In the fast-paced landscape of today, domain names have become invaluable assets for business and individuals seeking an online presence.
As the importance of online branding continues to grow, the question arises: can domain name be registered as trademarks? This article delves into the multifaceted world of trademark registration and explores the intricacies surrounding the possibility of protecting a registration.
Understanding the Nature of Domain Names:
Before delving into the complexities of trademarks registration, it is crucial to grasp the nature of domain name.
Essentially a domain name is a unique alphanumeric identifier that serves as an address for websites on the internet.
It acts as a gateway for users to access specific online location and is often associated with a particular brand, organization, or individual. Domain names enable businesses to establish their online presence and connect with their target audience.
The Essence of Trademarks:
Trademarks are vital legal tools designed to protect distinctive symbols, name, logos or phrases associated with goods or services. By registering a trademark, individuals or businesses acquire exclusive rights to use that mark in connection with identified goods and services.
Trademarks serve a valuable asset, helping to establish brand recognition, consumer trust, and market distinctiveness.
Can Domain Names be Registered as Trademarks?
Although there are similarities between domain name and trademark, their functions differ significantly.
A domain name functions primarily as an online address, facilitating website accessibility, while a trademark acts as a source identifier for goods or services. However, under specific circumstances, a domain name can be registered as a trademark, subject to meeting certain criteria and legal considerations.
Distinctiveness: A Crucial Criterion
The key factor in determining the eligibility of a domain name for trademark registration is its distinctiveness. To obtain trademark protection, domain name should possess inherent distinctiveness, meaning it should not be generic, descriptive or merely functional. For instance, a domain name like “shoes.com” would be considered as generic and may face challenges in securing trademark protection, as it fails to provide unique identifier.
Secondary meaning:
Acquiring distinctiveness over time in cases where a domain name lacks inherent distinctiveness, it may still acquire trademark protection through the establishment of secondary meaning.
Secondary meaning refers to a situation where consumers associate the domain name with a specific source of goods or services, rather than its generic or descriptive nature. By extensively and exclusively using a domain name over time, it acquires secondary meaning, bolstering its chance of obtaining the trademark protection.
The likelihood of confusion:
A critical factor in trademark registration is the likelihood of confusion. If a domain name is identical or similar to an existing registered trademark for similar goods and services, it may result in consumer confusion.
Trademark examiner evaluate this likelihood by considering various factors, including the overall similarity between the marks, the relatedness of the goods and services, the strength of the existing trademarks, and the degree of attention consumers are likely to exercise in making purchasing decisions.
Domain name disputes and the UDRP:
In addition to trademark registration, domain names can also be subject to disputes based on alleged trademark infringement. The Uniform Domain-Name Dispute-Resolution Policy (UDRP) provides a mechanism for resolving such conflicts. If a registered trademark holder believes that a domain name is identical or confusingly similar to their mark, and the domain name registrant has no legitimate interest in it, they can file a complaint to reclaim the domain name.
The UDRP aims to strike a balance between protecting trademark rights and maintaining a fair and efficient domain name system.
How the disputes of domain name can be settled in India?
The ICANN, the regulatory body responsible for overseeing domain names, has established the Uniform Dispute Resolution Policy (UDRP) as a global mechanism to resolve domain name disputes.
However, the jurisdictional challenge arises in the context of domain name disputes and trademark protection due to the absence of geographical boundaries on the internet. In India, the Indian Dispute Resolution Policy (INDRP) governs domain name disputes. The rules and procedures of INDRP have been approved by NIXI. Under INDRP, arbitration proceedings are mandated under the Arbitration and Conciliation Act, 1996 for domain names registered by NIXI.
Regarding the prohibition of another company from using a registered trademark as their internet domain name, it is not an automatic restriction.
The existence of a registered trademark does not necessarily prevent other companies, engaged in similar or different businesses, from using that trademark as their domain name. However, there are circumstances where a trademark owner can seek intervention from NIXI to prohibit the use of their trademark as a domain name.
In cases where a company uses a domain name that is already a registered trademark owned by another company operating in a similar or different line of business, causing confusion among consumers regarding products or services, NIXI may impose restrictions on the use of the trademark as a domain name by the other company.
Furthermore, if the commercial use of a domain name leads to the dilution of the reputation of a famous trademark, restrictions can also be imposed on using the trademark as a domain name.
Landmark Cases
In Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company,
In this particular case, referred to as the complainant, actively contributed the publication of articles in the popular daily newspaper like the “Economic Times” and the “Times of India”.
Further the complainant also published articles on the respective newspaper’s online version, accessible through the domain name “economicstimes.com” and “timesofindia.com”. Conversely the party known as the respondent registered domain names as “theeconomicstimes.com” and “thetimesofindia.com”.
The complainant alleged that the respondent’s choice of sponsored top-level domain name resembled theirs, aiming to capitalized on the complainant’s positive reputation without good intention.
Consequently, dispute was referred to the panel of the Mediation and arbitration Centre of WIPO.
After careful consideration, the panel concluded that the two domain names owned by the respondent should be transferred to the complainant.
In Rediff Communication Ltd. v. Cyberbooth & Another,
The Bombay High Court held that “a domain name is much more than an internet address, therefore, it is equally entitled to protection as a trademark under trademark law”.
In this case, the plaintiff has filed a case against Defendant Company that they use the mark/ domain name “Radiff” similar to their trademark “Rediff” to deceive the consumers. The High Court held that, with the “intention to deceive” the plaintiff, the respondent uses the domain name in bad faith.
Resolving domain name disputes in India requires a comprehensive understanding of trademark law, cyber-squatting issues, and available disputes resolution mechanism.
Registering domain name as trademark, monitoring infringements, and taking prompt legal action when necessary are vital steps in protection rights.
India offers various avenues for resolving domain name dispute, including litigation in courts, alternate dispute resolution mechanism like NIXI, WIPO and anti-cybersquatting provisions. Prompt and proactive action is necessary to safeguard brand reputation and online presence.
By staying informed, seeking legal advice, and implementing proactive brand protection strategies, individuals and businesses can effectively protect their domain names and maintain a strong online presence in India.
Apoorva Sharma is an Advocate enrolled with Bar Council of Delhi. She is a Law Graduate from Vivekananda Institute of Professional Studies, GGSIPU.
Reference –
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