PROTECTION OF DOMAIN NAME Viz-Viz TRADEMARK LAW Harjot Singh Gill UILS 1 | Page
PROTECTION OF DOMAIN NAME
Viz-Viz
TRADEMARK LAW
Harjot Singh Gill
UILS
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ACKNOWLEGDEMENT
I am grateful to our Lecturer Dr. Jasmeet Gulati for inculcating the concepts of the subject Cyber Law.
I am grateful to staff of Library for rendering cooperation.
And I am highly grateful to my parents for their constant support towards my studies.
Harjot Singh Gill
Roll No. 30.
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List of Authorities
Case Laws
MTV Networks, Inc v. Curry 867 F.Supp, 202 SDNY 1994.
Rediff Comm. Ltd. V. Cyberbooth & anthr AIR 2000 Bom 27.
Princeton Review management Corp v. Stanley H.Kaplan Educational Centre Ltd. 94
Civ. 1604(SNDY 1994)
Comp Examiner Agency, Inc v. Juris ,Inc, 1996.
Yahooinc v. Akash Arora (1999) PTC 201.
NIIT Ltd v. Parthasarathy Venkatram Case No. D2000-0497.
Microsoft Corporation v. Amit Mehrotra Case No. D2000-0053, Adm. Panel Decision,
Wipo Arb. And Med. Centre.
Castrol Limited v. Shrinivas Ganediwal Case No. D2002-0881.
IIT Bombay, Powai v. Indsoft Case NO. D2002-0078.
Commentaries, Journals & Books
Nandan Kamath, “ Law relating to Computers Internet & E-Commerce”.
Karnika Seth, “ Cyber Laws in the Information Technology Age”.
Amita Verma, ‘Cyber Crimes and Law”.
P.Narayanan, “ Intellectual Property Law”, 3rd ed.
Rodney Rider, “Guide to Cyber Laws”.
Mr. Vakul Sharma, “Handbook of Cyber Laws”.
Justice Yatinder Singh, “Cyber Laws”.
Internet Websites
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www.indiainfo.com
www.wto.org
www.icann.org
www.wipo.org
www.google.com
Agreements, Conventions & Statutes
Trips Agreement
Paris Convention
Trademarks Act, 1999( India)
Anti-Cyber Squatting Consumer Protection Act, 1999
The Federal Anti-Dilution Act.
European Union Trademark Directive, 1989
Trademark Law Treaty (TLT).
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TABLE OF CONTENTS
Introduction -------------------------------------------------------------------- Pg No. 6
What is Domain Name? ----------------------------------------------------- 6
Importance of Domain Name------------------------------------- 7
Cyber-Squatting------------------------------------------------------ 8
Domain Name Registration---------------------------------------- 8
Infringement of Trademark as Domain Name-------------------------- 9
Diversion of Traffic-------------------------------------------------- 10
String Conflicts-------------------------------------------------------11
Protection under Trademark Law ---------------------------------------- 11
Remedy of Passing off ----------------------------------- 12
Remedy under Section 103 & 104--------------------- 14
Trademark Protection Under International Law----------------------- 15
Paris Convention-----------------------------------------------------16
TRIPSAgreement----------------------------------------------------- 17
Trademark Law Treaty---------------------------------------------- 19
Uniform Dispute Resolution Policy (UDRP) ----------------------------- 19
Indian Cases Reaching UDRP ------------------------------------- 21
Provision Under United States of America ------------------------------ 22
Conclusion ----------------------------------------------------------------------- 23
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A. INTRODUCTION
In the current age, the internet has become a part and parcel of the life of almost every
individual in the developed nations and is on the way of assuming a similar position in
respect of developing nations. The modern communication techniques that are available
through the internet and the large number of people who access it throughout the world as
a market. In this scenario, an entity’s trademark assumes immense importance. It helps an
entity build up its identity over the World Wide Web. With the advent of the internet, the
world today is witnessing a revolutionary change in the field of communications. Out of
nowhere, the internet seems to have exploded on the forefront of several commercial
establishments, organizations, governments and institutions. Everybody, who is somebody,
seems to have something to do with the internet. Flashing an internet address has become a
sine qua non for almost every organization. It goes without saying that as the awareness of
the internet grows, the number of websites grow correspondingly. Such growth of web sites,
has also given rise to a new era of disputes- i.e. domain disputes.1
B. WHAT IS DOMAIN NAME?
In the new e-economy, it is vital that prior to entering into any sort of business activity a
company, must be traceable relatively easily on the Internet, i.e. it must have an address in
cyberspace. This would require its registration under a particular domain name.2 A domain
name is a hierarchically structured character string that serves as an Internet address. The
real Internet Protocol (IP) address is a string of numbers that is difficult to use and remember
(e.g., 128.82.75.52). Internet users rely on domain names, which take the form of
memorable and sometimes catchy words, to stand in their place.3 The domain name at the
1 Sanjay Bhatta,“ Domain names, cyber squatting and trademarks in India- A legal perspective”. at http:// www.indiainfo.com 2 Nandan Kamath, “ Law relating to Computers Internet & E-Commerce” at p. 167.3 Karnika Seth, “ Cyber Laws in the Information Technology Age” at p. 372.
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extreme right is called the Top Level Domain (TLD) and any domain to the left of the TLD and
separated by a dot is the Second Level Domain (SLD). A domain to the left of the SLD is
known as the Sub-domain (SD). The sub-domain, Second Level Domain and the Top Level
Domain put together comprise a ‘Domain Name’. Thus, suppose in the domain name
‘law.microworld.com’, ‘.com’ is the TLD, ‘microworld’ is the SLD and ‘law’ is the SD.4 There
are two types of Top Level Domain Names, Generic and Geographic. Generic domain names
are unique to the entire world. Generic Domain Names are for
example .com5, .edu6, .org7, .net8, .gov9, etc. Geographical Top Level Domains are for
example, .in10, .fr11, .aus12, .uk13, etc.
B.1- IMPORTANCE OF DOMAIN NAME
The dominant purpose of the domain name is simply to provide an easy method for
remembering another’s electronic address. Domain names are an important commodity,
especially since users interested in communicating with a particular organization or
retrieving information about its products must do so without recourse to any centralized,
complete directory. This makes short, easy to remember names of paramount value in
choosing an address.14 Moreover domain names are valuable corporate assets, as they
facilitate communication with a customer base as in case MTV Networks,15 and Rediff
4 Amita Verma, ‘Cyber Crimes and Law” at p. 266-267.5 For commercial use6 For educational institutions7 For non-profit organisation8 For network Providers9 For Government organizations.10 For India11 For France12 For Australia13 For United Kingdom14 Andre Brunel, “ Billions Registered, But No Rules: The Scope of Trademark Protection for Domain Names”, J. Proprietary Rts., Mar 1995, at p.2.15 MTV Networks, Inc v. Curry 867 F.Supp, 202 SDNY 1994.
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Communications,16 and once a company has registered a domain name, it amounts to
reserving a significant part of cyber space for that company.
B.2- Cyber- Squatting
Cyber-squatting is a form of speculation where a domain name is registered with the
intention of selling off the same. Cyber-squatting is the practice by means of which a person
or legal entity books up the trade mark, business name or service mark of another as his own
domain name for the purpose of holding on to it and thereafter selling the same domain
name for the purpose of holding on to it and thereafter selling the same domain name to the
other person for valuable premium and consideration.17 Cyber squatters book up domain
names of important brands in the hope of earning quick millions.18
B.3- Domain Registration
Domain administration is done by the National Centre for software Technology,19 Mumbai
which runs the Indian Domain Registration Service. Domain Name registration requests are
entertained by NCST only if the organization has a valid IP address or has applied for one.20
The domain may be registered electronically.21 The application form, on receipt, is circulated
within a review group and the applicant will be contacted for clarifications/ name clashes, if
any. If there are none, then the applicant will be allocated the desired domain name and
intimated. Upon registration, the registrant is required to run a DNS server.22 Registration is
very important to check the problem of cyber squatting. It can be dealt by means of
16 Rediff Comm. Ltd. V. Cyberbooth & anthr AIR 2000 Bom 27.17 Amita Verma, ‘Cyber Crimes and Law” at p.27018 Ibid at p.271.19 Hereinafter called as NCST.20 Nandan Kamath, “ Law relating to Computers Internet & E-Commerce” at p. 172.21 To register a domain one may obtain the form electronically from URLs http:// soochak.ncst.ernet.in. This Form is to be filled up and mailed to [email protected] 22 At least a 64 Kbps leased data circuit.
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regulations to ensure that in particular country only the owner of a trademark can register it
as a domain name. For example, if ‘Nick-Bakers’ is registered as a trademark in India, only
the owners of that trademark should be allowed to register the domain name
‘NickBakers.co.in’. As regards the ‘.com’ TLD, any prospective registrant must show that he
possesses a trademark in that name, or has some sort of a justifiable connection, entitling
him to that name.23
C- INFRINGEMENT OF TRADEMARK AS A DOMAIN NAME
A domain name is not itself a trademark. A trademark is a right, granted under law, to use a
mark in commerce to represent a product (or a business, in the case of a trade name). A
domain name is a word or phrase registered in the domain name registration system. A
domain name may be a company’s expression of its trademark. The use of a trademark in a
domain name, for instance, is the equivalent of using the trademark on a billboard, or in
advertising. Infringememt refers to a dispute where the original registrant intentionally
trades off the resemblance between the domain name and another famous trademark. A
registered trademark will be infringed if a person in the course of trade, in relation to the
same goods for which the mark is registered, uses without authority the same mark or a
deceptively similar mark.24 Section 29 lays down the various cases in which a person will be
said to have infringed another person’s trademark. The ingredient that is common to all the
cases is the use of the trademark in the course of trade and in relation to goods or services.
Thereafter, the registrant tries to encash on the reputation of the trademark holder by
running a business similar to that of the trademark holder. In such cases, the use of the
domain name (mark) would be illegal under the existing trademark law, regardless of
whether the infringement occurred as an internet domain or in other context. Section 135,25 23 Nandan Kamath, “ Law relating to Computers Internet & E-Commerce” at p. 18824 Section 29, Trademarks Act, 1999.25 Trademarks Act, 1999.
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prescribes reliefs such as injunction & damages in case of infringement of trademark. The
standard factors, which determine infringement under the traditional trademarks law are:
The strength of the trademark
The deceptive similarity between the plaintiff’s and the defendant’s mark,
The likelihood of confusion in the minds of the public, etc.,
Would apply in cases of infringement of domain names also
C.1- Diversion of Traffic- These sort of conflicts involve cases where the claimant is the owner
of a trademark which a competitor is using as a domain name, without such competitor
having any inherent right to the name.26 In such cases, as a general rule, traditional
trademark law would apply, since one of the parties is effectively infringing on the use of the
mark by the other. A typical example of such a dispute would be a case where a person
registers a domain name ‘reebuk.com’ in order to divert domain name traffic from
‘reebok.com’.27
C.2 – String Conflicts- String Conflicts or twins are the most complex aspect of domain name
disputes. String Conflicts involve cases where both parties have trademark, either relating to
the same product in different countries, or to different products in the same country. If both
parties now want to register the trademark as a domain name, then a conflict arises which is
almost irresolvable. The conflict arises because there can be only one domain name of a
particular word. And to grant preference to one party over the other would also be unfair.
The common law principle of passing off also does not have any relevance in such cases.
D- PROTECTION UNDER TRADEMARK LAW
26 Princeton Review management Corp v. Stanley H.Kaplan Educational Centre Ltd. 94 Civ. 1604(SNDY 1994)27 Nandan Kamath, “ Law relating to Computers Internet & E-Commerce” at p. 188
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Trademarks have had a prominent place in history, emerging with the development of
international trade and evolving into one of the principal arms of intellectual property. 28 In
India the Law governing protection of trademarks is Trade Marks Act 1999. It defines
trademark as a mark which includes a device, brand, heading, label, ticket, name, signature,
word, letter, numerical, shape of goods etc.29 Trademarks are marks which businesses use to
identify the products to consumers. Conventionally, this involves things such as logos, key
sounds, symbols and words. Recently, however, trademarks have become a topic of specific
attention in the context of today’s online environment. Areas such as Internet domain
names, hyperlinks and keywords searches have forced us to rethink what trademark is and
how it should be enforced.30 Domain name disputes are relatively unheard of in the Indian
Courts. There have been hardly a handful of reported decisions regarding domain name
disputes and the case law has still not developed in India. However, with the use of the
internet catching up at an amazing pace in the country, the Indian courts would surely be
faced with domain name disputes in times to come.
D.1- Remedy Of Passing Off- Passing off is a form of tort. No man is entitled to represent his
goods as being the goods of another man, and no man is permitted to use any mark, sign or
symbol, device, or other means, whereby, without making a direct false representation
himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to
make a false representation to somebody else who is the ultimate customer.31 It is asn
actionable wrong for any person to pass off his goods or business as and for the goods or
business of another person by whatever means that result may be achieved.32 Fraudulent
intention is not necessary to constitute passing off. In fact today it is applied to many forms
28 Introduction to Trademark Law and Practice: the basic concepts, WIPO, Geneva, 1993, p.5.29 Section 2(1)(m), Trademarks Act 1999.30 Karnika Seth, “ Cyber Laws in the Information Technology Age” at p. 372.31 Singer v. Loog (1881) 18 Ch D 395.32 P.Narayanan, “ Intellectual Property Law”, 3rd ed, p. 212.
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of unfair competition where the activities of one person cause damage or injury to the
goodwill associated with the activities of another person or group of persons. The essential
characteristics which must be present in order to create a valid cause of action for passing
off are:33
Misrepresentation,
Made by a person in the course of trade,
To prospective customers of his or ultimate customers of goods or services supplied
by him,
Which is calculated to injure the business or goodwill of another trader, and
Which causes damage to a business or goodwill of the trader by whom the action is
brought or goodwill of the trader by whom the action is brought or will probably do
so.
Section 135 deals with reliefs which are available in an action for passing off or
infringement. It includes-
An injunction subject to terms,
Either damages or an account of profits at the option of the plaintiffs, and
An order for delivery-up of the offending labels and marks for destruction or
erasure.
One of the famous cases based on this remedy is the One in a million case. 34 In this case the
UK based, One in a Million Ltd, and its sister company, Junic, registered domain names with
NSI35 and Nominet.36 Registered domain names included those of well-known commercial
33 Erven Warnick v. Towend [1980] RPC 31 at 93 (HL)34 Marks & Spencer plc v. One in a Million case 1998 FSR 26535 USA administrator of Generic TLD’s36 Administrator of the ‘.uk’ geographical top level domain names.
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companies, trademarks or other famous names, like marksandspencer.com, cellnet.net etc.
One in a Million then negotiated resale of the domain names with the owners of the
trademarks or tradenames. The court in United Kingdom held that it was an act of passing off
and granted an injunction to prevent the cyber squatting of domain names involving well-
known brands such as Salisbury, Mark & Spencer.
Another case of Juris inc,37 where Juris, Inc, owner of a federal trademark registration of
JURIS for its legal time and billing software products, had been forced to choose the domain
‘jurisinc.com’ after leaving its first choice ‘juris.com’, which had already been assigned to The
Comp Examiner Agency. When Juris, Inc. accused Comp Examiner, which used the domain
for a legal information website, went to court seeking cancellation of Jurisinc’s JURIS
trademark registration on grounds of genericness; Juris,Inc then counterclaimed for
trademark infringement and dilution. The court granted Juris, Inc a preliminary injunction
which not only precluded Comp Examiner from using the domain ‘juris.com’, but also from
using ‘juris’ in its domain name or any confusingly similar variation. Juris,Inc. now owns both
domains, and operates under the domain ‘juris.com’.
Another most important case in this regard has been the yahoo case,38 wherein the Internet
search engine, yahoo Inc sued and internet pirate who had copied the domain name
yahooindia.com and also used ‘yahooindia’ as a trademark with similar literary work on its
website and offered directory services with information specific to India and was passing
itself as the extension of yahoo. The High Court of Delhi granted an injunction restraining
him from using yahoo either as a part of his domain name or as trademark or from copying
any of the contents of the Plaintiff’s website that infringe yahoo’s copyrights. The court
categorically ruled that trademark applies with equal force on internet as it does in a physical
37 Comp Examiner Agency, Inc v. Juris ,Inc, 1996.38 Yahooinc v. Akash Arora (1999) PTC 201.
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world. The potential of harm is far greater on the Internet because of his wide access and
reach and therefore trademark protection principles equally apply to online world.
D.2- Remedy under Section 103 & 104- Under section 103,39 a person is liable for falsification
of trademark. A person is said to falsify a trademark if he makes a trademark without the
assent of the proprietor. To constitute falsification it is sufficient if the offender makes a
mark deceptively similar to the genuine trade mark, or if he carries out alterations, additions
or effacement in the genuine trademark. A trademark so falsified is called a false
trademark.40 In a case of falsification of trademark it is therefore necessary to prove the
existence of a genuine trademark, whether registered or unregistered, belonging to some
person. Any person who falsifies a trademark is punishable with imprisonment which may
extend from six months to three years fine which may vary from fifty thousand to two lacs.
And if any person sells or lets for hires any services to which any false trademark or false
trade description is applied shall be punishable with imprisonment of six months which may
extend to three years and fine of rupees fifty thousand which may extend to two lac
rupees.41 For every subsequent offence the term of imprisonment will vary from one year to
three years and the amount of fine may vary from one lac to three lacs rupees.42
E. TRADEMARK PROTECTION UNDER INTERNATIONAL LAW
The international intellectual property system has traditionally provided for the protection of
rights across different languages and different character scripts, most particularly in the field
of trademark law, as part of the wider concept of protection against unfair competition. The
principal international agreements and instruments that address the protection of
trademarks are the Paris Convention for the Protection of Industrial Property, the
39 Trademarks Act 1999.40 P.Narayanan, “ Intellectual Property Law”, 3rd ed, p. 238.41 Section 104, Trademarks Act 1999.42 Section 105, Trademarks Act 1999.
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Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement),
the Trademark Law Treaty (TLT) and the Madrid Agreement Concerning the International
Registration of Marks and related Protocol, as described below. In addition, the WIPO Joint
Recommendation Concerning Well-Known Marks provides guidelines for the protection of
well-known marks at an international level. Their provisions are designed to avoid conflicts
between trade and service marks across different languages, and to provide specifically for
registration and protection of marks, their translations and transliterations.43
E.1- PARIS CONVENTION
The Paris Convention for the Protection of Industrial Property (1883),44to which 162 States
are party,16 applies to the protection of industrial property, including marks and the
repression of unfair competition, and deals with national treatment, right of priority and
common rules. The Paris Convention does not regulate the conditions for the filing and
registration of marks, which are to be determined by each contracting State in accordance
with its domestic law. Where a mark has been duly registered in its country of origin, it must,
on request, be accepted for filing and protected in its original form in the other contracting
States. Nevertheless, registration may be refused in defined cases; such as when the mark
would infringe acquired rights of third parties, when it lacks distinctive character, is contrary
to morality or public order, or is of such a nature to deceive the public. Most broadly, the
Paris Convention, requires contracting States to provide effective protection against acts of
unfair competition, including to prohibit:
“all acts of such a nature to create confusion by any means whatever, with the
43 See generally, Stephen P. Ladas, ‘Patents, Trademarks and Related Rights: National and International Protection’, (Harvard University Press, 1975).
44 Paris Convention for the Protection of Industrial Property of March 20, 1883. See
Professor J.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the
Protection of Industrial Property, at pages 89-93 (BIRPI, 1969).15 | P a g e
establishment, the goods, or the industrial or commercial activity of a competitor.”45
In particular, each contracting State must refuse registration and prohibit the use of well-
known marks, in accordance with the Paris Convention,46 which provides, inter alia:
“The countries of the Union undertake, ex officio if their legislation so permits, or at the
request of an interested party, to refuse or to cancel the registration, and to prohibit the
use of a trademark which constitutes a reproduction, an imitation, or a translation, liable to
create confusion, of a mark considered by the competent authority of the country of
registration or use to be well known in that country as being already the mark of a person
entitled to the benefits of this Convention and used for identical or similar goods. These
provisions shall also apply when the essential part of the mark constitutes a reproduction of
any such well-known mark or an imitation liable to create confusion therewith.”47
E.2- TRIPS Agreement
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement),
was concluded in the 1986-94 Uruguay Round of the World Trade Organization (WTO). The
TRIPS Agreement seeks to establish common international rules for the protection of
intellectual property, and facilitates settlement of trade disputes between Members over
intellectual property rights using the WTO’s dispute settlement system. As described by the
WTO, the TRIPS Agreement covers five broad issues: (i) how basic principles of the trading
system and other international intellectual property agreements should be applied, (ii) how
to give adequate protection to intellectual property rights, (iii) how countries should enforce
45 Article 10, Paris Convention46 Article 6, Paris Convention.47 For further discussion of the Paris Convention and protection of well -known marks, see Professor J.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property, (BIRPI, 1969). See also Christopher Heath and Kung-Chung Liu, eds., The Protection of Well-Known Marks in Asia, (Kluwer Law International, 2000), at Chapter 1, pages 3 -8. For discussion of protection of famous and well-known marks generally, see Frederick W. Mostert, Famous and Well-Known Marks: An International Analysis, (Butterworths, 1997).
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those rights adequately in their own territories, (iv) how to settle disputes on intellectual
property between Members of the WTO , and (v) special transitional arrangements during
the period when the new system is being introduced.48
Section 2 of the TRIPS Agreement deals with trademarks, of which Article 15 specifies the
subject matter protectable as a trademark and provides, inter alia:
“1. Any sign, or any combination of signs, capable of distinguishing the goods or services
of one undertaking from those of other undertakings, shall be capable of constituting a
trademark.”
The TRIPS Agreement, Article 16, specifies the rights conferred by such protection, and
incorporates and extends the protection granted to trademarks under Article 6 of the Paris
Convention to service marks.49 Further, Article 16(2) makes special provision for the
protection of well-known marks, providing guidance to Members in determining what
constitutes a well-known mark, inter alia:
“2. In determining whether a trademark is well-known, Members shall take account of the
knowledge in the Member concerned which has been obtained as a result of the
promotion of the trademark.”50 Finally, Article 16(3) extends the special protection granted
to well-known marks against use in relation to goods and services which are not similar to
those in respect of which the trademark is registered, provided that the use of the
trademark in that context would indicate a connection with the registered trademark
owner and provided that the trademark owner’s interests would be likely to be damaged
by such use. This provision may be described as the ‘dilution protection principle’, because
it follows the lines of the recognized principle of dilution, in certain legal systems. Under
48 See the WTO’s web site on the TRIPS Agreement at http://www.wto.org/english/thewto_e/whatis_e/tif_e/agrm6_e.htm49 The TRIPS Agreement, Article 2(1), provides that “In respect of Parts II, III and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19 of the Paris Convention (1967).”50 TRIPS Agreement, Article 16(2).
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United States law, dilution protection is recognized in the Federal Trademark Dilution Act
of 1995, codified as Section 43(c) of the Lanham Act.
E.3- Trademark Law Treaty
The Trademark Law Treaty (TLT) aims to simplify and harmonize procedures of national and
regional trademark registration systems. The TLT is mainly concerned with three phases of
procedure before a trademark office: application for registration, changes after registration
and renewal. In each phase, the TLT specifies what the trademark office can and cannot
require from the applicant or owner. The TLT also goes toward harmonizing trademark office
practice in dealing with multilingual trademark applications. The Trademark Law Treaty,
Article 3(1)(a) provides, inter alia:
“Any Contracting Party may require that an application contain some or all of the
following indications or elements:
(xiii) a transliteration of the mark or of certain parts of the mark;
(xiv) a translation of the mark or of certain parts of the mark.”
G. THE UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (UDRP)
The Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation
for Assigned Names and Numbers (ICANN) on August 26, 1999,51 followed the publication of
the Report of the first WIPO Internet Domain Name Process.52 The UDRP, which entered into
force for the gTLDs (.com, .net and .org) from December 1, 1999, was implemented to
address conflicts between all Internet domain names registered in those gTLDs and
trademarks or service marks. It operates as a mandatory procedure to which each applicant
for a domain name registration in .com, .org and .net is required to submit, in the event that
51 See http://www.icann.org/udrp/udrp-policy-24oct99.htm.52 The Report of the first WIPO Internet Domain Name Process, The Management of Internet Names and Addresses: Intellectual Property Issues, is available at http://wipo2.wipo.int/process1/.
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a complaint is lodged in respect of the applicant’s registration. The UDRP establishes a
dispute-resolution procedure under which a complainant can seek the transfer or
cancellation of a domain name registration in .com, .net or .org on the basis that, in
accordance with paragraph 4(a):
i. the domain name is identical or confusingly similar to a trademark in which the
complainant has rights; and
ii. the domain name holder has no rights or legitimate interests in respect of the
domain name; and
iii. the domain name has been registered and is being used in bad faith.”53
The UDRP, paragraph 4(b) then describes circumstances which the complainant may
describe to provide evidence of the registration and use of the domain name in bad faith.
The respondent, on its part, may counter the complaint by asserting its rights to and
legitimate interests in the domain name, in accordance with paragraph 4(c). ICANN has
accredited four dispute-resolution service providers to administer disputes brought under
the UDRP: the WIPO Arbitration and Mediation Center, the National Arbitration Forum, e-
Resolution and the CPR Institute for Dispute Resolution.54 Registrars accredited by ICANN to
accept domain name registrations in .com, .net or .org are obliged to implement the results
of panel decisions pursuant to the UDRP. Since its inception, a total of 8262 domain names
have been subject of cases filed under the UDRP,55of which more than 3260 gTLD cases
53 See UDRP, paragraph 4(a) at http://www.icann.org/udrp/udrp-policy-24oct99.htm.
54For a list of ICANN accredited dispute resolution
serviceproviders, see http://www.icann.org/udrp/approved-
providers.htm.
55 See ICANN’s ‘Statistical Summary of Proceedings Under Uniform Domain Name Dispute Resolution Policy’ (as at November 29, 2001) at http://www.icann.org/udrp/proceedings-stat.htm.
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(covering more than 6,000 separate domain names) were filed with the WIPO Arbitration
and Mediation Center. Of the total cases filed with the WIPO Center, approximately 87%
refer to domain names in the .com gTLD, 18% in the .net TLD and 10% in the .org TLD. Of
these cases, 90% have been resolved to date, in an average of 50 days and at a filing cost of
US$1,500. The geographical spread of these cases covers parties from 91 countries.
G.1- Indian Cases Reaching UDRP
In Castrol limited case,56 the complainant (involved in production and distribution of
automatic lubricants) who held rights in the registered trade-mark CASTROL in India and
around the world and operated the web site www.castrol.com alleged that the respindent’s
domain name <castrolindia.com>, which included the term “Castrol” was confusingly
similar to its trade-mark. The panel concluded that the respondent had no legitimate
interest in the confusingly similar disputed domain name which had been registered in bad
faith and ordered that the domain be transferred to complainant.
In IIT Bombay case,57 the Domain name in dispute was <iitpowai.com> registered with the
respondent which was confusingly identical to the complainant’s distinctive service mark IIT
which had gained immense goodwill and reputation for its superb academic education. The
Panel decided that the Respondent should transfer the domain name as he had no rights or
legitimate interests in respect of the said domain and because it had been registered and
was being used in bad faith.
In NIIT case,58 the Complainant was engaged in the business of imparting education in
Information Technology under the trademark “NIIT” which was a coined mark and had no
obvious meaning and had developed computer software with names such as NIITePortal,
NIITeMart and NIITeService, etc. The Panel found that the respondent’s inactive domain
56 Castrol Limited v. Shrinivas Ganediwal Case No. D2002-0881.57 IIT Bombay, Powai v. Indsoft Case NO. D2002-0078.58 NIIT Ltd v. Parthasarathy Venkatram Case No. D2000-0497.
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name “myniit.com” was confusingly similar to that of Complainant’s and that the
respondent’s domain name had been registered in bad faith. Accordingly the Panel
required that the registration of the domain name “myniit.com” be transferred to the
Complainant.
In Microsoft Corporation case,59 the WIPO panel found that the domain name
‘microsoft.org’ registered by respondent was identical and confusingly similar to the
trademark “MICROSOFT” in which the complainant had rights and respondent had no
legitimate interest and that the respondent’s domain name had been registered and was
being used in bad faith.
G. PROVISION UNDER LAWS OF UNITED STATES OF AMERICA
USA has been a pioneer in the field of preventing cyber squatting. At present there are Anti-
dilution laws and Anti-Cyber squatting laws to tackle such problem. Doctrine of dilution is
well known and for this The Federal Anti-Dilution Act which is incorporated in the form of
Lanham Act defines the term dilution. It means the lessening of the capacity of a famous
mark to identify and distinguish goods or services, regardless of the presence or absence of,
competition between the owner of the famous mark and other parties or likelihood of
confusion, mistake, or deception.60 Further the US Congress, in 1999 enacted the Anti-Cyber
Squatting Consumer Protection Act, to outlaw cyber squatting. It amends Section 43 of
Lanham Act and the section has been named as Prevention of Cyber-piracy. Under section
43, a person shall be liable in a civil action by the owner of a mark, if he has a bad faith intent
to profit from that mark or registers, traffics in, or uses a domain name which at the time of
registration of the domain name, is identical or confusingly similar to that work. In order to
succeed in a dilution action, a plaintiff must establish that its mark is ‘famous’ as defined by
59 Microsoft Corporation v. Amit Mehrotra Case No. D2000-0053, Adm. Panel Decision, Wipo Arb. And Med. Centre.60 Section1127, The Federal Anti-Dilution Act.
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s.43(c).61 The principle of dilution also has broader application, for example, under European
Community law, the principle of dilution is recognized in the European Community
Trademark Directive (1989) and the European Community Trademark Regulation
(1993).62Thus in USA both the laws have come forward to rescue aggrieved trademark
owners. But in India there is no parallel law to USA in Preventing Cyber Squatting.
H. Conclusion
Protection of Intellectual property is crucial for the success of e-commerce. The traditional
laws for protecting intellectual property have been applied also in cyberspace. However, due
to inherent nature of the internet, several pertinent issues have emerged such as the
principles to determine jurisdiction, recognizing the hybrid varieties of online infringements,
resolving conflict of laws issues which apply equally in cyberspace. Scholars have advocated
a combined approach of sociological, technological and legal initiatives and measures to
protect the infringement of Intellectual property in cyberspace. The legal enforcement of
infringement of Intellectual property rights in cyberspace is a very challenging area.
Nevertheless, it is a challenge of the digital era, which we need to take in the interest of and
61 The Court, in the United States case of Panavision International v. Toeppen, (141 F.3d
1316, 1324 (9th Cir. 1998)), interpreted the FTDA as it applies to the Internet. The Court
states (at page 23) that:“In order to prove a violation of the Federal Trademark Dilution Act,
a plaintiff must show that (1) the mark is famous; (2) the defendant is making a commercial
use of the mark in commerce;(3) the defendant’s use began after the mark became famous;
and (4) the defendant’s use of the mark dilutes the quality of the mark by diminishing the
capacity of the mark to identify and distinguish goods and services
62 Article 5(1)(b) of the European Community Trademark Directive provides that the
trademark owner has a right to object to the use of identical or similar marks for identical or
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furtherance of the emerging e-information society. The future of protection of e-IPR is
indeed promising as cyber laws are evolving to further the interests of our emerging e-
information society.
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