LEGAL MECHANISM FOR REGULATING DOMAIN NAME AND

TRADEMARK IN CYBERSPACE

C.E.Pratap M.A., M.L., P.G.D.P.M.I.R.

Advocate, High Court of Madras, Chennai.

Introduction
The rapid growth of the internet in recent years and the proliferation of Information
Communication Technologies (ICT) are making a dramatic and profound impact on the way
humans communicate, conduct business, and sell their goods and services. New technologies
have transformed the business world, have generated new commercial models, and have
presented the world economy with new challenges. The business potential encouraged by the
internet and the culture of cyberspace has created a race for registering domain names and a
new market place, a market which companies rightly wish to exploit their trademarks.1 The
potential of the internet in creating an information superhighway has acquired a distinct
commercial viability because of the advent of the domain names. An analysis of legal rules
applicable to domain names and problems related to the protection of domain names in the
digital world identifies interalia the multifarious problems encompassing within it the
techno-legal issues such as cybersquatting, misuse of personal names, reverse domain
hijacking, misuse of meta tags and keywords. This technological gold rush has led to myriad
unfamiliar legal problems in cyberspace. The phenomenal growth of the internet as a
commercial medium has brought about a new set of concerns in the realm of intellectual
property.2 This paper attempts to explore only one of the innumerable novel legal issues of
the internet viz: the legal mechanism for regulating domain naming system and its relation to
trademark law in the digital world.

Domain Name – Concept and Meaning

The businesses worldwide have started to realize the significant potential of web sites
as a primary means of facilitating electronic commerce. Domain names have become the
back bone of internet revolution, which are also user-friendly substitutes for addresses of
computers connected to the internet. The practice of using domain names began as a helpful
way of routing data across the internet. A domain name is an electronic address registered by
1
Andrew D Murray, Internet Domain Names: The Trademark challenge, International Journal of Information
Technology Vol 6, No 3, 9 (1998).
2
Kenneth Sutherlin Dueker, Trademark Law Lost in Cyberspace: Trademark Protection for Internet Addresses, 9
HARV.J.L. & TECH. 483 (1996).

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an individual, business, or organisation. A domain name is an alphanumeric Internet address
obtained by an individual, business or organization that is using the Internet. This address
permits internet service providers to identify, locate and contact specific host computers
worldwide. The rapid expansion of on-line communication and the increasing commercial
use of the internet by business have given rise to a number of legal complexities relating to
the use and protection of domain names. The clash between domain names, trademarks,
trading names and other intellectual property rights has initiated investigations and a test on
existing legal principles.
A domain name is an identification label that defines a realm of administrative
autonomy, authority, or control in the internet. Domain names are also known as hostnames
that identify Internet Protocol (IP) resources such as web sites. Domain names are formed by
the rules and procedures of the Domain Name System (DNS). Domain names represent a
company’s intellectual property in the form of trademarks, either registered as or words and
phrases associated with the company. The domain name is a human friendly version of the
machine readable IP address by which a website is known on the Internet. The domain name
system is the name given to the complex system for registering those mnemonic domain
names.3

Domain name vis-à-vis Intellectual Property Rights

Intellectual Property (IP) is legal property right over creations of the mind, both
artistic and commercial, and the corresponding fields of law. Under intellectual property law,
owners are granted certain exclusive rights to a variety of intangible assets, such as musical,
literary, and artistic works; ideas, discoveries and inventions; and words, phrases, symbols,
and designs. The intellectual property rights provide creators of original works economic
incentive to develop and share ideas through a form of temporary monopoly. Domain Names
were originally conceived and intended to function as an address, but with an increasing
number of cases of registered domain names being illegally occupied through cyber
squatting, it has posed additional problems in how to handle trademark disputes in
cyberspace. Cyber squatting as an offence relates to the registration of a domain name by an
entity that does not have an inherent right or a similar or identical trademark registration in its
favour, with the sole view and intention to sell them to the legitimate user in order to earn
illegal profits.

3
A code, word or phrase that helps the memory to remember easily.

2
 With the advancement of internet communication, the domain name has attained as
much legal sanctity as a trademark or trade name and, therefore, it is entitled to protection. As
it was rightly pointed out “Global computer-based communications cut across territorial
borders, creating a new realm of human activity and undermining the feasibility and
legitimacy of applying laws based on geographic boundaries. While these electronic
communications play havoc with geographic boundaries, a new boundary, made up of the
screens and passwords that separate the virtual world from the ‘real world’ of atoms,
emerges. This new boundary defines a distinct Cyberspace that needs and can create new law
and legal institutions of its own.”4

Comparison between Domain Name and Trademark

The current process of domain name regulation creates an environment that is
conducive to conflict with trademarks and other business names. Existing legislation and the
common law do not always offer solutions to disputes involving domain names. Trademarks
have always had a prominent place in the history of intellectual property rights. A trademark
serves a variety of functions ranging from advertising to guaranteeing quality. The concept of
domain name in cyberspace can be equated to that of a trademark in the virtual world which
is a distinct mark representing the company’s goodwill and identity. As cyber law develops
around the world, there is a growing realization among different nation states that their laws
must be harmonized and international best practices and principles must guide
implementation.
Domain names no longer act only as a means of locating particular computers, they
have become valuable assets rapidly making their way into “real space”5, cropping up on
television commercials, billboards, magazines advertisements, and even the sides of buses.6
As such, there is a real possibility of conflict with business identifiers such as trademarks that
exist in “real space”. Legislation was slow to catch up with these developments and this has
resulted in a number of conflicts between domain names, trademarks and business names.
A trademark represents a significant amount of goodwill in the form of consumer
recognition for a successful business. Trademarks are therefore valuable assets that need
protection. The clash between domain names, trademarks, trading names and other
intellectual property rights has put existing legal principles to the test. The most common
4
Johnson & Post “Law and Borders -The Rise of Law in Cyberspace” 48 Stanford Law Review 1367 [1996].
5
Kilian “Cybersquatting and Trademark Infringement” MUEJL 7 (3) Sep [2000].
6
“Domain names and Trademarks” Berkman Center for Internet & Society available at
http://cyber.law.harvard.edu/property/domain/main.html last visited on 2012/09/08.

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issues that may arise with reference to domain names in relation to trademark can be
classified as follows:
(i) Whether trademark laws and common law principles are applicable to domain names and
whether a domain name can function as a trademark?
(ii) Whether the registration of company names and businesses as domain names to prevent
registration by these legitimate companies or business amount to infringement?
(iii) Whether the registration of famous persons’ (celebrities’) names as domain names for
personal gain by unscrupulous people, result in domain name misuse?
(iv) Does the registration of variations of famous trademarks or geographical names
registered subjected to the same conditions mentioned above amount to abuse of domain
names?
(v) Is the use of well-known trademarks and trading names as meta tags often used as
pointers to undesirable websites infringement?
(vi) The use of a well-known trademark, trading name and famous person name as keywords
to attract traffic to an unrelated domain name an infringement?
(vii) Whether the use an unrelated trademark, trade name or famous name in the Uniform
Resource Locater amount to misuse of domain names?
(viii) Whether domain names have monetary value and should therefore be regarded as
property?

Protection of Domain Names in Cyberspace: Techno-Legal Issues

The protection of intellectual property on the internet remains a grey area, with the
Information Technology Act, 2000, not addressing the issue of trademarks on the internet. A
domain name comprises groups of alphanumeric characters supported by dots. A first group
commonly comprises the name of the enterprise or a brand name or trading name associated
with it, followed by a top level name identifying the nature and sometimes the location of the
organization. There is no central authority regulating the internet, which is almost entirely
governed by convention.7 But registration services in respect of domain names are provided
by a number of organisations such as Internet Corporation for Assigned Names and Numbers
(ICANN).
The constant increase in the use of internet for commercial purposes has greatly
increased the level of cyber crimes and other internet related offences. Thus, the legal
protection of such domain names is a serious issue which must be dealt with. In order to do
7
Rodney D.Ryder, “Guide to Cyber Laws”, (Wadhwa, Nagpur, 3rd Edn, 2007) p.250.

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so, the Internet Corporation for Assigned Names and Numbers (ICANN), a domain name
regulatory authority, adopted a Uniform Domain Name Dispute Resolution Policy (UDRP),
which is incorporated into the Registration Agreement, and sets forth the terms and
conditions in connection with a dispute between the registrant and any party other than the
registrar over the registration and use of an Internet domain name registered. Upon entering
into the Core Registration Agreement with ICANN while registering a domain name, one
agrees to submit to proceedings commenced under ICANN’s Uniform Domain Name Dispute
Resolution Policy.
Litigation in the cyber era revolves around domain names, cyber squatting, blurring of
trademarks, meta tags etc. The problem arise when a company wants to register its company
name or well-known trademark as a domain name on the internet only to discover that the
name has already been taken. Although two different companies may own the same
trademark for different goods or services no two companies may own the same domain name.
However a domain name registrant does not obtain any legal right to use that particular
domain name simply because he has registered the domain name, he could still be liable for
trademark infringement.
One of the most significant cases in this regard has been the Yahoo Case8 where the
internet search engine Yahoo! Inc. sued an internet pirate who had not only copied the
domain name Yahooindia.com but has used Yahooindia as a trademark in a similar script on
its web site and by offering directory services with information specific to India, was passing
itself off as an extension to Yahoo. The defendant had further copied the contents of the
plaintiff’s web page and consequently the HTML code associated with the said page. The
Delhi High Court granted an injunction restraining him from using Yahoo either as a part of
his domain name or as a trademark or from copying any of the contents of the plaintiff’s
website and thereby infringing Yahoo’s copyrights. Specifically the court held that trademark
law applies with equal force on the internet as it does in the physical world. Moreover, on
account of the ease of copying, anonymity, ease of access from any corner of the world, the
internet was a medium in which the courts should take a strict view of copying. The
potentiality of the harm was far greater because a wrong could be easily propagated to every
corner of the world. The principles of trademark law apply on the internet but a different and
a stricter standard had been laid down by the court.

8
Yahoo! Inc. v. Akash Arora & Anr. (1999 PTC 201).

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 In the United Kingdom, a British Court ruled in the case of Marks and Spencer and
Others v. One in a Million9 that where the value of the domain name consists solely of its
resemblance to the trademark of another, the Court can assume likelihood of confusion, and
thus find unfair competition. The Court found that the registrant of many domain names
similar to famous marks had committed a deliberate practice with clear intent to deceive
people as the registrant had no legitimate use for the domain names.
More specifically, in the Indian context the courts have been extremely internet savvy.
Most cases which rule in favour of the trademark owner find that the domain registrant has
acted without intent to make use of the domain name as intended by the domain registration
system. The absence of such intent is generally called ‘bad faith’, although many courts
simply note the objective facts, such as that a domain registrant owns a inventory of domain
names which closely resemble famous marks and which are not being used for any commerce
other than the potential sale of the domain name to the trademark owner. There have been a
number of cases filed before the WIPO, in which the complainant’s have been well known
Indian corporations and media houses. So far all the cases have been decided in favour of the
complainant. The domain names involved were “mahindra.com”10, “tridenthotels.com”11,
“theeconomictimes.com”, “timesofindia.com”12 and “tata.org”13
The rapid growth of the Internet and the use of web sites have generated a growing set
of disputes between firms asserting traditional trademark entitlements and the registrants of
identical or confusingly similar domain names. The trademark owner may demand that the
domain-name registrant cease using the name and or relinquish it to the trademark owner.
Disputes of this sort have been progressing through the litigation system since 1994. These
clashes are challenging the law and the Internet community to develop new procedures and
legal rules that adequately address the equities involved.

Cybersquatting in Digital World: A Web of Deception

The first case in India with regard to cybersquatting was Yahoo Inc. v. Aakash Arora
& Anr.14, where the defendant launched a website nearly identical to the plaintiff’s renowned
website and also provided similar services. Here the court ruled in favour of trademark rights

9
(High Court of Justice, Chancery Div. 11/28/1997, 1998 FSR 265), also British Telecommunications v. One in
a Million, Court of Appeal, Civil Div. 98/0092-95B.
10
Mahindra and Mahindra Limited v. Neoplanet Solutions, Case No. D2000-0248.
11
Oberoi Hotels Pvt. Ltd v. Arun Jose Case No. D 2000-0263.
12
Benett Coleman and Company Limited v. Steven S.Lalwani Case No. D2000-0014.
13
Tata Sons Ltd v. The Advanced Information Technology Association, Case No. D2000-0049.
14
1999 PTC 201.

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of U.S. based Yahoo. Inc (the Plaintiff) and against the defendant, that had registered itself as
YahooIndia.com. The Court observed, “it was an effort to trade on the fame of yahoo’s
trademark. A domain name registrant does not obtain any legal right to use that particular
domain name simply because he has registered the domain name, he could still be liable for
trademark infringement.”
The Bombay High Court in Rediff Communication v. Cyberbooth & Anr15 observed
that the value and importance of a domain name is like a corporate asset of a company. In this
case the defendant had registered a domain name radiff.com which was similar to rediff.com.
The court gave a decision in favour of the plaintiff.
In another famous case of Tata Sons Ltd v. Monu Kasuri & others16 the defendant
registered a number of domain names bearing the name Tata. It was held by the court that
domain names are not only addresses but trademarks of companies and that they are equally
important.
In this large and tangled web of the internet called “cyberspace” the most common
way for consumers to find what they are looking for is to type in a domain name containing
the name of the brand or company they are looking for. With the emergence of the internet as
an advertising forum, recruiting mechanism, and marketplace for products and services,
companies doing business online have a strong desire to acquire domain names that are easy
to remember and that relate to their products, trade names or trademarks. This kind of
identification is essential to any business, both to conduct commerce on the internet and to
advertise and educate the public about the company’s products. It serves to reassure the
consuming public that they are communicating with the intended source of goods and that
they can make their purchases with the confidence that they are obtaining the genuine goods
they are seeking from a known and reliable source. Electronic commerce over the internet is
conducted in the absence of physical contact, without personal interaction or the ability to
inspect the goods achieved through the use of trademarks and domain names as business
identifiers has attained a means of transaction.
The natural connection between trademarks and domain names has been explained by
some who have registered the trademarks of others as domain names and then tried to sell
those domain names back to the trademark owners or third parties at a high profit. It is known
as “Cybersquatting” in English, it describes someone sitting on the property of another. 17 The

15
AIR 2000 Bom. 27.
16
2001 PTC 432.
17
Rodney D.Ryder, “Guide to Cyber Laws”, (Wadhwa, Nagpur, 3rd Edn, 2007) p.242.

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importance of the role played by domain names in establishing online identity, is highlighted
by the practice of cyber squatting, the abusive practice whereby one entity registers a domain
name that includes the name or trademark of another, often famous or well known, in order to
either block the legitimate user some registering its most intuitive domain name or in hope of
selling the names for profit on the market. The practice of cyber squatting has resulted in
litigation in various fora.
In the race to register company names and well-known trademarks as domain names
on the internet, one of the most litigated areas involves the notorious cybersquatters.
Cybersquatters are individuals who reserve internet domain names that are identical or
confusingly similar to a company’s name or well known trademark with the intent of
extorting money from the company for the domain name or preventing the company’s use of
the trademark as a domain name. In the leading case of Panavision Int v. Toeppen,18
involving a cybersquatter the corporation which owned a federal trademark registration for
PANAVISION, sued Toeppen for trademark infringement and dilution under the Federal
Trademark Dilution Act of 1995. The Court affirmed the lower court’s ruling in favour of
Panavision on the basis that Toeppen’s registration of the domain name diluted Panavision’s
mark in violation of the Federal Trademark Dilution Act.
In Satyam Infoway Ltd. v. Sifynet Solutions19, the Respondent had registered domain
names www.siffynet.com and www.siffynet.net which were similar to the Plaintiff’s domain
name www.sifynet.com. Satyam (Plaintiff) had an image in the market and had registered the
name Sifynet and various other names with ICANN and WIPO. The word Sify was first
coined by the plaintiff using elements from its corporate name Satyam Infoway and had a
very wide reputation and goodwill in the market. The Supreme Court held that “domain
names are business identifiers, serving to identify and distinguish the business itself or its
goods and services and to specify its corresponding online location.” The court also observed
that domain name has all the characteristics of a trademark and an action of Passing off can
be found where domain names are involved. The decision was in favour of the plaintiff.
In 2009, Internet software company Google Inc. won a cyber squatting case against an
Indian teenager who had registered a domain name googblog.com. The domain name, Google
contended, was confusingly similar to its trademark. Experts felt that complaints regarding
cyber squatting were on the rise and organizations such as the World Intellectual Property
Organization (WIPO) were being approached by trademark holders to resolve such disputes.

18
(945 F.Supp.1296) (CD Cal 1996) (9th Cir 1998).
19
2004 (6) SCC 145.

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On May 15, 2009, the World Intellectual Property Organization (WIPO) ordered an Indian
teenager, Herit Shah (Shah), who had been using the domain name 'googblog.com', to
transfer the rights of the domain to Google Inc. (Google).20
In countries like India, where there was an absence of relevant cyber laws to prevent
this practice, such cases were decided within the ambit of trademark laws. Passing off action
is where the defendant is restrained from using the name of the complainant to pass off the
goods or services to the public as that of the complainant. It is an action to preserve the
goodwill of the complainant and also to safeguard the public. In India cybersquatting cases
are decided through the principle of Passing off. India does not have a law for prohibition of
cybersquatting. Therefore, courts interpret the principle of Passing off with regard to domain
names.

Dilution of a famous Trademark

A form of dilution of a famous trademark can occur through blurring, which a
company’s famous mark is used by another to blur the source of origin of the mark. In an
internet case involving blurring, Teletech Customer Care Management v. Tele-Tech Co.21,
Teletech a provider of telephone and internet customer services owned a federal service mark
registration for TELTECH and sought to stop Tele-Tech from using the domain name
‘teletech.com’. The court found that the TELETECH mark was being blurred by the use of
the ‘teletech.com’ domain name and ordered that Tele-Tech henceforth and immediately
cease its improper and illegal use.
Another form of dilution of a famous mark can occur through tarnishment in which a
company’s famous mark is used by another to tarnish or degrade the positive associations of
the mark. In the case of Toys ‘R’ Us Inc v. Akkaoui22 the court found that Akkaoui’s use of
the domain ‘adultsrus.com’ and the term Adults ‘R’ Us, as an internet site selling adult toys
and clothing tarnished the plaintiff’s famous trademarks ‘TOYS ‘R’ US’ and ‘KIDS ‘R’ US’
for children’s toys and clothing. The court ordered Akkaoui to cease using the domain name
‘adultsrus.com’ and term Adults ‘R’ Us in any manner and ordered cancellation of the
domain name registration.
These are the most famous domain name litigations in which the courts have ordered
in favour of the plaintiffs.

20
Google Inc.v.Herit Shah, Case No. D2009-0405.
21
(977 F.Supp. 1407) (CD Cal 1997).
22
(40 ISPQ 2D 1836) (ND Cal 1996).

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Use of Meta-tags and Hyperlinks – Way for Trademark Dispute
Hyper-links or electronic pointers that connect websites may create trademark
problems demonstrated by Alta Vista Corp. v. Digital Equipment Corp 23 where the plaintiff,
a literary agent, sued the internet search Alta Vista for having created a hyperlink with
amazon.com who were in the book selling business and having, therefore, come close to its
line of business. In facts of the case, the court felt that Digital Equipments hyperlink with
amazon.com could not be taken as an extension of their search engine business and the
injunction was declined. In Tata Sons Limited v. Bodacious Tatas & ors.24 hyperlinks to
pornographic sites have been objected to on the basis that they would tarnish the image of the
plaintiff.
Another area involving trademark disputes on the internet is the use of another’s
trademark as a hidden code word or meta tag on the website. A meta tag is visible to search
engines and web browsers to index relevant web sites. A company’s name or well-known
trademark may be improperly used as a meta tag to divert an internet user to promote a
website, thereby dividing the viewer’s attention to their site. In an internet case involving
meta tags, Playboy Enterprises Inc. v. Calvin Designer Label25, Playboy owned the federally
registered trademarks for PLAYBOY and PLAYMATE and Calvin Designer used these
marks as part of the domain names ‘playboyxxx.com’ and ‘playmatelive.com’, directly on
their web pages as meta tags on their web pages. Playboy sued for trademark infringement,
dilution and unfair competition and the court ordered Calvin Designer to cease all use of the
infringing domain names, as well as all use of Playboy’s trademarks in meta tags on their
web pages.

Resolving Domain Name Disputes

Domain name dispute may be resolved in one of the following ways:

A. Court Proceedings or Litigation

Generally, courts all over the world have applied Trademark Laws in order to resolve
domain name disputes. Normally the following factors are taken in account by the courts in
case of an infringement and/or passing off action with respect to domain name dispute viz:
Whether the domain name in dispute is:-

23
3 ECLR (BNA) 1309
24
Unreported ex parte interim injunction order dated 8th September 1999 [Suit No.1991/99 in the Delhi High
Court].
25
(985 F. Supp. 1220) (N.D. Cal 1997)

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i. Identical or deceptively similar with the already registered trademark;
ii. Identical or deceptively similar to a mark that has acquired reputation in the market;
iii. Deceptively similar to already existing domain name;
iv. Adopted in a bad faith;
v. Causing confusion or likely to cause confusion in the mind of general public with respect
to real owner;
vi. Causing damage or likely to cause damage in terms of business and goodwill. 
B. Administrative Proceeding
Uniform Domain Name Dispute Resolution Policy commonly known as UDRP
provides the trademark owners an effective mechanism for resolving the disputes arising out
of domain name registered and use in bad faith. UDRP is an international body, formed based
on the recommendation of World Intellectual Property Organization (WIPO) that provides for
resolving domain name dispute regardless of where the registrar, the domain name registrant
or complaining trademark owner is located. Under UDRP trademark owner may submit
dispute arising from alleged abusive registration of domain name by way of filing a
complaint with the approved dispute resolution service provider requesting the resolution of
domain name dispute. In UDRP proceeding with respect to domain name dispute,
complainant has to ensure the presence of all the three below mentioned elements:
(i) That the impugned Domain name is identical or confusingly similar to his
trademark or service mark in which he has rights;
(ii) That the claimant of impugned domain name has no rights or legitimate interests
in it; and
(iii) That the impugned domain name has been registered and is being used in bad
faith.
Conclusion
When domain names began to conflict with trademark it gave birth to a new piquant
situation. Thus the global community called upon to resolve the dispute in an amicable
manner. The Internet Corporation for Assigned Names and Numbers (ICANN) was formed to
administer the domain name system. There is no clear provision for handling of domain name
issues in Information Technology Act, 2000. They are presently covered by legal norms
applicable to intellectual properties such as trademarks. However improvements needed
remain that the Act needs amendment for handling domain name issues and related concerns
such as cyber squatting. This is a rapidly changing area of law, and additional remedies may
become available in the near future.
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