Today's information technology age has merged the otherwise distinct realms of the offline world and virtual world. Internet has acquired many synonyms the Matrix, the Web, the Net, the Virtual World, the Wired World, Cyberspace, etc. The term Cyberspace is the notional environment in which communication over computer networks occurs. The word became popular in the 1990s when the uses of the Internet, networking, and digital communication were all growing dramatically. The phenomenal growth of the Internet as a commercial medium has brought about a new set of concerns in the realm of Intellectual Property. It is technically feasible for one website to associate with multiple domain names. [1] Multiple domain names may point to the same website.[2] As the Internet and the evolution of e-commerce have shown, brands remain vitally important for competitive advantage in an increasingly global marketplace. “Brands rely on their symbolic power to draw attention to themselves and build an acknowledged capacity for value creation”.[3] Brands can secure their symbolic importance legally through trademark registration and, crucially in the age of the Internet, through the registration of that trademark as a domain name.4[4] As e-mail and the World Wide Web have proliferated, an unexpected melee has ensued in the trademark arena over Internet addresses. The problem is bipolar - the trademark owners desirous of using their marks as domain names have found the desired form of such names already taken. Conversely, trademark owners have found that unauthorised parties are using their marks as domain names, often in a deliberate attempt to free ride on the goodwill of the mark's owner.[5] The controversies surrounding domain names constitute the bulk of trademark related disputes in cyberspace. Nevertheless, there are other issues that are equally concerning as is domain name disputes.
To understand the trademark issues relating to meta-tags in cyberspace, it is necessary to understand what meta-tags are and how they work. Webopedia defines Meta tag as a special Hypertext Mark-up Language (HTML) tag that provides information about a web page. Unlike normal HTML tags, Meta tags do not affect how the page is displayed. Instead, they provide information, such as who created the page, how often it is updated, what the page is about, and which keywords represent the page's content. Many Search Engines use this information when building their indices.[6] Meta tags are terms, written in HTML within a web page, that describe the contents of that page. The more often a search term appears within a website's Meta tags and text, the more likely that an Internet Search Engine will put that web page at the top of its list of search results. Meta-tags are like ‘key words’ in a broad general connotation. A website owner uses these key words on the back end of his web pages to briefly identify the content of the said page. When a user’s search terms on the search engine match the meta-tags on a web page, the search engine provides the web page in its search result. This technique is popularly used in internet advertising. Internet advertising so far has been valued on the number of ‘hits’ a website receives. The greater the number of hits, the greater the number of people viewing the site, and the greater the value in advertising on that site. To generate hits, a website needs to position itself so that it will be accessed by the greatest number of users.
When one of the keywords in a website's Meta tags is a trademark owned by a competitor, controversy exists as to whether or not this constitutes trademark infringement or dilution. On the one hand, mere presence of a competitor's trademark in the Meta tags is arguably evidence of trying to piggy-back off the goodwill of a company by drawing their customers away from their intended target, and towards the Meta tag owner's site instead. And on the other hand, obtaining an advantageous marketing position is not necessarily prohibited by trademark law. Arguably, Meta tags are not capable of confusing source in and of themselves; they are only capable of potentially diverting attention away from the competitor, and towards the Meta tag's website owner.
In one of the first [6] cases on use of third party trademarks as meta-tags, Oppedahl and Larson, a US based patent law firm, filed a suit for trademark infringement against multiple defendants for use of words “Oppedahl” and “Larson” as meta-tags several times in a repeated manner. The plaintiff claimed infringement of trademark, dilution and unfair competition under the Lanham Act. The trademarks were not visible to the users on the websites of the defendants and when a user entered the defendants’ web pages through the search result links, the user would know that the websites were not of Oppendahl and Larson. The defendants claimed fair use defence and first amendment rights of freedom of speech. The district court of Colorado dismissed defendants’ claims and granted permanent injunction against the defendants enjoining them from using the said words without authorisation of the plaintiff.
In one of the first[7] cases on use of third party trademarks as meta-tags, Oppedahl and Larson, a US based patent law firm, filed a suit for trademark infringement against multiple defendants for use of words “Oppedahl” and “Larson” as meta-tags several times in a repeated manner. The plaintiff claimed infringement of trademark, dilution and unfair competition under the Lanham Act. The trademarks were not visible to the users on the websites of the defendants and when a user entered the defendants’ web pages through the search result links, the user would know that the websites were not of Oppendahl and Larson. The defendants claimed fair use defence and first amendment rights of freedom of speech. The district court of Colorado dismissed defendants’ claims and granted permanent injunction against the defendants enjoining them from using the said words without authorisation of the plaintiff.
In Playboy Enterprises Inc. v. Calvin Designer Label[8] Calvin Designer Label used some of the registered trademarks of Playboy Enterprises Inc. including PLAYBOY and PLAYMATE as meta-tags on their sexually explicit websites playboyxxx.com and playmatelive.com. A search for the said trademarks on any search engine would yield results containing Calvin’s web pages. The trademarks were mentioned numerous times in the webpages and in the meta-tags so that the defendant’s webpages appeared much more conspicuously in the search results. Granting a preliminary injunction to the plaintiff, the District Court of California ruled that plaintiff had shown a prima facie case that the defendant was infringing its trademarks by false designation of origin and unfair competition under the Lanham Act.
In an Indian case[9] , the proprietor of popular matrimony web portal ‘Bharat Matrimony’ and various other regional matrimony web portals brought an action for trademark infringement against Google India and owners of two competing matrimony web portals for using its trademarks as keywords in keyword advertising. High Court of Madras, in its elaborate judgement, held that the use of trademarks by both Google and the advertisers amounted to ‘use in trade’ but there was no infringement by either Google or the competitors since, the individual keywords comprised of only parts of the plaintiff’s trademarks and ‘not as a whole’.
Internet being a medium of communication is novel and unique in itself, wherein domain names are the sine qua non for cyberspace. The Internet is a network made by the networks of computers. Every computer connected to the internet networking system is given a unique electronic address, which is called the Internet Protocol (IP) address. Each identifiable location in cyberspace has its distinctive IP address. The IP addresses are numerical in nature and they are expressed by a lengthy sequence of binary digits (0 or 1).[10] It is difficult to remember the IP addresses since they are in numerical form and mistakes can be made while typing an intended IP address. Thus, for convenience, a word or alphabet-based system called ‘Domain Name System (DNS)’was introduced.[11] The Domain Names System essentially links domain names with Internet Protocol (IP) addresses. These names must be registered with an International Corporation for Assigned Names and Numbers (ICANN) authorised registrar.[12]
The domain name system has played a crucial role in the development of modern-day e-commerce. The recognition of goods and services as the goods or services provided by respective companies or entities is necessary in modern-day commerce since it helps the buyers to make the choices of goods and services. While in traditional commerce this function of identification is performed by the trademarks of the business entities, a Domain name does this same function of identification on the Internet platform. Selecting appropriate domain name is important task and this need to consider number of factors it includes incorporating the spelling of trademark within the domain name. Many consumers finds product on internet by entering the spelling of trademark which they are looking and hence the trademark performs the function of identification of enterprises in the real world, can also perform this identification function in the virtual world.[13] [13] However, a domain name, in itself, is not a trademark.
In India, the agency authorised by ICANN for the administration of domain names is the National Centre for Software Technology (NCST) at Mumbai.[14] They register the Second Level Domain (SLD) on a first-come-first- served basis and do not evaluate whether SLD is same or deceptively similar to a registered trademark. In fact, this is the root cause of trademark infringement in domain names. A domain name may, however, be registered with combination of different Top Level Domain (TLDs). For example, sony.com and sony.net may be registered separately and coexist. All trademark issues concerning domain names relate to this centrepiece.
‘Cybersquatting’ means registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.[15] Cybersquatting is an act of registering a domain name in bad faith to resell the domain name to the owner of the trademark for exorbitant prices. A cyber squatter registers popular unregistered domain names and sits on it (keeps it inactive) until a legitimate user makes an offer to purchase the same. A cyber squatter may either register the exact trademark as domain name or its simple variations such as minor alterations in the spelling etc. Most commonly, the cybersquatters block the domain names of famous trademarked brands in the hope of earning a fortune after trading them with the trademark owners.
To resolve the issues relating to registration of domain names in bad faith, ICANN along with World Intellectual Property Organisation (WIPO) has set up a mechanism called Uniform Domain Name Dispute Resolution Policy (UDNDRP or UDRP). This is an expedited arbitration proceeding administered by WIPO to resolve disputes between the domain registrants and third parties relating to all general Top Level Domains. When a person registers a domain name, he contractually agrees to resolve any disputes relating to the domain name through UDRP and therefore, the decisions of UDRP are binding on the registrant. A third party claiming trademark rights over a registered domain name has two options to seek remedy. He may either institute a suit for trademark infringement before an appropriate court against the registrant or file a complaint with the UDRP.
Due to technological constraints, a domain name cannot contain stylised letters or spaces. This significantly affects the courts’ analysis in cyberspace trademark cases.
In India Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. [16] was the first case to be decided by the Supreme Court of India on the issue of domain name protection. In the case, the Supreme Court pronounced that the Indian Trade Marks Act, 1999 is applicable to the regulation of domain names. The decision in favour of Satyam Infoway was premised on the court's observation that domain names may have all the features of trademarks. The court considered the confusion that may result in the market due to the use of identical or similar domain names. In such a situation, instead of being directed to the website of the legitimate owner of the name, a user could be diverted to the website of an unauthorized user of a similar or identical name. Upon arrival at the unauthorized site, customers might not find the goods or services customarily associated with the mark, and might be led to believe that the legitimate owner was misrepresenting its wares. This could result in the domain name's owner suffering a loss of market share and goodwill.
The misuse of domain name registration can also be done by registering a domain name almost similar to a well-known trademark or domain name. The deception of the customers can be caused if the registered domain name is similar to a well-known trademark misrepresenting the same goods or services, which these customers are looking for, or domain name registrars registers it as a simple typing mistake while typing well-known domain names e.g. registration of domain name “cococola.com” for the well-known trademark “Coca-Cola.” Therefore, typically the domain name registrant registers several possible input errors for well-known domain names. The obvious purpose of such a kind of mischief is to pass off goods or services by using the goodwill associated with the well-known trademark or domain name.[17] It may have been caused by misspelling the domain name or trademark or adding some letter or word to the domain name or trademark. These slightly variant domain names would be visited by the net users when they make mistakes in typing the well-known trademark or domain name. This kind of mischief is referred in general as typosquatting or sometimes cyber-piracy. The individuals involved in this kind of domain name acquisition are generally known as typo-squatters or cyber parasites.
The development of the Internet has changed the lifestyle of people. Using this advanced technology for in numerous causes has made it a striking feature in different aspects of human life. Both Domain names and trademarks are performing same function of Identification and it has brought them together in the cyber world. But this functional similarity resulted in conflicts between them. In this conflict, to determine the position of the domain name is essential. In the wake of the conflict between domain name and trademark, efforts are being made both at national and international levels to find a legal solution. Registration of domain names opens a platform through which one can exercise his freedom by the publication of his thoughts on a global platform and exercising his freedom of speech, expression, or communication or promoting his business and exercising his freedom of trade. Simultaneously, doing so if through this domain name the intellectual property right of trademark holder or copyright holder is getting violated, then use of such platform of domain name needs to be regulated. The pace with which the technology is marching has left the law far behind. Thus, it is high time that a suitable legislation must be adopted to address these complex problems.
