Articles

Article Title: Emerging trend on Domain Name System in India with special reference to jurisdictional aspects-criti
Date of Article: January 1, 1970

Emerging trend on Domain Name System in India with special reference to jurisdictional aspects-critique

J.Star, M.L.,*

Abstract

Internet has unfolded its potential and its users are now quite convinced that it is a cost effective, flexible, efficient and viable option to carry out different business activities disregard of any physical or geographical boundaries. These intrinsic properties of Internet have raised innumerable legal issues that are difficult to resolve within the boundaries of existing legal regime which has a different scheme of things. Internet has impacted most of the branches of law more particularly Intellectual property jurisprudence which has engendered many IP issues including interplay of trademark and domain names. There is neither any separate legislation nor any express provision in the existing Trademark Act, 1999, which is relatively recent in origin and enacted at the time when these has issued had seized the attention of the courts in other jurisdictions. A host of legal issues cropped by the intersection of trademark and domain names which have been left for the courts to decide. The courts in India have seized this opportunity and have laid down a number of principles. This paper appraises approaches adopted by Indian courts in resolving domain name disputes and compares them with theories evolved and established in other jurisdictions.

Introduction

Internet is often described as a ‘network of networks’ because it constitutes of hundreds of thousands of interconnected networks linking billions of devices around the world. These devices are identified on the Internet by a unique number that designates their specific location, thereby making it possible to send and receive messages and to access information from them using specific protocols. Among various other protocols, Internet uses an important protocol named Internet Protocol (IP) which makes computers and other gadgets possible to instantly communicate with one another over a diverse range of physical links. An Internet Protocol Address[1]  is the numerical address of the form 192.0.43.10 (IP Version 4) or 2001:500:88:200:0:0:0:10 (IP Version 6) by which a location in the Internet is identified. Computers on the Internet use IP addresses to route traffic and establish connections among themselves. E.g. when a request for a Webpage is sent from a client computer system to a Webserver, the client computer includes the IP address of the Webserver. To keep the identification of communicating[2] has been developed. This system enables use of globally unique and easy-to-remember names for Webpages and mailboxes called domain names, rather than long numbers or codes (IP addresses), e.g. www.example.com instead of 192.0.43.10 (IP Version 4) or 2001:500:88:200:0:0:0:10 (IP Version 6). Users can also request resources like Webpages, mailboxes, files, etc. that are available on the server computer by specifying a unique Uniform Resource Locator (URL) which includes a protocol like HTTP, FTP, etc. to be used for accessing that resource. Further, DNS allows names to be separated from locations thereby permitting services and devices to be moved to different network locations, without the need for name change and without any effect on the way users visit or use websites.

Purpose of Domain Name System (DNS)

The purpose of the DNS is a service running on different computers that looks up domain names and resolves them to an IP address so that clients that only know the domain names of the servers and not their IP addresses can communicate with them. A DNS client called resolver sends DNS messages to obtain information about the requested domain name space. In response to DNS servers query on behalf of a DNS resolver the action that is taken is called recursion. A DNS server called Recursive Resolver recursively queries for the information asked in the DNS query. The authentication server responds to the query messages with information stored in Resource Records for a domain name space stored on the server. A server stores database that contains information about the domain name space stored on an authoritative server called zone. A Resource Record is a format used in DNS messages that is composed of the following fields: NAME, TYPE, CLASS, TTL, RDLENGTH, and RDATA. This process uses a FQDN (Fully Qualified Domain Name) which is the absolute name of a device within the distributed DNS database[3].

The DNS is used to describe two related things: the Domain Name System and the Domain Name Service. The Domain Name System is the distributed database responsible for the domain name-to-IP address conversion and the Domain Name Service is the service offered by this system. Domain Names are somewhat similar to copyrights and trademarks, and are governed by an internet authority: Internet Corporation for Assigned Names and Numbers (ICANN)[4]. In order to maintain credibility of Domain Names, their purchase and oversight is governed by several entities[5].

Trademarks-general

The exponential growth in business together with advertising which it has turned in to a lucrative business has made distant sales possible. The concept of market overt of good olden days has vanished[6]. The market structure has altogether changed and so have business methods. The customers seldom have now that personal knowledge of manufacturers, producers or suppliers. The goods or services are now available in a variety of forms with varied features. This transformation has made source information more important than ever before. The consumers would prefer to have choice in goods or services. But once a range of alternatives is offered, he can make an informed decision only when he knows the relevant differences. To remove the possibility of differentiation is indeed to eliminate the incentive to provide goods of superior quality[7].

Every manufacturer or producer of goods or provider of services invests hard labour, time and money in carving out niche for his goods or service in an open market where already such or similar goods or services are available. These goods or services cannot be identified without any name. This name not only identifies goods and services but differentiates them with goods and services of similar description. This name can be represented by any symbol or representation or mark commonly known as trade name or trade mark. The precise function of the trade mark is to designate the trade origin of goods. Trade mark means a mark capable of being represented geographically and which is capable of distinguishing goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours. These marks can be broadly classified into four categories: Such as: i) Generic words[8] ii) Descriptive words[9] iii) Suggestive mark[10] and iv) Invented words[11]. It is used in relation to goods or services[12]  for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services.

Trademark Infringement

The registration of trade mark in India is not compulsory and its protection is not dependent on registration. The registered trade mark is protected under the Trade Mark Act, 1999 [13] and the unregistered trademark is protected under Common law. The infringement of the registered trademark takes place when a person who is not the registered proprietor or who is not having permission to use, uses in the course of trade a mark which is identical with, or deceptively similar to the trademark in relation to goods or services in respect of which the trade mark is registered[14]. He is making use of the mark in such a manner as to render the use of the mark likely to be taken as being used as a trade mark.

A registered trade mark is also infringed when a mark is used in the course of trade but because of[15]: a) Its identity with the registered trade mark and the similarity of the goods or services covered by such registered trademarks; or b) Its similarity to the registered trade mark and the identity and similarity of the goods or services covered by such registered trade mark[16]; or c) Its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark; or d) Its likely to cause confusion on the part of public or which is likely to have an association with the registered trade mark[17]. Similarly, a registered trade mark is infringed by a person if he uses such registered trade mark as his trade name or uses such registered trade mark as a part of his trade name of his business concern or part of the name of his business concern dealing in goods or services in respect of which the trade mark is registered[18].

Common Law Remedy of Passing Off

Passing off action has roots in Common Law and stems from equitable action. This remedy is invoked to restrain the use of a name in circumstances in which the owner of that name might bring legal actions against unauthorized use of that name[19] . Passing off essentially prevents businesses from riding on the reputation or goodwill of the goods of another. The manufacturer or producer or packer or supplier or seller uses the features of another’s business or trade products in such a way that consumers are confused as they are not able to differentiate the two products and they believe that his goods or business are those of the other persons[20].

The Common Law courts in 16^th Century laid foundation of Passing off doctrine by showing willingness to recognize trade reputation as an incorporeal property[21]. This doctrine was, however, given concrete shape by Lord Diplock in Erven Wornink B. and another v. J. Townsend and Sons (Hull) Ltd[22] , commonly called as Advocate’s Case. The court laid down that passing off action cannot be claimed unless five conditions are satisfied. These are: a) The trader against whom an action has been filed has made a misrepresentation, b) Misrepresentation has been made by the trader in the course of the trade, c) This misrepresentation has been made to likely customer of his or ultimate consumers of goods or services supplied by him, d) The misrepresentation has a potential to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence), and e) Results into an actual damage to a business or goodwill of the trader by whom the action is brought or (in a quiatimet action) will probably do so. In Daimler Benz Aktiegesellschaft and Another v. Hybo Hindustan[23], Court applied not only the above stated Common Law principles but also held that the plaintiff need not prove that there was common field of activity between him and the defendant.

Domain Name Disputes

 Internet has come with manifold promises and has proved a viable, cost effective medium that has bridged the distance which was coming in the way of businesses who were interested in extending their reach offshores. It is now increasingly turning to be an ultimate marketing tool in computer age[24]. Internet now facilities execution of multifarious transactions and businesses have discovered it an invaluable environment for promoting and selling of goods and services[25]. Consumers have found it easily accessible and convenient to effect transactions. The above advantages cannot be fully reaped because of the technological constraints. Domain names are based on the principle of ‘first come first serve’ basis and are not caps sensitive. There is no mechanism in place to establish identity of the person interested in registering any name and due to technological constraints, one name can be registered only once in a top level domain name e.g., there will be only one www.tndalu.com. The dispute arises when the registrant uses the trade mark of somebody else as a domain name by another company or when the registrant is using a domain name confusingly similar to the trade mark of another company or when two or more companies, each with legitimate claims to the name, want to use the same name in their domain names.

Judicial review on domain name disputes

Judiciary has played a vital role in solving this type of domain name disputes in the various decisions. The courts in India have been consistently propounding that domain names and trademarks are analogous^[26].The domain names perform the same function in cyberspace which the trade names perform in real space. The Titan Industries Limited v. Prashanth Koorapati and others^[27] marks the watershed in the history of the trade mark jurisprudence in India as it is the first case decided by any Indian court which accorded trade mark protection to domain names.

Common Law remedy for passing off:

In Yahoo Inc. v. Akash Arora and Netlink Internet Services[28] marks the beginning of the application of passing off doctrine to domain name disputes. This is the first case in India in which passing off action was invoked for the resolution of domain name disputes. The law relating to passing off is well settled^[29]. The court ruled that even if it is accepted that domain name is a service mark and not the trade mark, there are number of cases supporting the view that the service marks do fall within the domain of the passing off action^[30]. In Marks & Spencer v. One in a Millions^[31] has held that with the advancement and progress in technology, services rendered on the Internet have also come to be recognized and accepted and are given protection, so as to protect such provider of service. Regarding the issue of effect of disclaimer on consumer confusion the court invoked the ratio of an American case laid down in Jews for Jesus v. Broadsky^[32]. The court in N. R. Dongre v. Whirlpool Corp.,^[33] in which protection was accorded to the dictionary words, which cannot be given trade mark protection and held that the words that have acquired uniqueness and distinctiveness are entitled to protect even though they have dictionary meaning. In Rediff Communication Ltd v. Cyber booth and another online media company^[34], the court held that the Domain names are not only source of information but are of immense importance and valuable corporate asset. A domain name is more than an Internet address and is entitled to equal protection as trade mark. The court applied passing off principles strictly in Online India Capital Co Pvt. Ltd., and another v. Dimensions Corporate^[35], and held that descriptive or generic word and is not entitled to trade mark protection. The court heavily relied on the rulings of House of Lords in Office Clearing Services Ltd. v. Westminister Windows and General Cleaners Ltd.^[36], where House of Lords did not accord protection to word ‘office clearing’ and on the decision of other Indian cases^[37], to conclude that the plaintiff’s domain name is descriptive of the services offered by him^[38].

Application of Doctrine of Trade Dilution

Cyber squatting has seized the attention of the courts in other jurisdictions. In India, Tata Sons limited v. Manu Kosuri and others^[39], the court did not decide this case on the legal principles established by the courts in other countries. This case has recognized, for the first time, ‘trade dilution’ as a ground to object domain name registration. In Acqua Minerals limited v. Pramod Bose and another^[40]  that marks a new era for domain name protection. The Supreme Court in Satyam Infoway Ltd. v. Sifynet Solutions Pvt. ltd^[41]., gave mandate to the subordinate courts to follow UDRP which was reasoned as a domain name is potentially accessible irrespective of the geographical location of the consumers.

Invocation of Principles of UDRP

The outcome of this potential for universal connectivity is not only that a domain name would require worldwide exclusivity but also that national laws might be inadequate to effectively protect a domain name. The lacuna necessitated international regulation of the domain name system. This international regulation was effected through WIPO and ICANN. India is one of the 171 states of the world, which are members of WIPO. This has established a system of registration, while this registration may not have the same consequences as registration under the Trade Marks Act, 1999; nevertheless it at least evidences recognized users of a mark. Besides, the UDRP is instructive as to kind of rights which a domain name owner may have upon registration with ICANN accredited registrars.

Domain Names Identical and deceptively similar to the Trade Marks

The name of Dr. Reddy’s laboratory is well known in the medical and medicine circles. It has earned name and fame and this name was subject to litigation in Dr. Reddy’s Laboratories ltd v. Manu Kosuri and others^[42] the court held that considering both the domains, it is clear that two names being almost identical or similar in nature, there is every possibility of an Internet user being confused and deceived in believing that both the domain names belong to plaintiff although the two domain names belong to two different concerns^[43]. A well-known website naukri.com was litigated in Info Edge (India) Pvt. Ltd. v. Shailesh Gupta^[44] such criteria cannot be accepted as a safe and sound basis to ascertain as to whether a particular name is generic or descriptive^[45]. The court opined that even generic word is entitled to protection where it has attained distinctiveness and is associated with the plaintiff for considerable time. The Court held that there is no legislation in India which explicitly refers to dispute resolution in connection with domain names. But although the operation of the Trade Marks Act, 1999 itself is not extra territorial and may not allow for adequate protection of domain names, this does not mean that domain names are not to be legally protected to the extent possible under the laws relating to passing off^[46]. The courts have consistently applied the law relating to passing off to domain name owners.

Top level domain name

In Avery Dennison Corp v. Sumpton^[47], the court held that Internet users now well know the difference between the two top level domains. The distinction is so well recognized among the Internet users that the defendant’s domain name would hardly cause any dilution of the plaintiff’s trademark.  As against this, in two subsequent decisions in Playboy Enterprises International Inc. v. Global Site Design, Inc^[48]., and Washington Speakers Bureau, Inc. v. Leading Authorities, Inc^[49]., conflicting decisions were given. It was laid down that once trademark of the plaintiff is registered by the defendant as his sub domain, consumers will be confused as to source and the difference in the top level domain name will not eliminate that confusion^[50]. In Zee Telefilms ltd., and others v. Zee Kathmandu and others^[51], the court not only accepted this contention but suggested that a mechanism should be globally put in place wherein the registered trademark holders should be asked to registered the mark with the ICANN accredited registrars with a stipulation that in case any person seeks to register a domain name consisting of the registered mark, no objection would be required to be obtained from the owner of the registered mark.

Conclusion

In the above said aspects we came to be acquainted with that internet plays a crucial role in a day to day life and without internet nothing will survive likewise the advantages of internet is so high. It is very cost effective and efficient advertising tool. We can obtain all the information’s easily from the internet by put key words. When a consumer put a keyword, for purchase a thing or assesses a website which he need but the result is invariable. In that aspect the unknown consumer unable to find out the real one advertently he precedes the same which is easily accessible from internet. The problem behind is the real owner become a victim. His business went on loss by another fake one who created a domain name with small difference of his name. It has been now observed that the domain names are based on a well known trademark or trade names are being registered by those who are not in any way associated with these trade names with an malicious intent to confuse consumers who will take it as the associate of such trademark owner or will resell the domain name to the true owner of the trade mark at some exorbitant price or bargain his trademark. Regarding these disputes all courts in the world having jurisdiction to try domain name disputes in view of the fact that a website can be accessed from any place.

It has suggested that there should be cooperation amongst the comity of nations requiring registered trademark owners to register these marks as domain names with the accredited Registrars of ICANN. If then one tries to register a domain name based on such registered trade mark, he may be asked to produce no objection from the trademark owner. This suggestion may reduce litigation but will not eliminate it altogether. Furthermore, there is no reason to confine it to only registered trademarks. An alternative to this suggestion is that all the marks, whether entitled to protection under trade mark law or under common law remedy of passing off, be registered with the Registrar. Anyone interested in registering such mark or its variant as domains name, whether registered under the same or different top level domains, be asked to get no objection from the owner of such mark. However there is a loophole in the controversy relating to the effect of the registration of the domain names in two different top level domains. This issue has caught attention of the courts in other jurisdictions where courts have not shown unanimity on this point. In case there was a domain name in two top level domain means the illiterate consumers are unaware about the domain name which belongs to the real owner. For avoiding all these domain name disputes on the basis of jurisdictional aspect the government should take necessary steps to enact a legislation to protect the rights of the consumers from these disputes.