Trademark Law and Protection of Domain Name

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This article was written by Ashwini Matolia, a student of School of Law, Raffles University.

Introduction:

We all are aware that a trademark can be anything for instance, a sign, words, symbols, logos, names which has object of distinguishing one goods of manufacturer from another’s.  It is very vital tool for the business because it play very important role to build the reputation of the goods and its manufacturer. It is a means through which the company can establish its business without worrying that its consumer will deceived by the other company’s inferior product. Trademarks are a very useful tools as the business runs through offline, but if a business working on online than it is difficult to gave it a trademark and protect the consumers from deceiving and to avoid the loss which arise through that deceiving.

In the present time where internet is a basic part of human life and people are participating online transaction and shopping on it. Due to all these activities, activity regarding e-commerce increased drastically. As result e-commerce became a very strong and prominent means to regulate and control the market and it prevailed over offline market. Because there is no proper protection given to the online markets and its products there were several cases which arose for the purpose of safety and protection of these goods and business. For instance there is, Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.[1] and Yahoo!, Inc. v. Akash Arora[2], are good examples.

We aware about the fact that a trademark distinguishes one product from another, the same purpose can be and is fulfilled by a domain name. We know that every internet site can be regulated and traced back by its unique domain name which distinguishes it from the other domain names. Thus, the business organised on one domain name is completely different from another’s. But main issue arises when two different companies uses almost similar domain name which result in the loss of one company. That is why it is needed that domain name must be protected under trademark. The best example of this is Yahoo! Inc. v. Akash Arora where the defendant used very similar domain name to the plaintiff due to which the plaintiff suffered its business.

The same question arises in the case of Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. that whether the domain name should be protected in the trademark law. To answer this question the Supreme Court held that although domain name used to as a postal address on internet for communication purpose but presently it is more than that. Due to the influence of e-commerce they became a part of the business and can be symbolised as trademark which fall under the protection of trademark law.

Background:

As for defining domain name we can say that a domain name is an internet name for network of a computer system consisting of a sequence of two or more groups of characters separated by periods. Domain works same as a telephone number or a postal address. Addresses to the Internet Web Servers are assigned and managed through the Domain Name System (DNS), the globally distributed internet database administered by ICANN.

Further, as for the registration of domain names it can registered as .com, .net, .org and .info. These are “generic top level domains”. Apart from these a domain name can be registered under a country code for example, .in for India, .uk for United Kingdom, .cn for China, .ch for Switzerland etc.

Issue:

Initially domain was worked as a postal address for communication on the internet, but as the time change its use also change due to increase of commercial activities on internet. Due to which, use of similar domain name is increased to deceive the consumers. That is why the question arise that whether a domain name can be protected under trademark law. To answer this, court held that a domain name must fulfil all the essentials conditions for becoming a trademark also for proper registration of a domain name as a trademark, this must be well-known trademarks on the internet, so that it does not mislead, confuse, or deceive customers of other companies engaged in the same or different fields, or violate public order or morality.

In the case of In the case of Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.[3], the supreme court decided that “The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet has developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site, and distinguishes specific businesses or services of different companies.”

Conclusion:

Due to increase in the e-commerce activities in the present time, there is need to protect the business on the internet. For offline business there is trademark laws which protected the business, but when we deal with it on internet it is hard to distinguish between them if they are similar nature.

There were many instances where two parties using similar two domain name which created confusion due to which one party suffered by the other party. In all these case, the court held that there is need to protect the domain names and the business of the owner of that domain name holder. Because of all of these reasons the domain name needed to be protected under trademark law and after several case and judgment it is an acceptable fact that a domain name can be fall under the protection of trademark law if it fulfils all the essential condition of becoming a trademark.

[1] 2004(3)AWC 2366 SC

[2] 78 (1999) DLT 285

[3] supra