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DOMAIN NAMES AS TRADEMARK


As we are living in the evolving India, technology, as well as modernization, is developing like a boom. The Internet plays a significant role as every task is done on an online platform. From a simple household to the government agencies everything is now widely connected via internet.

To know the better understanding of trademark used as domain name let us study about both the terms firstly;

Trademark is the name, symbol, logo, sound, etc. which identifies the basis and the origin of the goods and the services basically it shows the value and goodwill of the good. Trademark is the distinguishing factor which actually differentiates one firm from another by the means of their name, symbol, etc. without a trademark, it would be very difficult for the consumer to identify products. In the economic term, trademark gives the power of “monopoly” that can be used only by himself. No one can use either the same trademark or branding attached to his products for raising margins if someone tries to use the trademark of others that would be called as trademark infringement i.e violation of exclusive rights attaching to a trademark without the authorization of the trademark owner or any license. To know more about how a domain name helps your business, you can read it here.

Domain Name Definition 
As trademark shows the authenticity, as well as the legitimate right to the owner of the goods or services, in another form on an e-platform domain name, does the same job, basically, domain name shows the online identity of the business owner. In technical terms domain names are used for making IP addresses, DNS ( domain name system) server helps to translate the domain name into IP address. A domain name is used for business purposes, identifications, and promotions. As the usage of the domain name for a commercial purpose is increasing on a daily basis. the domain name also functions similarly as a trademark. Domain names are usually end with .com .net .org .in etc.

A domain name can be used as a trademark but it should be distinctive from others, unique, easily accessible, reliable for the public by fulfilling all these conditions any domain name can be registered as a trademark. In India as well as globally the domain name as trademark protected and registered only by ICANN (Internet Corporation for assigned names and numbers)   under the national and international trademark law. In the context of India, protection of a trademark is granted under trademark act 1999, any person who registers and fulfill all the domain requirements of the registration will have all the legitimate right upon his domain. 

Remedies available to the owner of a domain name in case of infringement
There are two types of remedies available in case of infringement by the third party.
  1. Action for infringement in case of registered domain name 
  2. Action for passing off in case of unregistered domain name  

In both the cases, usage of someone else’s domain name is an illegal act for which the owner can file a suit against a third party who does such a thing. The first remedy which is an action for infringement is a statutory remedy which is basically codified in nature and the second remedy is a common law action. In both the cases court grant relief of injunction, monetary compensation for the damages incurred to the business of the owner and government confiscate/destroy the infringing labels and tags, etc. every violator will be held liable under section 29 of trademark act 1999.


Protection of domain name on the entire world level was a difficult task and there would be chances for ambiguity that is why ICANN (INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS) with WIPO (WORLD INTELLECTUAL PROPERTY ORGANISATION)  made up a system which is strict and  rigorous in nature for enhancing the efficiency and effectiveness  of the registration system of domain name which is known as uniform domain name dispute resolution policy ( UDNDR POLICY ). 

This policy sets out framework for dispute resolution between domain name registrant and the third party for the abusive registration and the domain name, in the generic top-level  domains (GTLDs) (e.g., .biz, .com, .info, .mobi .name, .net .org) and the country code top-level domains (CCTLDs) (e.g., .in, .au .cn) who adopts UDRP policy voluntarily. Whosoever wants to register a domain name under any of the GTLDs or CCTLDs needs to fulfill the terms and conditions of the UDRP policy.

On October 24, 1999, ICANN adopted the UDRP POLICy, whereas WIPO acts as a technical advisor to the ICANN for finalizing the UDRP policy and rules.

Dispute Redressal by UDRP Policy
According to paragraph 4(a) of the UDRP policy, the UDRP administrative procedure is only concerned about the alleged abusive registration of the domain name, and that should be meet the following criteria ;
  1. The domain name registered should be identically same or confusingly similar to the trademark or service mark of the complainant of which he has right.
  2. The domain name registrant should not have any right or legitimate interest in respect of the domain name questioned.
  3. The domain name should be registered and used in bad faith.

Paragraph 4(b) sets out the following circumstances  which show the domain name is registered and used in bad faith

  1. The domain name basically registered for the purpose of selling, renting, or otherwise transferring the domain name to owner’s competitor against valuable consideration.
  2. The domain name should be registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct 
  3. Domain name registered is primarily used for disrupting the business of the competitor.
  4. Domain name registrant used the domain name on the online platform for making confusion between two of them and for against he will get the financial benefits like as sponsorship, affiliation, or endorsement purposes.
  5. And, there may be some other circumstances exist which shows the domain name is being used or registered in bad faith.

UDRP Administrative Procedure is merely very useful and faster process than the litigation because the decision makers are experts in the field of international trademark law, domain name issues, electronic commerce, and moreover, it is international in scope, which provides a single mechanism for dispute resolution.


Paragraph 4(k) provides that any person can go to litigation process if he wants to, merely before the administrative procedure or afterward if he is not satisfied with the decision.
Paragraph 18 provides the action which administrative panel should take if court proceedings were undergoing or prior to the administrative proceeding.

Procedure to File a Complaint
The complaint must be submitted in electronic form in accordance with Paragraph 3(b) of the UDRP Rules and 12(a) of the WIPO Supplemental Rules 
In regards to electronic form submission, WIPO center provides certain options:
  1. Download and complete the model complaint as a Word document to submit as an email attachment to domain.disputes@wipo.int; or
  2. Complete and directly submit online to the Center an electronic form of the model Complaint.
Consult for guidelines further information

IN Domain Name Dispute Resolution Policy (INDRP)
Like as Uniform domain name dispute resolution policy (UDRP) which works at the international level and with all kinds of domains whether GTLDs or CCTLDs, .in dispute resolution policy (INDRP) works basically for the .in domains which have been formulated in line with internationally accepted guidelines and with the relevant provisions of the Indian IT act 2000.
The policy basically sets out the terms and condition to resolve disputes between the registrant (holder of the .in domain name). and the complainant, arising out of the registration and use of the .in internet domain name.

To file a complaint, the person should follow the instructions in the INDRP rules of procedures. afterward, The request is transferred to NIXI ( national internet exchange of India) once the request has been accepted and the filing fee is paid. An arbitrator will be assigned to the case, by the means of an arbitrator who has expertise knowledge of computer or laws with a high sense of professional ethics and are capable of rendering an unbiased decision in domain name disputes. All disputes under this shall be subject to the jurisdiction of Delhi only.

Case
7-eleven inc, v. Sameer Shaikh (case no. INDRP/1088)
The complaint in the arbitration with its corporate headquarters in Texas, united states of America, he is using his trademark of 7-eleven from its adoption in 1946, and the disputed domain name has been registered on August 2, 2017  the complaint filed a suit under INDRP  with the contentions of domain name being identical and confusingly similar to complainant trademark, and respondent has not the legitimate right on the trademark, and the domain name is being used  in bad faith and the arbitrator held that the all the contentions are against and respondent has no legitimate right on the domain name. In accordance with the INDRP policy and rules, it has been held that domain name is to be transferred to the complainant, under the direction of NIXI.

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