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Domain name is defined by Merriam-Webster as
a sequence of usually alphanumeric characters that specifies a
group of online resources (as of a particular company or person)
and that forms part of the corresponding Internet addresses.
The Domain Name System (DNS) helps you find your way
around the Internet. Feature of DNS names is their
hierarchical structure. This is reflected in the anatomy of the
For example, the domain name “
As seen by users, each level of the hierarchy is separated by a
dot. At each dot, management authority, that is, the ability to
create, edit, or remove names within that level or below, can be
assigned or delegated to another party. Continuing to use
- The ICANN community sets
the rules for creating, editing, or removing top-level
- The organization that operates the
“org” top-level domain sets the rules for registering
domain names within “org” (e.g., registration policy);
- The ICANN organization,
which registered the “
So, when you register a domain name, you are creating a new
realm in the DNS and giving that realm a name, which is
the domain name that you registered.
As the trademark is for offline business dealings and
transactions same is the domain name for online. Trademark is for
the product of the company and the domain name is for the company
on the internet and the virtual image of the business.
Benefits offered to the registered trademark and domain name
- Trademark protects the brand name
whereas unauthorized use of domain is protected by the registered
- Trademark supports the face value of
the brand while domain name helps increasing in the access
For registering of the domain name as trademark the domain name
should be unique and can be distinguished from the other company
goods and services over internet.
The domain name should be unambiguous and different from all the
well known name on the internet so that the same is not misleading,
confusing and also should not be against the morality or public
If the domain name is found to be similar ,misleading and not
unique then such will be infringement of domain name
The dispute has arisen before the Supreme Court in Satyam
Infoway Ltd Vs Siffynet Solution Pvt Ltd.
FACTS: Satyam Infoway Ltd, a leading IT service
company, incorporated in 1995 for doing business of software
development, software solution and connected activities, registered
several domain names like ‘http://www.sifynet’, ‘
SIFY- Siffynet Solutions Pvt Ltd began doing business of network
marketing in 2001 under the domain names, ‘
DISTRICT COURT- After becoming aware of
Siffynet’s use of the name SIFFY, Satyam Infoway filed a suit
before the City Civil Court Judge and obtained temporary injunction
on the ground that it was the original user of the SIFY
HIGH COURT– the appeal from the district
court’s order, the High Court of Karnataka reversed the
district court’s order, saying that merely because Satyam
Infoway was incorporated first and had earned goodwill in respect
of domain name ‘Sify’, no order can be granted in its
favour without considering where the balance of convenience lies.
The High Court also found that there was no similarity between the
two businesses, and hence there was no question of customers
getting confused or misled. Satyam Infoway filed an appeal to the
SUPREME COURT– The Supreme Court held
that while the original role of a domain name was to provide an
electronic address for businesses on the Internet, the Internet has
developed from a mere means of communication to a mode of carrying
on commercial activity, and acts as a business identifier. Thus, a
domain name could qualify as services and be entitled to protection
under section 2(z) of the Trade Marks Act. Furthermore, on the
issue of passing off, the Supreme Court found that use of a similar
domain name even for different services could result in confusing
the consumers. The user may mistakenly access one domain name
instead of another.
The Supreme Court allowed the appeal and confirmed the
injunction order earlier granted by the district court.
DOMAIN NAME IN INDIA
The only one organization that protects domain name as trademark
or services is ICANN ( Internet Corporation for Assigned
Names and Numbers).
In India the domain name can be grated protection under the
provisions of Trademark Act 1999 and the registration is granted
only when the domain name fulfill all requirements to be properly
registered under the Act. Once the domain name is registered as
trademark it will be having all the rights which are owned by the
owners of the registered trademark or services.
In the case of Bigtree Entertainment v Brain Seed
Sportainment held by the Delhi High Court:
Facts: The Plaintiff operates a
popular online ticketing platform known as bookmyshow. It has also
secured registration in BOOKMYSHOW word marks and logos. The
Defendant operates www.bookmysports.com, an
online platform used for booking sporting venues and other sporting
facilities. The suit was filed claiming infringement and passing
off of the Plaintiff’s mark by the Defendant and asking for a
permanent injunction restraining the same.
Held: The Hon’ble court denied the
Plaintiffs, interim injunction against the Defendant’s use of
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
Therefore, the domain name place a vital role for specially
those business which are only online as the domain name serves as
an important element in trade and any commercial activities. Hence
it is essential to protect the domain name
In the case of Global Car Group PWT Limited & Anr vs.
Vienna Solution Private Limited
Facts: Complainant no. 1 is a registered
proprietor and user of the trademark “Cars 24” and
domain name “Cars24.com” and the complainant is using the
same domain name in various countries . That the Complainant
has been openly continuously and expensively using the mark
“Cars24” as its trade name, corporate name, business
name, trading style , trademark worldwide since its incorporation.
That the complainant came to know in June 2017 that consumer are
misguided and calling on the domain of the Respondent instead of
calling on the contact number of Complainant no. 2.
That the Respondent said that they have registered their domain
name “Cars24.in” on 3rd January 2007 and
the Respondent also said that they are registered on register of
company since January 20th 2006 and deals in IT
solutions since its inceptions. In 2007 they entered into the
business of second hand cars.
In the year 2001 the domain name of the complainant was put on
sale and the complainant was not doing any business of sale, resale
of second hand cars and that the said domain name
“Cars24.com” was also on sale on 2003, 2004 and 2005. In
the year 2007 till 2014 the complainant was in the business of
digital camera and other things.
Further the Respondent is in the business of sale and purchase
of second hand cars since 2007 and the complainant started their
business of the same in the year 2014.
Held: The Hon’ble court said that the
complainant was conducting business activities in India since
12.08.2015 under the domain name “Cars24.com” thought
there domain name was registered in 2001 but there was no actual
use of the domain name till 2005 and from 2007 to 2014 they were
merely posting Ads of digital camera and not operating any
legitimate website on it. On the other hand the court found from
the website www.archive.org that the
disputed domain name of the Respondent was continuously in
operation w.e.f 2007.
The court said even though the complainant is a registered
proprietor of the trademark “Cars24.com” since 2016 and
using the same since 2015, it cannot prevent the respondent from
using the disputed domain name which the respondent is using since
2007. Further as per the provision of section 34 of Trademark Act
1999, “proprietor of a trade mark does not have the right to
prevent the use by another party of an identical or similar mark
where that user commenced prior to the user or date of registration
of the proprietor”
Therefore it was held that though the domain name of the
Respondent is similar or identical to the registered trademark of
the Complainant, it does not preclude the Respondent from using the
same and that for the reason tribunal finds that the disputed
domain name has not been registered and used in bad faith by
Respondent under the policy.
GROUNDS FOR FILING COMPLAINT WITH THE .IN REGISTRY
- If the Registrant’s domain
name is identical or confusing, similar to a name, trademark
or service mark in which the Complainant is having rights,
- If the Registrant has no rights
or authorized interests in respect of the domain name:
- If the Registrant’s domain name
has been registered or is being used in bad faith.
PROCEDURE FOR FILING COMPLAINT FOR RECOVERING OF A DOMAIN
Domain name which are registered under .IN DOMAIN NAME DISPUTE
RESOLUTION POLICY (INDRP) can be recovered. Certain procedure and
rules need to be followed for the same. The Rules and procedure are
mentioned under INDRP.
Any person who thinks that someone else’s domain name is in
conflict with his Intellectual property rights and that the other
person has taken that domain name in bad faith then that person can
file complaint under INDRP as per the rules and guidelines.
Nation Internet Exchange of India (NIXI) facilitates a ground
for exchange of domestic Internet traffic. The .IN registry is a
part of NIXI and maintains the .in domain name in India.
INDRP have Rules and Procedure which needs to be followed and
Once NIXI has received your request, and your filing fee, it will
assign an arbitrator and you will receive additional
All dispute shall be subject to the jurisdiction of Delhi
STEPS FOR FILING A COMPLAINT
Anyone can file. Copies to be send:
c/o NIXI (National Internet eXchange of India)
Regd. Off.: 6C,6D,6E Hansalaya Building
15, Barakhamba Road, New Delhi-110001 India
Tel. : +91-11-48202000,
Or any other address that may be published on the Registry?
website from time to time.
Step 2: Details in the Complaint
Three copies of the complaint along with annexure should
be send and same should be send by mail.
The complaint should incorporate the following details:
- A request that the Complaint be
submitted to arbitration in accordance with
the Dispute Resolution Policy and the Rules framed
- Details of Name, postal and e-mail
addresses, and the telephone and facsimile numbers of the
- Name of the Respondent and all
information (including any postal and e-mail addresses and
telephone and facsimile numbers) known to the Complainant regarding
how to contact the Respondent including contact information based
on any pre-Complaint dealings, to allow the .IN Registry to send
the Complaint to the Respondent.
- The domain name which is the subject
of the Complaint;
- Details of Registrant of Domain
- The trademark(s) or service mark(s)
on which the Complaint is based and, for each mark, describe the
goods or services, if any, with which the mark is used. Also other
goods and services with which complainant intends, at the time the
complaint is submitted, to use the mark in the future;
- describe, in accordance with the
Domain Name Dispute Resolution Policy, the grounds on which the
Complaint is made including,
- Specify, in accordance with the
Dispute Resolution Policy, the remedies sought;
- Identify any other legal proceedings
that have been commenced or terminated in connection with or
relating to the domain name that is the subject of the
- Conclude with the following
statement followed by the signature of the Complainant or its
- Annex any documentary or other
evidence, including a copy of the Policy applicable to the domain
name in dispute and any trademark or service mark registration upon
which the Complaint relies, together with a schedule indexing such
A separate Complaint is required to be filed for dispute
relating to each domain name.
Step 3: Notification
- If the complaint is in accordance
with Dispute resolution policy and Rules of procedure and also on
the receipt of the prescribed fee the .IN Registry shall forward
the complain with 3 working days.
- In three working days the complainant
shall be notified for the defects and the complaint shall be
given 5 working days to clear the
deficiencies otherwise same shall be deemed as withdrawn.
- That after the deficiencies being
cleared the .In Registry shall appoint a
Arbitrator from the list of arbitrator and
will thereafter send the copies of complaint and
documents to the Arbitrator and the Respondent.
- The date of commencement of the
arbitration proceeding shall be the date on which the Arbitrator
issues notice to the Respondent as stipulated under Paragraph 5 (c)
of these Rules of Procedure.
Step 5: Arbitrator
- .IN Registry shall maintain the list
of arbitrator and shall appoint an arbitrator within 5
working days once the defects are cleared.
- Once the arbitrator is appointed the
parties shall be notified.
- The award shall be
passed within 60 days of the proceeding. In exceptional
circumstances this period may be extended by the Arbitrator maximum
for 30 days. However, the Arbitrator shall give the
reasons in writing for such extension.
- Within 3 days from the receipt of the
complaint the Arbitrator shall issue a notice to the
- The Arbitrator shall ensure that
copies of all documents, replies, rejoinders, applications, orders
passed from time to time be forwarded to .IN Registry immediately
for its records and for maintaining the transparency in the
- The Arbitrator conducts
the arbitration proceedings in accordance with the Arbitration
& Conciliation Act 1996 and the IDRP and IDRP Policy and
Rules. The Registrant is required to submit to the
mandatory arbitration proceeding.
Step 6: Appeal to the award
- Since the INDRP follows the
Arbitration Proceedings in accordance with the Arbitration and
Conciliation Act 1996, the appeal provisions contained in that Act
will apply to the INDRP as well. This means that
a person has 90 days to appeal the decision of the
Communication: No unilateral
communication with the Arbitrator. All
communications between a Party and the Arbitrator, or between a
Party and the .IN Registry shall be made in the manner prescribed
in these Rules of Procedure.
: English . Any documents submitted in a
language other than English shall be accompanied by a true copy of
its translation in English.
Hearings: There shall be no in-person hearings
(including hearings by teleconference, videoconference, and web
conference), unless the Arbitrator determines, in his sole
discretion and as an exceptional matter, that such a hearing is
necessary for deciding the Complaint.
- Fee: The
Complainant shall pay to the .IN Registry the prescribed fee, in
accordance with the .IN Registry’s schedule of fees, within the
time and in the amount required. All cheques/drafts towards the .
IN Registry administration charges and payment of the
Arbitrator’s fee shall be drawn in favour
of ‘NATIONAL INTERNET EXCHANGE OF INDIAaccompanied
by an amount of
|Total Amount||₹30,000/- + GST (18%)|
|For personal hearing||₹2,000/- + GST (18%) per hearing
Maximum TWO hearings
**w.e.f. July 01, 2017 – 18%
2 (2004) 6 SCC 145
3 CS(COMM) 327/2016
Originally published June 1, 2020.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.