Passing off action for the protection of the Domain Names

What is a Domain name?

A domain name is a string of identification that determines the area of internet administrative autonomy, authority, or power. Domain names are created by the laws of the domain name system and are generated (DNS). A domain name is any name registered with a DNS. In general, a domain name is a resource for an internet protocol, such as a personal computer used to access the internet, a server computer that hosts a website or a website itself, or some other service that is connected to the internet.

Liability of passing off

A domain name is a resource for an internet protocol, such as a personal computer used to access the internet, a website hosting server, or a website itself, or some other service that is connected through the internet. Educational institutions, org-organizations (non-profit), com-commercial companies, etc., for instance, it is not very common in India to pass off litigation on the Internet. There are five components to the modern torture of handing off:

• False representation

• Trade in the course of trade by a trader,

• To future buyers of products or services provided by him or his ultimate customers,

• Which is determined to damage another trader's company or goodwill and

• This causes real harm to the trader’s company or goodwill by which the case is brought or is likely to do so.

Compared to the simple recognition of rights under the UDNDR Policy, the protection of domain names under the Indian legal system is higher. The ramifications of the Trademarks Act 1999 are far broader and are capable of providing the world's domain names with the best security. The present need is for the rules of trademark law and the laws relating to domain names to be applied harmoniously. It should be noted that when a decision is made by the Supreme Court and it becomes final, it becomes binding on all persons or institutions in India.

Registration of domain names and protection

Domain names can, at the national and international level, be registered and protected as a trademark, provided that the domain names meet all requirements for proper registration and protection as a trademark. Any specific internet name which is capable of identifying and distinguishing the products or services of a company from those of other companies and which can also serve as a reliable source identifier for the goods or services concerned on the internet may be registered and protected as a trademark, provided that it complies with all other rules and registration conditions generally applicable to a trademark.

This must be unambiguously unique to all other domain names and well-known trademarks on the internet in order for a domain name to be properly licensed as a trademark so that it does not confuse or deceive consumers of other businesses working in the same or different fields or breach public order or morality. Such cases may lead to instances of trademark infringement litigation.

Case laws

• "Yahoo! Inc. v Akash Arora, the former, the global Internet media network, filed an action against the latter on the Internet as those of the complainants by adopting the "yahooindia.com" domain name, was the first recorded Indian case. The applicants argued that their domain name 'yahoo.com' had been registered with Network Solutions Inc (NSI) since 1995, that it had become well-known, and that they had received registrations or variants of the Yahoo trademark in some 69 countries, but not in India.

The Delhi High Court dismissed the defendant's argument on the grounds that, inter alia, trademark law applies equally to domain names on the Internet; that the use of similar names would lead to misunderstanding and fraud if the parties were in the same or similar line of business; that the defendant's disclaimer on their website did not reduce the likelihood of confusion and that the defendant's disclaimer on their website did not reduce the likelihood of confusion

• N Rediff Communications Ltd. v. Cybertooth & Another, the Bombay High Court held the domain name 'RADIFF' or some other related name, thus issuing an injunction prohibiting the defendants from using it.

"If both domain names are taken into consideration, internet users are likely to be confused and fooled into thinking that both domain names belong to a single common source and link, whereas the two belong to two separate individuals."

Remedies for passing off action

1. Civil Remedies

2. Criminal remedies

Civil remedies

The court award relief for Passing Off requires, under Section 135 of the Trademarks Act, 1999, a permanent & temporary injunction and either damages or benefit accounts, along with or without any order to deliver the infringing labels and marks for destruction or erasure.

Criminal Remedy

In the case of criminal proceedings for infringement of a registered trademark Section 103 of the Trademarks Act 1999, the crime shall be punished by imprisonment for a period of not less than six months, but of not less than three years, and by a fine of not less than INR 50,000, but of not less than INR 200,000.

Conclusion

By displaying any 'statutory clause' to the contrary, it cannot be disputed. This is so because no legislative requirement can circumvent a 'Constitutional provision' and the former must give way to the latter in case of a dispute if any. When we consider the decision of the Supreme Court in the case of Satyam (supra) in light of the above debate, this settled legal position becomes important. The Supreme Court's numerous landmark rulings have conferred the 'strongest rights' on domain names in the world.

know more about, if you own a trademark you own the right to its domain or not.?, see the video below -

BY -

Saumya Krishnani