THE IMPORTANCE OF PROTECTING YOUR DOMAIN NAME

Domain Names are online addresses which carries the same weight as the Trademark, in other words it is referred as an onlinetrademark. Domain name and trademark are the same in their creation, screening and clearance and protection.

The rapid increase in online business and advertising prompted a growing demand for domain names registration that are linked to particular businesses, goods or services. The scramble to reserve domain names has caused several disputes regarding intellectualproperty infringement.

Many have the mistaken belief they have the right to use a particular domain name if they have successfully registered it with a company. The belief is by registering a domain name a trademark is no longer necessary to reserve rights to use the domain name this is simply not true, when you register a domain name, it is true you are purchasing certain rights to use the domain name. However, merely registering a domain name does not necessarily give you rights to use the domain name. This is because any rights you acquired by registering the domain name are still limited by and subject to trademark laws.

Registration of domain names is a preemptive measure against cybersquatting that can save a lot of money in the long run because domain names are relatively cheap compared to trying to stop someone else infringement of a trademark.

DOMAIN NAME PROTECTION IN TANZANIA

In Tanzania there is no specific statute that deals with the protection of the domain names, however that does not mean that disputes arising of domain name infringement cannot be settled in Tanzania, there are several decided cases from other common law jurisdictions that have curbed the issue of improper use/infringement of domain names of which Tanzanian Courts may adopt as the Court’s sees fit.

In summary, the followings are the common law decided case for the protection of Domain Names.

YAHOO!, INC. V AKASH ARORA & ANR [1999 (19) PTC 201 (DEL)

In what is known till date as a Landmark judgment in cybersquatting, the Delhi High Court held that a domain name served the same function as a trademark and was therefore entitled to equal protection. As the domain names of the plaintiff ‘Yahoo!’ and defendant ‘Yahoo India!’, were nearly identical and phonetically similar, there was every possibility that internet users would be confused and deceived into believing that the domain names had a common source or a connection. The court further observed that the disclaimer used by the defendants was not sufficient because the nature of the Internet is such that use of a similar domain name cannot be rectified by a disclaimer, and that it did not matter that ‘yahoo’ is a dictionary word. The name had acquired uniqueness and distinctiveness and was associated with the plaintiff.

REDIFF COMMUNICATION V. CYBERBOOTH & ANR 2000 PTC 209

Plaintiff, Rediff Communication Limited was an online media company carrying on the business of communication and providingservices through the internet since 6th January 1997. On 8th February 1997, Plaintiff registered the domain name ‘REDIFF.COM’, with Network Solutions Inc. In March 1999, Plaintiff learnt that the Defendants have obtained registered the domain name ‘RADIFF. COM’.

Plaintiff filed a suit for permanent injunction restraining the Defendants from using the mark/domain name ‘RADIFF’ or any other similar name as to pass off or enable others to pass off their business or goods or services as for the business or goods or services of the Plaintiff.

The controversy in this case centered around the protection of domain name on the Internet. The issue was, whether as a result of misrepresentation, a real likelihood of confusion or deception to the public can be caused, resultantly leading to consequent damage to the Plaintiffs.

Undoubtedly the name used by the Defendant is identical to the Plaintiff’s and there is every possibility that it could create deception and confusion.

The principle underlying the action for passing off is that no one is entitled to carry on his business in such a way as to lead to the belief that he is carrying on the business of another man or to lead to believe that he is carrying on or has any connection with the business carried on by another man. Both the Plaintiff and the Defendants are operating on the website and providing information of similar nature and offer facility of sale of books, music cassettes and compact discs and flowers. Both offer a chat line, and both presently offer a cricket opinion poll. There can be no doubt that the two marks/domain names. ‘REDIFF’ of the Plaintiff and ‘RADIFF’ of the Defendants are almost similar. When both domain names are considered it is clearly seen that two names being almost similar in nature there is every possibility of internet user being confused and deceived in believing that both domain names belong to one common source and connection although two belong to different persons.

The court is prima facie satisfied that the only object in adopting the domain name ‘RADIFF’ was to trade upon the reputation of the Plaintiff’s domain name.

The argument that the field of activity is different is also without any substance as the field of activity of Plaintiff and the Defendants is clearly similar and overlapping, a domain name is more than an Internet address and is entitled to the equal protection as trade mark.

SATYAM INFOWAY LIMITED. V. SIFYNET SOLUTIONS PVT. LIMITED., SUPREME COURT OF INDIA AIR 2004 SC 3540

This is a very famous and landmark case where the Supreme Court of India decided on the issue of domain name protection for the first time in its history. This was the case wherein the apex court declared that the Indian Trade Marks Act, 1999 was applicable to the regulation of domain names as well.

Satyam Infoway (hereinafter referred to as the appellant) had registered several domain names pertaining to its business: sifynet.com, sifymall.com, sifyrealestate.com, in the year 1999. It held that the word “Sify” was a combination of elements of its corporate name “Satyam Infoway” and was a term that had garnered substantial goodwill in the market. Meanwhile, Sifynet Solutions (hereinafter referred to as the respondent) had started using the word “Siffy” as part of the domain names under which it carried on internet marketing (namely siffynet.com and siffynet.net). It claims to have registered the same in the year 2001.

Subsequently the appellant filed a suit in City Civil Court, Bangalore seeking an injunction against the respondent. The appellant held that the respondent had registered the similar sounding domain names intentionally in order to carry out their business transactions under the goodwill and brand name of the former. And that it would create a confusion in the minds of the public who would think that the services of Sifynet belongs to Satyam Infoway. The respondent contended that unlike a trade mark, the registration of a domain name did not confer an intellectual property right in the name.

IT HELD THAT THOUGH NO THERE WAS NO LAW IN INDIA WHICH EXPLICITLY DEALS WITH THE DOMAIN NAMES, IT FALLS WITHIN THE AMBIT OF THE TRADE MARKS ACT. IT FURTHER OBSERVED THAT A DOMAIN NAME ENJOYED ALL FEATURES OF A TRADEMARK. ACCORDINGLY, IT RULED THAT IF THE RESPONDENT WAS ALLOWED TO FURTHER CONTINUE USING THE DOMAIN NAMES IT WOULD IN ALL LIKELIHOOD CREATE A CONFUSION IN THE MINDS OF THE GENERAL PUBLIC.

The court ruled in favor of the appellant and granted the injunction in their favor. It held that the appellant was the prior user of the word ‘Sify’ as a result of which it enjoyed immense popularity and goodwill in relation to internet and other computer related services. Thereby, if the respondent is allowed to further continue with the use of the domain names it would in all likelihood create confusion in the minds of the public. And that it may in all possibility affect the business of the appellant.

Thereafter, the respondents appealed to the Karnataka High Court. The Court stated that respondent had already invested a considerably high amount of sum in developing a customer base for its business and it would consequently suffer immense hardship and irreparable injury if the court ruled in the appellant’s favor. Further it held that the business which the parties engaged in were different and therefore there was no likelihood of any confusion in the minds of the public.

Not satisfied with the decision given by the Karnataka High Court, the appellants went for an appeal before the Supreme Court of India. The case was decided by a division bench comprising Justices Ruma Pal and P. Venkatarama Reddi. It set aside the decision of the High Court and ruled in favor of the appellants. A user could be diverted to the website containing the unauthorized domain name. And upon his arrival at the website, if he does not find the goods or services associated with the mark, he might think that the legitimate owner was misrepresenting the claims. This would result in the loss for the legitimate owner, thereby affecting his goodwill and brand name.

Thus, the apex court granted an injunction in favor of the appellants, thereby restraining the respondents from further using the domain names in their business transactions.

CONCLUSION

The way to avoid troubles is to choose a domain name that satisfies your own marketing needs and doesn’t get in the way of anybody else’s trademark rights and ensure that your domain name is registered under your rights.

FURTHER INFORMATION:

This editorial is intended to give you a general over view of the Law. If you would like further information on any issue
raised in this column, please contact.

Patrick Sanga 
Partner
E: p.sanga@vemmaattorneys.co.tz
M: +255 686 999 993

Bernard Nkwabi
Legal Officer
E: b.nkwabi@vemmaattorneys.co.tz
M: +255 653 374 414