Trademark issues in Cyber Space

Trademark issues in cyber space, today, are a concerning issue since there is unfathomable data in cyberspace. In the ancient days, Romans and Greeks identified products by scribbling on them. With the advancement of civilizations, novel methods came for the unique identification of products. Trademark was a milestone in this development. Moreover, after the emergence of the internet, businesses found the virtual world to be their new market sphere. Hence, the introduction of DNS was brought about to substitute the cumbersome and numerical IP addresses.

Due to the boom of online trade and e-commerce, ill practices in the form of cybersquatting and meta-tagging took shape. In furtherance of this, various dispute resolution methods were brought up, ICANN being the most instrumental of them. It was set up to settle the domain name disputes at a global level. The main concern that looms large over this dispute is the jurisdictional issue as the internet has no boundaries and holds a global character.

I. Introduction

The internet has been instrumental in bringing about a colossal shift in the 19^th century, which one can equate to that of the industrial revolution. Internet was initially launched with the sole medium of communication between the masses, but within a couple of years, it became a pivotal point for the majority of business transactions, trade, and social interaction. It has been successful in providing a great economic boost to millions of online ventures but at the same time, it also makes these ventures and businesses vulnerable to a lot of risks.

With the rampant increase in global trade and commerce, the inflow of counterfeit objects in the market has escalated. Hence, the role of intellectual property comes into play, by becoming a more global and borderless entity. In the scenario of duplicate and counterfeit products, trademark comes into play. A trademark can be understood as any mark, symbol, emblem, or word that associates and represents a product.

Traditionally, trademark law was applied to physical markets and it was given to traders so that they could sell their products under their genuine name and carry-on business under that very trademark, preventing other people from exploiting the same. However, with the sudden boom in the virtual world, many new challenges have arisen in relation to trademark protection.[1]

However, a business cannot just enter the virtual trade world without a unique identity of its own. Internet Protocol (IP) addresses are long and hard to remember due to their all-numeric identity. This led to the invention of a concept by the name of Domain Name Systems (DNS).

The inception of the domain name was to replace all the cumbersome numeric values of an IP address. Its primary function is to convert the complex IP address of businesses and websites into simple names for easy access by a common user. They are now valuable assets that carry the goodwill of a business or an organization. Some most commonly used domain names are .com (used for commercial); .int (used for international organisations made by treaties); .net (used for common network providers).

II. Domain Name And Trademark

The address and location of a website carry within itself a domain name. Conventional trademarks have been present in the trading world for a long time, however, a domain name is a new kid in the block. There is a number of reasons due to which disputes over domain names occur. It is usually associated akin to a trademark. Therefore, the offline businesses having a trademark can add them as a valuable addition by wishing to use the same online. Trademark has been a territorial law whereas the internet is borderless.[2]

Instead of the physical world where at least two trademarks are eligible to exist at the same time, the space of the Internet doesn’t take into account more than one domain name registration. This combined with the way that most registrars don’t have a framework to survey a domain name application for the bona fides of a candidate wishing to enroll a domain name, but instead award such registration on a first come first serve basis, which leads numerous an opportunity to what is generally alluded to as “oppressive registrations” for example registration by an individual of a domain name containing a brand name, in which such individual/substance has no authentic right or interest.

III. Cybersquatting

In layman’s terms, cybersquatting is the process through which one party attracts customers and maximizes its profits by misusing some other party’s trademark. The abuse can be through enlisting a domain name having a likeness to or precisely like the brand name of a notable organization having goodwill. Cybersquatting is a major obstacle in the development of online business organizations. More often than not, cyber squatters constrain famous web-based business organizations to pay an immense amount of cash to ensure their organization’s goodwill and furthermore their brand name.

For example, a young Canadian enrolled the name Appleimac to sell it back to Apple; a few other web columnists repurchased their domain name for $700 which was enlisted by cyber squatters as domain destinations.[3]

The idea of cybersquatting can be better perceived by a celebrated case – Intermatic Incorporated v. Dennis Toeppen[4] where the organization Intermatic was the exclusive proprietor of the brand name “Intermatic” in the wake of enrolling it with the US Patent and Trademark Office.

The organization brought an activity against “Dennis Toeppen” claiming that the utilization of domain name “intermatic.com” by the respondent organization abuses area 32(1) of Federal Trademark Infringement Act, Section 43(1) of Federal Trademark weakening Act, 1995, and so forth The respondent organization’s conflict was that they were the initial ones to enroll with the said domain name and consequently, they had need rights over a similar after “the early bird gets the worm” rule in domain name registration.

The court anyway chose in the complainant’s side holding that Intermatic was a celebrated organization working at a worldwide level. The brand name was utilized by the organization for practically over a time of 50 years which certainly implied that the utilization of the equivalent by the respondent would prompt weakening of their brand name. Additionally, the respondent organization didn’t have adequate proof to demonstrate their dispute. Consequently, the case was ruled for the complainant.

The principal issue lies in the way that two businesses can’t have a similar domain name. Thus, in spite of the fact that cyber squatters are not totally limiting companies from enlisting any domain name of their decision, it tends to contend that cyber squatters are not forestalling the privilege of organizations to domain names.

In any case, by enrolling the most obvious as a domain name (e.g., the name of the actual company), cyber squatters force enterprises to discover alternative approaches to draw in purchasers to their Internet pages[5]. Rather than basically composing an undeniable domain name for a company, clients are forced to utilize a search motor, which may create extra turmoil or postpone while getting to the ideal site.[6] Moreover, with the programming of search engines, regular sites of the contenders with comparable domain names spring up.

Customers looking for the page of a predetermined brand name business will probably go to a search motor in light of the fact that an underlying motive of manipulating the domain name (For example, ‘www.trademark.com’) doesn’t yield the ideal outcome as a cyber vagrant has effectively enrolled that domain.

IV. Meta Tagging And Key Words

Each website has its own keyword field. Meta tagging refers to the manipulation of this keyword field of a website. The hackers manipulate the keyword field in such a way that if a user uses the search engine, he will end up coming back to the same page, even if the website is not relevant to the search made. Another name was given to meta-tags in hidden texts as even by staying invisible, they end up manipulating the search engine.

This concept shall be further explained using the landmark case of ReOppedahl & Larson v. Advanced Concepts[7]. In this case, Oppendahl and Larson was a famous law firm owning the domain name “patents.com”. They sued three companies alleging that they used meta-tagging of the words “Oppehdahl” and “Larson” to manipulate search engines and drive all the traffic to their own websites. The hon’ble court in this held the act of the defendant as one of trademark infringement.

Fair Use in Meta-Tags

An exception to the above explanation is when the trademark is used in such a way that it is descriptive of the product provided by the website. This practice amounts to fair use of meta-tagging. This was elaborated in the case of Playboy Enterprises, Inc. v. Welles[8], where the defendant was a former playmate and hence used the terms “playboy”, “playmate of the year” and “playmate of the month”. It was held by the Hon’ble court that this won’t amount to any infringement because this usage was reasonably permitted on the grounds that these terms were actually describing the nature of the website and the kind of service it provided.

V. Uniform Dispute Resolution Policy

Disputes with regard to domain names came into the limelight owing to the jurisdictional issues in cyberspace. Cybersquatting hit a record high in the year 2016.[9] America was the first nation to promulgate a law that specifically dealt with trademark infringement in cyberspace. This legislation was known as the Anticybersquatting Infringement Act, 1999.[10]

Further, in the year 1999, Internet Corporation for Assigned Names and Numbers (ICANN) brought up a novel Uniform Domain Name Dispute Resolution Policy (UDNDRP). Its functioning is handled by the U.S Department of Commerce. This policy is instrumental as it forbids registration of domain names on the basis of these circumstances:

• The domain name resembles another’s name to such an extent that it is confusingly identical.
• The entry that is registering the domain name has no inherent right to do so
• The usage and registration of the name were done in bad faith.

The disputes under ICANN rules are brought to a one or three-member regulatory board that chooses the question quickly and publishes the decision. The authoritative choice is conclusive and restricting on the registrar subject to ICANN control, however, it very well may be superseded by Court activities. The procedure is quick and economical, which can be led through email with no close-to-home appearances, and require negligible creation of records. The policy allows the judges to decide that the grievance was acquired in bad faith to ‘reverse hijack’ the domain name or to trouble the domain name holder. [11]

In India, the disputes related to domain names are controlled and overseen by the Indian Domain Name Dispute Resolution Policy (normally as . INDRP Registry). The INDRP has its own arrangement of rules and approaches under which the grievance is recorded against the domain name encroachment. The INDRP has its rundown of board individuals to decide upon the complaints. The strategy is straightforward and quick and economical under the INDRP rules and policy which pretty much deals with the standards set out by the WIPO.

VI. Conclusion

With the ever-expanding nature of the internet and the cyber world, numerous problems arise now and then. The jurisdictional issue is the most discussed of them all. Domain names and become an important component when it comes to e-commerce and online business transactions. Domain names are by and large given on a “first come first serve basis” and registrars like NSI who are teamed up with National Science Foundation have veto power towards assigning a domain name. In any case, these organizations can practice a similar in particular if the domain name in for registration is by and large like the other one and that the registration of this one would encroach the rights other.

Presently different inquiries have stumbled upon the courts whether domain names and be equated with a trademark? How to settle the jurisdictional issues identifying with brand name encroachment in cyberspace and furthermore domain name disputes? The “PLAYBOY” case plainly shows that the Courts can pronounce a judgment and can give an order regardless of whether the respondent organization have enrolled their domain name in some other country.

The most intriguing aspect about the settlement of domain name disputes is that it very well may be settled using any and all means including ADR, arrangements and so forth. This helps the organization to get away from extensive court procedures.

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[1] Stefan Kuipers, Faculty of law: Lund University, The Relationship between Domain Names and Trademarks/ Trade Names Available Here

[2] Singh, Bhavna, “Cybersquatting and Domain Name Disputes; Under the Trademark Law”, p. 7.

[3] Tracy Kraft- Tharp, Domain Names and Trademark Law, 18 Preventive L Rep. 10 (1999) Available Here

[4] 96 C, 1982 (7th Cir.:1996)

[5] Mercer, John D., “Cybersquatting: Blackmail on the Information Superhighway”.

[6] Ibid

[7] 373 F. 3d ,1171 (Fed. Cir. : 2004)

[8] Playboy Enterprises, Inc. v. Welles, 7 F.Supp.2d 1098 (S.D. Cal. 1998)

[9] Wipo Cyber Squatting Cases Hit record, Available Here

[10] Lisa M. Sharrock, “The Future of Domain Name Dispute Resolution: Crafting Practical International Legal Solutions from within the Journal, Vol. 51, No. 2 (Nov., 2001), p. 817-849UDRP Framework”, Duke Law

[11] Singh, Bhavna, “Cybersquatting and Domain Name Disputes; Under the Trademark Law”, p. 6

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