Generic name as Domain and its Protection under Trademark law
The new era of e-age is loaded with information and knowledge and domain name is an integral part of the whole system. Domain names are the internet Protocol address which leads you to find your subject easily, leading to that exact particular page. People usually go with generic terms for their domain name as it is easy to find and also known to people. It is observed that Generic term as a trademark can be registered as soon as it acquire secondary meaning in the market. But generic term for a domain name is susceptible to cancellation until and unless it acquires distinctiveness through extensive use, goodwill and reputation. Domain name not only tells about the type of product/services but also attracts the mind of the customers at one glance. And helps in growth of business by popularity, publicity and profitability of business in economic sectors.
Domain names vs. Trademark
The domain names as trademarks or service marks are registered and protected at the entire global level supremely by only one organization which is ICANN [Internet Corporation for Assigned Names and Numbers] along with the national and international protection under the directly concerned national Trademark Law and diverse International Trademark Treaties of the world.
The function of Domain name and trademark is exactly the same. Where domain name works only online as virtual image of the business, there trademarks works offline in graphics. In India, the Indian Trademark registry have been given registration to many generic domains, the consequence of which is the infringement and passing off the name. Rightly said, Trademark supports the face value of our business or profession, while a domain name increases access value of our business from any remote place of the world over with no geographical limitations.
It is well understood now that no one can have monopoly over any generic name. But we always end up choosing generic name for the domain name because it is easier for the consumer to identify the purpose or function of the website and/or domain name. While many domain name users would want that there is no infringement of that word or domain name, it becomes difficult to restrain any person from using an identical domain name. Let’s take the example of booking.com, it is a website dedicated to online travel & bookings, but it will be a weak domain name/trademark as all businesses who provide such services will have to use the word booking in one way or the other. If one were to adopt ebooking.com for the same services, then booking.com will not have the right to restrain them because it is precisely what the domain name ebooking.com provides i.e. services for online travel & booking. The point which has to be kept in mind is that if these descriptive words attain and acquire the distinctiveness through extensive and continuous use then it can be registered as trademark. One can say that use itself does not establish distinctiveness. The extent to which a mark has lost its primary meaning and the extent to which it has acquired a secondary one is a conclusion which has to be drawn from evidence.
Domain names as Trademarks and its legal perspective:
Recently the US Supreme court ruled that the term booking.com is not generic. The generic (or non-generic) character of a particular term depends on its meaning to consumers, i.e., do consumers in fact perceive the term as the name of a class or, instead, as a term capable of distinguishing among members of the class. The ruling gave registration to a generic term name which will lead to proliferation of generic.com marks granting the owners to have monopoly over an easy to remember the domain names. The Supreme Court in the booking.com judgment also acknowledges the fact that a “generic.com” term might convey to consumers source identifying characteristic. The court also held that When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner. One aspect that the court touched upon was appropriate for domain name registrations, the court stated that all descriptive marks are intuitively linked to the product or service and thus might be easy for consumers to find using a search engine or telephone directory.
In India, domain names may be granted protection as a trademark or service mark under the provisions of Trademarks Act, 1999 (hereinafter referred to as “the Act”), provided that the domain name fulfils all requirements to be properly registered under the Act and the Registered Proprietor of a domain name gets all the rights as commonly availed by any Trademark owner. Under section 29 of the Act, any person, violating a domain name which is registered as a valid and subsisting trademark under the Indian Trademark Law will be held liable for infringement of Trademark under section 29 of the Act and under section 11(3) of the Act, an owner of a trademark who has not registered his mark is also entitled to protection of his mark if he is the prior user, his mark has acquired distinctiveness and there is misrepresentation by anyone else with regard to his goods which is likely to deceive the relevant public can protect his domain name under the law of passing off.
It is quite clear that importance of internet domain names has now increased manifold, both in connection with internet communication and business & commerce on the internet. As the internet is fast becoming an immensely popular and highly preferred platform for accelerated flow of business related information of all types, by people and entities in all economic fields, there is an imperative need for getting proper protection to the unique domain names, like trademarks and service marks. This increasingly desirable protection to the internet domain names as trademarks, is now quite achievable under the auspices of the ICANN and the WIPO. However, for the best possible, efficient, and rigorous protection of domain names at the level global, close harmonization of the trademark laws of individual countries worldwide, is also highly desirable. In judgments like, Bombay High Court in People Interactive (India) Pvt. Ltd. v Vivek Pahwa & Ors., dealt with a passing off dispute between shaadi.com and secondshaadi.com held that the word shaadi is a generic term and have not attained any secondary meaning in the market and no primary meaning in the minds of the customers. Recently in 2018, in Bigtree Entertainment v Brain Seed Sportainment, the Delhi High Court held that the prefix bookmyshow is not distinctive even of the fact that it is the topmost result on the google and for the customers.
For proper registration of a domain name as a trademark or service mark, this must be unambiguously unique from all other domains names and well-known trademarks on the internet, so that it does not mislead, confuse, or deceive customers of other companies engaged in the same or different fields, or violate public order or morality. Thus, a well-protected domain name is certainly immensely helpful for security, worldwide prominence, and profitability of a business, quite like an internationally protected trademark or service mark. Hence, proper registration and protection of both the trademark and domain name are advisable and imperative.