CONTENTS

1. INTRODUCTION................
.3
2. DIFFERENCE BETWEEN A TRADEMARK & A DOMAIN
NAME.4
3. STATUS OF TRADEMARKS AND DOMAIN
NAMES...6
4. ASSIGNMENT OF DOMAIN
NAMES.6
5. ICANN................................................................
............................7
6. RELATED DISPUTES THAT
ARISES..8
7. FREQUENTLY ASKED
QUESTIONS10
8. IMPORTANT CASE
STUDIES13
9. CONCLUSION.
.18
 DOMAIN NAMES

INTRODUCTION
1
A trademark is a recognizable sign, design, or unique expression related to
products or services of a particular source from those of others, although
trademarks used to identify services are usually called service marks. The
trademark owner can be an individual, business organization, or any legal
entity. A trademark may be located on a package, a label, a voucher, or on
the product itself. For the sake of corporate identity, trademarks are being
displayed on company buildings.
A trademark (or trade mark) is a way for a business to help people to identify
the products that the business makes from products made by another
business. A trademark can be a name, word, phrase, symbol, logo, design, or
picture. It can only be used on things made by the business that owns the
trademark.
For example, Coca-Cola and Coke are trademark names for a certain drink
made by the Coca-Cola Company. No other business can use these names or
any names similar to them. Other businesses can make a drink that is
similar, like colas soft drinks, but they have to use a different name for their
drink, such as Pepsi.

1 https://en.wikipedia.org/wiki/Trademark
Another example is the Nike Company which makes sporting goods like
shoes and clothes. The "swoosh" symbol used on their products is a
trademark.
Famous trademarks like Coca-Cola and Nike are used for branding whole
families of products.
2
On the other hand, a domain name is a human-readable web address (e.g.
"google.com") that points to an IP address and helps users to access website
or other resource in a convenient way. Domain names serve to identify
Internet resources, such as computers, networks, and services, with a text-
based label that is easier to memorize than the numerical addresses used in
the Internet protocols. A domain name may represent entire collections of
such resources or individual instances.
Domain names have extensions at the end of the URL. For example ".com",
".net" and ".org" are the most commonly used domain name extensions.
.com domain stands for "commercial", .org for organization and .net for
network.
There are also country-specific domain name extensions. For example, the
United Kingdom has the ".uk" domain extension and Japan has ".jp".
Domains can be a good way to create a business identity. For example
"MySpace.com" indicates that it provides personal space for users. The most
popular domain extension is .com with more than 100 million domains
registered.
3
Technically, domain names are used to find the Internet Protocol (IP)
addresses of the computers connected in the internet. Domain names are
introduced to eliminate the burden on the users from IP address of the
website they want to visit. Typically, there exists multiple levels of domain
name. The top level domain name is the part of the domain name after
the last dot and the second level domain name is the one which is
immediately left to the dot. Some important top level domain names are
generic top level domains (gTLDs) and Country code top level
domains (ccTLDs). gTLDs is used to determine the prominent domains
such as com, info, org etc., and ccTLDs are used to determine domain names
based on country. For instance, the domain name of google is
www.google.com where com is the top level domain name and google is
the second level domain name.

2 https://en.wikipedia.org/wiki/Domain_name

3 Protection of Trademark and Domain Names, Vishwajeet Sinha, et al, July 2013.
With increased globalization and dependence of internet in commercial
activities, the role of domain names is increased and it is now considered as
a business identifier. This rapid growth in the internet usage led to many
disputes in the domain names such as cybersquatting, domain name
disputes, typo squatting etc. International Corporation for assigned
names and numbers (ICANN), a non-profit organization was formed to
ensure stable and secure operations of domain names and is also responsible
for coordination among the global information systems of unique identifiers.

DIFFERENCE BETWEEN A TRADEMARK & A DOMAIN

NAME
4
A trade mark is a sign which can be represented graphically and is capable
of distinguishing the goods or services of one undertaking from those of
other undertakings. An application for registration of trade mark shall be
made to the Trade Marks Registry of the Intellectual Property Department in
Hong Kong, and the application shall be determined by the Registrar of Trade
Marks pursuant to the Trade Marks Ordinance (Cap. 559). The owner of a
registered trade mark has the exclusive right to use the trade mark in
relation to the goods and services for which the mark is registered in Hong
Kong.
A domain name is a website address on the Internet which gives you an
online identity. An application to register a domain name under .hk country
code top-level domain (e.g. .com.hk) or a generic top-level domain (e.g.
.com) shall be made to one of the registrars as accredited by Hong Kong
Internet Registration Corporation Limited (HKIRC) and the Internet
Corporation for Assigned Names and Numbers (ICANN) respectively. Subject
to the terms of the agreement as entered into between the registrant and
the accredited registrar, the registrant shall have the right to use the domain
name as its address on the Internet.
This table sets out the main differences between trademarks and domain
names:

Domain names Trademarks

A domain name must be contextual A trade mark may consist of words,
in form designs,
(e.g. www.ipd.gov.hk). letters, numerals, colors, the shape

4
http://www.ipd.gov.hk/eng/intellectual_property/trademarks/registry/Main_difference
s_between_trademarks_and_domain_names-amended.pdf

A domain name is registrable if it is
not
identical to a previously registered
domain
name.
A domain name may describe the
characteristics of the applied-for
goods or
services, e.g. freshbread.com for a
bakery
A domain name does not have to be
registered in respect of a particular
class of
goods or services.
A domain name is valid for a
contract period
as agreed between the registrant
and the
accredited registrar and is subject to
of
goods or their packaging etc. and
any
combination of such signs.
A trade mark may not be registrable
if it is
identical or similar to a previously
registered
trade mark. Further, similarity of the
applied-for goods or services and
the goods
or services of the previously
registered
trade mark would be taken into
account in
assessing whether consumers would
be
confused about the trade origin of
the applied-for goods or services.
A trade mark which consists
exclusively of a
sign which describes the
characteristics of
the applied-for goods or services
may not be
Registrable. Signs such as fresh
bread in
respect of bakery services would be
considered as descriptive and non-
distinctive
and hence not registrable (while
Fresh bread would be fine for
clothing).
A trade mark shall be registered in
respect
of the class of goods or services as
classified
under the Nice Classification.
A registered trade mark is valid for
10 years
and can be renewed for further
periods of
10 years.
renewal.

Mandatory administrative Legal proceedings may be initiated

proceedings before
before an approved dispute the Registrar of Trade Marks or the
resolution Court of
service provider are required for First Instance in Hong Kong as
certain appropriate.
types of disputes and legal
proceedings may
also be initiated in a court of
competent
jurisdiction.

5
Domain names are unique -- more than one company can have the
same brand name/trademark (Delta Airlines & Delta Faucets)
Domain names may be generic -- generally trademark law will not give
protection to generic words ("computer," "software," etc.)
Trademarks often only protect a limited set of goods or services, while
domain names effectively are exclusive, covering anything associated
with the domain name owner's website.

6
Status of Trademarks and Domain Names
The Information Technology Act 2000 of India doesnt look over the issues of
domain name. Domain names which are like trademarks are protected by
Trade Marks Act 1999. There are various judicial cases where problem of
domain name is addressed under the laws of passing off. However still there
are gaps which need to be addressed by full-fledged amendments of judicial
law. The Copyright Act, 1957 is also referred sometimes for trademarks but
domain name protection is still not considered under it. There are
international regulations through World Intellectual Property Organization
(WIPO) and the Internet Corporation for Assigned Names and Numbers
(ICANN). ICANN takes care of the unique identifiers and address on the

5Confluence, Trademarks vs. Domain Names,

https://wikispaces.psu.edu/display/IST432SP11Team22/Trademarks+vs.
+Domain+Names

6 Protection of Trademark and Domain Names, Vishwajeet Sinha, et al, July 2013.
internet. It also provides domain name registration details. ICANN includes a
Governmental Advisory Committee (GAC) which was set up in 1999. The GAC
invites countries to participate in policymaking activities. India is represented
by Mr. N. Ravi Shankar of the Ministry of Communications & IT. Dr. Govind
and Mr. Ranjan Kumar of the Department of Information Technology, Ministry
of Communications & IT of the Government of India head the GAC Secretariat
aiming at increasing the influence of ICANN in India. ICANN implemented
Uniform Domain Name Dispute Policy (UDRP) in 1999 for resolving issues on
domain names. India also used UDRP policy on .IN domains in association of
National Centre for Software Technology and National Internet Exchange of
India. Overall India should effectively change their legislature laws and
strictly follow for preventing cybercrimes and protecting trademarks.

7
ASSIGNMENT OF DOMAIN NAMES
In order to register a second level domain name under a top-level domain, a
request must be made to the organization that has the power to assign
names for that top-level domain. For instance, The US Domain Registry
administers the registration of second level domain names under the .US
top-level domain.
Prior to December 1999, a company called Network Solutions Inc. ("NSI") was
almost solely responsible for the registration of second level domain names
for the most popular top-level domains, including .COM, .NET, and .ORG.
Since the vast majority of domain names are under one of these top-level
domains (the most common being .COM domain names), Network Solutions
had a great deal of control over how domain names were registered, and
how disputes would be resolved. To avoid having to be the arbitrator
between two parties who both desire the same domain name, NSI decided to
simply adopt a first come, first serve arrangement with respect to domain
names. Under this scheme, NSI would not question an applicant's right to
have a particular domain name. If the domain name was available, the
applicant was given the name.
As of December 1999, the ability to register .COM, .NET, and .ORG domain
names was spread out among many registrars. These registrars are
accredited by The Internet Corporation for Assigned Names and Numbers (or
"ICANN"), a non-profit corporation formed specifically to control Internet
domain name management and similar functions. NSI continues to assign
domain names, but now they are just one of many domain name registrars.
Following NSI's precedence, all of these registrars assign names on a first-

7 Bitlaw, Domain Name, http://www.bitlaw.com/internet/domain.html

come, first-serve basis, and do not do any checking before assigning a new
domain name.

8
ICANN
The Internet Corporation for Assigned Names and Numbers is a
nonprofit organization that is responsible for coordinating the maintenance
and methodologies of several databases, with unique identifiers, related to
the namespaces of the Internet - and thereby, ensuring the network's stable
and secure operation. ICANN was created on September 18, 1998, and
incorporated on September 30, 1998 in the State of California. It is
headquartered in the Playa Vista section of Los Angeles, California. It
oversees Internet-related tasks that used to be done by Internet Assigned
Numbers Authority for the U.S. government. ICANN is located in Marina Del
Rey, California, United States. ICANN manages the assignment of domain
names and IP addresses. To date, much of its work is about making new
generic top-level domains.
Most visibly, much of its work has concerned the Internet's global Domain
Name System, including policy development for internationalization of the
DNS system, introduction of new generic top-level domains (TLDs), and the
operation of root name servers. The numbering facilities ICANN manages
include the Internet Protocol address spaces for IPv4 and IPv6, and
assignment of address blocks to regional Internet registries. ICANN also
maintains registries of Internet protocol identifiers.
ICANN has been doing some activities mentioned below:
1. Uniform Domain-Name Dispute Resolution Policy (UDRP): One
task that ICANN was asked to do was to address the issue of domain
name ownership resolution for generic top-level domains (gTLDs).
ICANN's attempt at such a policy was drafted in close cooperation with
the World Intellectual Property Organization (WIPO), and the result has
now become known as the Uniform Dispute Resolution Policy (UDRP).
This policy essentially attempts to provide a mechanism for rapid,
cheap and reasonable resolution of domain name conflicts, avoiding
the traditional court system for disputes by allowing cases to be
brought to one of a set of bodies that arbitrate domain name disputes.
According to ICANN policy, a domain registrant must agree to be bound
by the UDRPthey cannot get a domain name without agreeing to this.
A look at the UDRP decision patterns has led some to conclude that
compulsory domain name arbitration is less likely to give a fair hearing
8 https://en.wikipedia.org/wiki/ICANN
 to domain name owners asserting defenses under the First
Amendment and other laws, compared to the federal courts of appeal
in particular.

2. Proposed elimination of public DNS Whois: The initial report of

ICANN's Expert Working Group has recommended that the present
form of Whois, a utility that allows anyone to know who has registered
a domain name on the Internet, be scrapped. It recommends it be
replaced with a system that keeps most registration information secret
(or "gated") from most Internet users, and only discloses information
for "permissible purposes". ICANN's list of permissible purposes
includes Domain name research, Domain name sale and purchase,
Regulatory enforcement, Personal data protection, Legal actions, and
Abuse mitigation. Whois has been a key tool of investigative journalists
interested in determining who was disseminating information on the
Internet. The use of whois by the free press is not included in the list of
permissible purposes in the initial report.

RELATED DISPUTES THAT ARISES

9
Concurrent Rights
Registration is on a first come first serve basis. Simply because you have a
registered trade or service mark, have a registered company name, or have
been using a trade name for a lengthy period of time does not mean that
another person with a legitimate reason for registering the domain and who
uses it in good faith must give it up. One example of this is the Prince Sports
case in which Prince Sports tried in vain to have the domain www.prince.com
transferred from Prince Computers in the UK.
Companies with trademarks have tried to bully legitimate registrants out of
attractive domain names, this has sometimes been called Reverse Domain
Name Hijacking and damages can now be awarded in the US under the US
Cybersquatting Act for such practice.

Cybersquatting
These are common disputes. Cybersquatting involves the registrant having
registered a name, or names in most cases, in bad faith to gain some

9 Domain Name Disputes, Out-Law.Com, http://www.out-law.com/page-5700

commercial advantage. This can involve trying to sell it back to a party it
knows would be interested in having registration of the domain name for an
inflated price or more commonly using it to direct traffic to their website or
the website of a trade competitor of the trade mark holder in return for
payment of a commission.

Gripe sites
Sites such as www.natwestsucks.com or www.stopecg.com have been
problematic. Arbitrators and the courts have been inclined to order the
transfer of the offending domain name particularly if there is some bad faith
or a lack of legitimate use. Reasoning for this has been that a non-native
English speaker may not disassociate the "suck" from the trade mark
holder's mark.
However, it has been shown that those registering a domain name
incorporating a known trade mark and using the domain name to host a
website to air legitimate grievances against the trade mark owner can
successfully defend the registration of such a domain name. To be
successful in using the dispute resolution process to acquire these domain
names the trade mark holder must demonstrate the registrant has acted in
bad faith perhaps by demonstrating some attempt to extract a commercial
gain from the trade mark holder.
In a case involving www.stopecg.com, a valid site airing discontent at the
business practices of the travel guide publisher European City Guide, the
domain name was not transferred. Here it was contended that a prudent
person would know that the site was criticizing the company and that these
were not the views of the company itself. Therefore there was no bad faith
or disparagement of the trade mark. This highlights the problems that can
arise with the domain name dispute process notably that inconsistent
decisions arise as decisions do not have to be followed in subsequent cases.

Trademark Infringement
Trademark infringement happens when you use a trademark owner's
trademark or a similar mark in a way that is likely to confuse the public about
the source or sponsor of your products or services. This is the most common
type of trademark claim, and it effectuates trademark's primary purpose of
avoiding consumer confusion.
Trademark Dilution
Trademark dilution happens when you use a famous trademark in a way that
is likely to weaken its capacity to identify the famous trademark owner's
goods or services or to tarnish the reputation of the mark. The trademark
owner need not show that you created consumer confusion, and dilution may
occur even if your goods or services are completely different from the
trademark owner's. Because of dilution law, it's probably not a good idea to
call a blog "Kodak News" or "McDonald's Blog," unless it is actually about
Kodak or McDonald's.

FREQUENTLY ASKED QUESTIONS

10

Do I file a domain name application with the local patent and

trademark office?
No. You file an application to register a domain name with a registrar
accredited by the Internet Corporation for Assigned Names and Numbers
(ICANN). A worldwide directory of ICANN-accredited domain name registrars
and registrar contact information are available on the ICANN website.

If I have a trademark, do I have a domain name?

No. A trademark is not the same thing as a domain name. A trademark
identifies goods or services from a particular source or of a defined quality. If
a trademark owner would like to use its trademark as its domain name, the
owner must purchase the domain name registration from an ICANN-
accredited registrar.
In certain instances, a trademark owner may benefit from ownership of its
mark when it comes to domain name registration. For example, when a new
top-level domain (TLD) or country code top-level domain (ccTLD) is launched,
there will be a sunrise period, which allows trademark owners to apply for
domain names that correspond with their registered trademarks before
domain name registration opens up to the general public. However, this is
not an automatic process, and the trademark owner must take active steps
to register the domain name.

If I have a domain name, do I have a trademark?

Not necessarily. A domain name in and of itself is not the same thing as a
trademark. Use of a domain name merely as an informational part of the

10 Nolo, Domain Names and Trademarks FAQ, www.nolo.com/legal-

encyclopedia/domain-names-trademarks-faq-29049-4.html
domain name holders Internet address does not qualify as trademark use.
Following are examples of a domain name used only as an Internet address:

A domain name that displays only in the Internet address bar

A domain name that merely redirects website traffic to another website
A domain name that is used in close proximity to language referring to
the domain name as an address
A domain name that is displayed merely as part of the contact
information for the domain name owner
To qualify as a trademark or service mark, the domain name must function
as a mark; that is, it must serve as an indicator of source and not merely as
an informational part of an Internet address. If the domain name functions
separately as an indicator of source, it may be registered with the
appropriate trademark office as a trademark or service mark. For example, a
domain name that is displayed prominently and frequently on a webpage
might function as a trademark.
A key factor in determining whether the use of a domain name rises to the
level of trademark use is whether consumers view the domain name as a
symbol of origin separate and apart from anything else.

Does a domain name expire?

Yes. The expiration date will depend on the contractually agreed-upon term
of registration between the domain name registrant and the registrar. A
domain name registrant can renew the registration if it so desires.
Similarly, if a trademark is not renewed before the due date, the registration
expires.

How can I find out whether a trademark I want to use as a domain

name is already being used?
Because so much business is now being done online, most people will want
to be able to use their proposed trademark as a domain name so that their
customers can easily locate them on the Web.
The easiest way is to check if a domain name is available is at one of the
dozens of online companies that have been approved to register domain
names. A listing of these registrars can be accessed at either the InterNIC
site or at the ICANN site. ICANN is the organization that oversees the process
of approving domain name registrars. Every registrar provides a searching
system to determine if a domain name is available. Type in the domain name
choice and the registrar will determine if it is available.
If you find that a domain name is already taken, it's possible to locate
information about the owner of the domain name. A simple way to check
ownership is to use Whois.net. Type in the domain name, and the website
provides the contact information supplied by the domain name registrant.
Beware that some registrants, especially those acting in bad faith, may
supply false information about domain name ownership and in these cases,
there's not much that can be done to track down the domain name holder.

What happens if there is a conflict between an Internet domain

name and an existing trademark?
Even if a company owns a federally registered trademark, someone else may
still have the right to the domain name. For example, many different
companies have federally registered the trademark Executive for different
goods or services. All of these companies may want www.executive.com but
the first one to purchase it in this case, Executive Software is the one that
acquired the domain name and has the rights to it.
Sometimes a person (known as a cybersquatter) registers a trademark as a
domain name hoping to later profit by reselling the domain name back to the
trademark owner. If you believe that someone has taken a domain in bad
faith, you can either sue under the provisions of the Anticybersquatting
Consumer Protection Act (ACPA), or you can fight the cybersquatter using an
international arbitration system created by the Internet Corporation of
Assigned Names and Numbers (ICANN). The ACPA defines cybersquatting as
registering, trafficking in, or using a domain name with the intent to profit in
bad faith from the goodwill of a trademark belonging to someone else. The
ICANN arbitration system is considered by trademark experts to be faster
and less expensive than suing under the ACPA, and the procedure does not
require an attorney. For information on the ICANN policy, visit the ICANN site.
Courts and arbitrators generally side with trademark owners in these
disputes and order the cybersquatter to stop using the trademarked name.

Can a business trademark a domain name for future use?

It is possible to acquire ownership of a trademark by filing an "intent-to-use"
(ITU) trademark application with the U.S. Patent and Trademark Office (PTO)
before actually starting to use the domain name. The applicant must start
using the domain name within the required time limits -- six months to three
years after the PTO approves the trademark, depending on whether the
applicant seeks and pays for extensions of time. The filing date of this
application will be considered the date of first use of the trademark as long
as the applicant actually uses the trademark within the required time limits.

IMPORTANT CASE STUDIES

HealthNet.org vs. Healthnet.com
A small non-profit humanitarian organization named SatelLife has been using
the domain name HealthNet.org since 1993. The organization provides
health and medical information to the developing world through a complex
electronic network that serves people who don't have access to the World
Wide Web. Its partner sites are referred to as HealthNets - thus the reason
for the domain name. According to SatelLife, its service provides a lifeline to
doctors in rural locations overseas. It has invested over a decade in building
its reputation as an unbiased source of health information and feel that this
reputation is tied to the "healthnet" name. For example, in its annual report
the UN refers to the organization as HealthNet not SatelLife. The
organization also issues a weekly publication called "HealthNetNews".
SatelLife was recently contacted by a large California HMO named Health
Net, which claims to have trademarked the Health Net name in 1981. The
HMO sent SatelLife a cease-and-desist letter, demanding that it stop using
the HealthNet.org domain name immediately. Days before the name was to
be put on hold (under the NSI procedure described above), SatelLife filed an
action in federal court, seeking to preserve its right to the domain name.
Health Networks claims that if SatelLife had done a trademark search when it
first started using the name HealthNet for its e-mail network, SatelLife would
have discovered that the name had already been registered as a trademark
by the HMO in 1981. A domain name search in 1993, however, when
SatelLife registered its name would not have brought up "Healthnet.com"
[Note the difference from "Healthnet.org"] since Health Networks did not
register the former name until 1996.
According to a spokesperson at SatelLife, "[f]or a financially challenged non-
profit to be compelled to change its identification is a possible death
sentence. In any case it will foster confusion and may deny health
professionals in the most impoverished countries of the world vital
information they have come to depend on. We work in an entirely different
domain than the HMO; we neither interfere with the clientele of the
Healthnet HMO in California, nor dilute their message or affect their identity."
They anticipate that changing their domain name could cost approximately
$1 million in addition to the intangible costs attributable to the confusion it
would cause those who rely on their system.

eToy.com vs. eToys.com

This dispute has caught the attention of the media and has been dubbed a
battle between "Corporate America" and a small group of international
artists. In September, 1999, eToys -- a U.S.-based online toy store, operating
under the name <eToys.com> -- filed suit against a small artist site using the
domain name <etoy.com>. Etoy.com is operated by a group of European
artists, who have used the site since 1995 to present their anti-corporate art
projects. In November, 1999, a Los Angeles court granted eToys a
preliminary injunction, thus shutting down the etoy.com site. While the
preliminary injunction required the shutdown of the web site only, NSI also
put the domain name on hold, thereby blocking email service to etoy.com.
According to free-speech proponents, this is a clear case of a large company
misapplying the law. The group of artists at etoy.com is not competing in a
similar industry with eToys and even registered their domain name years
before eToys registered its in 1997. They argue that giving up their domain
name would bring an end to their artistic project. On the other hand, eToys
claims that etoy.com is sufficiently similar to its own name that it constitutes
trademark infringement. Etoys claims that customers mistakenly log on to
the etoy.com web site and what they find there is profane and confusing.
The dispute was settled on January 25, 2000, with the art group emerging
victorious. EToys initially requested some control over the content of the
etoy site as part of their proposal to drop the suit. Etoy rejected this
proposal and eToys eventually settled without it. EToys reimbursed the art
group for up to $40,000 in legal fees and other expenses the group incurred
during the dispute. As part of the settlement, both organizations agreed to
drop their suits against each other.

The court in Tata Sons Ltd. v. Manukosuri and Others held that domain
11

names are entitled to the protection as trademark and trade mark law
applies to the activities on internet, and the mere fact that the petitioner has
no registered domain name by itself may not stand in the way of passing off
action. Generally in India, the complications begin when a person gets a
11 Selvam and Selvam, Trademark and Internet : Domain Name and Dispute
Resolution, http://www.selvamandselvam.in/blog/trademark-and-internet-domain-
name-and-dispute-resolution/
domain name registered with the Registering Authority, which happens to be
the Trade Name of some other person. The Registering Authority has no
mechanism to inquire whether the domain name sought to be registered is in
prior existence and belongs to another person.

In Acqua Minerals Ltd. v. Pramod Borse and Another, observed that:

unless and until a person has credible explanation as to why did he choose
a particular name for registration as a domain name or for that purpose as a
trade name which was already in long and prior existence and has
established its goodwill and reputation; there is no other inference drawn
than that the said person wanted to trade in the name of trade name he has
picked up for registration or as a domain name because of its being an
established name with widespread reputation and goodwill achieved at huge
cost and expenses involved in advertisement.

In Online India Capital Co. Pvt. Ltd. v. Dimensions Corporate, the

plaintiff who was using the website under the name of www.
Mutualfundsindia.com brought an action against the defendant who
adopted the name MUTUALFUNDINDIA.COM. It was held that the plaintiffs
domain name was descriptive of the character of the Services offered by it
and there was no evidence to show that the word has acquired a secondary
meaning which was precondition for granting protection to descriptive names
and therefore the claim was dismissed.

This brings us to the most important and landmark judgment of the Apex
Court, Satyam Inforway Ltd. v. Sifynet Solutions Pvt. Ltd. where the
question for consideration before the Honorable Supreme Court of India was
whether Internet domain names are subject to the legal norms applicable to
other intellectual properties such as trademarks. The Supreme Court
observed that
the use of similar or same domain name may lead to a diversion of users
which would result from such users mistakenly accessing one domain name
instead of another. Ordinary users seeking to locate the functions available
under one domain name may be confused if they accidentally arrived at a
different but similar website which offers no such services. Such users could
well conclude that the first domain-name owner has misrepresented its
goods or services through its promotional activities and the first domain-
owner would thereby lose its custom. Its apparent, therefore, that a domain
name may have all the characteristics of a trademark and could find an
action for passing-off.

Princeton Review v. Kaplan

12

Princeton Review, Inc. ("Princeton Review"), a test preparation service,

obtained the domain name "kaplan.com," which contains the trademark of
its commercial rival, Stanley H. Kaplan Educational Centers, Ltd. ("Kaplan").
In what is believed to be the first ruling on this issue, a mutually agreed
three person arbitration panel recently required Princeton Review to
relinquish the "kaplan.com" domain name to Kaplan.
The first key fact is that the panel had to assume that Internet addresses can
in fact act as trademarks. This is not surprising given the true nature of
Internet addresses. Although the name "addresses" conjures up the post
office addresses of real-world places, this is only part of the purpose of
Internet addresses.
As summarized in the colorful prose of the McDonald's pirate himself:
"Domain names are to the Internet what addresses are to the Postal Service.
They're more than that, really, since your domain name can tell the on-line
world something about who you are. Domain names are kind of like postal
addresses, vanity license plates and billboards, all rolled into one digital
enchilada.
The second key fact about the "kaplan.com" case confirms the ability of
domain names to serve as trademarks. To quote the McDonald's pirate again:
"If you logged into kaplan.com, you could read a Q&A comparing the
programs offered by [Princeton Review and Kaplan]. Which one do you think
came out looking better?" Internet users, unaware that Princeton Review was
the real owner of this address, would no doubt think that Kaplan was the
owner of this address and the source of the information located there.
In short, Princeton Review's registration of the domain name "kaplan.com"
very likely not only produced confusion among Internet users over the source
of the information located at this address, but real damage to Kaplan's
goodwill.
The third important fact is that the President of the Princeton Review, John
Katzman, admitted they had registered the domain name "kaplan.com" "in
part just to irritate [Kaplan] . . . Clearly, we've done that." This equity
"unclean hands" aspect of the "kaplan.com" case may be applicable to many

12 Trademark Disputes over Domain Names,

http://www.legalserviceindia.com/articles/tdms.htm
other "domain grabbing" cases likely to arise from the current gold rush.
Assuming that this factor played a role in the panel's decision, they most
likely followed traditional trademark law regarding bad intent. Under
traditional trademark law, intent to adopt a mark to derive a benefit from the
reputation of another is one of several factors in evaluating whether the
infringing use is likely to cause confusion in the market.

MTV Networks v. Curry

A former MTV video jockey, Adam Curry, registered the Internet domain
name "mtv.com" while working for MTV Networks ("MTVN"). Internet users
connected to the "mtv.com" address could find the posting of "MTV's Top Ten
Music List," outtakes from MTV Networks ("MTVN") programming, a printout
of the text of a dialog between MTVN characters Beavis and Butt-head, and a
giveaway of MTV-logo T-shirts to subscribers. Promptly after Curry's
departure from MTV Networks, he was sued by MTV Networks for trademark
infringement, among other things, because he refused to stop using the
"mtv.com" Internet address. Although the court only addressed pre-trial
motions before the case settled, two significant points may be gleaned from
the court's initial decision.
The first is that Curry never argued that the Internet was exempt from
trademark law. Instead, Curry argued that the domain name "mtv.com" was
not going to be used in a confusing manner. The issue, claimed Curry, was
whether MTV Networks has "'some inherent right in mtv.com.
The second important point is the clue provided by the MTV Networks v.
Curry court about how it might rule on the key issue succinctly stated by
Curry. In a footnote, the court explains Internet domain names and
analogizes them to "telephone number mnemonics." The analogy is apt
because, as noted above, the Internet domain names are in fact mnemonics
for the true, but unwieldy, initial section of a numerical address.
Although the MTV Networks v. Curry court did not address the scope of
trademark protection for Internet domain names, its telephone number
mnemonics analogy suggests a fruitful line of analysis.

Wired v. WIRE
The last case that has arisen recently regarding claims of trademark
infringement based on an Internet domain name found the cutting-edge
cyberspace magazine entitled Wired complaining about the domain name
used by WIRE, a computer network devoted to women's issues. Wired used
"wired.com" as its domain name; WIRE used "wire.net." Rather than litigating
the issues, WIRE decided that as a start-up company it could not afford legal
wrangling and had to focus on its business instead. The parties settled with
WIRE agreeing to change its name to Women's Wire and its domain name to
"wwire.net." In return, Wired agreed to pay half the cost of the name change
expenses, such as redoing on-line graphics and identity materials.
Although the Wired case never even advanced as far as a cease-and-desist
letter, it does illustrate two interesting issues. The first is that Wired
demanded that WIRE change not only its Internet domain name, but its
business name too. Given the fairly close similarity between "wire" and
"wired," requiring WIRE to also change its business name to WOMEN'S WIRE
helps to minimize - in the context in which these Internet addresses are used
- any likelihood of confusion. The second interesting issue is that domain
names, for purely technical reasons, preclude parties from distinguishing
themselves by capitalization, stylized formats, or designs. Companies often
use capitalization of letters in their marks as part of the mark itself. WIRE
obviously sought to do this, but was technically precluded from including this
additional information in its domain name. For the same reason, special
stylized formats and designs are also excluded from domain names. As a
result, companies will find it even more difficult to keep their domain name
distinguishable from other domain names because there are fewer ways to
make domain names distinctive.

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.

CONCLUSION
It is now quite clear that importance of internet domain names has now
increased manifold, both in connection with internet communication and
business and commerce, of the internet. As the internet is fast becoming and
immensely popular and highly preferred platform for accelerated flow of
business related information of all types, by people and entities in all
economic fields, there is an imperative need for getting proper protection to
the unique domain names, like trademarks and service marks. This
increasingly desirable protection to the internet domain names as
trademarks, is now achievable under the auspices of the ICANN & WIPO.
However, for the best possible efficient and vigorous protection of the
domain names at the level global, close harmonization of the trademark laws
of individual countries worldwide, is also highly desirable.