As per Blacklaw’s dictionary Domain Name refers to the words and characters that website owners designate for their registered internet addresses. The Internet Corporation for Assigned Names and Numbers (ICANN) manages the internet’s global domain name system. A domain name consists of a two-level hierarchy. The top-level domain name include .com, .net. org etc. This will indicate the nature of the enterprise. In addition to it, each country has been given unique domain names. For example .in indicate India, .ca indicates Canada etc. The second level domain name represents the tradename/ trademark of the business/ entity /organization etc. For example, in google.com, Google represents the second level domain name. Generally, a dispute over domain name arises in relation to the second level domain. Two identical second-level domain names cannot co-exist under the same top-level domain name.
In order to register a domain name, one has to register it with ICAAN through a Registrar. These Registrars are accredited by ICAAN. For example, GoDaddy is one such Registrar. The Registrars allocate the domain name on first come first serve basis to the applicant. Therefore, there are chances of parties getting a domain name registered without the bonafide or legitimate intention of using it.
Domain Name Dispute
Domain names play a vital role in business as it has been used by the common public to identify the business. A dispute in relation to the domain name arises when any party registers an earlier trademark as their domain name. It is necessary that the trademark of the complainant must be identical or confusingly similar to the second level domain of the disputed domain name. This requirement rules out complaints raised by an owner of the unregistered trademark. Domain names can also be registered and protected as trademarks at the national and international level, however the same has to satisfy the criteria as required for a valid trademark.
Dispute Resolution Policy
In the case of domain name disputes, all the registrars must follow Uniform Domain Name Dispute Resolution Policy (UDRP), this will deal with the dispute arising out of any domain name. A holder of a registered trademark may initiate a complaint with the UDRP. The rules of procedure will govern how to initiate and conduct the proceeding under the UDRP.
In India, the Indian Dispute Resolution Policy (INDRP) deals with domain names registered in .in Internet registry. The disputes involving registration of .in domain name are resolved as per INDRP Rules. INDRP Rules of Procedures approved by National Internet Exchange of India (NIXI), which is a non-profit company to facilitate the exchange of domestic internet traffic, mandates that the disputes relating to domain names registered with NIXI accredited registrar shall mandatorily adopt arbitration proceeding in accordance with Arbitration and Conciliation Act, 1996. By registering the disputed domain with the NIXI accredited registrar, the owner of the domain name has agreed to the resolution of the domain name disputes pursuant to the INDRP and Rules framed thereunder. The procedures under these dispute resolutions policies are administrative proceedings.
In order to successfully challenge domain name, the owner of the trademark must prove that the domain name registrant has used the identical or confusingly similar trademark of the complainant. Secondly, the complainant must prove that the registrant of the domain name has no legitimate interest in the domain and the same has been registered in bad faith.
In order to overcome a complaint on the domain name, the registrant must prove that the owner of the domain name is using the domain name in connection to any goods or service; or if the owner of the domain name or his goods and services have been commonly identified with the second level domain name; or if he is using the domain name for fair and non-commercial use with a bonafide intention.
In case if the challenge were successful the domain name will be suspended or all the rights over it would be transferred to the legitimate owner. In order to obtain injunction or compensation, the owner of the trademark can file a suit at the civil court.
Due to the expansion of business over the internet, it has become extremely important to safeguard the trademark of a business on the internet. Domain name disputes have evolved more like internet trademark infringement. However, it has become easier to identify trademark infringement over the internet for the proprietors of the trademark rather than identifying physical infringement as the website can be accessed across the globe. The arbitral tribunal or the court has favored the owner of the trademark in its majority of the decisions.
The Ministry of Corporate Affairs has recently notified that it would be conducting Know Your Customer (KYC) verification for all the Directors of all companies by linking it to a mobile number and email address so as to verify the identity of each Director. The notification is as follows:
“As part of updating its registry or rather tightening the noose, Ministry of Corporate Affairs would be conducting Know Your Customer (KYC) of all Directors of all companies annually through a new e-form viz. DIR-3 KYC (to be notified and deployed shortly).
Accordingly, every Director who has been allotted Director Identification Number (DIN) on or before 31st March 2018 and whose DIN is in ‘Approved’ status would be mandatorily required to file form DIR-3 KYC on or before 31st August 2018.
While filing the form, the Unique Personal Mobile Number and Personal Email ID would have to be mandatorily indicated and would be duly verified by One Time Password (OTP).
The DIR-3 KYC form should be filed by every Director using his own DSC and should be duly certified by a practicing professional (CA/CS/CMA). Filing of DIR-3 KYC would be mandatory for Disqualified Directors also.
Effect of Non – Compliance: After expiry of the due date by which the KYC form is to be filed, the MCA21 system will mark all approved DINs (allotted on or before 31st March 2018) against which DIR-3 KYC form has not been filed as ‘DEACTIVATED’ with reason as ‘Non-filing of DIR-3 KYC’.
After the due date, the filing of DIR-3 KYC in respect of such deactivated DINs shall be allowed only upon the payment of a specified fee only, without prejudice to any other action that may be taken.
New digital signatures shall be obtained if existing digital signature has already expired.
In case of obtaining fresh digital signatures: For the resident directors, self-attestation of the identity and address proof is sufficient. However for the Non-resident foreign directors, the attestation requirements (Both Apostille and Notary on the digital signature application, identity & address proofs) shall be complied with. ”
This is a welcome step from the Ministry of Corporate Affairs towards its efforts to systematically weed out fake companies and Directors.
A trademark/service mark, is a word, name, symbol or device that is used in trade in respect of goods/services to indicate the source of the goods/services and to differentiate them from the goods/services of others. With the development of knowledge and information technology era, intellectual capital has achieved substantial importance. As a result, Intellectual Property (IP) and rights attached to it have become precious commodities and are being protected. There are well-established statutory, administrative, and judicial frameworks for protecting Intellectual Property Rights (IPRs) in India. It becomes appropriate to mention here that India has complied with its obligations as per the Agreement on Trade-Related Intellectual Property Rights (TRIPS) by enacting necessary Statutes and amending the existing ones. Well-known international trademarks have gained protection in India in the past by judicial rulings even though these trademarks were not registered in India.
Infringement of Trademarks:
Registration of a trademark is a prerequisite for initiating an infringement action. The following essential conditions should prevail for starting an infringement action:
The allegedly infringing mark must be either identical or deceptively similar to the registered trademark;
The goods/services in relation to which the infringing mark is used must be specifically covered by the registration of the registered trademark;
The use of the infringing mark must be in the course of the trade; and
The use must be in such a manner as to render the use likely to be taken as being used as a trademark.
A registered trademark is also infringed by use of a mark when because of:
Its identity with registered trademark and similarity with goods/services covered by registration; or
Its similarity with registered trademark and identity with goods/services covered by registration; or
Its identity with registered trademark and identity with goods/services covered by registration.
Identity with registered mark having reputation.
Similarity of Trade Name with registered Trademark.
Application of Registered mark on labelling, packaging, etc with knowledge that such application is without authorisation.
Use of registered Trademark in advertising, when such use takes unfair advantage, is detrimental or against the reputation of registered Trademark.
Under the Trademarks (TM) Act, the following acts would also amount to infringement of a registered Trademark:
Use of the registered trademark as a trade name or part of the trade name dealing in same goods or services for which the registered trademark is registered;
Use of the trademark in advertising if such advertising takes unfair advantage of and is contrary to the honest practice in industrial or commercial matters, or is detrimental to its distinctive character; or against the reputation of the trademark;
Under the TM Act, even oral use of the mark can constitute infringement.
Who can sue for infringement?
The registered proprietor, his legal heirs and the registered user(s) can sue for infringement. An assignee of a registered trademark can also sue for infringement. A passing off suit can be converted into a combined action of infringement and passing off, if the registration of the trademark is obtained before the final hearing of the passing off suit.
Remedies for Infringement
Civil remedies: When instances of infringement occur, the Court of competent jurisdiction, not lower than the District Court can be moved for grant of an interlocutory injunction, Anton Pillar Orders, damages and account of profits.
Criminal proceedings: Complaint may be made against the person causing infringement. (Both the actions under Civil law and Criminal law can be initiated simultaneously. Under the Civil proceedings, the plaintiff seeks relief for himself while under the criminal proceedings, the complainant seeks an award of punishment to the infringer).
Administrative remedies: Opposing the registration of a deceptively similar trademark when the Trademark Registry is in the process of considering registering it can protect the earlier trademark. The Registry can also be moved for removal of a deceptively similar trademark if registered.
Burden of proof: It is a well-settled position in law that the plaintiff must prove that the essential features of his registered mark have been copied. The onus to prove ‘deception’ is on the part of the plaintiff who alleges infringement.
Vigilance: The Need of the Hour
To sum up, over time, the Trademarks law has changed and now it provides protection to trademarks at every stage. With the development of technology and communication, the law expects that users are reasonably aware of other trademarks before registering their own trademark. No one can use a similar mark which creates deception or confusion for the customers. The trademark owners must be more vigilant about similar marks in existence, in certain cases, including well-known marks beyond national boundaries.
With the advancement of technology and the expansion of the grey-market, India is currently facing large-scale infringement issues which are drastically affecting the Indian Economy. Playing the vivid role of a gatekeeper the Customs Department of India has adopted the Customs Recordal system in furtherance of its aim to forestall the cross-border movement of counterfeit or infringing goods. In exercise of the powers conferred by sub-section (1) of section 156 of the Customs Act, 1962 (Act 52 of 1962), the Central Government formulated the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 consonance with the TRIPS and World Customs Organisation Model.
The aim of recording IP rights with the Customs is to prevent trade in counterfeit or infringing goods. According to Section 2(a) of the 2007 Rules, “infringing goods” means any goods which are made, reproduced, put into circulation or used in breach of the intellectual property laws and without the consent of the right holder or any authorised person.
To record an IP right with the Customs, a right holder must submit an application in writing with the necessary documents and information. In order to submit an application electronically, an Applicant must register on the Indian Customs IPR Recordation Portal www.ipr.icegate.gov.in. A unique id and a password will be generated and relevant documents must be submitted along with duly filled-in online forms. A Unique Temporary Registration Number is then generated, which along with a physical copy of the documents must be submitted to the IPR cell of the Custom House. Within 30 days a Unique Permanent Registration Number will be issued which serves as conclusive proof of recordation of the IP right.
A copy of the registration certificate of the intellectual property right as proof of the existence of such right
Power of Attorney in favour of the person who is filing the Application, if required
Images of genuine goods (for trademarks, product patents, and designs)
Images of infringing goods (if applicable/ available)
Hard copies of the complete set of documents uploaded online to be submitted to the Customs Office of the opted location.
A demand draft of INR 2000/- in favour of the Commissioner of Customs of the opted location.
An Indemnity Bond: The right holder must execute an indemnity bond with the Commissioner of Customs indemnifying the Customs authorities against all liabilities and expenses on account of suspension of clearance of allegedly infringing goods.
General Bond or Centralised Bond: The right holder or his authorised representative must execute a bond with the Commissioner of Customs to bear the costs towards destruction, demurrage and detention charges incurred for the destruction or disposal of infringing goods.
Name and contact details of the Applicant
The serial number and details of the demand draft in favour of the Commissioner of Customs.
Details regarding the scope of the IP right which the right holder is intending to register
Details regarding the differentiating features of genuine and infringing goods
The IEC code of the right holder and other authorized importers
In case of geographical indications – description of the GI, the area of production.
Grounds for the notice of suspension of the release of the goods allegedly infringing intellectual property rights
A detailed description of the goods with Customs Tariff Heading in respect of which an intellectual property right applies, together with a sample, model or photograph of a genuine product
Product code of the goods been imported/exported
If any of the required information is not provided, the Deputy Commissioner of Customs or Assistant Commissioner of Customs may require the right holder to provide the same within 15 days, which may be extended for sufficient reasons. Within 30 working days from the date of receipt of the notice, the Commissioner shall notify the Applicant whether the notice has been registered or rejected along with validity period of the registration during which assistance by Customs shall be rendered. After the grant of the registration, the import of allegedly infringing goods into India shall be deemed as prohibited under Section 11 of the Customs Act, 1962.
In a notice for suspension, where clearance of the said infringing goods has been suspended and the right holder or his authorised representative does not join the proceedings within a period of ten working days from the date of suspension of clearance leading to a decision on the merits of the case, the goods shall be released. If the right holder or his authorised representative does not join the proceedings within a period of ten working days, the goods shall be released. This time-limit of ten working days may be extended by another ten working days in appropriate cases by the Commissioner or an officer authorized by him in this behalf. In the case of perishable goods suspected of infringing intellectual property rights, the period of suspension of release shall be three working days which may be extended by another four days. In case the right-holder or his authorized representative joins the proceedings, the Deputy Commissioner of Customs or Assistant Commissioner of Customs, as the case may be, having reasons to believe that the goods are infringing and liable to confiscation under section 111 (d) of the Customs Act, may seize the same under section 110 of the Customs Act.
The Commissioner or the officer duly authorized in this behalf shall allow a right holder and the importer or their duly authorized representatives to examine the said infringing goods. Whereupon determination by the Deputy Commissioner of Customs or Assistant Commissioner of Customs, as the case may be, it is found that the goods detained or seized have infringed intellectual property rights, and have been confiscated under section 111 (d) of the Customs Act, 1962 and no legal proceedings are pending in relation to such determination, the Deputy Commissioner of Customs or Assistant Commissioner of Customs, as the case may be, shall, destroy the goods or dispose them. The costs toward destruction, demurrage and detention charges incurred at the time of destruction or disposal shall be borne by the right holder. However, goods of a non-commercial nature contained in personal baggage or sent in small consignments intended for personal use of the importer are exempted from the application of the Customs Recordal rules.