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Trade Marks And Domain Names

The advent of the Domain Name System has led to attempts by trademark holders to enforce their rights over domain names that are similar or identical to their existing trademarks, particularly by seeking control over the domain names at issue. As with dilution protection, enforcing trademark rights over domain name owners involves protecting a trademark outside the obvious context of its consumer market, because domain names are global and not limited by goods or service.

This conflict was more easily resolved when the domain name user actually used his website to compete with the trademark owner. Cyber squatting, however, involves no such competition, but instead an unlicensed user registering the trademark as a domain name in order to pressure a payoff (or other benefit) from the lawful mark owner. The Practice that's come to be known as cyber squatting originated at a time when most businesses were not concerned about the commercial opportunities on the cyberspace. Some enterprising guys registered the names or trademarks of well-known companies as domain names, with the sole intention of selling the names back to the companies when they finally woke up. Panasonic, Tata, Bennet & Coleman and Avon were among the "victims" of cyber squatters. This practice, has reaped rich dividends for some who rushed madly to register trade marks or names close to trade marks and then demanded high prices to sell these domain names back to the interested companies. As already mentioned there is no connection between trademark registration and domain name registration. This lack of connection has been exploited to the maximum by these cyber squatters. The first come, first-served nature of domain name registration has made it easy for the system to be abused by speculators, such as where a domain name is registered by someone with the sole purpose of selling it at a premium to a trademark owner. Typo squatters are those who register common misspellings of trademarks as domain names. They have also been targeted successfully in trademark infringement suits.

This clash of the new technology with preexisting trade mark rights resulted in several high profile decisions as the courts of many countries tried to coherently address the issue (and not always successfully) within the framework of existing trade mark law. As the website itself was not the product being purchased, there was no actual consumer confusion, and so initial interest confusion was a concept applied instead.

Most courts particularly frowned on cyber squatting, and found that it was itself a sufficiently commercial use (i.e., "trafficking" in trade marks) to reach into the area of trademark infringement. Most jurisdictions have since amended their trademark laws to address domain names specifically, and to provide explicit remedies against cyber squatters.

This international legal change has also led to the creation of ICANN(international community for assigned names and numbers), Uniform Domain-Name Dispute-Resolution Policy (UDRP), which attempt to streamline the process of resolving who should own a domain. This is particularly desirable to trade mark owners when the domain name registrant may be in another country or even anonymous.

Registrants of domain names also sometimes wish to register the domain names themselves (e.g., "XYZ.COM") as trade marks for perceived advantages, such as an extra bulwark against their domain being hijacked, and to avail themselves of such remedies as confusion or passing off against other domain holders with confusingly similar or intentionally misspelled domain names.

As with other trade marks, the domain name will not be subject to registration unless the proposed mark is actually used to identify the registrant's goods or services to the public, rather than simply being the location on the Internet where the applicant's web site appears. Amazon.com is a prime example of a protected trademark for a domain name central to the public's identification of the company and its products.

The above concepts can be explained with the help of the following case laws:

Rediff Communication Ltd V Cyberbooth and another1

Facts of the case: The plaintiff was using the trade mark/domain name "Rediff.com" Defendant started business by using the mark/domain name "Radiff.com". Plaintiff filed a suit for passing off against the defendant company.

Held: It was held that there is no doubt that the two names are almost similar, and there is every possibility that the Internet user may be deceived and confused. Therefore the court accepted the prayer of the plaintiff.

Yahoo Inc V Akash Arora2

Facts of the case: plaintiff is the owner of the Trade mark "Yahoo!" and domain name "yahoo.com", which are very well known. The Defendants adopted the trade mark/domain name "Yahooindia.com". A suit was filed by the plaintiff for passing off against the defendant.

Held: The said word "Yahoo" has acquired distinctiveness and is associated with the business of the plaintiff. The use of Trade mark/domain name "yahooindia.com" will lead to passing off of the business of the plaintiff. The prayer of plaintiff was disposed off and an injunction restraining the defendant to use the impugned mark was granted.

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