Domain names, keywords and trade marks on the internet

1. What a domain name is, and the conflict with marks

A domain name is a human-readable address that the Domain Name System maps to an IP address. Names are allotted on a first-come, first-served basis by registrars accredited to ICANN (for generic top-level domains such as .com) or by national registries (for .in, the National Internet Exchange of India, NIXI). Because each name is unique across the world while trade marks are territorial and class-specific, two lawful owners of “Apple” marks in different classes cannot both have apple.com.

The conflicts are of three kinds:

• Cybersquatting: registering a name corresponding to another’s mark in order to sell it to the owner or to divert traffic.
• Typosquatting: registering misspellings (“radiff” for “rediff”) to catch mistyped traffic.
• Legitimate conflict: two honest traders with the same name, and criticism or fan sites using a mark.

2. The Indian cases

• Yahoo! Inc. v. Akash Arora (Delhi High Court, 1999). The defendant used “yahooindia.com” for internet services. The court granted an injunction in passing off, holding that a domain name serves the same function as a trade mark and that internet users, who may not be sophisticated, could be confused. A disclaimer on the site did not help, because the confusion arises before the user reaches it.
• Rediff Communication v. Cyberbooth (Bombay High Court, 2000). “radiff.com” was restrained. A domain name is more than an address: it identifies the business behind the site.
• Satyam Infoway Ltd. v. Sifynet Solutions, 2004 INSC 368, (2004) 6 SCC 145. Satyam had registered “sifynet” and allied domain names and used “Sify” widely; the respondent began using “siffynet”. The Supreme Court held that a domain name has all the characteristics of a trade mark and that passing off is available to protect it. It noted that the Trade Marks Act has no extraterritorial operation and so does not deal with domain name disputes as such, but passing off and the ICANN policy fill the gap. Since Satyam was the prior user with goodwill in “Sify”, the injunction was restored.
• Tata Sons v. Manoj Dodia (Delhi High Court, 2011) and many later decisions have declared well-known marks and ordered transfer or suspension of infringing domain names, often against defendants who did not appear.

3. Administrative dispute resolution

UDRP

ICANN adopted the Uniform Domain-Name Dispute-Resolution Policy in 1999, following a WIPO report on the internet domain name process. Every registrant of a generic top-level domain agrees to it in the registration contract. A complainant must show three things:

1. the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
2. the registrant has no rights or legitimate interests in the name; and
3. the name has been registered and is being used in bad faith.

Bad faith is shown, for example, by registration primarily to sell the name to the owner, to prevent the owner from reflecting its mark, to disrupt a competitor, or to attract users for gain by creating confusion. The only remedies are cancellation or transfer. Proceedings are on documents, take a few weeks, and are administered by providers such as the WIPO Arbitration and Mediation Center. Parties can still go to court.

INDRP

The .IN Domain Name Dispute Resolution Policy, administered by NIXI, follows the UDRP closely. A complaint is decided by an arbitrator appointed by NIXI, and proceedings are treated as arbitration under the Arbitration and Conciliation Act, 1996.

4. Jurisdiction over websites

In Banyan Tree Holding v. A. Murali Krishna Reddy (Delhi High Court Division Bench, 2009), the court held that the mere accessibility of a website in Delhi does not give Delhi courts jurisdiction in a passing off action. The plaintiff must show that the defendant purposefully availed itself of the forum, for example by an interactive site aimed at customers there with a commercial transaction, and that injury resulted in the forum. The court drew on the US “sliding scale” in Zippo Manufacturing v. Zippo Dot Com (1997) and the “effects” test.

5. Keywords and online advertising

• Google France v. Louis Vuitton (CJEU, 2010): a search engine that stores keywords corresponding to marks and displays ads does not itself use the marks in the course of trade, but an advertiser who buys a competitor’s mark as a keyword uses it and infringes if the ad does not enable a reasonably well-informed user to tell whether the goods come from the owner or a third party.
• Interflora v. Marks & Spencer (CJEU, 2011): keyword use that offers an alternative, without dilution or free-riding, is fair competition.
• Google LLC v. DRS Logistics (Delhi High Court Division Bench, 2023): the court held that Google’s Ads programme, in which it suggests and sells trade marks as keywords, involves use of the marks in the course of trade, and doubted that Google could claim to be a passive intermediary for that activity. Whether a particular keyword use infringes depends on whether it causes confusion or takes unfair advantage, which the trial court must decide.

6. Marketplaces and intermediaries

Online marketplaces can claim safe harbour under section 79 of the Information Technology Act, 2000 if they act as intermediaries and remove infringing listings on notice. In Christian Louboutin v. Nakul Bajaj (Delhi High Court, 2018), a luxury goods website that curated, authenticated and promoted products was held to be more than an intermediary and to have lost the safe harbour, by reason of its active role. The CJEU in L’Oréal v. eBay (2011) similarly denied neutrality to a marketplace that optimises and promotes listings.

How this is examined

A question on “domain names and trade marks” should give the nature of a domain name, the Indian cases ending with Satyam, the UDRP elements and INDRP, and the jurisdiction point from Banyan Tree. Keyword advertising and marketplace liability make a strong closing section on current problems.