Domain Name protection in the contemporary business landscape

Last Updated at: October 23, 2019
279
Domain Name protection in the contemporary business landscape

A modern saying goes like this – ‘If it doesn’t exist online, it didn’t happen’. In today’s technologically powered world, everything is linked to its presence online. As online shopping and delivery of goods and services have exploded, a company’s website is the first go-to place for any customer or investor. Thus, it becomes extremely important for businesses to secure proper rights over intellectual property, not just in the physical sense of acquiring trademarks, patents or copyrights, but also securing rights over virtual space through domain names. In this post, we highlight the necessity for securing rights over a domain name and also trace broad contours of the processes involved in doing so. 

Domain Name – Purpose 

  • Originally, a domain name was supposed to provide just the internet address of a particular website. However, in the last few years, domain names have become the commercial identity of businesses online. Domain names have become more than just an informatory title, they’re now held to be a significant virtual asset of the business, capable of legal protection. 
  • Domain name, in most ways, performs the function of a trademark. It distinguishes the goods or services of one manufacturer from another and acts as identification and indication of a certain quality conformity of goods or services in the minds of the customers. 
  • Since the identity of a business or an individual is established online, domain names affect reputation and relationships with many stakeholders such as customers, bankers, regulatory agencies etc. 

Domain Name and Trademark Law

  • While the Trade Marks Act 1999, did not provide specifically for the protection of domain names, the expansive interpretation of the term “trademark” has given domain names the requisite legal protection for passing off. The Supreme Court has held that a domain name can be a word or a name which is capable of distinguishing the subject of trade or service made available to potential users of the internet. 
    • The legal problem with extending the Indian Trade Marks Act is that while trademarks could be used and registered in India, granting appropriate jurisdiction under the law, domain names are universal. They can be made from any part of the world and accessed from any country without any geographical limitation. However, this does not mean that domain names will not be protected against wrongful infringement, to the extent possible in domestic laws. 

Learn More about business name registration

Initiating a case for passing off of a domain name 

Ever since the role of the internet transformed from being a form of communication to a platform for commercial activities, the importance of securing a domain name has substantially increased. The law of passing off punishes an instance of a seller trying to pass off goods or services of another person as his own. In domain name infringement cases, a website that is likely to deceive the public into thinking that the defendants’ goods or services are of the plaintiff would be held liable for passing off. It is also important to know that one only needs to prove a misrepresentation, that causes or is likely to cause a loss to the original owner of services or goods. This loss may be a loss of reputation, money or goodwill.   

The Bharat Matrimony case – In a case of infringement of trademark and domain name, the real owners of the website Bharat Matrimony found that another website with the domain name “BharathMatrimony.com” had been promoting itself as ‘India’s No.1 Matrimony’. The Madras High Court granted an order for immediate injunction to restrain the infringement of the matrimonial website’s domain name. More recently, in July 2019, Bharat Matrimony has also sought protection against its digital trademarks and segment names, which are displayed through the Google AdWords tool and meta tags in its website and mobile applications. These have become necessary proprietary assets, as a person who searches for the intended matrimony website is very likely to be misled by other websites that may be displayed prominently on search platforms like Google, by copying domain names and other tags. 

International Protection for Domain Names 

  • A domain name can be created by either paying for an existing domain name, for example, Facebook had to pay $8.5 million to buy the domain name fb.com, from the American Farm Bureau Federation, or by creating a new domain name. 
  • In case the same domain name is being claimed by multiple entities – Domain Names Dispute Resolution Policy would be applicable. It refers to a set process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. Since 1999, it provides for a domain names dispute resolution process before the Administrative Panels of the World Intellectual Property Organisation’s Arbitration and Mediation Centre.  

 

Domain Name protection in the contemporary business landscape

279

A modern saying goes like this – ‘If it doesn’t exist online, it didn’t happen’. In today’s technologically powered world, everything is linked to its presence online. As online shopping and delivery of goods and services have exploded, a company’s website is the first go-to place for any customer or investor. Thus, it becomes extremely important for businesses to secure proper rights over intellectual property, not just in the physical sense of acquiring trademarks, patents or copyrights, but also securing rights over virtual space through domain names. In this post, we highlight the necessity for securing rights over a domain name and also trace broad contours of the processes involved in doing so. 

Domain Name – Purpose 

  • Originally, a domain name was supposed to provide just the internet address of a particular website. However, in the last few years, domain names have become the commercial identity of businesses online. Domain names have become more than just an informatory title, they’re now held to be a significant virtual asset of the business, capable of legal protection. 
  • Domain name, in most ways, performs the function of a trademark. It distinguishes the goods or services of one manufacturer from another and acts as identification and indication of a certain quality conformity of goods or services in the minds of the customers. 
  • Since the identity of a business or an individual is established online, domain names affect reputation and relationships with many stakeholders such as customers, bankers, regulatory agencies etc. 

Domain Name and Trademark Law

  • While the Trade Marks Act 1999, did not provide specifically for the protection of domain names, the expansive interpretation of the term “trademark” has given domain names the requisite legal protection for passing off. The Supreme Court has held that a domain name can be a word or a name which is capable of distinguishing the subject of trade or service made available to potential users of the internet. 
    • The legal problem with extending the Indian Trade Marks Act is that while trademarks could be used and registered in India, granting appropriate jurisdiction under the law, domain names are universal. They can be made from any part of the world and accessed from any country without any geographical limitation. However, this does not mean that domain names will not be protected against wrongful infringement, to the extent possible in domestic laws. 

Learn More about business name registration

Initiating a case for passing off of a domain name 

Ever since the role of the internet transformed from being a form of communication to a platform for commercial activities, the importance of securing a domain name has substantially increased. The law of passing off punishes an instance of a seller trying to pass off goods or services of another person as his own. In domain name infringement cases, a website that is likely to deceive the public into thinking that the defendants’ goods or services are of the plaintiff would be held liable for passing off. It is also important to know that one only needs to prove a misrepresentation, that causes or is likely to cause a loss to the original owner of services or goods. This loss may be a loss of reputation, money or goodwill.   

The Bharat Matrimony case – In a case of infringement of trademark and domain name, the real owners of the website Bharat Matrimony found that another website with the domain name “BharathMatrimony.com” had been promoting itself as ‘India’s No.1 Matrimony’. The Madras High Court granted an order for immediate injunction to restrain the infringement of the matrimonial website’s domain name. More recently, in July 2019, Bharat Matrimony has also sought protection against its digital trademarks and segment names, which are displayed through the Google AdWords tool and meta tags in its website and mobile applications. These have become necessary proprietary assets, as a person who searches for the intended matrimony website is very likely to be misled by other websites that may be displayed prominently on search platforms like Google, by copying domain names and other tags. 

International Protection for Domain Names 

  • A domain name can be created by either paying for an existing domain name, for example, Facebook had to pay $8.5 million to buy the domain name fb.com, from the American Farm Bureau Federation, or by creating a new domain name. 
  • In case the same domain name is being claimed by multiple entities – Domain Names Dispute Resolution Policy would be applicable. It refers to a set process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. Since 1999, it provides for a domain names dispute resolution process before the Administrative Panels of the World Intellectual Property Organisation’s Arbitration and Mediation Centre.  

 

FAQs

No FAQs found

Add a Question


No Record Found
SHARE
Avani Mishra is a graduate in law from the National Law Institute University, Bhopal. She qualified the Company Secretary course with an All India Rank 1 and is a recipient of the President’s Gold Medal for her academic distinctions. She also holds a B.Com degree with a specialization in Corporate Affairs and Administration.