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

Music Law 101: What Does Copyright Law Protect?

Music Law 101 is all about protecting different musical works along with sound recordings to its original creator. As copyright can be a confusing part, it is better to know what all it protects so that it becomes easy. It is known that each piece of recording has two types of copyrights. First, it protects […]

3D Printing and IPR

The three-dimensional or 3D printing service is different from the traditional way of manufacturing. In the 3D process, objects are created layer wise to get the desired three dimensional impacts. Since the inception of this latest idea in 1980s, it has gone through several changes in the technology used. This requires use of different production […]

Artificial Intelligence and Intellectual Property Law

What is Artificial Intelligence? The division of Science which deals with making machines equipped with human-like intelligence to act in human-like fashion and the exhibit human capabilities is known as Artificial Intelligence (AI). Multiple disciplines like Computer Science, Psychology, Philosophy, Sociology, Mathematics, Biology and Neuron Science contribute to the development of AI. Benefits Of AI […]

Alibaba IPR Report Shows Ideal Brand Protection Program

As per sources, e-commerce giant, Alibaba group has successfully gained success using intellectual property rights-protection. The giant has been able to offer quality service due to well integration of the latest technological improvements coupled with partnerships with top-rated brands. Also, external stakeholders assisted the giant in offering quality service to proactively monitor, go through rights-holders […]

Patents – An Important Tool for Pharmaceutical Industry

For suitable protection of medical inventions, patents are the perfect option. This would also safeguard medical discoveries that are research-based and it is done by most of the pharmaceutical companies. In return for the protection offered by the patent, it can disclose the research used in coming up with the medical innovation in the pharmaceutical […]

These days, there is an increased use of smartphones, computers and tablets and multimedia has shown its great influence in our lives. In the digital world, there are several works used by us. Have you thought whose work are we using? Well, none of us have tried to find out the owner of the work […]

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, […]

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 […]

Liability Of Internet Service Providers In Digital Environment

Isp Liability In India: Internet Service Providers (ISPs) can be liable for the content on the sites they host. They can be liable even if they were merely passively hosting the site, unless they take down the objectionable material when they receive notice of it. The Copyright Act and the Information Technology Act includes the […]

An Overview of Copyright

WIPO defines copyright as the right of creators to ownership of their creations and to make use for commercial or other purposes. Copyright today covers literary creations, printed material, computer programs, data, audiovisual media, dance, paintings and drawings, photographs, sculpture, architecture, ad material, technical drawings and others that are the outcome of intellectual effort. From […]