Domain Name Disputes: Can Trademark Law Hold the Field?
The courts sometimes have to venture into areas in which legislation is silent, resolving disputes not contemplated by the legislature when passing the relevant statute. New challenges arise from technological advances and the courts must fill in the gaps. For example, in the IP field the courts protected service marks long before statutory protection was given to such marks.
Judicial activism in the IP arena has also been seen in the adjudication of domain name disputes. In Yahoo! Inc v Akash Arora (1991 PTC (19) 201) the court borrowed the principles of trademark law to protect domain names. Since then, the courts have repeatedly confirmed that trademark principles also apply to domain name cases. The rationale behind this appears to be that domain names function as business identifiers in a similar way to trademarks.
Indian law does not define the term 'domain name', but it is generally taken to mean a unique name to identify a particular internet protocol address. The National Internet eXchange of India handles the registration of domain names in India.
The growth in domain names has led to the emergence of new disputes. Such disputes arise through the following practices:
cybersquatting - the registration of a well-known mark as a domain name in bad faith (ie, with the intention of selling the domain name to the mark owner for profit);
typosquatting - the registration of a domain name that is similar to a mark but with certain minor changes, thereby making the domain name confusingly similar to the existing trademark;
trademark infringement - the unauthorized use of a trademark with the intent to confuse customers;
trademark dilution - registration of a domain name containing the trademark of another party with the intention of capitalizing on the value of and goodwill in the mark; and
concurrent claims - where two legitimate parties each claim that they are the true owner of the domain name on account of the similar mark used by both claimants for their respective businesses or products.
The lack of specific legislation does not deter the courts from adjudicating domain name disputes. In Satyam Infoway Ltd v Sifynet Solutions Pvt Ltd (2004 (28) PTC 566 (SC)) the Supreme Court held that: "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 Trademarks Act 1999 itself is not extraterritorial 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."
The courts have continuously applied the law relating to passing off in domain name disputes.
Although there are basic similarities between domain names and trademarks, there are also major differences. For example, there is no proper registration system for domain names as there is for trademarks. The registration of domain names is carried out by a non-governmental agency, while the Trademarks Registry is a government body. Furthermore, domain names can be registered only once, whereas numerous parties can claim the same trademark for different areas of business and commerce. These differences raise legal conflicts.
It remains to be seen whether the courts will be able to continue to govern the expanding field of domain names without legislative backing. To ensure adequate protection, the legislature needs to act fast, either by enacting a specific statute to protect domain names or by amending the Trademarks Act to cover domain names.
"International Law Office"