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Computers use IP addresses to identify devices. IP addresses are generally a series of numbers. However, it is difficult for humans to remember complex strings of numbers. Hence, domain names were developed and used to identify entities on the Internet. In simple words, a domain name can be said to be the name of a website. A domain name is the address where Internet users can access websites and locate a business with which the domain name is associated. For example - sony.com, yahoo.com, wipro.com, reliance.com, and the like.
Traditionally, domain names were not considered within the ambit of Intellectual Property; however, with the advent of digitization and an increasing need for cyber protection, there arose a need for the inclusion of domain names within the scope of IP 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 Trademark Act, 1999. In the case, Satyam Infoway Ltd. v. Sifynet Solutions Ltd., the Court held that, “The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet has developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the internet, a domain name is also used as a business identifier. Consequently, a domain name as an address must, of necessity, be peculiar and unique and where 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 trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high."
In Rajat Agarwal v. Spartan Online, the Calcutta High Court cited the Satyam case and held that, a domain name must necessarily be peculiar and unique to the business, because maintaining an exclusive and distinct identity was critical.
Are Trademarks and Domain names the same?
Businesses may use their registered trademarks as domain names or as part of their domain names. Once a domain name has been selected, the owner can apply to obtain trademark protection for the distinctive part of the domain name in order to prevent others from using the name. However, a trademark is territorial in nature. It can only be protected only in those jurisdictions where it is registered. For example, if a trademark is registered in India and protection is sought in Singapore; it must be registered in Singapore as well. Whereas, domain names can be globally registered as trademarks or service marks by only one organization which is ICANN [Internet Corporation for Assigned Names and Numbers] along with the national and international protection under the directly concerned national Trademark Law and diverse International Trademark Treaties of the world.
The Bombay High Court in People Interactive (India) Pvt. Ltd. v Vivek Pahwa & Ors, dealt with a passing off dispute between “shaadi.com” and “secondshaadi.com”. The Court held that the word “shaadi” is generic and a commonly used term and that acquiring a secondary meaning would necessarily imply that the term had transcended its original connotation and the public associate it exclusively with the holder of the mark. Hence, it is essential that the primary meaning of the word must have been lost. Since, that was not the case in the matter, the Court ruled in favour of the defendant.
Is Domain name as an IP undervalued?
Companies and individuals that do not value their domain names as they do their trademark and patent portfolios run the danger of undervaluing their domain name assets. There are several reasons why it is necessary to value domain names, such as increase in user traffic, search engine exposure as well as preservation of the brand. When it comes to online marketing and branding with respect to online commerce, news, advertising, gaming and the like. A domain name is a valuable IP asset a company can have. However, for the most efficient, and rigorous protection of domain names, harmonization of the trademark laws of individual countries worldwide, is necessary.


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