet. The INRegistry is operated under the aegis of the National Internet Exchange of India (NIXI). The Registry has issued the .IN Dispute Resolution Policy (INDRP), pertaining to resolution of domain name disputes between the registrants of NIXI. Disputes between trademark owners and domain name owners andBetween domain name owners inter se.

A prior registrant can protect its domain name against subsequent registrants. Confusing

similarity in domain names may be a ground for complaint and similarity is to be decided on the possibility of deception amongst potential customers. The defenses available to a complaint are also substantially similar to those available to an action for passing off under

trademark law.

As far as India is concerned, there is no legislation, which explicitly refers to dispute resolution in connection with domain names. But although the operation of the Trade Marks Act, 1999 itself is not extra territorial and may not allow for adequate protection of domain names, this does not mean that domain names are not to be legally protected to the extent possible under the laws relating to passing off.

In India, the Trademarks Act, 1999 (Act) provide protection to trademarks and service marks

respectively. A closer perusal of the provisions of the Act and the judgments given by the Courts in India reveals that the protection available under the Act is stronger than internationally required and provided.

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Rule 2 of the UDNDR Policy requires the applicant to determine that the domain name for which registration is sought, does not infringes or violates someone else s rights. Thus, if the domain name, proposed to be registered, is in violation of another person s trademark rights , it will violate Rule 2 of the Policy.

In such an eventuality, the Registrar is within his right to refuse to register the domain name. This shows that a domain name, though properly registered as per the requirements of ICANN, still it is subject to the Trademarks Act, 1999 if a person successfully proves that he has rights flowing out of the Act.

Domain name disputes are relatively unheard of in the Indian courts. There have been hardly a handful of reported decisions regarding domain name disputes and the case law has still not developed in India. However, with th euse of the Internet catching up at an amazing pace in the country, the Indian courts would surely be faced with domain nname disputes in times to come. A global study of domain name disputes showed that they could be broadly classified under the following heads:

(i) Infringement, (ii) Concurrent claim, and (iii)Cyber squatting

Infringement

This refers to disputes where the original registrant intentionally trades off the resemblance between the domain name and another famous trademark. Thereafter, the registrant tries to cash on the reputation of the trademark holder by running a business similar to that of the trademark holder. In such cases, the use of the mark (domain name) would be illegal under the existing trademark law, regardless of whether the infringement occurred as Internet domain names or in any other context. The standard factors which determine infringement under the traditional trademarks law like:

a. The strength of the trademark;

b. Deceptive similarity between the plaintiff's and the defendant's mark; and

c. the likelihood of confusion in the minds of the public, etc. would apply in cases of infringement of domain names also.

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CHAPTER 6

DOMAIN NAMES: A COMPARATIVE STUDY

Position in US

The US seems to be a forerunner as far as domain name litigation is concerned. Domain name disputes have multiplied manifold in the US over the past few years. The US has now passed the United States Anti-cybersquatting Consumer Protection Act (ACPA), which came into effect from 29 November 1999. The ACPA, also called the Trademark Cyber Piracy Prevention Act, calls for a broad protection of business trademarks. Guilty parties can be found liable for statutory damages of up to $300,000 per trademark if the registration of the Uniform Resource Locator (URL) is considered "willful" 15 . The statute contains a long list of factors that suggest "bad faith" on the part of a domain name owner and a trademark owner's ability to bring an action directly against offending domain names. In fact, the list of factors that suggest bad faith goes well beyond the typical cyber squatting scenario. The ACPA does not centre on the fact that a cyber squatter offered to sell or transfer the domain name to the trademark owner. It also includes factors such as whether a cyber squatter has any intellectual property rights in a domain name; whether a cyber squatter has been engaging in a bona fide use of a domain name to offer his own goods or services ;or whether a cyber squatter intended to divert customers away from a trademark owner's site either for commercial gain or with the intent to disparage a trademark in a way that creates the likelihood of confusion among consumers. 16

One of the first cases in which a US court was called upon to implement the ACPA was in Sporty's Farm LLC vs Sportsman's Market, Inc In the above case, the facts were as follows:

Sportsman's Market, a mail order catalogue company, was engaged in the business of selling products to aviation clientele and had registered the trademark "sporty's" A company called Omega entered the aviation catalogue business, formed a subsidiary called "Pilot's Depot", and registered the domain name"sportys.com" After Sportman's Market filed its lawsuit, Omega launched another subsidiary called Sporty's Farm to sell Christmas trees and then sold the"sportys.com" domain to Sporty's Farm. The Court found that the defendant acted with a

15 Null Christopher, Name Grab, April 2000, ZDNet- Smart Business at wysiwyg://parentWin.70/http://www.z 6605,2453036,00.html?

16 Simrod Eric J and Neclerio John M, Swatting at cybersquatters, February 15, 2000, at http://www.upside.com

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"bad faith intent to profit" from the domain name "sportys.com" not because Sporty's Farm attempted to sell the domain name to Sportsman's Market,Inc, the other owner of the trademark "sporty's", but because of other bad faith factors contained in the Act. One fact noted by the court was that neither Sporty's Farm nor Omega had anyintellectualpropertyrightsin"sportys.com" at the time that Omega registered the domain name. It was also pointed out by the Court that the list of" bad faith" factors were only indicators that may be considered along with other facts. The Court found that the purchase and use of the domain name by Sporty's Farm, generally suspicious in that Omega created a company in a unrelated business that received the name Sporty's Farm only after the lawsuit was filed. In the US, the courts have brought cyber squatters within the purview of the Anti Dilution Law. Interestingly, not a single court has upheld the right of a cyber squatter to profit from the prior registration of the domain name. In fact, although the Federal Dilution Act does not provide for the transfer of a domain name as a remedy, the American courts have not merely enjoined the use or sale of domain names by cyber squatters, but have also transferred ownership to the challengers. This is one of the clearest examples of the way in which trademark rights in cyber space are being expanded beyond their normal meaning in law.

Position in England

Recent intellectual property disputes have led to a reconsideration of the applicable rules of jurisdiction and justifiability. These actions are needed to apply the Brussels Luguano Convention. The scope of application of this Convention may be wider in the UK courts than of those in Europe. In the United Kingdom one is subject to the Civil Jurisdictions and Judgments Act, 1982, and the Private International Law Amendment Act, 1995, the common law on conflicts of law and the Supreme Court rules of practice. The statutes cited incorporate into UK law the Brussels Luguano Convention of 1968, which affects the whole of Europe (Convention countries). Non-convention countries are also affected.

In relation to the Civil Jurisdictions and Judgments Act, 1982, particular attention should be taken of the 1995 amendments, specifically Sections 10 and11. Section 10 abolished the double-actionability rule, which allowed claims only where the tort would be actionable in England under UK law and actionable as a tort in the foreign jurisdiction. Section 11 was enacted to clarify the required tests for jurisdiction for contract, tort and other claims. The rules are as follows: for actions in tort, the jurisdiction is the place of the tort; for actions in contract, the jurisdiction is the place where there is the substantial performance of the contract; for all other actions, the jurisdiction is the country with the most significant

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relationship with the occurrence. 17

The courts have held that cyber squatting is violative of the rights protected under the trademarks law. InMarks & Spencer PLC v One in a Million 18 , the High Court of Justice ,Chancery Division, enjoined the activities of two cyber dealers and their related companies, who had obtained and were offering for sale or hire , numerous domain names containing well-known marks. In this group of cases, the Court enjoined the threat of passing of (a threat which would become a reality if an offending domain name was sold to and used by a stranger to the trademark owner), issuing a warning to cyber squatters:

Any person who deliberately registers a domain name on account of its similarity to the name, brand name or trademark of an unconnected commercial organization must expect to find himself on the receiving end of an injunction to restrain the threat of passing off, and the injunction will be in terms which will make the domain name commercially useless to the dealer"

As is evident from the above, the courts over the world have generally frowned over cyber squatters and have protected the plaintiffs under the trademark law.

Position in India

Although the above cases seem to have great persuasive value for the Indian judiciary, one has to keep in mind that the above decisions have been passed on the basis of the applicable codified trademark laws.

The main issue of contention is the relationship between domain names and trademarks. While domain names were originally intended to perform only the function of facilitating connectivity to remember and use. Businesses have started to realize the significant potential of web sites as a primary means of facilitating E-commerce. By using trade and service marks as their domain names, businesses hope to attract their potential customers to their web sites and increase their market visibility, ultimately their sales and profits. With the growth of Internet in India, domain names have increasingly come into conflict with trademarks. The possibility of such conflict arises from the lack of connection between the systems for registering trademarks, on one hand and the system for registering domain names, on the other hand. The former system (trademarks) is administered by a public (governmental) authority on

17 Conely Liam M, Jurisdiction over trademarks and domain names: The view from Canada, April, 2001 at http://www.see-trademarks.com at 17/11/2012. 18 1998 F.S.R.265(Ch. 1997)

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a territorial (either national or regional)basis, which gives to rights on the part of the

trademark holder that may be exercised within a territory. The latter system (domain names) is

usually administered by a non-governmental organization without any functional limitation, domain names are registered on a first come first serve basis and offer a unique, global presence on the Internet. 19

The Trade and Merchandise Marks Act, 195813, defines trademarks as follows 20 : trademark means:

in relation to chapter X 21 (other than section 81) 22 , a registered trademark or a mark used in

relation to goods for the purpose of indication or so as to indicate a connection in the course of trade between the goods and some person having a 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 for the purpose of indication or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trademark registered as such under the provisions of Chapter VIII.

Essentially, trademarks are names and symbols that a company uses to identify its goods or services in the marketplace.

Trademarks identify the source of the product and also help indicate the quality of a product

or service. The trademark law seeks to provide effective protection of trademarks and prevents the use of fraudulent marks on merchandise suffice to state that the Act seeks to prevent consumer confusion as to the source of a particular good or service by prohibiting a subsequent competing business from using an identical or extremely similar product or symbol as the previous competitor. 23

Under the Act, a registered trademark is infringed by a person who, not being a registered proprietor of a trademark or a registered owner thereof using by way of permitted use, uses in the course of trade, a mark which is identical with or deceptively similar to the trademark in relation to any goods in respect of which the trademark is registered and in such manner so as to render the use of the mark likely to be taken as being used as trademark. Unregistered

19 Source: http://www.see-trademarks.com at 17/11/2012

20 Sec. 2(1)(v)

21 Chapter X of the act deals with offences, penalties and procedure.

22 Sec.81 of the act provides for penlty for falsely representing a trademark as registered.

23 Sec.11 of the Act provides for the prohibition of registration of certain marks and Sec.12(1) of the Act prohibits registration of identical or deceptively similar trademarks.

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owners of trademarks are also entitled to protection of their marks under the scheme of the Act. Therefore, in order to prevail in a trademark infringement claim, the claimant must show that the mark is protectable under the provisions of the Trade and Merchandise Marks Act; the defendant is using the same or similar mark; and the defendant is likely to cause consumer confusion regarding the origin of the goods central question in any infringement case is whether there is a substantial likelihood of consumer confusion due to the similarity between the marks.

Domain Name Disputes in India 24

India s top level domain is .in . The sunrise period for the .in domains was from 1 st January, 2005 to 21 st January, 2005. During this period owners of registered Indian trademarks or service marks were given an opportunity to apply for .in domains. The booking was opened to the public from 16 th February, 2005.

IN

is the official .in registry. IN Registry is operated under the authority of NIXI (National

Registry

Internet exchange of India)

NIXI is a not-for-profit company registered under section 25 of the Indian Companies Act. NIXI has been set up to facilitate improved Internet services in India. INRegistry has the following responsibilities:

1. maintaining the in top level domain

2. ensuring the operational stability, reliability, and security of .in

3. Implementing Government of India policies IN Registry took over its role from National Centre for Software Technology (NCST) and Centre for Development of Advanced Computing (C-DAC). End users cannot register .in domains from IN Registry. Registrations are handled by IN Registry accredited registrars. The following are the registrars for specific domains:

1. National Informatics Centre is the registrar for gov.in domains

2. ERNET is the registrar for res.in and ac.in domains

24 A Literature review of the book titled IPR & Cyberspace, Nagpal Rohas

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3. Ministry of Defence is the registrar for mil.in domains .in domain name disputes are resolved in accordance with the .INDispute Resolution Policy (INDRP) and the INDRP Rules of Procedure.

The INDRP outlines:

1. the types of disputes that can be brought and

2. the criteria that will be considered by the arbitrators.

The INDRP Rules of Procedure describe:

1. how to file a complaint,

2. how to respond to a complaint,

3. the fees,

4. communications, and

5. other procedures. The .in Domain Name Dispute Resolution Policy The .in Domain Name Dispute Resolution Policy (INDRP) sets out the terms and conditions to resolve a dispute between the Registrant and the Complainant, arising out of the registration and use of a .in Internet Domain Name.

Registrant is a holder of the .in Internetdomain name.

Complainant is the person who has complaint against the Registrant.

Illustration

Sameer has booked the domain name noodle.in . Noodle Ltd files a complaint against Sameer to get the noodle.in domain transferred to its own name.

In this case, Sameer is the registrant while

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Noodle Ltd is the complainant.

A complaint can be filed with the .IN Registry on the followinggrounds:

1.

the Registrant's domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights,

2.

the Registrant has no rights or legitimate interests in respect of the domain

name,

Simply put, the following circumstances demonstrate the Registrant's rights to or legitimate interests in the domain name:

1.

Before any notice to the Registrant of the dispute, the Registrant uses or prepares to use the domain in connection with a bona fide offering of goods or services.

2.

The Registrant (as an individual or organization) has been commonly known by the domain name, even if the Registrant has acquired no trademark or service mark rights.

3.

The Registrant is making a legitimate non-commercial or fair use of the domain name, without intent for.

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The INDRP Rules The .in Domain Name Dispute Resolution Policy Rules (INDRP Rules) describe the following:

1. how to file a complaint,

2. how to respond to a complaint,

3. the fees,

4. communications,

5. other procedures.

The complaint

An arbitration proceeding in respect of a domain name dispute can be initiated by submitting a complaint (in hard copy and electronic version) to:

.IN Registry

c/o NIXI (National Internet eXchange of India) Corp. Office: 121-123, Ansal Tower, 38 Nehru Place, New Delhi 110019

The complaint must contain the following:

1. Name, postal addresses, e-mail addresses, telephone numbers and facsimile numbers of the complainant.

2. Contact information of the respondent.

3. The domain name which is the subject of the complaint.

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4.

The trademark(s) or service mark(s) on which the complaint is based.

5.

The grounds on which the complaint is made.

The following must be specified:

a.

The manner in which the domain name is identical (or confusingly similar) to the complainant s trademark or service mark.

b.

reasons why the respondent should be considered to have no rights or legitimate interests in the domain name,

c.

reasons why the domain name should be considered to have been registered and as being used in bad faith.

6.

The remedies sought.

7.

Any other relevant legal proceedings.

8.

Relevant documents.

9.

Cheque / draft (in favour of 'NATIONAL INTERNET EXCHANGE OF INDIA') for the relevant fees. The fees for adjudication is payable as per the following schedule:

.IN Registry's Administration Fee

Rs.5000

Arbitrator's Fee

Rs.25000

Personal hearing

Rs.5000 per hearing

Note: In case the Arbitrator calls for personal hearings, the fees for the same are to be shared by the parties equally.

If any party requests for personal hearing and that request is allowed by the Arbitrator, the fees

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for it is payable by the requesting party.

Notification of complaint

The procedure followed by the .IN Registry on receipt of the complaint is as under:

1. If the complaint is in accordance with the policy and rules, it will be forwarded to the respondent within 3 working days.

.IN Registry sends the complaint to all postal, facsimile and email addresses shown in the domain name's registrationdata through .IN Registry's WHOISdatabase at www.registry.in [see next page for an illustration of registration data]

2. If the complaint is not in accordance with the policy and rules, the deficiencies will be notified to the complainant within 3 working days. The complainant must correct the deficiencies in 5 working days.

3. The .IN Registry then appoints an arbitrator from the list of arbitrators.

4. The complaint and documents are forwarded to the respondentand the arbitrator for adjudicating (in accordance with theArbitration and Conciliation Act 1996, rules thereunder, and the Dispute Resolution Policy & rules).

5. Within 3 days from the receipt of the complaint the Arbitrator issues a notice to the Respondent. The date of commencement of the arbitration proceeding is the date on which the Arbitrator issues this notice to the respondent.

6. .The Arbitrator must pass a reasoned award (within 60 days) and put forward a copy of

it immediately to the complainant, respondent and the .IN Registry.

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Domain name protection

The original role of a domain name was to provide an address for computers on the Internet. The Internet has, however, 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. In the commercial field, each domain name owner provides information/services, which are associated with such domain name. A domain name is easy to remember and use, and is chosen 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 online internet location. Consequently a domain name as an address must, of necessity, is 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. Whereas a large number of trademarks containing the same name can comfortably co-exist because they are associated with different products, belong to business in different jurisdictions etc, the distinctive nature of the domain name providing global exclusivity is much sought after. The fact that many consumers searching for a particular site are likely, in the first place, to try and guess its domain name has further enhanced this value.

The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two.

Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services, which already belongs to someone else, it results in confusion and has propensity of

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diverting the customers and clients of someone else to himself and thereby resulting in injury. Thus, a Domain Name requires a strong, constant and instant protection under all the legal systems of the world, including India. This can be achieved either by adopting harmonisation of laws all over the world or by jealously protecting the same in the municipal spheres by all the countries of the world.

Legislation in India on Domain Name

The Trademarks Act, 1999

In India, the Trademarks Act, 1999 (Act) provide protection to trademarks and service marks

respectively. A closer perusal of the provisions of the Act and the judgments given by the Courts in India reveals that the protection available under the Act is stronger than internationally

required

Rule 2 of the UDNDR Policy requires the applicant to determine that the domain name, for which registration is sought, does not infringes or violates someone else's rights. Thus, if the domain name, proposed to be registered, is violation of another person's "trademark rights", it

will violate Rule 2 of the Policy.

and

provided.

In such an eventuality, the Registrar is within his right to refuse to register the domain name. This shows that a domain name, though properly registered as per the requirements of ICANN, still it is subject to the Trademarks Act, 1999 if a person successfully proves that he has 'rights' flowing out of the Act. This point is further strengthened if we read Rule 2 along with Rule 4(k), which provides the parties have a right to agitate before a court of competent jurisdiction, irrespective of the declaration or decision to the contrary by the ICANN. Thus, a contrary decision of an Indian Court of competent jurisdiction will prevail over the decision of ICANN. The rights and liability to be adjudicated under the Trademarks Act, 1999 can be sub-divided under the following groups:

a. Liability for infringement, and

b. Liability for Passing off

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Liability for infringement: A trademark on registration is endowed with strong protection under the Act. The Act allows the owner of the registered trademark to avail of the remedies of infringement and passing off. It must be noted that though the passing off remedy can be availed of irrespective of registration, the remedy of infringement can be availed of only if the trademark is registered properly as per the provisions of the Act Thus, a person holding a domain name violating a registered trademark can be held liable for infringement under the provisions of the Act.

Liability for business is that of another person is a wrong actionable at the suit of that other person. This form of injury is commonly, though awkwardly, termed that of passing off one s goods or business as the goods or business of another and is the most important example of the wrong of injurious falsehood.

The gist of the conception of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves, which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition, which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders. The gist of passing off action was defined by stating that it was essential to the success of any claim to passing off based on the use of given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become by user in the country distinctive of the plaintiffs goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get up will be understood by the trade and the public in that country as meaning that the goods are the plaintiffs goods.

It is in the nature of acquisition of a quasi-proprietary right to the exclusive use of the mark or get-up in relation to goods of that kind because of the plaintiff having used or made it known that the mark or get-up has relation to his goods. Such right is invaded by anyone using the same or some deceptively similar mark, get-up or name in relation to goods not of plaintiff. The three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. The same principle, which applies to trade mark, is applicable to trade name. In an action for passing off it is usual, rather essential, to seek an injunction temporary or ad-interim. The principles for the grant of such injunction are the same

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as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction.

According to Kerly passing off cases are often cases of deliberate and intentional misrepresentation, but it is well settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing Off (1995 Edition, at p.3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendants state of mind is wholly irrelevant to the existence of the cause of action for passing off. As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiffs distinctive trademark or business name, the order may be an absolute injunction that he would not use or carry on business under that name. (Kerly, ibid, para 16.97). Once a case of passing off is made out the practice is generally to grant a prompt ex-parte injunction followed by appointment of local Commissioner, if necessary.

Broadly stated in an action for passing off on the basis of unregistered trademark, generally for deciding the question of deceptive similarity the following factors to be considered:

a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.

b) The degree of resemblances between the marks, phonetically similar and hence similar in idea.

c) The nature of the goods in respect of which they are used against the registered owner of the trademark, particularly if the trademark has a trans border reputation. This, principle recognises the mandate of protecting the well-known trademarks, as required by the TRIPS Agreement and the Trademarks Act, 1999. Thus, even if a domain name is registered in good faith and innocently, the passing off action is maintainable against the registrant.

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(d) The registration of domain name with the Registrars recognised and approved by the ICANN

may no thave the same consequences as registration under the Trademarks Act, 1999. For instance, a registration under the Act carries with it a presumption of validity

(e) The Act considers even an innocent infringement or passing off as wrong against the right

holder, unlike domain name where mala fides has to be proved. Thus, it does not matter whether

the person offending the right does so fraudulently or otherwise.

(f) The Act will have overriding effect over any other law, which is in conflict with it. Further,

since it is in conformity with the TRIPS Agreement, it is equally in conformity with the well- accepted international standards. It must be noted that Rule 4 (k) provides that the proceedings under the UDNDR Policy would not prevent either the domain name owner/registrant or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution, either before proceeding under ICANN's policy or after such proceeding is concluded. This shows that there is a simultaneous and double protection available under the Act.

(g) The provisions of the Act are in conformity with the TRIPS Agreement and the W.T.O provisions. These provisions are mandatory in nature unlike the provisions of W.I.P.O, which are persuasive and discretionary in nature. The UDNDR Policy is formulated under the provisions of W.I.P.O; hence it is not binding on parties whose rights are flowing from the Act. The distinction is crucial since in case of conflict between the Policy and the Act, the latter will prevail and will govern the rights of the parties falling within its ambit.

(h) The Act allows the making of an 'International application' resulting in automatic protection

in designated countries mentioned in it[21]. This gives a wider and strong protection to the trademark and makes its misappropriation harsh and punitive.

(i) The procedure for registration under the Act is more safe and reliable, as it is not granted on a first come first basis. The safeguards provided under the Act are properly followed and only thereafter a trademark is granted. Thus, the right recognised under the Act is more reliable, strong and authentic.

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CONCLUSION

The protection of domain name under the Indian legal system is standing on a higher footing as compared to a simple recognition of right under the UDNDR Policy. The ramification of the Trademarks Act, 1999 are much wider and capable of conferring the strongest protection to the domain names in the world.

The need of the present time is to harmoniously apply the principles of the trademark law and the provisions concerning the domain names. It must be noted that the moment a decision is given by the Supreme Court and it attains finality, then it becomes binding on all the persons or institutions in India.

It cannot be challenged by showing any 'statutory provision' to the contrary. This is so because no statutory provision can override a 'Constitutional provision' and in case of a conflict, if any, the former must give way to the latter. This settled legal position becomes relevant when we consider the decision of the Supreme Court in Satyam case (supra) in the light of the above discussion. The various landmark judgments of the Supreme Court have conferred the strongest protection' to the domain names in the world. The only requirement to claim the same is that we must appreciate them in their true perspective and apply them in a purposive and updating manner.

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BIBLIOGRAPHY

www.wipo.int

cyberlawsinindia.blogspot.in

en.wikipedia.org

www.trustman.org

Chiramel Christine , The Domain Name chaos- A Legal perspective , www.vaishlaw.com.

Mukherjee Sunando, Passing off In internet domain names- A Legal Analysis, Journal of Intellectual Property Rights, Vol.9, March 2004.

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