In today’s world Domain Name serves as an on-line trademark. Registering a domain name for your online business is a vital step to establish your name on the internet. Domain name registrations promote brands which use internet as a platform to do business, by helping netizens identify and recognise these brands. Domain name can be registered as trademark if it satisfies the requirements for being registered as a trademark, likewise, a trademark can be registered as a domain name provided it is done by the proprietor of the trademark.
Domain names being web addresses in the internet, is registrable if there are no previously registered identical domain names on record and unlike trademark registration procedure, domain names need not be registered in respect of particular goods or services. On the other hand, a trademark can be registered only if it is distinctive or has acquired distinctiveness and in the absence of identical/deceptively similar marks on record in respect of the goods or services for which it is sought to be registered. Apart from the complexity in procedure, another notable difference that exits between trademarks and domain names is that, Trademarks law allows same/similar trademark to be used by more than one user on the ground of honest concurrent use, if such use does not amount to infringement or cause confusion or dilution.
Since, the domain registration system follows the “first come, first served” policy, the principle of honest concurrent use as available in the case of trademarks is not applicable in the case of domain names. However, this often leads to issues like cybersquatting, which in simple terms refers to a situation when a domain name is registered by someone without intention to use it.
In the case of Manish Vij v. Indra Chugh [AIR 2002 Del 243], Cybersquatting has been defined as “an act of obtaining deceitful registration with an intent to trade the domain name to the legal owner of the name at a premium”.
Thus, cybersquatting involves buying an internet domain name that might be wanted or is the Trademark of another person, business, or organization with the intention of selling it to them and making a profit. Accordingly, nowadays most of the trademark owners, in the apprehension of cybersquatting, prefer to get their trademarks registered as domain names.
Tips to avoid Cybersquatting issues:
- Register the Domain Name as a Trade Mark
- Register Common Misspellings to avoid typo squatters
- Active Monitoring
- Searches Prior to Registration to make sure that any newly registered domain names do not infringe any trademarks
Why allow someone else benefit from the hard work you’ve put into building your brand and your website, if there is a way to prevent it? With an adequately protected trademark in hand, you may be able to challenge someone that copies your trademark and uses it as their domain name. Having a registered trade mark would also help the owner to use the alternate dispute resolution processes to recover a domain name from a malafide registrant.