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Introduction
"What’s in a name?
For, if you were to call a rose by any other name, it would smell
as sweet"
-
-William Shakespeare
This
Shakespearean quote, however, does not hold true in today’s day
and age of the Internet and the intellectual property regime
whereby a significant purpose of a domain name is to identify the
entity that owns the website making the name as sacrosanct and
imperative as its existence itself.
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.
However deliberate bad faith registration
as domain of well-known trademarks in the hope of being able to
sell the domain to the owners of those marks (or rival owners) or
simply to take unfair advantage of the reputation attached to
those marks is, in technical parlance, called cyber-squatting.
Squatting is the act of occupying an abandoned or unoccupied space
or building that the squatter does not own, rent or otherwise have
permission to use. Hence cyber-squatting is aptly used to
understand the same illegal activity in the cyber-space over the
intellectual property of another. Interestingly, the first time
that Network Solutions Inc (NSI) revoked a domain name
registration was in mid-1994 when Joshua Quittner, a journalist
preparing an article on domain name policy, upon realizing that it
was still available, registered the site
McDonalds.com. The giant
burger chain with that name realized its mistake and pressurised
NSI into taking action against Quittner. At that time there was no
formal dispute policy in place. A week after revoking the
registration, NSI seemingly realized it had made a mistake and
reversed its decision. Thus the parties were forced to settle,
with McDonald’s retaining the domain name and paying US $3,500.
Each machine
on the Internet is assigned a unique address called an IP address
(Internet Protocol address). IP addresses are 32-bit numbers,
normally expressed as 4
octets
in a
dotted decimal number
format. A typical IP address looks like this: 209.176.120.67.
Since a byte can represent any number from zero to 255, the least
and the maximum IP address possible are: 0.0.0.0 to
255.255.255.255. However locating a computer through an IP Address
is a difficult task, since there are so many of them. Hence the
architects of the Internet have thought of another innovative
method to access websites without having to remember the IP
address of each website. This method is known as domain name
system or DNS. Every domain name is divided into levels. A
top-level domain name is a suffix which serves to place the site
within one of the broad categories such as ‘.com’ (for
commercial), ‘.edu’ (for education), ‘.gov’ (for government),
‘.org’ (for organisation). The second level domain name appears
before the top level and serves as a trademark or trade name
function. Therefore, each domain name is unique and specifies some
information as to the contents of a website to the users.
Cyber-squatting involves the use of a domain name by a person with
neither trademark registration, nor any inherent rights, to the
name. The Domain Name System (DNS), after all, provides an
opportunity for others to
pirate
names with its first-come-first-served basis.
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. In Rediff Communications
Ltd. v. Cybertooth & Another
the Bombay High Court while granting an injunction restraining the
defendants from using the domain name ‘RADIFF’ or any other
similar name, held that when both domain names are considered
there is every possibility of internet users being confused and
deceived into believing that both domain names belong to one
common source and connection although the two belong to two
different persons. Again the website using the domain name, ‘Naukari.com’
was held to be confusingly similar to that of the plaintiff, ‘naukri.com’, with a different spelling
variant establishing prima facie inference of bad faith.
In
Yahoo
Inc v. Akash Arora , the plaintiff filed an action against Akash
Arora for passing off its sources on the Internet as those of the
plaintiff’s by adopting the domain name ‘yahooindia.com’.
The court held that although Internet users were technically
educated and literate, this would not reduce the risk of
confusion. This case is important since it delves into the psyche
of the consumers where the likelihood of confusion will arise. The
very fact that a person who intends to visit the Internet site of
the plaintiff may reach the defendant’s site owing to similarity
in the domain name, was a factor sufficient to grant injunction.
Even Google had a cyber-squatter whereby
www.googl.com,
a cheeky search service was set up in Texas trying to cash in on
Google’s success.
A trademark is
a distinctive sign, which identifies certain goods or services as
those produced by a specific person or enterprise . Trademark
rights arise from the actual use of the mark. Thus if a product or
service is sold under a brand name, common law trademarks have
been created. An unregistered trademark, called a common law
trademark can be kept alive and protected for as long as it
continues to be used provided the owner of the mark takes
appropriate action against infringers by a passing-off action. In
Sade’s case
, although the complainant had not registered the word ‘Sade’
either as a trademark or service mark, the complainant had
established common law rights in the said mark and the said domain
name was transferred to the complainant. Similarly a passing off
action was introduced in
Titan Industries Ltd. v. Prashant
Koorapati , whereby the plaintiff had extensive trade name use of
tanishq,
which was held sufficient to make a prima facie case for passing
off.
Certain
generic words or phrases cannot gain trademark protection, and
therefore have no value as trademarks. For instance the words,
chocolates
or
tables
cannot gain trademark protection. The generic name of a product is
the very anti-thesis of a mark. These are generic terms that have
passed into common usage to identify a product and are commonly
used as the name of a kind of goods such as medicines and can
never be protected. Similarly, if a domain name is the same name
by which the product or service is typically described, the law
will consider it generic and will not treat it as a trademark.
However, the contention that a dictionary word cannot be
appropriated as a domain name/trademark is misplaced as there are
number of such words being used by various companies as their
trademarks.
The said words although are dictionary words have
acquired uniqueness and distinctiveness and are entitled to
protection. In
Yahoo Inc v. Akash Arora , the Court held that the
mark ‘yahoo’ was widely publicised
and well known and the fact that it was a dictionary word was no
reason to deny protection for the mark. Similarly in the famous
Madonna’s case it was held that although the word ‘Madonna’
has an ordinary dictionary meaning which is another name for
Virgin Mary, it was given trademark protection since it was held
that the same was not used in good faith, instead it was selected
and used to attract internet users for commercial gain by trading
on the fame of the complainant’s mark. Again the word
orange has been protected as a trademark
and the domain names
orangewirefree.com and
orangewireless.com
were transferred to the complainant. In
Satyam’s case
, too, the complainant, an information technology giant acquired
the disputed domain names ‘satyam.org’
and ‘satyam.net’ registered by the
respondent. The complainant’s trademark of ‘Satyam’ was protected inspite of the respondent’s contention that it was a general word
underlying the idea behind the adage ‘Satyam Shivam Sundaram’ due
to the distinctiveness acquired by the complainant.
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. The relation with
ICANN and the registrant of a domain name is that of a licensor
and licensee whereby the latter submits to Mandatory
Administrative Proceedings under Paragraph 4(a) of the 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:
(i) the domain name is identical or misleadingly similar to a
trade or service mark in which the complainant has rights; and
(ii) the holder of the domain name has no rights or legitimate
interests in respect of the domain name; and
(iii) 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.
Firstly, 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.
‘Cyber-squatters
often register domain names incorporating the trademark of others,
with the intent of selling the domain names back to the trademark
owner at a profit’.
In
Marks and Spencers
P.I.C. v. One in a Million
, the defendants had registered domain
names corresponding to well-known trademarks with a view to make
profits either by selling them to the owners of the goodwill or to
collectors.
The second
circumstance, which can constitute, as evidence of bad faith is
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. In Julia Roberts’ case , the
domain name juliaroberts.com registered by the respondent was
transferred to her since domain name hijacking is evidence of bad
faith.
The third
circumstance, which leads to inference of bad-faith, is 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. For instance, where
a person registers a domain name
reebuk.com
in order to divert domain name traffic from
reebok.com.
However,
domain name disputes are not always between a person with a purely
speculative reason for registering the domain name and a person
with a legitimate interest. Sometimes both parties have a
legitimate use and right to the domain name. The area of
legitimate competing claims is the most complex in the field.
According to UDRP, legitimate interests by the respondent over the
impugned domain name can be claimed if before any notice to the
respondent of the dispute, the respondent’s use of or
demonstrative preparation to use, the domain name or a name
corresponding to the domain name in connection with a bona fide
offering of goods or services. In
Tata’s case , the WIPO Centre
held that the respondent is merely ‘hoarding’ the domain name
‘tata.org’ since the same was registered 3 years back without
actvation.
Another
circumstance of legitimate claim is when the respondent is making
a legitimate non-commercial or fair use of the domain name,
without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark. In
Maruti’s
case , the respondent had produced evidence that the domain name
‘maruti.com’ was registered on the name of his nephew, Tella
Maruti Shrinivas and was not for commercial use nor was there
tarnishment of the complainant’s trademark. On re-litigation it
was found that the birth certificate of Tella Maruti Shrinivas was
a forgery and the person is fictitious proving that the domain
name was originally registered in bad faith and commercial use was
being made misleadingly diverting the complainant’s customers
tarnishing Maruti’s trademark. But it is not always a foregone
conclusion - last year the international body, which deals with
disputes found in favour of a Mr A. R. Mani, after the fashion
giant Armani claimed it should own
‘armani.com’.
But the
protection of intellectual property on the Internet remains a grey
area whereby everyone in the cyberspace remains vulnerable at the
hands of the cyber-squatter due to the lack of definite principles
not only to resolve but also prevent such misdemeanours in the
virtual world. Although approaching a forum, such as the World
Intellectual Property Organisation is advantageous from the
jurisdiction point of view, ICANN’s procedure is limited to a
select set of circumstances, commonly referred to as bad faith
registrations.
Therefore, for adjudication of more complex
trademark issues, such as competing rights case, one would have to
approach a court of law. Secondly, the UDRP relief is limited to
either getting the domain name struck off or transferred, as
opposed to a normal judicial proceeding, which would permit the
grant of damages, in lieu of or in addition to the remedies in the
UDRP. Even the Information Technology Act, 2000 fails to address
the issue of trademarks on the Internet creating a discrepancy of
sorts. Apart from legislations, awareness about the Internet and
its potential is also essential in reducing such offences. For
instance, if Sachin Tendulkar wants to develop a website with
domain name
www.sachintendulkar.in, he will now have to buy it
from a British gentleman named Mathew Mayer. International
celebrities like Pierce Brosnan, Jimi Hendrix, Sting, Madonna,
Bruce Springsteen, Steven Spielberg and several others have faced
the notorious domain squatter and now the Indian celebrities and
companies are under a similar threat. Awareness in the wake of
such a threat is imperative in countering the same. Therefore
owing to the global nature of the Internet, any policy, in order
to be effective, has to be uniformly accepted and enforced in
different parts of the world. And its efficacy will hinge on the
demystification of technology wherein the same will be made
intelligible to the masses that are still oblivious of the evils
of technology abuse.
Endnotes:
Panavision
Int’l, L.P. v Toeppen, 141 F.3d 1316,1319 (9th Cir.1998) AIR 2000
Bom 27 (1999) 19 PTC 201
http://www.wipo.int
Helen Folsade Adu known as Sade v. Quantum Computer Service Inc,
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0794
(last visited on September 07 2007)
Suit No. 179/ 1998 (Del)
(1999) 19 PTC 201
Madonna Ciccone aka Madonna v. Dan Parisi and Madonna.com
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0847
(last visited on September 07 2007)
Satyam Computer Service Limited v. Vasudeva Gokaraju,
http://arbiter.wipo.int/domains/decisions/html/2000/D2000-0835.html
(last visited on September 07 2007)
(1998) F.S.R. 265
http://arbiter.wipo.int/domains/decisions/html/2000/D2000-0210
(last visited on September 07 2007)
Tata Sons Ltd v. The Advanced Information Technology Association,
http://arbiter.wipo.int/domain/decisions/html/2000/D2000-0049
(last visited on September 07 2007)
Maruti Udyog v. B. Tella Rao,
http://arbiter.wipo.int/domain/decisions/html/2000/D2000-0518.html
(last visited on September 07 2007)
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The
author can be reached at: zohebhossain@legalserviceindia.com /
