Domain name disputes will increase in the future. Therefore, there is an urgent need for a comprehensive legislation while regulating the jurisdictional as well as substantial issues to protect domain names.
Today, domain names have become a part of the standard communication apparatus, which are used by businesses to identify themselves, their products and their activities which have acquired a supplementary existence as business or personal identifiers. Domain names, in electronic commerce, perform the same role as trademarks and trade names have historically played in more traditional modes of business i.e. they act as business identifiers and share many of their attributes. The growing importance of and manifold increase in use of Internet for business promotion and preference for using trademark or name as domain name have combined together to give rise to various disputes between the trademark holders and the domain name registrants. Nupur Sinha, Associate, Sushant M. Singh & Associates, Advocates & Solicitors, informs, “Network Solutions Inc. (NSI) provides registration services of domain name under the name Internet Network Information Centre (Inter nic). NSI registers name free on the basis of ‘first come first served’. NSI does not determine the legality of the domain name registration or otherwise evaluate whether that registration or use may infringe upon the rights of a third party. Anyone can apply for the registration of a domain name and if the name is available, it is allotted to the applicant.
Trademark law allows multiple and concurrent uses of the same word or name by different people in the same business in different places, or by substantially different businesses in the same place, so long as they are not in competition and there is no danger of significant consumer confusion. In contrast, the Internet enforces a greater degree of uniqueness and a domain name being unique; its concurrent use is not possible in Cyberspace.
Because of ‘first come, first serve’ basis for registration, any person, even if not associated in any manner with the sought mark or name, can proceed to register it with the result thus preventing the legitimate owner, having goodwill in a particular mark or name, from registering it as his domain name.
The existing tension between the two systems has been exaggerated by a number of predatory and parasitical practices, which involve persons abusively registering domain names’ distinctive signs, especially trademarks, to subsequently sell the domain name to the owners of the identifiers (cyber squatting), or simply taking unfair advantage of the goodwill associated with them.
There is no explicit legislation in India for dispute resolution in connection with domain names. Nevertheless, the journey of legal protection of domain names in India has been more or less a favourable one.
The courts in India have been more patient towards the concept of permitting legal protection to domain names on a status more or less equal to that of a trademark. There has been a widespread realisation of importance of legal protection of domain names right from its very inception and the courts have adopted a progressive interpretation. There have been disputes between trademark holders and domain-name owners and also between domainname owners themselves. The Indian courts have uniformly applied the law of passing off to such domain name disputes.
In a very recent case wherein personal name of an eminent Indian lawyer (Mr. Arun Jaitley) had been registered as domain name by someone else, Hon’ble Delhi High Court in Arun Jaitley v. Network Solutions Private Limited & Ors passed an order restraining the registrant of the domain name www.arunjaitley.com from transferring, alienating or creating any third party interest in the same. While doing so, the Hon’ble Court observed that the instant case raises very significant questions in the realm of
“Network Solutions Inc. (NSI) provides registration services of domain name under the name Internet Network Information Centre (Inter nic). NSI registers name free on the basis of ‘first come first served’. NSI does not determine the legality of the domain name registration or otherwise evaluate whether that registration or use may infringe upon the rights of a third party.
“While one of the distinct advantages of common law is its adaptability to meet different situations on a case-to-case basis, the most contentious conflict area of trademark-domain name inter-play deserves a separate legislation to comprehensively regulate and govern interesting and varied dimensions of domain names disputes. Though our judicial system has responded exceptionally well to deal with such conflicts through application of principles of passing-off and unfair competition, absence of a clear legislative intent has led to inconsistent judicial opinions. With the world soon to open to a whole range of new top level domains, there will be a massive increase in the real estate of Internet. In view of more challenges ahead for sure, a comprehensive domain name law is just what we need at this hour!”
Domain names have become increasingly valuable assets, in some respects more valuable than trade marks. However, there is still a significant unresolved issue as to whether a domain name is a form of intangible property or merely a contractual right. Resolution of this issue is important for commercial transactions affecting domain names and for legal proceedings and remedies relating to them.
Domain name disputes arise largely from the practice of ‘cyber squatting’. Cyber squatters exploit the first-come, first-served nature of the domain name registration system to register names of trademarks, famous people or businesses with which they have no connection.
Since registration of domain names is relatively simple and inexpensive (less than US$100 in most cases), cyber squatters often register hundreds of such names as domain names and often put the domain names up for auction, or offer them for sale directly to the company or person involved, at prices far beyond the cost of registration. Alternatively, they often keep the registration and use the good name of the person or business associated with that domain name to attract business for their own sites.
There is no agreement within the Internet community to pre-screen the filing of potentially problematic names. In India, most of the leading companies, which faced the menace of cyber squatters, were forced to adopt the Internet Corporation for Assigned Names and Numbers (ICANN), the organisation responsible for, among other things, management of the generic top level domains such as .com, .net and .org, to protect their trademarks.
Many well known Indian corporations and media houses have filed cases before the World Intellectual Property Organisation (WIPO), and so far all the cases have been decided in favour of the complainant. Some of the important cases involving domain name issues were ‘tridenthotels.com’, ‘theeconomictimes.com’, ‘timesofindia.com’, ‘tata.org’ and ‘mahindra.com’. One landmark case in Indian judiciary regarding domain name, has been of yahoo.inc vs Akash Arora, where relief has been granted on the basis of principal of passing off of the trade marks.
However, to bring a permanent solution to this menace, organisations like WIPO and ICANN, should take speedier steps to make domain name registration organisations answerable and responsible by way of specific contractual obligations to decide upon the common fundamental issues raised by the complainants like whether the applicant has any rights or legitimate interests in the domain name he seeks to apply; whether the domain name is being used in bad faith, whether the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Once these issues are decided, the menace of capturing or say hijacking other’s trademark by applying them as domain names under numerous of gTLDs, ccTLDs and new subdomain names will come to halt.
intellectual property wherein a person’s name has acquired reputation and distinctiveness. It is pertinent to mention here that though the instant case was not based on a passing off action, the Court opined that a name, which is unique to a person, cannot be exploited commercially by someone else.
There have been conflicting views of the Indian courts on the question of exercising or establishing the jurisdiction of the courts in passing off actions, involving domain names wherein the defendant is not residing and/or carrying on business for gain within the territorial jurisdiction of a particular court.
M K Miglani, Managing Partner, Worldwide Registration Bureau asserts, “While one of the distinct advantages of common law is its adaptability to meet different situations on a case-to-case basis, the most contentious conflict area of trademark-domain name inter-play deserves a separate legislation to comprehensively regulate and govern interesting and varied dimensions of domain names disputes. Though our judicial system has responded exceptionally well to deal with such conflicts through application of principles of passing-off and unfair competition, absence of a clear legislative intent has led to inconsistent judicial opinions. With the world soon to open to a whole range of new top level domains, there will be a massive increase in the real estate of Internet. In view of more challenges ahead for sure, a comprehensive domain name law is just what we need at this hour!”
One view is that mere accessibility of a website from a particular place is sufficient to invoke the territorial jurisdiction of a particular court. The other view is that mere ‘passive’ posting of a website does not give jurisdiction to the court within whose jurisdiction the complainant company is present and that there has to be something more to indicate purposeful direction of activity to the forum state in substantial way.
It is pertinent to note the importance of the trademarks and its significance in modern day commerce cannot be undermined. It also needs to be borne in mind that this millennium belongs to the internet and that ‘domain names’ are going to play a significant role as business identifiers.
Viewed in this context, it is certain that the domain name disputes will only increase in the future. Though Indian courts have stepped in and come to the aid of the aggrieved in a number of cases and granted injunction on the touchstone of principle of passing off, the current approach will again require extensive creative interpretation by the courts in the absence of a cyber specific legislation.
Therefore, the development of a balanced legislation, catering to domain name disputes that would be responsive to the emergent trends, is becoming increasingly important with regard to the Indian context. It is high time that the Indian government comes out with domain name specific legislation to cater to these disputes. A lead can perhaps be taken from the ‘Anti Cyber Squatting Consumer Protection Act, 1999’, a legislation enacted in US catering specifically to the domain name disputes. Such a change will not only give teeth to law enforcement agencies but also put a fear in the heart of prospective abusive domain name registrants.
The Indian judiciary has come a long way in protecting the domain names under the existing regime of the ‘Trademarks Law’ by progressively interpreting and extending the same to the domain name disputes. In almost all jurisdictions, judiciary has frowned upon, censured and directed strict action against ‘squatting’.
The existing regime, however, fails to address an important issue of bonafide multiple claimants in different jurisdictions for generic and/or descriptive domain names. By the very nature of the internet, every registrant, who wishes to start business, is enticed towards adopting a descriptive and/or generic domain name. Such descriptive or generic domain names are increasing day by day and there are multiple claimants to the different variants of these domain names. This completely erodes and dilutes the rights of the rightful owner of the first domain name.
Another issue, which the existing system fails to address, is the enforceability of orders passed by courts of competent jurisdictions by the respective registrars of these domain names. It has been seen that orders passed by courts are not always enforced, more so where the court is a foreign court. Some guidelines should be framed for the registrars who, on the one hand, do not wish to be impleaded as parties to the domain names disputes, but on the other hand, fail to comply with the orders passed by the courts of competent jurisdiction. Also, there have been instances, where the registrars have defied the notifications, issued by the parties and/or their counsel and have instead put the domain name in issue on auction. Such registrars should be made liable to pay damages in appropriate cases and courts need to come down heavily on such registrars.
A comprehensive international agreement, duly implemented by all the signatory countries, would definitely go a long way in suitably protecting the right owners and also stabilising and lending more credibility to the resolution of domain name disputes.
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