TRADEMARK AND DOMAIN NAME: A COMPREHENSIVE LEGAL ANALYSIS

ABSTRACT:

It’s a common jurisprudence that every person has rights over his or her property. The person who is responsible for the invention or innovation of something must be given the whole credit of his work. With the emergence of time and technology, the need arose to take into consideration the rights of a person over such inventions, so that no one other than that person can take credit for such invention. Hence, the concept of Intellectual property rights came into existence. Intellectual Property Rights[1] basically means that the person who has invented any idea or a product has an absolute right to enjoy it without any interference. In modern times, with the evolution of the internet and technological advancements, these rights are now globally recognized. Even the scope of registering domain name is that much necessary as is the scope of registering Trademark is. This article deals with understanding the concepts of Trademark and Domain Name, legal problems related to them, and scope of them.

Keywords: Trademark, Domain Name, Intellectual Property, Cybersquatting, etc.

INTRODUCTION:

The evolution for the recognition of the rights of intangible property like inventions, innovations, creative thinking, etc. has undergone a variety of changes. From the name or logo etc. of the company to its design of the product, everything is part of the intellectual property. The Trademark and domain name are all included within the ambit of intellectual property. The Domain Name is recognized under the Trademark Law, but it’s a type of intellectual property which is recognized as a business identifier with the same legal characteristics as a trademark.

Earlier domain name was not considered as the part of the Intellectual Property Rights but with the development of the E-commerce and online marketing the requirement arose regarding registration of the domain name because many of the people were infringing the rights of the others by using identical names or misusing them to gain profits. Hence, the courts widened the scope of the use of the IPR.

CONCEPT OF TRADEMARK AND DOMAIN NAME:

The term ‘Trademark’ consists of two terms- ‘Trade’ and ‘Mark’. So, we can say that the mark which is used for the trade can be referred to as Trademark. The Trademark is that branch of the Intellectual Property Rights which protects the logos, products, designs, combinations etc. that identify and distinguish the source or service or goods of one party from those of another. It aims at protecting consumers from confusion and protecting the goodwill and reputation that businesses build through their marks. The purpose of the Trademark is to build fair competition in the market and to encourage innovation. The functions of a trademark are;

1. It indicates the origin of the source and identify goods and services.
2. It guarantees a particular quality to the consumer.
3. It serves as a tool for advertising and marketing.

Domain Name is the digital address. It is recognized as a business identifier with the same legal characteristics as that of the Trademark. A domain name is a unique alpha-numeric string which translates an IP address into the form easily understandable by human beings and is easy to memorise. A domain name can be registered as a Trademark if it is unique, non-offensive and is used commercially to identify goods and services. Even if the domain name is not registered, the owner can sue for passing-off action if a competitor uses a deceptively similar name to steal their goodwill. The function of the domain name is:

1. It helps in identifying the source of particular goods and services online.
2. It helps in maintaining goodwill and reputation of businesses online.
3. It helps in easily accessing online to the business website by the consumers.

Thus, the domain name comes under the ambit of the Trademark under the Intellectual Property law.

JUDICIARY ROLE FOR EVOLUTION OF TRADEMARK AND DOMAIN NAME JURISPRUDENCE:

“Trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours”[2]

In the case of Cadbury India Limited and Ors. v. Neeraj Food Products[3], the Hon’ble Supreme Court held that the Hon’ble Court observed that the spirit, intentment and purpose of Trademark legislation is to protect the trader and consumer against dishonest adoption of ones Trademark by another with the intention of capitalizing on the attached reputation and goodwill.

The domain name is protected under the Trademarks Act, 1999. The Hon’ble Court in the case of Satyam Infoway Ltd. vs. Siffynet Solutions Pvt. Ltd.[4] held that:

“The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet has development from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the internet, a domain name is also used as business identifier. Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site. In the commercial field, each domain name owner provides information/services which are associated with such domain name. Thus, domain name may pertain to provision of services within the meaning of Section 2(z). A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, services to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online internet location. Consequently, a domain name as an address must, of necessary, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical.”[5]

The Hon’ble Delhi High Court in the case of Yahoo Inc. v. Akash Arora[6] held that the Trademarks Act also applies to the cases of domain name, and the domain names are protected in a similar way as the trademark in this Act. Using similar domain names is the infringement of the rights of a person and to protect their goodwill and reputation in the businesses they are entitled to protection under the Act.

Hence, it can be concluded that if a mark is distinctive and unique, then it can be registered as a trademark. If a mark has acquired distinctiveness through prolonged use, then also it can be registered as a trademark. Example; the letter and design of ‘M’ in McDonalds, etc. This is same in the case of Domain names also. In the case of Yahoo Inc. Even though the defendant used the word Yahoo India but still its domain name is like that of the plaintiff which is leading to the confusion among the customers regarding the original website and was hampering the goodwill of the plaintiff’s business. The word ‘Yahoo’ is a common dictionary word which can be used by anyone, but this name acquired distinctiveness through prolonged usage and hence, using the same mark and domain name is the violation of the plaintiff’s right.

TRADEMARK ISSUES REALTED TO THE DOMAIN NAME:

1. Cybersquatting:

“Cybersquatting happens when somebody registers, sells, or uses a domain name that incorporates the trademark or service mark of an existing company, usually intending to sell the domain name to the mark’s owner at a profit. It includes any time somebody registers, sells, or uses a domain name in order to profit from a trademark’s goodwill.”[7] If a person is using the domain name for such fraudulent practices, then he/she can be sued by the owner for such misuse.

2. Cyber Twins:

It basically means that when both the parties, i.e., the domain name holder and the person challenging it, both have the entitlement to use the said domain name. It means both parties are using it in good faith, and neither of them has the malicious intent to cause problems for the other party.

3. “Reverse Domain Name Hijacking:

As the name suggests, RDNH is the inverse of Domain Hijacking, when a trademark holder falsely accuses a legitimate domain name holder with cybersquatting and wrongly pressurizes him to give it up to another party. For instance, the infamous case of Indian Hotels Company Ltd. and the domain name IndianHotels.com.”[8]

CONCLUSION:

Hence, it can be concluded that the registration of Trademark and Domain name is essential for a company to maintain its reputation and goodwill in society. The Trademarks and domain names are the ways by which the consumer can identify a brand and company and hence their usage and maintenance is important for a company. The online frauds and misuse of these marks are the hindrance for the company’s repute, and it’s difficult for the company to catch and identify such hackers. Hence, there are proper legislations and acts as well as the regulatory frameworks to protect companies from such offenders and for their smooth functioning of the business.

REFERENCE(S):

[1] Intellectual property rights are the rights given to persons over the creations of their minds. They usually give the creator an exclusive right over the use of his/her creation for a certain period of time. -WTO, https://www.wto.org/english/tratop_e/trips_e/intel1_e.htm, (last visited on 22 February 2026)

[2] The Trade Marks Act,1999, S.2(zb), No.47, Acts of Parliament, 1999(India)

[3] Cadbury India Limited and Ors. vs Neeraj Food Products, 142(2007) DLT724, MIPR2007(2)269, 2007(35) PTC95(DEL).

[4] Satyam Infoway Ltd vs Siffynet Solutions Pvt. Ltd, AIR 2004 SUPREME COURT 3540.

[5] ibid.

[6] Yahoo Inc. V. Akash Arora and Anr., 78 (1999) DLT 285

[7]    Justia, https://www.justia.com/intellectual-property/trademarks/cybersquatting/, (last visited on 22 February,2026).

[8]  LegalDocs, https://legaldocs.co.in/blog/trademark-issues-related-to-internet-domain-name, (last visited on 22 February2026)