Domain Name: Indian ASP Ect And Dispute Resolution Procedure – Intellectual Property – India – Mondaq News Alerts

December 23, 2021
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Domain name is defined by Merriam-Webster as a sequence of usually alphanumeric characters that specifies a group of online resources (as of a particular company or person) and that forms part of the corresponding Internet addresses.
The Domain Name System (DNS) helps you find your way around the Internet. Feature of DNS names is their hierarchical structure. This is reflected in the anatomy of the domain name 1.
For example, the domain name “whois.icann.org” has three levels of hierarchy: “org” is the top-level, “icann” is the second-level, and “whois” is the third-level.
As seen by users, each level of the hierarchy is separated by a dot. At each dot, management authority, that is, the ability to create, edit, or remove names within that level or below, can be assigned or delegated to another party. Continuing to use “whois.icann.org” as an example:
So, when you register a domain name, you are creating a new realm in the DNS and giving that realm a name, which is the domain name that you registered.
As the trademark is for offline business dealings and transactions same is the domain name for online. Trademark is for the product of the company and the domain name is for the company on the internet and the virtual image of the business.
Benefits offered to the registered trademark and domain name :
For registering of the domain name as trademark the domain name should be unique and can be distinguished from the other company goods and services over internet.
The domain name should be unambiguous and different from all the well known name on the internet so that the same is not misleading, confusing and also should not be against the morality or public order.
If the domain name is found to be similar ,misleading and not unique  then such will be infringement of domain name trademark.
FACTS: Satyam Infoway Ltd, a leading IT service company, incorporated in 1995 for doing business of software development, software solution and connected activities, registered several domain names like 'http://www.sifynet', 'www.sifymall.com', 'www.sifyrealestate.com' in June 1999  with ICANN and WIPO by coining the word 'Sify' by using elements of its corporate name  Satyam Infoway and therefore claimed wide reputation and goodwill in the name.
SIFY- Siffynet Solutions Pvt Ltd began doing business of network marketing in 2001 under the domain names, 'www.siffynet.net' and 'www.siffynet.com', having also registered its domain names with ICANN.
DISTRICT COURT- After becoming aware of Siffynet's use of the name SIFFY, Satyam Infoway filed a suit before the City Civil Court Judge and obtained temporary injunction on the ground that it was the original user of the SIFY trademark.
HIGH COURT– the appeal from the district court's order, the High Court of Karnataka reversed the district court's order, saying that merely because Satyam Infoway was incorporated first and had earned goodwill in respect of domain name 'Sify', no order can be granted in its favour without considering where the balance of convenience lies. The High Court also found that there was no similarity between the two businesses, and hence there was no question of customers getting confused or misled. Satyam Infoway filed an appeal to the Supreme Court.
SUPREME COURT– The Supreme Court held that while the original role of a domain name was to provide an electronic address for businesses on the Internet, the Internet has developed from a mere means of communication to a mode of carrying on commercial activity, and acts as a business identifier. Thus, a domain name could qualify as services and be entitled to protection under section 2(z) of the Trade Marks Act. Furthermore, on the issue of passing off, the Supreme Court found that use of a similar domain name even for different services could result in confusing the consumers. The user may mistakenly access one domain name instead of another.
The Supreme Court allowed the appeal and confirmed the injunction order earlier granted by the district court.
The only one organization that protects domain name as trademark or services is  ICANN ( Internet Corporation for Assigned Names and Numbers).
In India the domain name can be grated protection under the provisions of Trademark Act 1999 and the registration is granted only when the domain name fulfill all requirements to be properly registered under the Act. Once the domain name is registered as trademark it will be having all the rights which are owned by the owners of the registered trademark or services.
Facts: The Plaintiff operates a popular online ticketing platform known as bookmyshow. It has also secured registration in BOOKMYSHOW word marks and logos. The Defendant operates www.bookmysports.com, an online platform used for booking sporting venues and other sporting facilities. The suit was filed claiming infringement and passing off of the Plaintiff's mark by the Defendant and asking for a permanent injunction restraining the same.
Held: The Hon'ble  court denied the Plaintiffs, interim injunction against the Defendant's use of the domain bookmysports.com.
The court, considering that prefix BOOKMY of the Plaintiff's trademark BOOKMYSHOW was descriptive, not an arbitrary coupling of words and the Plaintiff's failure to prove that “BOOKMY” has acquired distinctiveness or secondary meaning, dismissed the application for interim injunction filed by the Plaintiffs.
Therefore, the domain name place a vital role for specially those business which are only online as the domain name serves as an important element in trade and any commercial activities. Hence it is essential to protect the domain name
Facts: Complainant no. 1 is a registered proprietor and user of the trademark  “Cars 24” and domain name “Cars24.com” and the complainant is using the same domain name in various countries  . That the Complainant has been openly continuously and expensively using the mark “Cars24” as its trade name, corporate name, business name, trading style , trademark worldwide since its incorporation. That the complainant came to know in June 2017 that consumer are misguided and calling on the domain of the Respondent instead of calling on the contact number of Complainant no. 2.
That the Respondent said that they have registered their domain name “Cars24.in” on 3rd January 2007 and the Respondent also said that they are registered on register of company since January 20th 2006 and deals in IT solutions since its inceptions. In 2007 they entered into the business of second hand cars.
In the year 2001 the domain name of the complainant was put on sale and the complainant was not doing any business of sale, resale of second hand cars and that the said domain name “Cars24.com” was also on sale on 2003, 2004 and 2005. In the year 2007 till 2014 the complainant was in the business of digital camera and other things.
Further the Respondent is in the business of sale and purchase of second hand cars since 2007 and the complainant started their business of the same in the year 2014.
Held: The Hon'ble court said that the complainant was conducting business activities in India since 12.08.2015 under the domain name “Cars24.com” thought there domain name was registered in 2001 but there was no actual use of the domain name till 2005 and from 2007 to 2014 they were merely posting Ads of digital camera and not operating any legitimate website on it. On the other hand the court found from the website www.archive.org that the disputed domain name of the Respondent was continuously in operation w.e.f 2007.
The court said even though the complainant is a registered proprietor of the trademark “Cars24.com” since 2016 and using the same since 2015, it cannot prevent the respondent from using the disputed domain name which the respondent is using since 2007. Further as per the provision of section 34 of Trademark Act 1999, “proprietor of a trade mark does not have the right to prevent the use by another party of an identical or similar mark where that user commenced prior to the user or date of registration of the proprietor”
Therefore it was held that though the domain name of the Respondent is similar or identical to the registered trademark of the Complainant, it does not preclude the Respondent from using the same and that for the reason tribunal finds that the disputed domain name has not been registered and used in bad faith by Respondent under the policy.
Domain name which are registered under .IN DOMAIN NAME DISPUTE RESOLUTION POLICY (INDRP) can be recovered. Certain procedure and rules need to be followed for the same. The Rules and procedure are mentioned under INDRP.
Any person who thinks that someone else's domain name is in conflict with his Intellectual property rights and that the other person has taken that domain name in bad faith then that person can file complaint under INDRP as per the rules and guidelines.
Nation Internet Exchange of India (NIXI) facilitates a ground for exchange of domestic Internet traffic. The .IN registry is a part of NIXI and maintains the .in domain name in India. 
INDRP have Rules and Procedure which needs to be followed and Once NIXI has received your request, and your filing fee, it will assign an arbitrator and you will receive additional communications.
Anyone can file. Copies to be send:
 IN Registry
c/o NIXI (National Internet eXchange of India)
Regd. Off.: 6C,6D,6E Hansalaya Building
15, Barakhamba Road, New Delhi-110001 India
Tel.: +91-11-48202011,
Tel. : +91-11-48202000,
Fax: +91-11-48202013
E-Mail: registry@nixi.in
Or any other address that may be published on the Registry? website from time to time.
Three copies of  the complaint along with annexure should be send and same should be send by mail.
The complaint should incorporate the following details:
 **w.e.f. July 01, 2017 – 18% (GST)
Footnotes
1  https://www.icann.org/resources/pages/about-domain-names-2018-08-30-en
2 (2004) 6 SCC 145
3 CS(COMM) 327/2016
Originally published June 1, 2020.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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