Trademark Concern in Relation to the Internet Domain Names

Narendra Kumar

24 May, 2019

Marking any identification on the goods has been practicing from ancient times. People since ancient times using this practice to make the goods identification mark. As the civilization grew, innovative and new techniques of business demanded unique recognition to their products. Hence, the trademark is born. Today, in this article we will discuss on Trademark concern in relation to the internet domain name.

After the emergence of the internet in the market, e-commerce business has started flourishing and expanding their activities on the internet and hence the need of trademark took the place in the market. However, a company cannot directly put the hand in the cyberspace without an identity.

Although, Trademark and Domain name seems the same sound similar are distinct but both are unrelated. Many times, the well-known trademark is being used as domain names by hoaxers so that the customer can be deceived easily. The act of deceiving the customer is known as cybersquatting. The United States Patent and Trademark Office permitted registration of domain name as a trademark under certain circumstances. Courts have laid down certain circumstances of trademark infringement. These are as follows-

• Linking and Framing
• Meta Tagging
• Trademark dilution etc

A domain name includes of Top level and Second level Domain name that can be registered with ICANN approved registrar like WIPO. And in case of any dispute arises, settlement of the domain name disputes can be through various means like ADR Mechanism, agreement, and court proceedings. ICANN has set up the uniform Dispute resolutions Policy to solve the disputes of the domain name at the international level.  Undoubtedly, the main issue while resolving the domain name and trademark dispute is the jurisdiction issue because the internet is boundless space.

What are the Trademark concerns relations to the Internet domain name?

In the modern world, information technology has become our daily bread. It has become a part of our lives.  The development of the internet and the exchange of data amongst various computers led to major technologies as well as telecommunication revolutions.

It is well said, “Technology can be a boon as well as bane”. Internet technology has majorly directly or indirectly contributed to the increasing number of cyber crimes in the society. There is trademark concern relatable to the Internet domain name is the Cybersquatting.

Trademark concern in relation to the Cyber Squatting

The act by which one party earns the profit and attracts the customer by misusing the trademark of the other parties is called cyber squatting.  Now, the misuse can be in any terms of registering a domain name having a resemblance to or exactly to the well-known company’s goodwill trademark. Cyber squatting is a big hindrance to the growth of the e-commerce companies.

“According to the PWC report of 2016, the emphasis that at a global level cyber crimes has been the second most reported crime in the world. Furthermore, according to the Indian Computer Emergency Response Team has reported around 27482 cases of cyber crimes in January 2017 to June 2017”.

With the Increased number of cyber crimes that strongly poses a threat to the individual as well as national security.  There is a strongly need for a re-invent technology that could easily track the cyber attacks or tackle it or even re-frame the more stringent laws to reduce such activities.

Intellectual property and Information technology go hand in hand are sometimes known as “sister laws”. Trademark, copyright, patent have now occupied cyberspace at a very large front.  After the rigorously emerging of e-commerce businesses, the entities have started expanding and flourishing their activities on the internet.

However, no company can directly enter into the cyberspace without an identity.  Unique Internet Protocol addresses were not that eye- catchy and they are quite difficult to remember due to its all-numeric version.   This difficulty in remembering led to the Domain name systems which we also called as the DNS.

Domain Name System was introduced as a substitute to the all-numeric traditional IP address. The main functions of the DNS are to convert complex IP addresses of the emails and websites to simple domain names for the easy understanding and easy access by the average user. Domain names contain importance in it as if now domain names are referred to as valuable corporate assets carrying goodwill.

Let’s understand this some example-

• .com for commercial
• .int for organizations establishes by the international treaties
• .net for computers network providers

Trademark concerns related Trademark infringement, Linking and Framing and Meta-tagging

Cyberspace- Infringement of trademark occurs when one company generally uses the trademark of another company or trademark similar to that of other company in the course of trade of goods and services to deceive the customer and earn a profit by using the goodwill of any other company. The concern of Trademark infringement has been in existence from common law times.

Meta- tagging- Meta tagging is something that manipulates the keyword field in search engines. The manipulators insert a word in the keyword filed of a site that manipulates the search engines so that the user can return to the same although the site may have nothing to do with that search engine. It is completely made to deceive the users from the main sites. However, not all Meta tagging case is known as the trademark infringement or trademark concerns.

Jurisdictional issues- the third one is the jurisdictional issue. As we all know the internet has no boundaries. Crimes can be committed while sitting at your sofa or chair at a distant place using the internet.

What is the difference between Trademark and Domain Name?

On one hand the Trademark provides a unique identity to a product and on the other hand domain names are called as Internet Resource Locators. Domain names are also known as the Internet address of a company that after many years of the use becomes the identity of their diversified product lines.

But the question here arises is that, whether the trademark can be regarded as the domain names and vice versa?

This is the truth there has been much fuss about the resemblance of the two of the cyber world. The company has taken the number of a factor that includes the trademark within the domain name. A domain name can be called as the trademark and trademark could be used for registering the domain but it is only worth if the same company does it so. Many times, you have seen well- known trademarks are used as the company’s domain name by hoaxers to misguide the customer.

Case study-

In Dutch case law- a company got a trademark registered at thuisbezorgd.nl in the year 2000. Another company engaged in the same business activity under the domain name as thuisbezorgen.nl.  The trademark owner filed a suit against the domain name owner containing the same name to misguide the customer to think that the site was theirs and the goodwill of the company was being used by the domain name owners to earn the profit. The trademark owner filed the suit against the domain name owner contending that it mislead the customer to think that the site was theirs and the goodwill of the company was being used by the domain name owners to earn the profit.

However, the court ruled that since the trademark is registered before the domain name, the defendant was at fault. Thus, most of the times the company earns the reputations from the internet domain name.

Another famous example of Trademark concern relating to the internet domain name is Amazon.com Inc vs. Royal responder IncCivil action.  In this case, the defendant was charged for sending emails using Amazon’s domain name that is Amazon.com and making the customers believe that the goods or services of Amazon.

The defendants were neither the affiliate of the Amazon nor they were doing so with any prior permission of the company. Amazon has a wide range of the customer all over the world and is also known for its services both online and offline. Hence, in that case, it is clearly visible that the company’s domain names have become a valuable corporate asset.

The following are the differences between the two are like as stated-

• Trademark works in the real world while domain name operates in the cyber world.
• The registration of the trademark is generally done at the national level but the domain name registration is at the global level.
• Different persons living in different countries can have the same trademark for different goods and services since it does not generally have this global impact but on the other hand domain name operate at the global level. However, two companies cannot have the same domain name. For example- Delta us used by the number of companies including Delta Airlines, Delta clinic etc but the domain name com is only used by the airline industries.
• Dispute with the trademark can easily be settled because there are no jurisdiction issues but domain name disputes are hard to settle to settle as it has no boundaries.
• Trademark can be related to the specific category of a product or product line but on the other line, domain names are not for every single product offered by the company.

How to get the Registration of Domain name?

We the increased usage of the internet in almost every area there was the need to have a regulating body in order to grant and to maintain the records of IP address. Internet assigned numbers authority (IANA) was set up under the supervision of the US government to carry out the function like-

• Allocation of IP addresses.
• Setting up the protocol parameters to ensure the computers can communicate with each other
• Maintain the registries and making it available for general public use

A domain name is divided into two levels –

• Top level domain (TLD)
• Second level domain (SLD)

Therefore, the nature of the generic domain name is international. For example- .edu for the educational institution, .com for commercial use etc.  Although, the nature of the generic domain name is just opposite to the generic ones. They are particular for specific companies like for India it’s .in.

Specifically talking about India – In India, National center for Software Technology is the official body that regulates the applicant’s presence in the country as an essential requirement for the registration. And on October 26, 2004, the government of India declared National Exchange of India (NIXI) as the registrar of the .in domain.

How the settlement of Domain name disputes works?

Domain name disputes are become rampant mainly because of the jurisdictional issues with the cyberspaces. The US is the first country to introduce legislation that specifically talks about the trademark infringement in cyberspace known as the anti cyber squatting Infringement act, 1999.

The following are the manners where domain name can be solved-

• By ADR mechanisms like Arbitration and Mediation
• By court proceedings
• By the mutual agreement between the parties.
• By conforming to a procedure for settlement of disputes as entered into the domain name registration agreement between registrar and registrant.

So, in order to overcome the problems of disputing, ICANN came up with the Uniform Dispute Resolution Policy as a mechanism to resolve the domain name disputes. The policy enables the trademark owner to challenge the legitimacy of a domain name. Organization approved by the ICANN for resolving what we say settlement of domain name disputes enjoy wide powers that include-

• Cancellation of domain name created by the cybersquatters
• Changing the registration of domain names
• Transferring the domain names to the complainant

Furthermore, it is the duty of the provider to notify the parties related to the decisions of the panelists that have to b implemented within 10 days after receiving the notifications. The number of panelists could be either one or three. Hence, the burden of proof is on the complainant to show that-

• The other party is misusing the complainant ‘s trademark that is too similar to the trademark of the complainant
• The other party does not have any kind of legitimate interest with respect to the said domain name.
• the party is using the domain name in bad faith

In conclusion-

With the expanding activities in the cyberspace or trademark infringement, various issues have been raised now and often. Talking about the name, then there is a very simple policy “first come first serve basis”. So, get registered as soon as possible with us by contacting us www.enetrslice.com