Trademark Project
Trademark Project
Trademark Project
1. INTRODUCTION................
.3
2. DIFFERENCE BETWEEN A TRADEMARK & A DOMAIN
NAME.4
3. STATUS OF TRADEMARKS AND DOMAIN
NAMES...6
4. ASSIGNMENT OF DOMAIN
NAMES.6
5. ICANN................................................................
............................7
6. RELATED DISPUTES THAT
ARISES..8
7. FREQUENTLY ASKED
QUESTIONS10
8. IMPORTANT CASE
STUDIES13
9. CONCLUSION.
.18
DOMAIN NAMES
INTRODUCTION
1
A trademark is a recognizable sign, design, or unique expression related to
products or services of a particular source from those of others, although
trademarks used to identify services are usually called service marks. The
trademark owner can be an individual, business organization, or any legal
entity. A trademark may be located on a package, a label, a voucher, or on
the product itself. For the sake of corporate identity, trademarks are being
displayed on company buildings.
A trademark (or trade mark) is a way for a business to help people to identify
the products that the business makes from products made by another
business. A trademark can be a name, word, phrase, symbol, logo, design, or
picture. It can only be used on things made by the business that owns the
trademark.
For example, Coca-Cola and Coke are trademark names for a certain drink
made by the Coca-Cola Company. No other business can use these names or
any names similar to them. Other businesses can make a drink that is
similar, like colas soft drinks, but they have to use a different name for their
drink, such as Pepsi.
1 https://en.wikipedia.org/wiki/Trademark
Another example is the Nike Company which makes sporting goods like
shoes and clothes. The "swoosh" symbol used on their products is a
trademark.
Famous trademarks like Coca-Cola and Nike are used for branding whole
families of products.
2
On the other hand, a domain name is a human-readable web address (e.g.
"google.com") that points to an IP address and helps users to access website
or other resource in a convenient way. Domain names serve to identify
Internet resources, such as computers, networks, and services, with a text-
based label that is easier to memorize than the numerical addresses used in
the Internet protocols. A domain name may represent entire collections of
such resources or individual instances.
Domain names have extensions at the end of the URL. For example ".com",
".net" and ".org" are the most commonly used domain name extensions.
.com domain stands for "commercial", .org for organization and .net for
network.
There are also country-specific domain name extensions. For example, the
United Kingdom has the ".uk" domain extension and Japan has ".jp".
Domains can be a good way to create a business identity. For example
"MySpace.com" indicates that it provides personal space for users. The most
popular domain extension is .com with more than 100 million domains
registered.
3
Technically, domain names are used to find the Internet Protocol (IP)
addresses of the computers connected in the internet. Domain names are
introduced to eliminate the burden on the users from IP address of the
website they want to visit. Typically, there exists multiple levels of domain
name. The top level domain name is the part of the domain name after
the last dot and the second level domain name is the one which is
immediately left to the dot. Some important top level domain names are
generic top level domains (gTLDs) and Country code top level
domains (ccTLDs). gTLDs is used to determine the prominent domains
such as com, info, org etc., and ccTLDs are used to determine domain names
based on country. For instance, the domain name of google is
www.google.com where com is the top level domain name and google is
the second level domain name.
2 https://en.wikipedia.org/wiki/Domain_name
3 Protection of Trademark and Domain Names, Vishwajeet Sinha, et al, July 2013.
With increased globalization and dependence of internet in commercial
activities, the role of domain names is increased and it is now considered as
a business identifier. This rapid growth in the internet usage led to many
disputes in the domain names such as cybersquatting, domain name
disputes, typo squatting etc. International Corporation for assigned
names and numbers (ICANN), a non-profit organization was formed to
ensure stable and secure operations of domain names and is also responsible
for coordination among the global information systems of unique identifiers.
4
http://www.ipd.gov.hk/eng/intellectual_property/trademarks/registry/Main_difference
s_between_trademarks_and_domain_names-amended.pdf
of
goods or their packaging etc. and
any
combination of such signs.
A domain name is registrable if it is A trade mark may not be registrable
not if it is
identical to a previously registered identical or similar to a previously
domain registered
name. trade mark. Further, similarity of the
applied-for goods or services and
the goods
or services of the previously
registered
trade mark would be taken into
account in
assessing whether consumers would
be
confused about the trade origin of
the applied-for goods or services.
A domain name may describe the A trade mark which consists
characteristics of the applied-for exclusively of a
goods or sign which describes the
services, e.g. freshbread.com for a characteristics of
bakery the applied-for goods or services
may not be
Registrable. Signs such as fresh
bread in
respect of bakery services would be
considered as descriptive and non-
distinctive
and hence not registrable (while
Fresh bread would be fine for
clothing).
A domain name does not have to be A trade mark shall be registered in
registered in respect of a particular respect
class of of the class of goods or services as
goods or services. classified
under the Nice Classification.
A domain name is valid for a A registered trade mark is valid for
contract period 10 years
as agreed between the registrant and can be renewed for further
and the periods of
accredited registrar and is subject to 10 years.
renewal.
5
Domain names are unique -- more than one company can have the
same brand name/trademark (Delta Airlines & Delta Faucets)
Domain names may be generic -- generally trademark law will not give
protection to generic words ("computer," "software," etc.)
Trademarks often only protect a limited set of goods or services, while
domain names effectively are exclusive, covering anything associated
with the domain name owner's website.
6
Status of Trademarks and Domain Names
The Information Technology Act 2000 of India doesnt look over the issues of
domain name. Domain names which are like trademarks are protected by
Trade Marks Act 1999. There are various judicial cases where problem of
domain name is addressed under the laws of passing off. However still there
are gaps which need to be addressed by full-fledged amendments of judicial
law. The Copyright Act, 1957 is also referred sometimes for trademarks but
domain name protection is still not considered under it. There are
international regulations through World Intellectual Property Organization
(WIPO) and the Internet Corporation for Assigned Names and Numbers
(ICANN). ICANN takes care of the unique identifiers and address on the
6 Protection of Trademark and Domain Names, Vishwajeet Sinha, et al, July 2013.
internet. It also provides domain name registration details. ICANN includes a
Governmental Advisory Committee (GAC) which was set up in 1999. The GAC
invites countries to participate in policymaking activities. India is represented
by Mr. N. Ravi Shankar of the Ministry of Communications & IT. Dr. Govind
and Mr. Ranjan Kumar of the Department of Information Technology, Ministry
of Communications & IT of the Government of India head the GAC Secretariat
aiming at increasing the influence of ICANN in India. ICANN implemented
Uniform Domain Name Dispute Policy (UDRP) in 1999 for resolving issues on
domain names. India also used UDRP policy on .IN domains in association of
National Centre for Software Technology and National Internet Exchange of
India. Overall India should effectively change their legislature laws and
strictly follow for preventing cybercrimes and protecting trademarks.
7
ASSIGNMENT OF DOMAIN NAMES
In order to register a second level domain name under a top-level domain, a
request must be made to the organization that has the power to assign
names for that top-level domain. For instance, The US Domain Registry
administers the registration of second level domain names under the .US
top-level domain.
Prior to December 1999, a company called Network Solutions Inc. ("NSI") was
almost solely responsible for the registration of second level domain names
for the most popular top-level domains, including .COM, .NET, and .ORG.
Since the vast majority of domain names are under one of these top-level
domains (the most common being .COM domain names), Network Solutions
had a great deal of control over how domain names were registered, and
how disputes would be resolved. To avoid having to be the arbitrator
between two parties who both desire the same domain name, NSI decided to
simply adopt a first come, first serve arrangement with respect to domain
names. Under this scheme, NSI would not question an applicant's right to
have a particular domain name. If the domain name was available, the
applicant was given the name.
As of December 1999, the ability to register .COM, .NET, and .ORG domain
names was spread out among many registrars. These registrars are
accredited by The Internet Corporation for Assigned Names and Numbers (or
"ICANN"), a non-profit corporation formed specifically to control Internet
domain name management and similar functions. NSI continues to assign
domain names, but now they are just one of many domain name registrars.
Following NSI's precedence, all of these registrars assign names on a first-
8
ICANN
The Internet Corporation for Assigned Names and Numbers is a
nonprofit organization that is responsible for coordinating the maintenance
and methodologies of several databases, with unique identifiers, related to
the namespaces of the Internet - and thereby, ensuring the network's stable
and secure operation. ICANN was created on September 18, 1998, and
incorporated on September 30, 1998 in the State of California. It is
headquartered in the Playa Vista section of Los Angeles, California. It
oversees Internet-related tasks that used to be done by Internet Assigned
Numbers Authority for the U.S. government. ICANN is located in Marina Del
Rey, California, United States. ICANN manages the assignment of domain
names and IP addresses. To date, much of its work is about making new
generic top-level domains.
Most visibly, much of its work has concerned the Internet's global Domain
Name System, including policy development for internationalization of the
DNS system, introduction of new generic top-level domains (TLDs), and the
operation of root name servers. The numbering facilities ICANN manages
include the Internet Protocol address spaces for IPv4 and IPv6, and
assignment of address blocks to regional Internet registries. ICANN also
maintains registries of Internet protocol identifiers.
ICANN has been doing some activities mentioned below:
1. Uniform Domain-Name Dispute Resolution Policy (UDRP): One
task that ICANN was asked to do was to address the issue of domain
name ownership resolution for generic top-level domains (gTLDs).
ICANN's attempt at such a policy was drafted in close cooperation with
the World Intellectual Property Organization (WIPO), and the result has
now become known as the Uniform Dispute Resolution Policy (UDRP).
This policy essentially attempts to provide a mechanism for rapid,
cheap and reasonable resolution of domain name conflicts, avoiding
the traditional court system for disputes by allowing cases to be
brought to one of a set of bodies that arbitrate domain name disputes.
According to ICANN policy, a domain registrant must agree to be bound
by the UDRPthey cannot get a domain name without agreeing to this.
A look at the UDRP decision patterns has led some to conclude that
compulsory domain name arbitration is less likely to give a fair hearing
8 https://en.wikipedia.org/wiki/ICANN
to domain name owners asserting defenses under the First
Amendment and other laws, compared to the federal courts of appeal
in particular.
Cybersquatting
These are common disputes. Cybersquatting involves the registrant having
registered a name, or names in most cases, in bad faith to gain some
Gripe sites
Sites such as www.natwestsucks.com or www.stopecg.com have been
problematic. Arbitrators and the courts have been inclined to order the
transfer of the offending domain name particularly if there is some bad faith
or a lack of legitimate use. Reasoning for this has been that a non-native
English speaker may not disassociate the "suck" from the trade mark
holder's mark.
However, it has been shown that those registering a domain name
incorporating a known trade mark and using the domain name to host a
website to air legitimate grievances against the trade mark owner can
successfully defend the registration of such a domain name. To be
successful in using the dispute resolution process to acquire these domain
names the trade mark holder must demonstrate the registrant has acted in
bad faith perhaps by demonstrating some attempt to extract a commercial
gain from the trade mark holder.
In a case involving www.stopecg.com, a valid site airing discontent at the
business practices of the travel guide publisher European City Guide, the
domain name was not transferred. Here it was contended that a prudent
person would know that the site was criticizing the company and that these
were not the views of the company itself. Therefore there was no bad faith
or disparagement of the trade mark. This highlights the problems that can
arise with the domain name dispute process notably that inconsistent
decisions arise as decisions do not have to be followed in subsequent cases.
Trademark Infringement
Trademark infringement happens when you use a trademark owner's
trademark or a similar mark in a way that is likely to confuse the public about
the source or sponsor of your products or services. This is the most common
type of trademark claim, and it effectuates trademark's primary purpose of
avoiding consumer confusion.
Trademark Dilution
Trademark dilution happens when you use a famous trademark in a way that
is likely to weaken its capacity to identify the famous trademark owner's
goods or services or to tarnish the reputation of the mark. The trademark
owner need not show that you created consumer confusion, and dilution may
occur even if your goods or services are completely different from the
trademark owner's. Because of dilution law, it's probably not a good idea to
call a blog "Kodak News" or "McDonald's Blog," unless it is actually about
Kodak or McDonald's.
The court in Tata Sons Ltd. v. Manukosuri and Others held that domain
11
names are entitled to the protection as trademark and trade mark law
applies to the activities on internet, and the mere fact that the petitioner has
no registered domain name by itself may not stand in the way of passing off
action. Generally in India, the complications begin when a person gets a
11 Selvam and Selvam, Trademark and Internet : Domain Name and Dispute
Resolution, http://www.selvamandselvam.in/blog/trademark-and-internet-domain-
name-and-dispute-resolution/
domain name registered with the Registering Authority, which happens to be
the Trade Name of some other person. The Registering Authority has no
mechanism to inquire whether the domain name sought to be registered is in
prior existence and belongs to another person.
This brings us to the most important and landmark judgment of the Apex
Court, Satyam Inforway Ltd. v. Sifynet Solutions Pvt. Ltd. where the
question for consideration before the Honorable Supreme Court of India was
whether Internet domain names are subject to the legal norms applicable to
other intellectual properties such as trademarks. The Supreme Court
observed that
the use of similar or same domain name may lead to a diversion of users
which would result from such users mistakenly accessing one domain name
instead of another. Ordinary users seeking to locate the functions available
under one domain name may be confused if they accidentally arrived at a
different but similar website which offers no such services. Such users could
well conclude that the first domain-name owner has misrepresented its
goods or services through its promotional activities and the first domain-
owner would thereby lose its custom. Its apparent, therefore, that a domain
name may have all the characteristics of a trademark and could find an
action for passing-off.
Wired v. WIRE
The last case that has arisen recently regarding claims of trademark
infringement based on an Internet domain name found the cutting-edge
cyberspace magazine entitled Wired complaining about the domain name
used by WIRE, a computer network devoted to women's issues. Wired used
"wired.com" as its domain name; WIRE used "wire.net." Rather than litigating
the issues, WIRE decided that as a start-up company it could not afford legal
wrangling and had to focus on its business instead. The parties settled with
WIRE agreeing to change its name to Women's Wire and its domain name to
"wwire.net." In return, Wired agreed to pay half the cost of the name change
expenses, such as redoing on-line graphics and identity materials.
Although the Wired case never even advanced as far as a cease-and-desist
letter, it does illustrate two interesting issues. The first is that Wired
demanded that WIRE change not only its Internet domain name, but its
business name too. Given the fairly close similarity between "wire" and
"wired," requiring WIRE to also change its business name to WOMEN'S WIRE
helps to minimize - in the context in which these Internet addresses are used
- any likelihood of confusion. The second interesting issue is that domain
names, for purely technical reasons, preclude parties from distinguishing
themselves by capitalization, stylized formats, or designs. Companies often
use capitalization of letters in their marks as part of the mark itself. WIRE
obviously sought to do this, but was technically precluded from including this
additional information in its domain name. For the same reason, special
stylized formats and designs are also excluded from domain names. As a
result, companies will find it even more difficult to keep their domain name
distinguishable from other domain names because there are fewer ways to
make domain names distinctive.
CONCLUSION
It is now quite clear that importance of internet domain names has now
increased manifold, both in connection with internet communication and
business and commerce, of the internet. As the internet is fast becoming and
immensely popular and highly preferred platform for accelerated flow of
business related information of all types, by people and entities in all
economic fields, there is an imperative need for getting proper protection to
the unique domain names, like trademarks and service marks. This
increasingly desirable protection to the internet domain names as
trademarks, is now achievable under the auspices of the ICANN & WIPO.
However, for the best possible efficient and vigorous protection of the
domain names at the level global, close harmonization of the trademark laws
of individual countries worldwide, is also highly desirable.