Domain name – A new aspect of intellectual property

Computers use IP addresses for identify devices. IP addresses are usually a series of numbers. However, it is difficult for humans to remember strings of complex numbers. Thus, domain names have been developed and used to identify entities on the Internet. Simply put, a domain name can be thought of as the name of a website. A domain name is the address at which Internet users can access websites and locate a business with which the domain name is associated. For example – sony.com, yahoo.com, wipro.com, dependence.com, etc.

Traditionally, domain names were not considered intellectual property; however, with the advent of digitization and a growing need for cyber protection, it has become necessary to include domain names within the scope of intellectual property law. Many businesses have now protected their domain names as trademarks because the domain names themselves identify the goods or services of the business and often distinguish the business from other competing businesses.

Can domain names be registered and protected as trademarks?

In India, a domain name can be construed as a trademark under Section 2(1)(z) of the Trademarks Act 1999. In this case, Satyam Infoway Ltd. vs. Sifynet Solutions Ltd., the Court ruled that “the The original role of a domain name was probably to provide an address to computers on the Internet. But the Internet has gone from being a mere means of communication to a way of doing business. With the increase in business activity on the Internet, a domain name is also used as a business identifier. Therefore, a domain name as an address must necessarily be particular and unique and when a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical. As more and more commercial enterprises market or advertise their web presence, domain names have become increasingly valuable and the potential for litigation is high.”

In Rajat Agarwal vs. Spartan Online, Calcutta High Court cited the Satyam case and held that a domain name must necessarily be specific and unique to the company, since maintaining an exclusive and distinct identity was essential.

Are trademarks and domain names the same?

Companies can use their trademarks as domain names or as part of their domain names. Once a domain name has been selected, the owner can apply for trademark protection for the distinctive part of the domain name to prevent others from using the name. However, a mark is territorial in nature. It can only be protected in the jurisdictions where it is registered. For example, if a trademark is registered in India and protection is sought in Singapore; it must also be registered in Singapore. While domain names can be registered globally as trademarks or service marks by a single organization which is ICANN [Internet Corporation for Assigned Names and Numbers] as well as national and international protection under the national trademark law directly concerned and the various international trademark treaties of the world.

The Bombay High Court at People Interactive (India) Pvt. Ltd against Vivek Pahwa & Ors, handled a cheating dispute between “shaadi.com” and “secondshaadi.com”. The Court held that the word “shaadi” is a generic term in common use and that the acquisition of a secondary meaning would necessarily imply that the term has transcended its original connotation and that the public associates it exclusively with the trademark owner. Therefore, it is essential that the original meaning of the word has been lost. Since this was not the case here, the Court found in favor of the defendant.

Is the domain name as IP undervalued?

Companies and individuals who do not value their domain names as they do their trademark and patent portfolios run the risk of undervaluing their domain name assets. There are several reasons why it is necessary to enhance domain names, such as increased user traffic, search engine exposure as well as brand preservation. In regards to online marketing and branding in regards to e-commerce, news, advertising, games, etc. A domain name is a valuable IP asset that a company can have. However, for the most effective and rigorous protection of domain names, the harmonization of the trademark laws of each country in the world is necessary.