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MONTHLY OCTOBER IPR NEWS LETTER MONTHLY DECEMBER IPR NEWS LETTER
January-2007
IPR News Letter
Broad limbs:
v Meaning of domain names
v Domain name and Trademark
v Dispute resolution mechanism http://www.wipo.int/amc/en/domains/
v Landmark Cases
v Conclusion
DomainName
In very simple words domain names can be termed as the addresses of computers connected to the internet. Just as every office or residence in the real world has an address, each server permanently connected to the internet has a unique identification numbers called the “internet protocol address”. In order to make the Internet address system user friendly, the numeric IP address system has been overlaid with a system of easily remembered mnemonic “domain names”. Thus when an Internet user enters an easy to remember mnemonic domain name into the unique numeric address that corresponds to the relevant computer site and then uses that particular numeric address to seek out the relevant computer site. Thus we do not have to remember these complex IP addresses perform in the terrestrial world. The cyber addresses leads the cyber postman to find its way to a particular computer on the web. Thus to put in a much simpler way domain names makes it convenient to remember alphabetical words or phrases without having to remember long numbers. A domain name is a name associated with a particular computer online. In the domain name www.chillingeffects.org, .org is the top-level domain ("TLD"), chillingeffects is the second-level domain name, and www is a subdomain. Domain names are looked up on name servers in the DNS hierarchy to resolve them to numerical IP addresses.
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Reasons of why one gets a Domain name:
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Ø You would like a domain to reflect your personality. |
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Ø You want to keep up with current market trend. |
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Ø Because your competitors have one. |
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Ø You want your customers sitting in USA to get a feel of your Business. |
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Ø You want to give better service to your customers. |
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Ø Your company has registered trademark or brand names. |
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Ø You want to give complete information of the company. |
Domain Name System (DNS)
The domain name system (DNS) stores and associates many types of information with domain names, but most importantly, it translates domain names (computer hostnames) to IP addresses. It also lists mail exchange servers accepting e-mail for each domain. In providing a worldwide keyword-based redirection service, DNS is an essential component of contemporary Internet use.
The domain name system is essentially a global addressing system. It is the way that domain names are located and translated into Internet Protocol (IP) addresses, and vice versa. A domain name such as wipo.int is a unique alias for an IP address (a number), which is an actual physical point on the Internet.
Categories of Domain name systems: The DNS allows for two categories of “top level Domains. A top-level domain (TLD) is the last part of an Internet domain name; that is, the letters which follow the final dot of any domain name. For example, in the domain name www.website.com, the top-level domain is com (or COM, as domain names are not case-sensitive). Every domain name ends in a top-level domain (TLD) name, which is always either one of a small list of generic names (three or more characters), or a two characters territory code based on ISO-3166 (there are few exceptions and new codes are integrated case by case). Top-level domains are sometimes also called first-level domains
Top-level domains are classified into:
1. Generic top-level domain (gTLD): Used by a particular class of organizations (for example, com for commercial organizations). It is three or more letters long. Most gTLDs are available for use worldwide, but for historical reasons mil (military) and gov (governmental) are restricted to use by the respective U.S. authorities. gTLDs are subclassified into sponsored top-level domains (sTLD), e.g. .aero, .coop and .museum, and unsponsored top-level domains (uTLD), e.g. .biz, .info, .name and .pro. A gTLD is a generic top level domain.
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Some of the common top level domain names with their significance are : (http://en.wikipedia.org/wiki/GTLD)
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.com is for commercial, for-profit people and organizations. |
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.edu is for 4-year, degree granting colleges/universities. (schools, libraries, and museums should register under country domains) |
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.gov is for United States federal government agencies. (state and local governments register should register under country domains) |
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.net is for network infrastructure machines and organizations. |
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.org is for miscellaneous, usually non-profit, organizations. ( for use by organizations and individuals that do not clearly fit in any of the above ) .mil is for military agencies. .int is for international organisations |
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In addition, seven new gTLDs were also selected by ICANN (the Internet Corporation for Assigned Names and Numbers) on November 16, 2000. These are:
.aero (for the entire aviation community);
.biz (for business purposes);
.coop (for cooperatives);
.info (unrestricted);
.museum (for museums);
.name (for personal names);
.pro (for professionals).
2. Country code top-level domains (ccTLD): Used by a country or a dependent territory. It is two letters long, for example jp for Japan.A ccTLD is a country code top-level domain, for example: .mx for Mexico,.au for Australia; .uk for The United Kingdom; .fr for France; .in for India,.bd Bangladesh, dk – Denmark,.be – Belgium, .id – Indonesia,These ccTLDs are administered independently by nationally designated registration authorities.
Other-level domains
In addition to the top-level domains, there are second-level domain (SLD) names. These are the names directly to the left of .com, .net, and the other top-level domains. As an example, in the domain en.wikipedia.org, "wikipedia" is the second-level domain.
On the next level are third-level domains. These domains are immediately to the left of a second-level domain. In the en.wikipedia.org example, "en" is a third-level domain.
Domain name and trademark conflicts:
Intellectual property aspects of domain names
Domains that are the same as those of trademarks, corporate names and celebrities - have been a major point of contention across the globe. While it has become very popular to register, use and sell domain names, it generally is not permissible to own, sell or use a domain name, which contains a trademark owned by another person or company. Trademark infringement usually involves using someone's trademark on a good or service in a way that may lead to confusion as to the source or affiliation of the goods or services. For example, if you are not the Nike company or authorised by it, it is an infringement to sell sports clothes called "Nikestuff." The same applies to domain names. If you operate a website using a domain name that contains someone else's trademark (for example, "www.nikestuff.com"), people seeing that domain name and/or going to your site are likely to be confused that your site is affiliated with Nike when it is not. People may also mistakenly log on to a Web site thinking it's connected with the other company, only to find out that it is not. Domain names that may be considered infringing also include intentional misspellings or confusingly similar names (for example, www.wwwebay.com, www.amizon.com). Just because a company hasn't registered all variations of its name or trademark as domain names doesn't mean that others can use those domain names. If the domain names are likely to confuse consumers, they're infringing.
In popular terms,
Cyber squatting is the term most frequently used to describe the deliberate,
bad faith abusive registration of domain name in violation of rights in trade
marks and service marks. But, the term has different meanings to
different people. Some people, for example, include Warehousing or the
practice of registering a collection of domain names corresponding to trade
marks with the intention of selling the registrations to the owners of the
trade marks, within the notion of Cyber squatting, while others distinguish
between the two terms.
The registration of a domain name shall be considered to be abusive when all of
the following conditions are met:
· The domain name is identical or misleadingly similar to a trade or service mark in which the complainant has rights; and
· The holder of the domain name has no rights or legitimate interests in respect of the domain name; and
· The domain name has been registered and used in bad faith:
· A domain name shall be registered and used in bad faith:
· When there is an offer to sell, rent or otherwise transfer the domain name to the owner of the trade or service mark, or to a competitor of the owner of the trade or service mark, for valuable consideration; or
· When there is an attempt to attract, for financial gain, Internet users to the domain name holders website or other on-line location by creating confusion with the trade mark or services mark of the complainant; or
· When the domain name has been registered in order to prevent the owner of the trade or service mark from reflecting the mark in a corresponding domain name, provided that a pattern of such conduct has been established on the part of the domain name holder; or
· When the domain name is registered to disrupt the business when there is an attempt to attract, for financial gain, Internet users to the domain name holders website or other on-line location by creating confusion with the trade mark or services mark of the complainant; or
· When the domain name has been registered in order to prevent the owner of the trade or service mark from reflecting the mark in a corresponding domain name, provided that a pattern of such conduct has been established on the part of the domain name holder; or
· When the domain name is registered to disrupt the business of competitor.
Preventive action
The most effective mode of securing interest in a particular mark or domain is to obtain a registration of trademark. A registered trademark is a prima facie proof of ownership of the mark or trade name and affords good evidence in an action for infringement or for eviction brought by the owner. In a recent case, Delhi High Court granted relief to proprietors of Tanishq even where the trademark application was pending. Therefore, you must register your brand to protect your intellectual property.
Structure of the ICANN:
A remarkable step towards redressal of domain name related disputes has been the policy of ICANN (Internet Corporation for Assigned Names and Numbers). ICANN is a non-profit organization responsible for IP address space allocation, protocol assignment and DNS management. ICANN policy contemplates dispute resolution using on-line arbitration by National Arbitration Forum or WIPO (World Intellectual Property Organisation) Arbitration and Mediation Centre. The whole process takes about 45 days and is conducted on-line. The expenses involved are about US $1000, which is a fraction of what litigation in regular courts may cost. WIPO has been instrumental in securing Benette Coleman the eviction of domain squatters from thetimesofindia.com and theeconomictimes.com, which were deceptively similar to their brands of newspapers.
The ICANN is a private sector initiative to assume responsibility
for overseeing the technical coordination of the Domain Name System
(DNS). It has overall responsibility for managing the DNS. It controls
the root domain, delegating control over each top-level domain to a domain name registry. For ccTLDs, the domain registry is typically
controlled by the government of that country. ICANN has a consultation role in
these domain registries but is in no position to regulate the terms and
conditions of how a domain name is allocated or who allocates it in each of these
country level domain registries. On the other hand, generic top-level domains (gTLDs) are
governed directly under ICANN which means all terms and conditions are defined
by ICANN with the cooperation of the gTLD registries. The policy will result in an administrative decision
that is final by its terms, rather than in suspension of a domain name pending
outside resolution. (However, an ICANN administrative decision is final only if
neither of the parties brings an action in court.)
The ICANN policy forbids registration of a domain name if (1) the domain name
is identical or confusingly similar to another's trademark, (2) the entity
registering the domain name has no legitimate right to it, or (3) the domain
name was registered and used in bad faith.
Disputes under the ICANN rules are referred to a one- or three-member administrative panel that decides the dispute promptly and publishes the decision. The administrative decision is final and binding on the registries and registrars subject to ICANN control, but it can be superseded by court action. The proceeding is intended to be fast and inexpensive, to be conducted by e-mail with no personal appearances, and to require minimal production of documents (unless voluntarily offered by the parties or requested by the panel). The policy also offers some protection to the domain-name holder, who may have legitimate rights to a domain name. The policy permits the panel to rule that the complaint was brought in bad faith to "reverse hijack" the domain name or to harass the domain-name holder. Relief for such conduct is limited to a declaration of abuse of the administrative proceeding.
The first dispute under the ICANN policy was decided on January 14, 2000, and has been published by the World Intellectual Property Organization (WIPO), which provided the single panelist. In World Wrestling Federation Entertainment, Inc. v. Michael Bosman, the domain name at issue-"worldwrestlingfederation.com"- was registered by Bosman through an Australian domain-name registrar. The panel found bad faith under the relevant factors in light of Bosman's own statement that his primary purpose in registering the domain name was to sell it to the WWF. Although Bosman had not established a Web site under the disputed domain name, the panel found "use" in Bosman's offer to sell the domain name to the WWF. The decision required transfer of the domain-name registration to the WWF.
One limitation on the usefulness of the ICANN policy is that it is a hybrid of mediation and arbitration. By the terms of the policy, neither party to a proceeding is barred, at any time, from resort to litigation in any court of competent jurisdiction. Any final judgment by such a court will supersede any ruling by an ICANN dispute-resolution service provider.
Incorporated and headquartered in California, ICANN is a non-profit corporation structured to make decisions on the basis of internet community consensus. As ICANN’s start-up phase progresses, its board of directors has been elected in part by a global membership of individual members of the Internet community, and in part by supporting organizations representing the business, technical, non commercial and academic communities. It has no statutory or other governmental power; its authority is entirely a consequence of voluntary contracts and compliance with its consensus policies by the global internet community. It has no power to force any individual or entity to do anything; its “authority” is nothing more than the reflection of the willingness of the members of the internet community to use ICANN as a consensus development vehicle.
The U.S has a comprehensive anti-cyber squatting law of 1999, which deals with the issue strictly. Among other grounds mentioned above, a remedy is also available on the ground of dilution of famous marks, which makes it easier for the big corporate to obtain eviction of deceptively similar domains. The Anti cyber squatting Consumer Protection Act ("ACPA"), enacted on November 29, 1999, amends the Lanham Act by adding a new Section 43(d). The new section provides trademark owners with a civil remedy against cyber squatting - the registering of others' trademarks as domain names and profiting from the sale of those domain names or traffic through the site. In enacting the law, Congress found that the unauthorized registration or use of trademarks as Internet domain names or other identifiers of online locations (commonly known as `cyber squatting') -- (1) results in consumer fraud and public confusion as to the true source or sponsorship of products and services; (2) impairs electronic commerce, which is important to the economy of the United States; and (3) deprives owners of trademarks of substantial revenues and consumer goodwill.
However, since its enactment, our Information Technology Act has made little progress in enforcement or addressing critical issues such as intellectual-property protection on the Net. India needs drastic measures for reframing its intellectual property laws to bring into account the Internet reality. Strengthening of domain and brand protection laws would result in greater confidence amongst foreign investors and would go a long way in affording greater development for India.
India's IT Act 2000
There is no clear provision for handling of domain name issues. They are presently covered by legal norms applicable to intellectual properties such as trademarks. However improvements needed remain that : The act needs amendment for handling domain name issues and related concerns such as cyber squatting
MARCH OF THE LAW- A CASE STUDY OF INDIAN DECISIONS
Many of the leading Indian Companies had to face the attack from cyber squatters and ultimately they were forced to make use of the ICANN policy to protect their valuable trademarks and trade names. The decision of Tata Sons Ltd v The Advanced Information Technology Association amply proves that Indian companies also have very strong brands. The dispute was regarding the registration of the domain name “tata.org” by the respondent. The complainant contended that
· he was the exclusive owner of the mark TATA, also that the
· respondent had got the domain name tata.org but the website was not activated
· using of the domain name would lead to confusion
· that the respondent has registered the domain name for illegal benefits.
The complainant was the registered proprietor of the trademark TATA in India and is also registered in Bangladesh, Brunei, Kuwait, Malaysia, Nepal, Sabah, Singapore and Pakistan. The respondent did not submit its response in the present case. The panelist of the WIPO Arbitration and Mediation Center held that the registration of the domain name was a “bad faith registration” and ordered that the said domain name be transferred to the complainant.
In Benenet Coleman & Co Ltd. v Long Distance Telephone Company, the complainant was the publisher of the famous The Times of India newspaper. The dispute was regarding the domain name “thetimesofindia.com” which had been registered by the respondent and the complainant held the domain name “timesofindia.com”. The contention centered on the point of incorporation of the article “THE“ at the beginning, the panelist held that their registration and use of the domain names were in bad faith. Hence the said domain names were transferred to the complainant.
The first case that came up before the Indian Courts was Yahoo! Inc. v. Akash Arora nad Anothers [1999 PTC (19)210 (Delhi)]; in which an attempt was made to use the domain name <yahooindia.com> for Internet related services. So, the Plaintiff alleged that by using a quite similar domain name and format to their domain name i.e. <yahoo.com>, their must be a charge of deceit and “Passing off”. Thus, by looking at the passing off doctrine, the court granted an injunction restraining the defendants from dealing in service or goods on the Internet or under the trademark/domain name <yahooindia.com>.
In the case of Titan Industries Ltd. v. Prashant Kooapati, the plaintiff had extensive use of “tanishq”, although its trademark application in India was pending at the time of 1998 hearing. The Delhi High Court enjoined the defendant from registering a name or operating any business, making, selling, offering for sale, advertisement and in any manner dealing in goods, under the name……or containing the said trade mark as n essential or dominant feature….on the Internet or otherwise. The Yahoo case 1999 PTC (19) 201 marks the birth of domain name-trademark disputes in India. In the said case it was held that the domain name serves the same functions as the trade mark and is not a mere address or like a finding number on the internet but is also entitled to equal protection as a Trade mark. In Yahoo Inc. it was held that in a matter where services rendered through the domain name in the Internet , a very alert vigil is necessary and a strict view is to be taken for its easy access and reach by anyone from any corner of the globe. In the said case reference and reliance was placed on the decisions of Marks & Spencer v. One-in-a-million, 1998 FSR265 and Cardservice International Inc., 42 USPQ 2d 1850. The aforesaid decisions clearly laid down the principle that internet domain names are valuable properties and are of importance to the parties registering the same and the same is held to be valuable corporate asset.
The ratio of the principle laid down in Yahoo Inc. was followed in several subsequent decisions one of which is Rediff Communication Ltd. V. Cyber booth and Another, 2000 PTC 209. In the present case the plaintiffs domain was REDIFF. Defendant adopted RADIFF as a part of their domain name. The Hon’ble Court came to the conclusion that the defendant’s only object in adopting the domain name Radiff was to trade upon the reputation of the plaintiff’s and thus the court granted an injunction against the defendant.
Dr. Reddy’s Laboratories Ltd. V. Manu Kosuri, 2001 PTC 859 the plaintiff had a registered domain name www.drreddys.com. The Defendant’s who were also in the business of operating websites adopted the domain name drreddyslab.com. The Court observed that the defendant was liable to be prosecuted for an action of passing off since the domain name serves same function as a trade mark and thus the court was pleased to restrain the defendant.
In January 2003, Maruti Udyog had filed an arbitral complaint with the World Intellectual Property Organisation (WIPO) alleging that Mr Tella's domain name infringed Maruti's trademark, `MARUTI' and, hence, had the right to the domain name.
The plaintiff, Mr Tella said that his use of the domain name was lawful as the domain was at one point primarily used to post photos of a nephew named Maruti though later he converted the Web site to an engine portal. Mr Tella earned revenues from the site through an affiliated Web site that paid him every time someone clicked on www.maruti.com to reach the affiliated Web site. However, Mr Tella is known to be a cyber squatter with a history of registering Web sites having the names of trade marked companies.
The US citizen had earlier lost domain name disputes to Indian companies such as Onida (electronic appliance manufacturer) and Hero Honda (two-wheeler manufacturer). Moreover, Maruti contended that Mr Tella registered the domain name in bad faith intent to profit from the use of its trademark
Tata Sons Ltd. V. Manu Kosuri, 2001 PTC 432, interim injunction was granted against the defendants who had registered series of domain names, incorporating the well known and famous trade mark TATA.
Acqua Minerals Ltd. V. Pramod Borse, 2001 PTC 619 the plaintiff was registered proprietor of the trade mark BISLERI. Injunction was granted in respect of domain name<bisleri.com> as a part thereof.
Info Edge India Pvt. Ltd. & Anr. V. Shailesh Gupta & Anr. 2002 PTC 355. Plaintiffs domain name ˜NAUKRI.COM.” Defendants adopted NAUKARI.COM as their domain name. Interim injunction was granted.
Penbooks Pvt. Ltd V. Padmraj 2004(29) PTC 137, Plaintiffs website penbooks.com was register on the internet. Defendant intended to launch a website under the domain name www.penbooks .com. Held that the act of defendant amounted to cyber squatting and the trial Court was right in restraining the defendant.
However, the aforesaid principle of law have now been cited with approval by the Hon’ble Apex Court in the case of Satyam Infoway Ltd. v. Sifynet Soloutions Pvt. Ltd., 2004 (28) PTC 566 (SC). In the said decision the Hon’ble Apex Court held that a domain name may pertain to provision of services within the meaning of section 2(z) of the Trade Marks Act, 1999 and a domain name may have all the characteristics of the trade mark and could found an action for passing off. The Hon’ble Court affirmatively held that legal norms applicable to other intellectual properties such as Trade Marks are squarely applicable to internet domain names. The Hon’ble Apex Court after reiterating various well established elements of passing off action came to the conclusion that the respondent’s choice of the word Sify was not original but inspired by appellants’ business name and the appellant being the prior user has the right to debar the respondent from eating into the goodwill it has built in connection with his domain name.
In Satyam Computer Service Limited v Vasudeva Varma Gokharaju: The complainant is a n information technology giant. Its trademark application for the word SATYAM and the corporate logo was pending in India. The complainant submitted that the respondent had registered the disputed domain name “satyam.org” in 1999 and “satyam.net” in the year 1998 and till date the respondent had not activated its website. He contended malafide intention on behalf of the respondent. But the respondent contended that he was a devotee of Lord Satyanarayana and the mane “satyam” was its short form and wished to disseminate messages of truth and teachings of the gurus. The panelist came to the conclusion that the said domain names were registered and used in bad faith and hence they were transferred to the complainant.
In Mahindra & Mahindra Ltd v Neoplanet Solutions the impugned domain name is “mahindra.com” the complainant pleaded that they were the registered owners of the trademark mahindra and the name had been exclusively associated with motor vehicles. The respondent did not contest the case and the domain name was held to be registered and used in bad faith and it was transferred to the complainant.
In Tata Sons Ltd v Ramadasoft the domain names at issue were: tatapowerco.com; tatahyro.com; tatawestside.com; tatahoneywell.com; taatyodogawa.com; tatateleservices.com; tatassl.com; tatatimken.com; jrdtata.com; ratantata.com. the domain names were registered with network solutions inc. the respondents did not submit any response and the panelist noted that the domain names were the names of former chairman and the present chairman who were world-renowned industrialists. Thus the ground of bad faith registration and use was established beyond doubt and all the above said names were transferred to the complainant.
The decision in the aforementioned case makes it loud and clear that the
Indian courts are not going to remain as silent spectators to unscrupulous acts
of cybersquatting and this obviously is a welcome change. These cases assume
significance as they have been finally decided by the Courts and serve as a
precedent in the absence of express legal mandate while many other cases of
domain infringement and cyber squatting have been either settled out of court
or decided by arbitrators. Some other instances of eviction of domain squatters
have been citibankindia.com, jrdtata.com,
mahindra.com,
microsoft.org,
enike.com,
juliaroberts.com
and airnewzealand.com
NIIT Ltd. v. Parthasarathy Venkatram: The domain name at issue before World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") was "myniit.com". The Complainant’s business run under the mark "NIIT" has achieved a phenomenal growth ever since its inception and the Complainant has also extensively advertised its business and goods under the mark "NIIT". Panel held that the registration of the domain name "myniit.com" be transferred to the Complainant.
Hurdle to be crossed
Neither the Anti-cyber squatting Consumer Protection Act nor the ICANN policy
addresses the trickiest situations on the Internet, which arise when there are
two legitimate claimants for a particular domain name, such as geographically
remote users of the same name or companies selling entirely different types of
goods or services. It remains to be seen whether the new law or policy will be
stretched to accommodate such scenarios in some fashion.
Conclusion
From the above
discussed cases we can thus draw following conclusion.
The above said decisions passed by various Courts in India signify the changing
trend of our judicial system according to the changing times. It also lays the
dynamic and flexible approach adopted by otherwise reluctant judiciary.
Judiciary while deciding the above mentioned cases has clearly sent a strict warning to cyber squatters that ˜domain names are entitled to as much protection as trade marks and hence who wrongly believe in registering domain names from helpless trademarks owners cannot take advantage.
Though Indian Courts did step in and come to the aid of aggrieved in number of cases and granted injunction on the touchstone of principle of passing off, but passing off being primarily a civil remedy and quantum of damages awarded to affected party range from nil to inconsequential, the plaintiffs are left high and dry with only orders of injunction to content them. Moreover, such a measure also do not act as a good deterrent.
It is high time that the Govt. must come out with domain name specific legislation to curb and prevent menace of cyber squatting like USA which has enacted a specific legislation to deal with cyber squatters and would place civil and criminal penalties on those who violates law like Anti- cyber squatting Act of USA which allows the plaintiffs to recover damages of US $1,000 to $100,000 per domain name. Such a change will not only give teeth to law enforcement agencies but also put a fear in the heart of prospective cyber squatters.
This is a rapidly changing area of law, and additional remedies may become available in the near future. Some U.S. state legislatures are considering state remedies, and there is the remote possibility that ICANN may acquire jurisdiction over ccTLD registrations, with the result of broader imposition of the ICANN policy.
In general, the advantages of the ICANN policy are clearly its speed, its low cost, and its ability to resolve cross-border disputes. If a remedy is available under the Lanham Act, as amended by the Anti-cyber squatting Consumer Protection Act, the advantages are final adjudication and the availability of damages
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TRADE MARK JOURNALS- www.indianlegalguide.com |
Procedure for Registration, Legal Remedies, Criminal Remedies Legal Opinion ,
Civil & Criminal Remedies ,
Download Trade Mark Information Brochure in
India |
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MONTHLY OCTOBER IPR NEWS LETTER MONTHLY DECEMBER IPR NEWS LETTER
January-2007
IPR Ne