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Domain Names & Domain Names Dispute Resolution

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Trademark

A trademark means a mark capable of being represented graphically and may include a word, name, symbol, device, numeral, letters, signature, label, ticket, brand, slogans, pictures, characters, sounds, smell, shape, logo, graphic designs, three dimensional form, moving image, product or packaging features etc.


It is distinctive of a person’s goods or services and is used in a manner that identifies those goods or services and distinguishes them from the goods and services of others.


Rights of a Trademark Owner

A duly registered mark grants exclusive rights to the owner to:

(a) ‘own’ and exploit the said mark for the goods (or services) specified in the registration in the market place;

(b) sell, or permit its limited use (license) for a fee; (c) assign it a goodwill value; (d) sell, exhibit, market and/or promote the goods (or

services) in an exclusive manner; (e) stop others from using the said mark, or a substantially

or deceptively similar mark; and (f) initiate legal action against the infringer;


It is obligatory to note that trademark (trade name) is not a legal person. It is the owner of the trademark who is a legal person.


Trademark Infringement

A trademark infringement is a violation of the trademark owner’s rights.

An infringement occurs, when the impact of the proposed trademark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trademark.


Passing off Action Passing off is an action under Common Law. The

passing off action depends upon the simple principle that nobody has any right to represent his goods, as the goods of somebody else.

Passing off involves misrepresentations by a trader to his prospective customers, calculated to injure (as a reasonably foreseeable consequence) to the business or goodwill of another.

It is treated as a form of unfair competition or wrongful appropriation of the plaintiff’s personality.


Passing off: Two Broad Categories

First type of passing off, is where it is alleged that defendant has promoted his product or business in such a way as to create the false impression that his product or business, is in some way approved, authorized or endorsed by the plaintiff or that there is some business connection between them.

By this false linkage or relationship, the defendant hopes to gain on the goodwill of another.


Second are those where the competitors are engaged in a common field of activity and the plaintiff complains that the defendants have named, packaged or described his product or business in a manner likely to lead the public to believe that the defendants’ product or business is that of the plaintiff.


Extending the Scope of Trademarks in the

Online Medium

The monopoly rights of trademark owners to own, license, sell, exhibit, market or promote are being threatened by web based technology tools, like search engines, meta tags, and hyperlinks.


Domain Names: Digital Marks in the Online Medium

In the last ten years, domain names have become a kind of ‘e-commerce marks’ in the online medium.

These are digital business addresses – a point of business contact or transaction.


Functionally speaking, Domain names provide a system of easy-to-remember Internet addresses, which can be translated by the Domain Name System (DNS) into the numeric addresses (Internet Protocol (IP) numbers) used by the network.

It is important to know that there is no ‘legal’ definition of what a domain name is.


Defining Domain Name

The term domain name describes any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.


www.specimen.com

A domain name consists of different parts. The first part is known as ‘second-level domain’ (or sub-domain), and is the part that can be chosen by the person registering the name.

The end part, which reflects standard term throughout the world is known as ‘top-level domain’ (or domain extension). These are commonly referred to as gTLDs, i.e. ‘generic’ (or global) Top Level Domains.


Earlier there were only seven gTLDs (.com, .edu, .gov, .int, .mil, .net, and .org). Seven more gTLDs have recently been introduced, these are .aero, .biz, .coop, .info, .museum, .name and .pro.


Many a times, the names assigned may also have a suffix indicating the country of origin, for example, .in for India, .us for the United States, .ca for Canada, .jp for Japan, .de for Germany, .uk for United Kingdom, .sg for Singapore etc.

They are commonly referred to as ccTLDs, i.e. ‘Country-code’ Top Level Domains.


The National Internet Exchange of India (NIXI) has been set up to facilitate exchange of domestic Internet traffic within the country by Internet Service Providers in India.

NIXI has also been entrusted with the responsibility of setting up of .IN country code top level domain (ccTLD) Registry by the Government of India (www.nixi.org, www.ispai.com).


http://www.nixi.org/

http://www.ispai.com/

Domain Name Distribution

The Network Solutions Inc. (NSI) has been registering domain names since 1992 under an agreement with the National Science Foundation and the U.S. Department of Commerce.

In 1999, the Internet Corporation for Assigned Names & Numbers (ICANN) , a non-profit, private sector corporation based in Marina del Rey, California, USA assumed management of the domain name system from NSI.


The main functions of ICANN are: (a) sets rules for giving the numbered IP addresses / protocol parameters (b) adding new suffixes to the directory and (c) sets rules for arbitrating disputes over domain ownership.


Domain Name Infringements

• Cyber squatting

• Typo squatting

• Cyber smearing


CybersquattingICANN and its accredited registrars are also

responsible for the registration of ‘second-level domain’ name along with ‘top-level domain’.

They register the ‘second-level domain’ name on a first-come, first-serve basis and do not evaluate whether ‘second-level domain’ name to be the same, or deceptively similar to, a registered trademark.

The result has been mixed, on one hand it has given fillip to the growth of e-commerce all over the world; on the other it has created a menace of ‘cybersquatting’.


A cybersquatter is “an Internet user who has registered multiple ‘domain names’ with the hope of selling them to the businesses who own trademarks identical to those names”.


Typosquatting

A typosquatter, is one who seeks to profit from controlling domain names, but instead of acquiring a domain name identical to the registered trademark owner, the typosquatter obtains common typographical permutations of domain names surrounding a high traffic site.

Examples are www.amazom.com, www.dismey.com, etc.


http://www.amazom.com/

http://www.dismey.com/

Resolving Domain Name Disputes

Non-Judicial Dispute Resolution under Uniform Domain Name Dispute Resolution Policy (UDRP).

Came into existence on October 24,1999. It has been able to create a basis for global

uniformity in the resolution of domain name disputes.


ICANN Approved Dispute-resolution

Service Providers (i) Asian Domain Name Dispute Resolution

Centre [ADNDRC] (approved; effective 28 February 2002)

(ii) CPR Institute for Dispute Resolution (approved; effective 22 May 2000)

(iii) National Arbitration Forum (approved ;effective 23 December 1999)

(iv) WIPO (approved; effective 1 December 1999)


To invoke the policy, a trademark owner should either (a) file a complaint in a court of proper jurisdiction against the domain-name holder or (b) in cases of abusive registration submit a complaint to an approved dispute-resolution service provider.


The UDRP

Every domain name registrant has to submit himself to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts [Para 4 (a)] to the applicable Provider, in compliance with the Rules of Procedure, that:


(i) the registrant domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the registrant have no rights or legitimate interests in respect of the domain name; and

(iii) the registrant domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.


Bad Faith Registration[Para 4(b)]

(i) circumstances indicating that “the registrant” has registered or “the registrant” have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of “the registrant’s” documented out-of-pocket costs directly related to the domain name; or


(ii) “the registrant” has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that “the registrant” have engaged in a pattern of such conduct; or


(iii) “the registrant” has registered the domain name primarily for the purpose of disrupting the business of a competitor; or


(iv) by using the domain name, “the registrant” has intentionally attempted to attract, for commercial gain, Internet users to “the registrant’s” website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of “the registrant’s” website or location or of a product or service on “the registrant’s” website or location.


Success of UDRPIt is important to note that many nations have come

out with their own set of rules based on the UDRP to resolve country specific domain name disputes.

For example, The Australian domain administrator, auDA, launched a UDRP-based scheme, the auDRP, on August 1, 2002.

It looks after .au domain names, like .net.au, .org.au, .asn.au, .edu.au, .gov.au, .id.au, .info.au and .conf.au. Similarly in UK Nominet has come out recently with its .uk domain name dispute resolution policy.


The global expansion and acceptance of UDRP is a testimony of its simplified procedure, easier accessibility and arbitral transparency.

This online dispute settlement mechanism has also proved to be a good ‘revenue model’ for the dispute resolution service providers.


Thanks


domain names & domain names dispute resolution downloaded from

Documents

trademark trade

existing trademark

proposed trademark

persons goods

trademark owners rights

said mark

legal action

defendants product