Introduction on Domain name

As per Blacklaw’s dictionary Domain Name refers to the words and characters that website owners designate for their registered internet addresses. The Internet Corporation for Assigned Names and Numbers (ICANN) manages the internet’s global domain name system. A domain name consists of a two-level hierarchy. The top-level domain name include .com, .net. org etc. This will indicate the nature of the enterprise. In addition to it, each country has been given unique domain names. For example .in indicate India, .ca indicates Canada etc. The second level domain name represents the tradename/ trademark of the business/ entity /organization etc. For example, in google.com, Google represents the second level domain name. Generally, a dispute over domain name arises in relation to the second level domain. Two identical second-level domain names cannot co-exist under the same top-level domain name.

In order to register a domain name, one has to register it with ICAAN through a Registrar. These Registrars are accredited by ICAAN. For example, GoDaddy is one such Registrar. The Registrars allocate the domain name on first come first serve basis to the applicant. Therefore, there are chances of parties getting a domain name registered without the bonafide or legitimate intention of using it.

Domain Name Dispute

Domain names play a vital role in business as it has been used by the common public to identify the business. A dispute in relation to the domain name arises when any party registers an earlier trademark as their domain name. It is necessary that the trademark of the complainant must be identical or confusingly similar to the second level domain of the disputed domain name. This requirement rules out complaints raised by an owner of the unregistered trademark. Domain names can also be registered and protected as trademarks at the national and international level, however the same has to satisfy the criteria as required for a valid trademark.

Dispute Resolution Policy

In the case of domain name disputes, all the registrars must follow Uniform Domain Name Dispute Resolution Policy (UDRP), this will deal with the dispute arising out of any domain name. A holder of a registered trademark may initiate a complaint with the UDRP. The rules of procedure will govern how to initiate and conduct the proceeding under the UDRP.

In India, the Indian Dispute Resolution Policy (INDRP) deals with domain names registered in .in Internet registry. The disputes involving registration of .in domain name are resolved as per INDRP Rules. INDRP Rules of Procedures approved by National Internet Exchange of India (NIXI), which is a non-profit company to facilitate the exchange of domestic internet traffic, mandates that the disputes relating to domain names registered with NIXI accredited registrar shall mandatorily adopt arbitration proceeding in accordance with Arbitration and Conciliation Act, 1996. By registering the disputed domain with the NIXI accredited registrar, the owner of the domain name has agreed to the resolution of the domain name disputes pursuant to the INDRP and Rules framed thereunder. The procedures under these dispute resolutions policies are administrative proceedings.

 Legal Remedies

In order to successfully challenge domain name, the owner of the trademark must prove that the domain name registrant has used the identical or confusingly similar trademark of the complainant. Secondly, the complainant must prove that the registrant of the domain name has no legitimate interest in the domain and the same has been registered in bad faith.

In order to overcome a complaint on the domain name, the registrant must prove that the owner of the domain name is using the domain name in connection to any goods or service; or if the owner of the domain name or his goods and services have been commonly identified with the second level domain name; or if he is using the domain name for fair and non-commercial use with a bonafide intention.

In case if the challenge were successful the domain name will be suspended or all the rights over it would be transferred to the legitimate owner. In order to obtain injunction or compensation, the owner of the trademark can file a suit at the civil court.

Conclusion

Due to the expansion of business over the internet, it has become extremely important to safeguard the trademark of a business on the internet. Domain name disputes have evolved more like internet trademark infringement. However, it has become easier to identify trademark infringement over the internet for the proprietors of the trademark rather than identifying physical infringement as the website can be accessed across the globe. The arbitral tribunal or the court has favored the owner of the trademark in its majority of the decisions.