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Published by Enhelion, 2020-11-20 04:14:42

Module 1

Module 1

MODULE 1

INTRODUCTION TO DOMAIN NAME SYSTEM- MEANING AND
PROTECTION

1.1 UNDERSTANDING DOMAIN NAME SYSTEM

Internet domain name can be described as combination of typographical characters which are
used to find a certain location on the internet. It is basically called as Uniform Resource Locator
(URL). It helps to identify a website on internet. The domain name has a very important role in
the corporate world in order to be distinguishly known by the name of the business on internet.
No two business organizations can have same internet domain name.1

Domain names are a certain type of mixture of characters in alphabets and numbers which act as
the identifier of a website.2 Each domain name is exclusive in nature therefore no two websites
can have same domain name. It is that part of World Wide Web address which comes after two
forward slashes.3

The domain name system came into existence as a result of trial and error method between 1970
to 1980 when the transfer of information from one point to other became necessary. This
method involves two address out of which 1 is read by the computer (known as Internet Protocol
Address) and the other is read by humans (known as Domain Name) which is paired with the
former address.4 The domain name system works in hierarchical manner which includes top level
domain, second level domain, and third Level domain and so on up to the name of the host
computer.5

As already mentioned, an internet domain name is a series of typographical symbols used to find
the location of a website on Internet which is popularly known as Uniform Resource Locator

1 Caroline Wilson, Internationalized Domain Name Problems and Opportunities (2004), CTRL.
2 Keith Blackman, The Uniform Domain Name Dispute Resolution Policy: A Cheaper Way To Hijack Domain
Names And Suppress Critics (2001), Harvard Journal of Law & Technology
3 A. Michael Froomkin, ICANN’s Uniform Dispute Resolution Policy – Causes and Partial Cures (2002), Brooklyn
Law Review.
4 David Lindsay, International Domain Name Law (2007).
5 Ibid.

(URL) and also considered to be the address of a certain website.6 When IP number is
represented through alphanumeric characters in order to identified easily on internet equivalent
representation term as domain name. Since, IP numbers are difficult to remember therefore user-
friendly names are used under DNS for example: www.amazon.com is easier to remember IP
number – 52.2 19. 112.163.7

DNS facilitates internet users find the relevant outcome on the internet. Each computer has a
unique address in order to be identified on internet which are generally called IP address or
internet protocol address which is difficult to remember. Therefore the DNS system allows a
familiar series of alphabetical and numerical letters (the domain name) used instead of IP
address.8

DNS is characterized on hierarchical level. The domain name can be differentiated in following
types9:

1 Top Level Domains (TLDs): It is a series of letters which appear in the last (rightmost)
side after "." (dot) are called top level domains. This TLD can be further classified into
two categories: generic top level domain and country code TLD.

2 Generic Top Level Domain (gTLD): gTLD are those which provide specific association
with domain class.

3 Country Code Top-Level Domain (ccTLD): It identifies geographical location or
territory of the website. It is generally two letter top level domain.

4 New Top Level Domain Name (nTLDs): It is a customized level domain name which is
generated by organizations in order to provide distinct identity to their brands services.

6 Internet Domain Names Law and Legal Definition, Inc. definitions.uslegal.com,
https://definitions.uslegal.com/i/internet-domain-names/
7 Jacqueline Emigh, Domain Naming ( 1999), Computerworld.
8 Walter Eidson, How to Protect, Defend an Internet Domain Name (2000) Washington Business Journal.
9 Pratibha Ahirwar, India: Domain Name Disputes and Cybersquatting in India – Part I (2019), Khurana and
Khurana
//www.mondaq.com/india/x/783958/Trademark/Domain+Name+Disputes+and+Cybersquatting+in+India+Part+I#_f
tnref1

The Internet Corporation of Assigned Names and Numbers (ICANN) administers the top level
domain names. Network solutions Inc. acts as a domain name registry for registering the top-
level domain names. It uses a multi-level system. For the purpose of obtaining a domain name
the administrator checks whether best domain name already assigned to another person or not. If
the administrator finds out that the requested name was not assigned already then such name is
approved.

In the hierarchical system of domain name, the TLD name appears after the last dot (.) in the web
address. For example:

in wwww.microsoft.com, ".com" is the top-level domain name, .com one of the most common
and popular top level domain name which is used to indicate that the commercial enterprise
owns such domain.

Similarly, other popularly used Top level Domain Names include-

• .EDU is a Top level Domain Name opted by degree colleges and universities,

• .GOV is used by the government/state entities,

• .NET is generally used by network and Internet related organizations,

• .ORG is used by non-profit organizations, etc.

Other than above mentioned gTLD, a unique Country code domain name is also given to each
country. For example, .IN indicates that the website is created in India, .CA indicates that the
domain name is from Canada, .UK indicates United Kingdom etc.

The disputes relating to domain usually arise over second level domain names. The name which
appears just before the top-level domain name in an internet address is called second level
domain name. For example, in the address www.amazon.com is a second level domain name.
Usually, the dispute arises when the second level domain name are identical. Therefore, it can be
said that two identical second level domain name cannot exist under same top level domain
name. Even if two corporate organisation have same name then also they cannot have same

domain name under single top level domain name for example there are two companies which
have same name that is morningstar one is financial investment company and other one is related
to vegetarian food farm business, the former the company is registered as morningstar.com
whereas the latter company is registered as morningstarfarm.com. Even though both the
companies have same incorporation name for their organization but they cannot have identical
domain name. If morning star food Farm Company had registered its domain name as
morningstar.com then in that case the dispute would have arose in between those two companies.

Similarly, there are three different business organizations with same name; Delta Faucet, Delta
Airlines and Delta Dental and neither of these companies can have domain name “delta.com” as
that would lead to dispute among the three companies on second level domain name. Therefore,
Delta Faucet has “deltafaucet.com”, Delta Airlines has “deltasirlines.com” and Delta Dental has
“deltadental.com” as their domain names.10

Earlier, in order to register the domain names, the principle of First Come First serve was
adopted. It was the Internic which used to register the domain names. At that time, the internet
was not popular therefore there was not much need to check the ownership of the domain name
by the Registrant Authority i.e. Internic. But later on, every business company started creating
their own websites in order to seek out to more customers but soon enough the domain names
that the business companies wanted were all already taken. If any company wanted the already
booked domain name then they had to buy it from the owner by paying a huge amount of price.
This had become a practice, where the companies had to buy back their own companies domain
name from some other person.

The growing expense of buying back domains culminated in the 'Meta Society' trademark
owners joining together and demanding that their intellectual property rights to a licensed trade
mark would be expanded to 'domain name.' It led to recognizing the "Registration of Domain
Names without the intention of using them" as cyber squatting.

10 Daniel A. Tysver, Domain Name Disputes, https://www.bitlaw.com/internet/domain.html.

1.2 DOMAIN NAME AND TRADEMARKS

The domain name initially provided an url for computers on the internet. Yet now the internet
has grown from a simple medium of communication to a form of economic operation. The
domain names are also being used as business identifiers. In Celador Productions Limited v.
Gaurav Mehrotra and another11, the court held that “Since the domain name was more than an
internet address therefore person could certainly seek protection of its domain name.
The function of giving names to the addresses of the website has undergone magnificent changes
whereby the companies, firms, eminent individual have been able to name the address after their
own names as their trademarks.”

That functions as a dual function. First, a domain name not only remains an address, but also
performs the trademark functions as prospective customers or other known persons visit the web
page and is able to immediately connect to the source and identify the same with a particular
company or individual.

Furthermore, as far as human identities are concerned, businesses have their reputation built in
the virtual universe of the Internet. In other words, the success or reputation of some person or
organization does not vary from fact on the machine or the Internet.

It is incumbent upon the domain name to be protected in such a way that the identity of the
names of companies and individuals who are distinct on the marketplace may not go to the hands
of individuals who are nowhere concerned with those names and have obtained them simply
because they are better at communicating with computer technology and the use of the Internet.
To clarify, in order to avoid cyber squatting or selling or dealing in domain names, the trademark
law has been expanded to the point that it may encompass the area of Internet and domain names
covered in the same way as trademarks.12

Domain names not only serve as a domain for Internet contact but also recognize a specific
website. The domain name may relate to the provision of services within the meaning of Section

11 2003 (26) PTC 140 (Del) at 143.
12 Arun Jaitely v. Network Solutions Private Limited, 2011 (47) PTC 1 (Del) at pp. 10-11.

2(1)(z) of the Trade Marks Act, 1999, since the owner of a domain name provides information
and services related to that domain name.13

The definition of a trademark shall include a name. As an expansive term, it has been expanded
to include domain names. It has been done too far to incorporate domain names that have not
been used as a particular topic under the copyright law system. The appeal was then based on an
thorough reading of the meaning of a trade mark, which seeks to include a domain name, in such
a way that the rule of passing away may properly subsume the same.14

Once the complainant has made a prima facie case showing that the respondent is not entitled to
the domain name at issue, the respondent must provide evidence that it has a legal right in the
domain name to disprove it with presumption.15

The difference between a trademark and a domain name lies in the fact where the two trademarks
function. The trade mark shall be covered by the laws of the land where the trade mark
concerned is or may be licensed.16 As a consequence, a trademark can have multiple
registrations in various countries around the world. On the other hand, as the Internet provides
connectivity without any geographical restrictions, a domain name is technically open to anyone,
regardless of the geographical position of the user. The result of this possibility for universal
connectivity is not only that domain names would necessarily involve global exclusivity, but also
that national laws may be inadequate to effectively protect a domain name. This peculiarity
necessitated International oversight of the domain name network impacted by the WIPO and the
ICANN.

In Satyam Infoway Limited v. Sifynet Solution Private Limited17, after referring to the definition
of a Trademark and mark, SC stated that “the question which was apposite was whether domain
name could be said to be a world or name which was capable of distinguishing the subject of
trade or service made available to potential users of the internet.” The court answered the
question in affirmative. The court held that “domain name could be or said to a word or name
which was capable of distinguishing the subject of trade or service made available to potential

13 Rodney D. Ryder,Intellectual Property and the Internet (2002), Lexis Nexis.
14 Supra Note 7.
15 Document Technologies, Inc v. International Electronic Communications Inc., WIPO Case No. D 2000-0270.
16 V K Ahuja, Law Relating to Intellectual Property Rights (2013), Lexis Nexis .
17 (2004) 6 SCC 145.

users of internet.” On the question of whether the principle of Trademark law and in particular
those relating to passing off applied to domain name, the court held that double " it is Apparent
that a domain name may have all characteristics of a trademark and could found and action for
passing off."18 The court also observed:

“As far as India is concerned, there is no legislation explicitly referred to dispute resolution in
connection with domain names. But although operation Trademark Act, 1999 itself is not extra
territorial and may not allowed for adequate protection of domain names, this does not mean
that domain names are not to be legally protected to the extent possible under the laws related
to passing off.”19

The different High Courts have also applied the law relating to passing off to domain names. In
I Plus Inc. v. Consin Info Pvt. Ltd.20, the court stated that “the domain name of the plaintiff
“indiaproperties.com" comprised two generic and descriptive words India and properties. They
could never be capable of protection under trademark.”

Uniform Domain Name Dispute Resolution Policy (UDRP) formulated to resolve the issues of
inter alia cyber piracy, resolution Trademark dilution etc. The adoption of UDRP was a result of
consultations between WIPO and ICANN, a nonprofit organization managing the DNS. The
UDRP, which was adopted on 24th October 1999. provides for a domain name dispute resolution
mechanism before administrative panels of the WIPO Arbitration and Mediation Centre.21

Domain Name Dispute (DND)

DND can be defined as the conflict between two legal entity or individual where both the parties
claim to have a right to register a specific domain name. Generally, these disputes come into
light when a certain domain names is registered by that individual who is not the actual owner of
the trademark of the business and the real business owner wishes to register his business
trademark as domain name.22

18 Ibid. Page No. 151.
19 Ibid. Page No. 154.
20 2010 (42) PTC 50 (Bom) at p.53.
21 Trans Tyres India Pvt. Ltd. v. Double Coin Holdingd Ltd., 2012 (49) PTC 209 (Del)(DB) at p. 216.
22 Vangie Beal, Domain Name Dispute, Webopedia.
https://www.webopedia.com/TERM/D/domain_name_dispute.html

The disputes relating to Domain Names are considered to be legal complaints which are filed on
the ground that a domain name (which is an intellectual property registered and recognized under
DNS) is registered or assigned on either illegal or inappropriate basis. Trademark laws are the
basis of legitimize the Domain names as it provides the process through which the disputes
related to domain names can be validated and resolved.

Paul Mockpetris was a computer scientist who developed the DNS in 1983. Mr. Mockapetris was
given the responsibility of finding out how to upgrade the existing ARPANet name and address
system, which was then governed by the Network Information Center at the Stanford Research
Institute. The DNS varied from the older iteration of ARPANet in that it was centralized (rather
than controlled by technical staff) and dispersed its activities over a much wider network of
servers (SRI monitored the names and addresses on a single master register that was spread and
operated collectively by administrators).

The DNS essentially links domain names with IP addresses. All domain name registrars are
required to follow the ICANN's Uniform Domain-Name Dispute-Resolution Policy (UDRP) in
order to register the names. During 1990’s, there was an increase in popularity of Internet which
leads to the widespread of cybersquatting and this became a problem for big MNC companies
and brands. There was one notably early case related to DND where a Video Jockey, Adam
Curry working for MTV registered MTV.com as a domain name while he was an employee of
MTV. But he kept the ownership of the domain name of MTV.com even after the end of the
employment. This raised the dispute between the MTV company and the Video Jockey, Curry
and the company filed the suit against Adam Curry for trademark infringement. The parties
agreed to settle the dispute out of the court and the MTV acquired the rights over the domain
name MTV.com.23

2.2. CAUSES OF DOMAIN NAME DISPUTES

Generally, there is an impartial person or a panel who looks into the domain name disputes for it
resolution. In order to come to the decision, it is also considered whether the registrant was

23Domain Name Dispute, Techopedia
https://www.techopedia.com/definition/1330/domain-name-dispute.

acting in “bad faith”. The conceptual understanding to the term “Bad faith” may differ country to
country. But it essentially means that the registrant did one or more of these things24:

• Purchasing of the domain in order to sell the same for an inflated fee, with the knowledge
that it is trademarked

• Wanting to cause an inconvenience to a particular brand or a company by buying the
domain name first

• Intending to cause damage to the reputation of any individual or a business by publishing
any statement or a picture on their domain.

• Causing confusion among the consumers who are looking for the website which is
legitimate

• Using the domain in order to compete with other business companies unfairly

• Acting unfairly and abusively in some any other way.

In the dispute resolution process, the registrant's history of registration of the domain name in
bad faith is often considered. If the domain name owner can claim he purchased the same in
"good conscience," so it might turn the case in the owner's favour. The proofs for “good faith”
include25:

• Providing genuine and authentic reason for purchasing the domain

• The owner has a noncommercial venture and has a legitimate claim to the word or phrase
used in the domain name

• The principle of fair use if proved in favor of the Owner.

However, each dispute resolution panel uses different criteria to settle the dispute and makes the
decision to deal with the cases on the basis of the dispute resolution policy.

24 Claire Broadley, How to Handle Domain Disputes and Protect Your Domain Name Investment (2019),
https://www.whoishostingthis.com/resources/domain-disputes/
25 Ibid.

2.3. TYPES OF DOMAIN NAME DISPUTES

The DNS is a way for the user to access the Internet quickly. Common domain name
infringements faced by businesses and individuals include26:

1) Cybersquatting: Under US law, the term cybersquatting is defined as “registering,
trafficking in, or using a domain name with bad-faith intent to profit from the goodwill of
a trademark belonging to someone else.”

Cybersquatters typically have little need for these domain names, except to trade them and make
a profit. Organizations are often confused to discover that a domain name synonymous with a
corporate name or trademark has only been licensed and is held by a cybersquatter.

2) Reverse-Cybersquatting: Reverse cybersquatting happens when a trademark holder
endeavors to wrestle a domain name from somebody that legitimately enrolled the name
at a prior point in time.

For example, if a corporation named “Morgan Lewis Bockius” registered the name “mlb.com”
for use as a website address for a law firm, and Major League Baseball attempted to sue the law
firm for trademark infringement and the use of the name, this would be an example of reverse
cybersquatting.

Since the law firm had nothing to do with baseball, Major League Baseball’s trademarks were
not being abused. Major League Baseball could buy the name, of course, but could not recover it
in a lawsuit or arbitration proceeding.

3) Typosquatting: A typosquatter is a person who registers domain names with common
typos of major domain names to attempt to divert traffic to sites that benefit the
registrant.

For example, “microsotf.com” was created to take advantage of people who intended to visit the
Microsoft® website, but misspelled the domain name in their web browser. This practice, also
known as “URL hijacking” or “web address hacking” takes advantage of the good name of the
domain owner to send visitors somewhere else.

26 Types of Domain Name Disputes, Lexero.
https://lexero.com/practices/domain-name-attorney/domain-name-attorney-types-of-domain-name-disputes/

4) Second Level Domain Name Disputes: A SLD on the Internet is the name or text
directly below (or typically to the left) of a TLD.

For example, if on a webpage named “www.readmypage.com”, the “.com” is the top level
domain, and “readmypage” is the second level domain, because is specifies which site to visit of
all of the “.com” websites available online.

If you register a name such as “Xeroxsucks.com” (and we do not imply that it does, it’s just an
example.) Xerox® may have a claim for the use of its name without its consent.

5) Gripe Sites: While there are regularly related free speech and expression issues,
legitimate action might be made in instances of purported "gripe sites" where a
despondent domain name proprietor enlists a name to complain about a specific company
and their disappointment with that item or administration. While the substance clarifying
the website admin's despondency is likely secured, the domain name may not be ensured
by uprightness of trademark issues.

6) Subdomains: Similar to second level domain names, a subdomain question alludes to the
utilization of an imprint in the absolute first bit of the domain. For instance, if our site utilized
the location xerox.readmypage.com then Xerox® would conceivably have a case against
Readmypage for utilization of its name without the option to do as such.

7) Domain Name Warehousing: This is the act of holding lapsed domains as opposed to
discharging them over into the open domain. By keeping certain domains from being discharged,
the recorder would like to exchange the domains to the past registrant or another registrant at a
higher rate than the market cost.

8) Grace Period Violations: Also known as domain name kiting or tasting, this is a practice
which happens when a registrant enlists a domain name for a temporary reason, however then
exploits the domain buy grace period to dismiss more permanent ownership.

2.4. EXAMPLES OF DOMAIN NAMES DISPUTES

The following are the popular domain name disputes which occurred around the world. These
would help to provide the basic understanding of the disputes:27

a. Candyland.com: The domain name of candyland.com is pursued by both Hasbro
and the adult entertainment service. Hasbro was too late to mark the company
itself, but not too late to appeal. Finally, the domain name is free of charge in
Hasbro 's hands.

b. mcdonalds.com: The domain name was purchased by a journalist from Wired
Magazine who was writing an essay about the significance of domain names.
Throughout his post, the author asked people to contact him at
[email protected] with suggestions on what to do about the domain name.
To return for returning the domain name of McDonalds, the publisher persuaded
the company to make a generous contribution.

c. Micros0ft.com: Zero Micro Software registered with micros0ft.com (with
0 instead of the second 'o'), but the application was cancelled after Microsoft
objected. Then the domain name was scrapped for failing to pay taxes, someone
else claimed the domain name: Roanoke 's Dream Enterprises, TX.

d. mtv.com: The MTV domain name was originally derived from the MTV video
jockey Adam Curry. Although MTV originally had no concern in the domain
name or the Internet, when Adam Curry quit MTV, the company decided to own
the domain name. Since a civil court case was filed, the dispute was settled out of
court.

e. Peta.org: The peta.org domain name was obtained by an organization called
"People Eating Tasty Animals," much to the disgust of the better known People
for Ethical Treatment of Animals. This domain name was suspended, but the

27 Daniel A. Tysver, Domain Name Dispute, Tysver Beck Evans, Minneapolis
https://www.bitlaw.com/internet/domain.html

domain name in the name of People Eating Tasty Animals was still registered as
from May 2000.

f. Roadrunner.com: After NSI threatened to revoke the roadrunner.com domain
name after Warner Brothers had objected, the New Mexico Internet service
provider company that used the domain name filed a complaint to prevent the
same revocation. While the access provider was able to avoid the termination, the
domain name was ultimately acquired by a joint venture group including Time
Warner, MediaOne, Microsoft, Compaq and Advance / Newhouse.

g. Taiwan.com: china's mainland news company Xinhua was allowed to register the
domain name taiwan.com, much to the dismay of the Taiwan government.


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