Domain Name Disputes in India

Dec 2022

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”.

Legal Remedies

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.

Trending Blogs

Why Is Protection of Geographical Indication or Designation of Origin Essential?

Having knowing regarding geographical indication along with designation of origin is something that is of great need these days. Geographical indication or GI indicates a symbol, name or sign relating to a product that corresponds to a definite geographical origin, product’s features, qualities that are due from the origin. To make a sign work as […]

Early-Stage Intellectual Property to Raise More Money

What is Artificial Intelligence? Creation of innovative ideas is what matters the most in running a business. People were least bothered to patent the designs. But with increasing use of almost similar ideas in the businesses, it is of great importance to patent the ideas. This shall help in better growth of the business and […]

Protection Folklores India Intellectual Property Rights

India is a land of diversity when it comes to folk and ethnic culture with hundreds of ethnic, linguistic and religious groups with diverse origins and lifestyles that, over time, intermingled in part and remained untouched in parts over centuries. Perception about folklore differs in India, mainly associated with tribals and simple rural people, rather […]

Intellectual Property and its Role in the Pharmaceutical Industry

Intellectual property rights are considered to be an important asset of any corporate unit. It is an indication of the creation of mind and the work that makes one entity different from the other. With better IP or intellectual rights, it would be easy to promote the possible innovations and this would be useful in […]

Why Intellectual Property Rights

Intellectual property rights create a situation in which the inventor or the creator enjoys full ownership and rights to commercial exploitation of his creation while everyone else is excluded. The justification is that such a creation, if it has material value, must benefit the creator while preventing others who would otherwise commercially exploit the concept […]

Need for Kashmiri Saffron to get the GI tag

The Kashmiri Saffron has been given geographical indication tag recently from Lieutenant Governor G C Murmu. The acquiring of GI tag is a step ahead in bringing the brand among the list of top ones. The tag has been given for the saffron grown in Kashmir. In this regard, it can be said that the […]

Pharma Companies File 15% of Patents in India

The Indian Pharma industry is primarily known for its Generic Drugs. But recently, to push its value higher in the market, the Indian pharmaceutical industry is investing more in research and development of new drugs along with increasing the potency of the existing ones to move up the value chain. From 2013-2015, out of the […]

Intellectual Property Rights in the Era of Counterfeit Goods

The industry of counterfeited products has taken shape due to the desire of customers to get hands-on high quality item at reasonable rates. They have great satisfaction in this and this is where the counterfeited goods are made available in the market. Different world markets are full of counterfeited products ranging from cosmetics, electronics, footwear, […]

Delhi HC’s Ex Parte Order in Coca-Cola Company & Anr vs Glacier Water Industries Ltd.

This is a case of a Delhi High court ex parte proceeding concerning trademark dilution. The plaintiff filed a suit seeking a permanent injunction, damages and to restrain them from passing off their products as that of the plaintiff. The plaintiff also pleaded the court to restrain the defendants from using the mark ‘KINLEY’ and […]

Breaking News: Toyota Loses Trademark Battle over Prius at Indian Supreme Court

The plaintiff, in this case, is Toyota Jidosha Kabushiki Kaisha and they seek to prevent the defendant, a spare parts supplier by the name M/S Prius Auto Industries Limited, from the usage of the trademarks- “Toyota”, “Innova”, and “Prius”. According to the finding of the court, two of the three trademarks mentioned, namely Toyota and […]