Domain Name Dispute And Resolution Mechanisms

INTRODUCTION

Explore and understand the concept and key points of topic Domain Name Dispute And Resolution Mechanisms.
The internet has brought a massive industrial revolution in the 19th century and is a vast expanding network of computers and other devices, enabling them to exchange and share the data. With the tremendous growth in digital media, the online presence has taken great importance. To facilitate communication between every device connected to the internet (Host) is assigned “Internet Protocol (numerical IP address) consists of four groups of numbers (0 to 255) separated by decimals. Email and web addresses can operate smoothly by just using these numbers. Since these are difficult to remember, Internet authorities assigned alphanumeric addresses known as “domain names.” The users only need to know the name of the subject which he wishes to get information.

The Hon’ble High Court of Bombay, in the recent case of Hindustan Unilever Limited v Endurance Domains Technology LLP & Ors.[1] observed that:

“A domain name is simply an easy-to-remember or mnemonic for an internet protocol address. The IP address is a string of numbers in four sets separated by a period.”

DOMAIN LEVELS

• Top-Level Domains (TLDs): The “top level” domain name is a suffix which serves to place the domain name within one of the board categories such as “.edu” (for educational purpose), “.net” (for networks) etc. Most commonly used TLDs are .com, .net, .edu, .jp, .de, etc.

Further, TLDs are classified into two broad categories: generic top-level domains (gTLDs) and country-code top-level domains (ccTLDs).

Generic Top-Level Domain (gTLDs) : It is a generic top-level domain name that identifies the domain class it is associated with (.com, .org, .edu, etc).

Country Code Top-Level Domain (ccTLD): It is a two-letter domain extension, such as .in (for India) or .fr, (for France) assigned to a country, geographic location or territory.

• New top-level domain names (nTLDs): It refers to new top-level domain names that are geared towards brands, organizations and services, as they’re more customized and relevant. Some of the Examples of nTLDs include “.voyage”, “.app”, “.ninja”, “.cool”, etc.
• Second-level-Domains (SLDs): A second level domain is the name just to the left of the domain extension. For instance, “google.com”, here google is the second level domain.

Internet Corporation of Assigned Names and Numbers (ICANN) is a global multi-stakeholder organisation created by the U.S. government and it’s Department of Commerce in 1998. ICANN regulates the procedure and registration of domain names. As far as registration is concerned, it is provided on the basis of first come first serve. This doesn’t mean that one person can infringe or violate someone else’s right. The procedure for registration of domain name is not same as under the Trade Marks Act, 1999, but the principles apply to the same are similar as trademark protection to some extent. Domain Names that are registered trademarks are universally protected primarily by the Internet Corporation for Assigned Names and Numbers (ICANN).

Resultantly, in case of any abusive registrations or infringement of existing rights, an individual has the option to file a Domain Name Dispute complaint under the Uniform Domain Name Dispute Resolution Policy (at the international level) or under the .IN Domain Name Dispute Resolution Policy (at the national level)[2]. A Domain Name Dispute may arise when any person is infringing or unauthorised use of another’s domain name. The challenges that the legal system has faced in recent years is, how to augment the development of intellectual property on the Internet while preventing its unauthorized use.

INTERCONNECTION BETWEEN TRADEMARK AND DOMAIN NAME

The hon’ble Supreme Court in the landmark case of Satyam Infoway Ltd v. Sifynet Solutions Pvt. Ltd.[3] , luculently laid down that,

“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, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical.”

The biggest question in this case was whether internet domain names are subject to legal norms applicable to trademarks. The respondent registered several domain names related to “sify” and argued that domain name does not confer any IPR. The Supreme Court held that the domain name has all the characteristics of the trademark and an action for passing off can be instituted.

In simple words, the purpose a trademark serves in a physical commercial environment; domain name server in a virtual commercial environment. A “trademark” has been defined in section 2(zb) of the Trade Marks Act, 1999, as “trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours.”

The original role of a domain name was no doubt to provide an address for the devices on the internet. But due to the massive usage of the internet worldwide, the domain name not only serves as an address for internet communication but also acts as a business identifier. Domain name does the same function of trademark in the virtual world. The significance of the trademark lies in the psychological effect it has on consumers. Therefore, domain name disputes also lead to trademark infringement. The Likelihood of Confusion in the mind of the public is an essential ingredient in passing off. In assessing the likelihood of such confusion the courts must allow for the ‘imperfect recollection of a person of ordinary memory’[4]. The use of the same or similar domain name may lead to a diversion of users which could result from such users mistakenly accessing the different domain name instead of the other. Ostensibly, the domain names have all the characteristics of a trademark and could find an action for passing off.

Again in Arun Jaitley v. Network Solutions Private Limited and Ors.[5], the High Court deprecated the offence of cybersquatting in the following manner:

“Cyber squatting is a crime against the laws and regulations of cyber law. The registering or using a domain name with mala fide intent to make profit 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. Cyber squatters ask for prices far more than that at which they purchased it. Some cyber squatters put up derogatory remarks about the person to buy the domain from them to compel the innocent person without any fault. The World Intellectual Organization (WIPO) has noticed about the increase in the number of cyber squatting (abusive registration of trademarks as domain names) cases filed but still no stern action is being taken against them or even no amendment is made in law in order to curb illegal activities of these persons.”[6]

The domain name is usually an address given to the website so that the person intending to visit the same may visit the website of the identified person, but the globalisation and magnificent change in the usage of internet enabled it to perform the function of a trade mark as the prospective customers or other known persons visit the webpage.

In Yahoo! Inc v. Akash Arora and Anr.,[7] defendants registered a domain name similar to the plaintiff’s. Plaintiff instituted a suit for a decree of permanent injunction and contended that defendants have been passing off. The court held that the plaintiff is entitled to equal protection against passing off and held that even services are recognised for passing off.

CYBERSQUATTING

When a person without trade mark registration and without any right uses a domain name, having mala fide intention, is called “cybersquatting.” It involves registering, selling or using a particular domain name to make unlawful profits  from the goodwill of someone else’s trademark. In Manish Vij and Ors v. Indra Chugh And Ors.,[8] the court held that obtaining fraudulent registration with an intent to sell the particular domain name to the lawful owner at a premium amount is called cybersquatting. Cybersquatting is a kind of domain name dispute that arises when a party registers domain names without the intention of using them.

Propelled by mala fide intentions, cybersquatting is the most rampant kind of domain name dispute whereby a party, usually completely unrelated to a trademark, business name or trade name, obtains registration of a domain name identical or similar to such trademark, business name or trade name. Domain names can be obtained by anyone without any prior approval from any authority with respect to pre-existing intellectual property or proprietary rights over trademark, business name or trade name. Obtaining a domain name doesn’t require any proof of ownership of the trademark or trade name.[9]

Country code top-level domains (ccTLD) disputes are subject to country specific dispute resolution policy. In India, the disputes with respect to ccTLD (‘.in’ or ‘.co.in’ extensions) are subject to INDRP (.IN Domain Dispute Resolution Policy). The complainant can initiate a domain name proceeding within the registry, which operates under the National Internet Exchange of India (NIXI), an organisation established for regulation of traffic exchange between internet service providers.

In Tata Sons Ltd & Anr v Arno Palmen & Anr, the Hon’ble High court of Delhi observed that it was a case of cyber squatting as the defendant registered the domain name having mala fide intention with the objective of selling the impugned domain name to the plaintiff at exorbitant amount. Therefore, the Court granted an injunction in favour of the plaintiff against using the domain name ‘WWW.TATAINFOTECH.IN’ as it was held to be deceptively similar to the plaintiff’s trademark ‘TATA’ and likely to cause confusion in the mind of the public.The Toeppan Cases is a series of domain name dispute cases filed against  Mr. Dennis Toeppan, who was a domain name pirate and was sued by several companies for cybersquatting.[10]

DOMAIN NAME DISPUTE RESOLUTION MECHANISMS

INTERNATIONAL MECHANISMS

• ICANN DISPUTE RESOLUTION POLICY

The establishment of the ICANN (Internet Corporation for Assigned Names and Numbers) in 1998 as a worldwide internet administration and the introduction of UDRP (Uniform Domain Name Dispute Resolution Policy) in 1999 for effective and cost saving international domain name disputes, has been one of the most remarkable events, particularly for solving and protecting international legal problems and intellectual property rights of users. ICANN together with UDRP form the best possible redressal mechanism for international Domain Name Disputes.

• UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

The UDRP is instructive as to the kind of rights which a domain name owner may have upon the registration of domain name with ICANN. The UDRP outlines the legal framework for the resolution of disputes between a Domain Name Registrant and a third party in the case of an abusive registration in the Generic Top Level Domains (gTLDs). This policy provides for arbitration of the dispute in respect of domain name disputes. Rule 2 entails that prior to the registration of a domain name; the applicant must prove that such registration would not be in violation of other entities’ trade mark rights.

A person can complain before administration-dispute-resolution providers listed by ICANN under Rule 4(a):

1. your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2. you have no rights or legitimate interests in respect of the domain name; and
3. your domain name has been registered and is being used in bad faith

Rule 4(k) provides that the UDRP would not prevent either the domain name owner or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.

• WIPO ARBITRATION AND MEDIATION CENTER DECISIONS ON DOMAIN NAMES

World Intellectual Property Organization (WIPO) is the principal domain name dispute resolution service provider under the UDRP and is accredited by ICANN. WIPO provided qualified panelists, thorough and expeditious administrative procedures, and overall impartiality and credibility. A domain name case filed with WIPO is normally concluded within two months, using on-line procedures, and a minimal fee is charged. Only extraordinary cases are heard in person.[11]

A trademark holder can initiate a proceeding against a domain name registrant; if he considers that the registration of such domain name infringes or violates its trademark. Even though, registrations continue to be provided on a ‘first come first served’ basis, domain name disputes with respect to gTLDs (Generic top-level domains) are subject to the Uniform Domain Name Dispute Resolution Policy (UDNDR Policy).[12]

CONCLUSION

Domain names are an important tool in the modern virtual business world as it has become the virtual address of an organization. They perform the functions similar to trademark and hence, require all protection in order to take the maximum benefits out of it. Domain Name owners can initiate an action for passing-off and infringement of trademarks under the Trade Marks Act, 1999, against the person infringing or violating the right. Due to the absence of relevant cyber laws, cases are decided within the ambit of trademark laws by interpreting the principle of Passing off with regard to domain names in the court and by UDRP mechanism and the .IN dispute resolution policy in India.

Protection provided under these mechanisms for the settlement of disputes related to the domain names can help in protection of domain names in addition to protection under the common law and law of trademarks. Since there is no legislation explicitly referring to Cyber-Squatting or related Domain Name Disputes there is an urgent need to draft a new legislation for the protection of domain name.

References:

[1] (2020) SCC Online Bom 809.

[2] Singhania & Partners,  Domain Name And Related Disputes, MONTAQ (June 15, 2021),  https://www.mondaq.com/india/trademark/1080052/domain-name-and-related-disputes?type=mondaqai&score=86.

[3] (2004) 6 SCC 145.

[4] Aristoc v. Rysta, 1945 AC 68.

[5] 2011 SCC Online Del 2660.

[6] Ibid, para 50.

[7] 78 (1999) DLT 285.

[8] AIR 2002 Del. 243, 97 (2002) DLT.https://thecorporate.ninja/wp-admin/post.php?post=1712&action=edit

[9] Meghna Mishra and Arjit Benjamin, Domain Names & Cybersquatting – Unravelling The Unethical Realms Of Piggybacking, MONTAQ (Dec. 10, 2020), https://www.mondaq.com/india/trademark/1014984/domain-names-cybersquatting–unravelling-the-unethical-realms-of-piggybacking?type=mondaqai&score=90.

[10] Panavision Int’l, Ltd. P’ship v. Toeppen – 141 F.3d 1316 (9th Cir. 1998), Intermatic Inc v. Toeppen 947 f supp 1227 N.D. iii 1996, American Standard, Inc. v. Schectman – 80 A.D.2d 318, 439 N.Y.S.2d 529 (App. Div. 1981).

[11] World Intellectual Property Organisation, http://www.wipo.int/amc/en/center/faq/domains.html#7.

[12] Supra note 9.