Domain Name Disputes in India
Domain Name As Trademarks
A domain name which is unique, capable of identifying itself and distinguishing its goods and services from those of others and acts as a reliable source identifier of concerned goods and services on the internet may be registered as a trademark.
Domain Name Disputes
A domain name dispute would arise when a domain name comparable to a registered trademark is registered by an individual or association who is not the trademark holder. All domain name registrars must follow the ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP).
Protection Of Domain Name In India
In India, domain names may be granted protection as a trademark under the provisions of Trademarks Act, 1999, provided that the domain name fulfils all requirements to be properly registered under the Act.
An appellant in a proceeding must establish the following three elements to succeed:
- The domain name is indistinguishable or confusingly similar to a trademark or service mark in which the appellant has rights;
- The registrant does not have rights or legitimate interests in the domain name;
- The domain name has been registered and is being used in “bad faith”.
Once registered, the registered proprietor of a domain name will have all those legitimate rights and authorities which are commonly availed by the owners of registered trademarks or services marks in India. This also includes the right to sue for infringement or passing off. If the challenge were successful, the domain name will be suspended or all the rights over it would be transferred to the legitimate owner. The owner of the trademark can file a suit at the civil court in order to obtain injunction or compensation.
- In Bigtree Entertainment v Brain Seed Sportainment 2018, the Delhi high court recently denied the plaintiffs, and owners of the website bookmyshow.com, an interim injunction against the defendant’s use of the domain name 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.
- In Titan Indistries Limited V. Prashanth Koorapati And Ors.(1998), the defendant had registered ‘tanishq.com’ as its domain name which was based on the plaintiffs trademarks TANISHQ. The plaintiff objected the use of its Trade Marks as domain name by the defendant. The court issued an ex parte ad-interim injunction restraining defendant from registering a name or operating any business or including the word TANISHQ as a domain name on the internet; that could lead to passing off the business and goods of defendant as those of plaintiff.