(INTERNATIONAL TRADE LAW

Project on

‘INCLUSIVE GROWTH AND WTO’

Submitted To: Submitted By:

Dr. Gargi Chakrabarti Surabhi Mathur

Faculty of Law Shikha Rajan

NATIONAL LAW UNIVERSITY, JODHPUR

February 16, 2019

.

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 CONTENTS

1. Introduction………………………………………………………………………………04
2. Concept of Domain Names……………………………………………………………....05
3. Procedure of registration of domain names…………………………………………...…07
4. Provisions in Indian Trade Marks Law for Domain Names………………………...…...09
5. Role of ICAAN in domain name dispute policies………………………………...……..11
6. International efforts to curb clash between trademarks and domain names…………......12
7. Cases regarding domain name disputes: India & USA…………………………………..13
8. Conflicts of Jurisdiction in Domain Names……………………………………………...15
9. Conclusion……………………………………………………………………………….16

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Introduction:

Despite a recent rebound in trade, a prolonged slowdown in the pace of trade reform is leaving in
place widespread trade distortions and putting at risk the strength and durability of the global
economic recovery. A global economic upswing that began around mid-2016 grew into a
synchronized expansion underpinned by trade-intensive investment growth. But this largely
cyclical development, and a more recent period of unusually high trade tensions—which itself
poses serious concerns—risk masking the need for substantial and durable trade opening on a
global basis. Remaining trade distortions are a key factor behind the trade tensions, making the
need to reinvigorate trade reform all the more urgent.

As new trade reform initiatives lagged and the benefits of past reforms levelled off, trade growth
slowed. Global trade volumes grew at some 7 percent annually during the 1990s— double the rate
of global GDP growth—but decelerated markedly as the ratio of trade growth to GDP growth fell
to 1.5 during 2001–07 and to unity in the period after 2008.While several factors lie behind the
slowdown, a substantial part represents a slower pace of trade reform following the remarkable
progress made from the 1980s to the early 2000s. It is time to reinvest in open, rules-based global
trade. Since World War II a system of global trade rules has brought more openness, stability, and
transparency to trade, nurturing unprecedented world economic growth. It is time to reinvest in
that system to serve the modern economy. To think that the work of trade reform is essentially
complete is a fallacy that neglects both the significant remaining obstacles to traditional trade and
the opportunities presented by the rise in services and technology for greater trade-driven
prosperity. This is the focus of the sections that discuss areas with high potential for growth
(Section II) and inclusiveness

Extending rules-based trade openness poses new challenges and could require fresh thinking and
exploring all available approaches. At the domestic level, trade policy and trade negotiations
increasingly reach “behind the border” and interact with domestic regulatory agencies, sectoral
ministries, and sub-national entities. Unlike a classical tariff-cutting exercise, for example,
successfully opening to services trade brings additional complexities: policy coherence becomes
critical in designing and implementing reform. For any particular trade policy areas it follows that
some countries may be prepared to move more quickly than others.

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Trade area with high growth potrntial

Reinvigorating trade integration should be a key component of the global policy agenda to boost
economic growth. Despite the upswing that began in 2016, a longer-term trade slowdown has
coincided with weaker productivity growth. This has occurred because the benefits of past major
trade policy reforms have played out and new initiatives have lagged. The pace of new trade policy
reforms at the global level has slowed since 2001; this has not only left an unfinished agenda in
traditional areas, but has also meant that the trading system has not kept pace with modern
economic developments. At the same time, new trade restrictions imposed since the global
financial crisis have begun to weigh on global trade; this trend has only grown recently.

Certain “frontier” areas of trade policy have high potential to lift global productivity and durably
increase medium-term growth. The digital economy revolution is opening new opportunities for
cross-border trade and investment (Meltzer, 2016). This is changing the nature of trade, elevating
the roles of policies relating to electronic commerce (“e-commerce”), investment, and services
trade and revolution s opening new oppurtunty

This reflects nexus (Richard Baldwin). The effectiveness of this nexus, and of international supply
chains, is also grounded in secure property rights, including for intellectual property. The growing
overlap between trade regimes and domestic policy puts extra emphasis on effective regulatory
cooperation. While the benefits are high in these areas, so too are the risks. International rules in
these areas are less developed than those in the more traditional areas of trade. Moreover, broadly
speaking the existing international obligations—whether in the WTO or in other trade and
investment agreements—provide limited protection against backsliding from existing policies.
This is also an important consideration, particularly in an environment of rising trade tensions.
Policymaking and international rules in these areas are already linked. The WTO General
Agreement on Trade in Services (GATS), for example, addresses many aspects of investment in
service sectors. Countries’ GATS commitments also apply to the digital delivery of services, and
the GATS provides a built-in mechanism for the pursuit of regulatory cooperation .1 The growing
overlap between trade regimes and domestic policy emphasis

1
Developing countries’ unilateral reforms in the 1980s/90s and such initiatives as EU expansions, the conclusion of
the Uruguay Round (1994) and creation of the WTO, and China’s WTO accession (2001) strengthened

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Service trade

Trade policy lags far behind the evolution of the services sector in the global economy. Services
comprise some two-thirds of global GDP and employment. Yet the limited opening of service
sectors to foreign competition impedes trade and productivity growth throughout the sector and
the broader economy. As innovation further shapes which services can be traded across borders
(Box 1, GATS Mode 1) it is becoming even more important to address obstacles to that trade. It is
also important that countries open up to international competition in services provided in other
ways, including through foreign direct investment and the operation of foreign affiliates (relating
to GATS Mode 3), and the temporary movement of workers (“natural persons”) across borders for
the purpose of supplying services (GATS Mode 4).

Improved access to services from trade reform promotes economy-wide productivity and income
growth. Given the sector’s size, the role of services productivity in overall economic performance
is evident. Less appreciated, though, is the interplay between services reform and manufacturing
performance. Services comprise significant shares of the value added of all sectors in the economy,
and this is reflected also in trade figures: while only a quarter of global trade is traded as services,
on a value-added basis half of the value of global trade originates in service sectorsCountry studies
provide compelling evidence that openness in services contributes

India’s reforms in the 1990s brought more openness, better regulation, and greater investment,
allowing Indian manufacturing firms to source services from a range of domestic and foreign
providers operating in a more competitive environment. Manufacturers’ access to better, more
reliable, and more diverse business services enhanced firms’ ability to invest in new opportunities
and technologies, to concentrate production in fewer locations, to efficiently manage inventories,
and to coordinate decisions with suppliers and customers. Arnold and others (2016) studied the
experience of 4,000 manufacturing firms during the period of services reforms and concluded that
procompetitive reforms in banking, insurance, telecommunications, and transport boosted the
productivity of both foreign and locally-owned manufacturing firms. Other empirical studies
reinforce these findings, but also stress the importance of well-designed reforms accompanied by
sound domestic regulation. The division of domain name is done in hierarchy, which is discussed
as follow

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Despite the economic importance of competitive service sectors, indicators point to policy barriers
to services trade much higher than those affecting trade in goods. While estimates of ad valorem
equivalents for services trade are more uncertain than those for goods trade, OECD (2017)
concludes that “empirical analysis reveals that the costs of services trade and investment barriers
are high, largely exceeding the average tariff on traded goods, and that these costs apply to all
modes of supplying services abroad.” Within the wide divergences, estimates of 20 to 40 percent
are common, with some much higher. The trade costs of concern include both those policies that
explicitly target foreign suppliers, but also costs arising from domestic regulatory practices that
fall short of best practice in competition and rule-making and may thus de facto discriminate
against foreign suppliers”2and their consideration

Sound domestic regulation has a particular role in the service sector. Ranging from prudential
regulation in financial and professional services to pro-competitive regulation in a variety of
network-based services, sound domestic regulation is critical to realizing the benefits of services
liberalization. Devising and implementing such regulation is not easy and there are acute
regulatory problems especially but not just in developing countries (Mattoo and Sauvé, 2003).
Regulatory institutions can be costly and may require sophisticated skills. To some extent such
costs can be reduced by regional cooperation and recovered through fees—but external assistance
could help ensure that adequate regulation is in place.

Services trade liberalization has been negotiated multilaterally as well as in regional, plurilateral,
and bilateral contexts. The first multilateral services trade negotiations took place in the context of
the Uruguay Round, resulting in the General Agreement on Trade in Services (GATS) in 1995
(Box 1). The GATS brings a critical framework for provisions on services trade but (with some
exceptions) by and large the Uruguay Round outcome did not lead to significant liberalization. In
the Doha Round, services negotiations aimed to improve the GATS and to deepen country-specific
GATS commitments, but were made dependent on negotiations in other areas offers were
exchanged but little negotiating progress was made. Services trade liberalization has been
negotiated multilaterally as well as in regional, plurilateral, and bilateral contexts to some extent
such costs can be reduced by regonal but external assistance could help ensure that evert thing is
on its plsce“It is often seen that second-level domains are the name of the business or vendor that

2
Electronic commerce includes goods and services produced, distributed, marketed, sold, or
delivered through electronic means.
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registered the domain name with a registrar. For the potential customers the brand name, company
One reason for limited negotiated liberalization thus far has been the inability to address concerns
about international market failure. These concerns range from matters of financial regulation and
data privacy, to monopolistic practices and irregular immigration. A form of “negotiating tunnel
vision” in trade negotiations has led to a focus solely on reciprocal market opening, rather than on
creating or promoting the (regulatory and other) preconditions for liberalization. Greater
international cooperation involving regulators is needed to deliver both liberalization and
enforceable agreements, and to improve the framework for services trade in such areas as
government procurement in services, trade-distorting subsidies in the service sector, crossborder
data flows, and mutual recognition of credentials in the area of professional co’.”3 Trade policy
lags far behind the evolution of the services sector in the global economy.

Services comprise some two-thirds of global GDP and employment. Yet the limited opening of
service sectors to foreign competition impedes trade and productivity growth throughout the sector
and the broader economy. As innovation further shapes which services can be traded across
borders (Box 1, GATS Mode 1) it is becoming even more important to address obstacles to that
trade. It is also important that countries open up to international competition in services provided
in other ways, including through foreign direct investment and the operation of foreign affiliates
(relating to GATS Mode 3), and the temporary movement of workers (“natural persons”) across
borders for the purpose of supplying services

Progress on services trade reform has been slow—despite the risk of backsliding on current levels
of openness and the potential for large benefits from greater openness—but some efforts have been
made. International commitments on services trade remain limited. 12 GATS (Article XIX) also
requires WTO members to “enter into successive negotiations, beginning [in 2000] and
periodically thereafter, with a view to achieving a progressively higher level of liberalization.”
This negotiating mandate was integrated into the broader Doha Round in 2001 but fell victim to
disagreements over agriculture and other issues (Adlung, 2015). Services provisions in regional
agreements that go beyond the GATS have helped to narrow the gap between commitments and
applied policies, but—with some important exceptions and innovations—have not generally led

3
Developing countries’ unilateral reforms in the 1980s/90s and such initiatives as EU expansions, the conclusion of
the Uruguay Round (1994) and creation of the WTO, and China’s WTO accession (2001) strengthened the global
trade policy landscape and promoted the growth of global value chains.

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to new liberalization.13 Though currently stalled, negotiations among over 20 economies
(including the EU) toward a Trade in Services Agreement (TiSA) have been undertaken outside
the WTO framework, but many of the participants have indicated a desire to eventually bring any results
inside the WTO in order to build on the existing GATS commitments. There are also specific recent efforts
on services within the WTO

Regulatory cooperation

Regulatory cooperation takes on increased importance in a world of global value chains and complex
production relationships.15 Unnecessary divergences in product regulations segment markets and
impose a heavy burden on trade, and trade agreements increasingly seek to limit those costs while
respecting differences in regulatory objectives. Regulatory diversity is a common source of trade tensions,
suggesting also the importance of transparency and dialogue. Like some of the other areas highlighted in
this paper, regulatory cooperation requires strong coordination within national governments and
internationally—in this case, joining the trade and the regulatory communities. Also like some of the other
areas, the ideal of regulatory cooperation at the fully global level can be challenging; progress among
countries with similar objectives and capacities is valuable, however, especially if done under the WTO
umbrella, such as through equivalence agreements itself.”4

Regulatory cooperation operates through several channels to lowers costs and increase
competition. Cooperation mechanisms may range from harmonization (through the development
and adoption of international standards and their use as a common basis for domestic regulations),
mutual recognition, consultation and information exchange, and conformity assessment
procedures. Provisions for transparency and process, such as consultation periods and the ability
of foreign entities to comment on proposed regulatory changes, minimize trade tensions and build
trust and confidence between trading partners and their regulators. At the WTO, governments have
stressed that regulatory cooperation between Members is an effective means of disseminating good
regulatory practices (WTO, 2011a,b).

empirical analysis of EU goods trade found that a 1 percent increase in the use of internationally
harmonized standards increased product variety by 0.3 percent (Shepherd, 2007); harmonization
also increased the number of U.S. firms entering the EU market and their trade volumes (Reyes,

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International regulatory cooperation is usually interpreted broadly. An OECD working definition refers to
“cooperation in the design, monitoring, enforcement, or ex-post management of regulation” (OECD, 2013). While
useful to consider regulatory cooperation in a trade context, it can be pursued in trade agreements, or separately

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2011). However, improved cooperation is needed to further reduce trade cost. In services, the trade
costs associated with regulatory differences are estimated as equivalent to tariffs of 20 to 75
percent (Nordås, 2016). Moreover, substantial variations remain across service sectors in terms of
cooperation convergence ”5 Autonomous actions include the application of good regulatory
practices relating to transparency, consultation with domestic and foreign stakeholders, tools to
assess regulatory alternatives (e.g., regulatory impact assessment), and domestic coordination and
oversight of regulatory quality.17 Where international standards exist, the application of those
standards at national level is an important step. In regional trade agreements (RTAs), regulatory
co-operation provisions tend to be strongest when undertaken among countries with similar
regulatory objectives and capacities; examples include NAFTA and the Australia-New Zealand
Closer Economic Relations Trade Agreement. The EU-China Regulatory Cooperation Framework
and the mutual recognition agreement between China and New Zealand, facilitating conformity
assessment procedures for electronics, are examples of mechanisms adopted among more
heterogenous players.

Procedure of Registration of Domain Names:

Since the nature of domain names are such that they have to be unique in order to direct people to
correct place, it being registered under Trade Marks is an important step. As we have already read
in the previous section that domain names are internet addresses which are being put up in internet
browsers to reach to a particular page, it is important to make it as unique as a fingerprint. As
internet is same in nature all over the world, except the speed of downloading and uploading which
varies jurisdiction to jurisdiction, there are various kinds of domain names also which gets decided
because of the jurisdiction in which it has been created.

It is very fascinating to know about the registration of domain names and the space allocations of
IP Addresses. Since these are based on jurisdiction wise and Trade Marks are also registered as
per the requirements of jurisdictions, we will read about the registration of domain names on World
Wide basis and in Indian Perspective. There are different registration forums responsible for it.

The body responsible for regulation of domain names and root server systems is Internet
Corporation for Assigned Names and Numbers (ICANN). It is non-governmental and non-profit

5
Domain name dispute resolution in India, Majmudar & Co., Mumbai.

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organization. It’s responsible for maintenance and procedures for various names, numerical spaces
and the security of domain name systems worldwide.it works in collaboration with National
Telecommunications and Information Administration (NTIA) Before all these the registering of
all numbers and addresses were done by Internet Assigned Numbers Authority (IANA). All these
are majorly based and governed by US government but they are not funded by them. ICANN is
largely run by 28 professionals in different fields and perform tasks involving policy making and
advisory. There are three types of tasks which they majorly look into, which are Domain Name
System Policy, Operational Policy and General Practices (which involves some of the advices
which are derived from some other body and are not approved by the board of ICANN. There are
four types of Advisory Committees, which are At-Large Advisory Committee, Security and
Stability Advisory Committee, Root Server System Advisory Committee and Governmental
Advisory Committee6. These committees are like the backbone of ICANN and are very much
responsible for its success today.

The registration in this forum is a very tedious job to do. Firstly, the person who wishes to get a
domain name registered approaches the registrar of ICANN then that registrar checks in WHOIS
data base if any such gTLD (Generic Top Level Domain) domain name is already existing or not.
Registrants are bound by Registration Accreditation Agreement (RAA)There are a lot of times
where the registration is done by resellers. Resellers are the persons who have agreement directly
with the registrar but they are not credited by ICANN but they give registration on behalf of
registrar. After finding that there is no preexisting domain name on internet, there has to be an

6
ICANN History Project, Official Website of ICANN, Available at- https://www.icann.org/history (Last visit-
11/02/2019 7:12PM).
7
Picture credits ICANN Official Website, Available at- https://whois.icann.org/en/domain-name-registration-
process (Last visit-11/02/2019 7:42 PM).

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online application to domain name registrant who will further look into the matter. There will be
contract between the applicant and the registrant and they will be bound by the terms and
conditions mentioned under it. If any discrepancy happens from the registrant side, then in that
case legal and civil action can be taken. Hence, going by the code of conduct is a must for both the
parties. Later, the registrar have to request registration of the domain name on various internet
servers so as to put them on internet space. There are few times when applicants don’t want to be
accessed through normal servers, in those cases, proxy servers are contacted and there the
registration is done. After fulfillment of all the formalities, the domain name gets registered
worldwide and at that moment registrant registers it in registry maintained by him. The registry
acts like a database for all the future registrations.

In India, the registration of domain names is governed by INRegistry which is established by

National Internet eXchange of India (NIXI). NIXI is also a non-profit organization just like
ICANN and it is established under Section 25 of Indian Companies Act, 19568. The main motive
of this organization is clearly, to regulate the internet spaces and regulate then as per the municipal
laws. The domain names granted by them have restricted use within the territory of India only.
NIXI is purely and autonomous body and is sole responsible for its operational stability, reliability
and security. These bodies are governed by the National Centre for Software Technology (NCST)
and its Centre for Development of Advanced Computing (C-DAC). These bodies have to follow
all the gazette notification issued by Department of Information Technology (DIT). The
registration under INRegistry is done on the basis of transparent eligibility criteria. The domain
names in India are generally end with the suffix .in or .co.in. For the registration, one has to
approach the registrars appointed by .IN registry and he/she will check the if there is any
preexisting domain name or not. The entire process is presumed to be transparent in nature. After
preliminary checks, the registrar places requests online to servers for grant of domain name and
within 24 hours the domain name starts working.

Provisions in Indian Trade Marks Law for Domain Names:

“Internet Corporation for Assigned Names and Numbers (ICANN) is the only organization which
on a supreme level registers and gives protection to the domain names in the form of trademarks

8
About the .IN Registry, Official Website of .in.Bharat, Available at- https://registry.in/About/IN%20Registry (Last
visit-11/02/2019 8:10PM).

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or service marks all over the world along with National and International protection under the
concerned National Trade Mark Law diverse International Trade Mark Treaties of the world.”9

“In India, domain names may be granted protection as a trademark or service mark under the
provisions of Trade Marks Act, 1999 provided that the domain name fulfils all requirements to be
properly registered under the Act. Once registered, the registered proprietor of a domain name will
have all those legitimate rights and authorities which are commonly availed by the owners of
registered trademarks or services marks in India.”10 This also includes the right to sue for
infringement or passing off.

1. For infringement: 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.

2. For passing off: 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.

The Bombay High Court in People Interactive (India) Pvt. Ltd. v Vivek Pahwa & Ors11 dealt with
a passing off dispute between shaadi.com and secondshaadi.com. The court ruled in favour of the
defendants and held that the word “shaadi” is generic and commonly descriptive. The court held
that acquiring a secondary meaning would necessarily imply that the word has transcended its
original connotation and references exclusively in the public mind the particular holder of the
mark; the primary meaning must have been lost. This was not the case here, said the court, as the
only primary meaning was the destination on the internet.

In 2018 in Bigtree Entertainment v Brain Seed Sportainment12, the Delhi High Court recently
denied the Plaintiffs, proprietors and owners of the website bookmyshow.com, an interim
injunction against the Defendant’s use of the domain bookmysports.com. The court, considering

9
Hemant Goyal and Mohit Porwal, Protection Of Domain Name As A Trademark, Global Jurix, Advocates and
Solicitors.
10
Sunando Mukherjee, Passing off in Internet Domain Names, Journal of Intellectual Property Rights ,Vol. 9, March
2004.
11
People Interactive (India) Pvt. Ltd. v Vivek Pahwa & Ors, decided on14 th September 2016.
12
Bigtree Entertainment v Brain Seed Sportainment, decided on 13 th December 2016

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that prefix BOOKMY of the Plaintiff’s trademark BOOKMYSHOW was descriptive, not an
arbitrary coupling of words and the Plaintiff’s failure to prove that “BOOKMY” has acquired
distinctiveness or secondary meaning, dismissed the application for interim injunction filed by the
Plaintiffs.

Hence, it is abundantly clear that domain names serve as important elements in trade and any
commercial activity on the internet. Especially, for those businesses, who work solely on the online
platform, protection of their domain names is of paramount importance. Since, domain names
transcend geographical boundaries, a harmonious international law on protection of domain names
is essential, in addition to the protection offered by Trademark Law in various jurisdictions
individually.

Role of ICANN in domain name dispute policies:

We have seen in the previous sections of this paper that ICANN is a non-profit organization and
don’t have authority to get into legal disputes which take place among their clients but they have
a body which can regulate it outside court which is called Uniform Domain-Name Dispute
Resolution Policy (UDRP)13. ICANN can only provide a legal advice to the parties so as to what
mode of resolution they should go after, other than that ICANN has no legal authority ti resolve
disputes. These policies were adopted on 26th August, 1999 and implementation documents were
approved on 24th October 199914. Under this, the disputes happening between their clients are
solved by agreement, court actions or through arbitration. Whatever decision comes out of these
exercises, the registrar will cancel, suspend or transfer the domain names. In cases where illegal
use of registered domains take place which are also called cybersquatting, in those cases the party
which has the original Trade Mark can file a complaint with an approved dispute-resolution service
provider and can initiate a proceeding. A complaint should be strictly be regarding a gTLD domain
name. So, there are basic two remedies for Trade Mark owner which can be understood:

1. File a complaint in a court of proper jurisdiction against the domain name holder

13
Have a Problem? Dispute Resolution Options, Official Website of ICANN, Available at-
https://www.icann.org/resources/pages/dispute-resolution-2012-02-25-en (Last Visit- 15/02/2019 6:25 PM).
14
Uniform Domain Name Dispute Resolution Policy, Official Website of ICANN, Available at-
https://www.icann.org/resources/pages/policy-2012-02-25-en (Last Visit- 15/02/2019 6:45 PM).

13
 2. In case of abusive registration submit a complaint to an approved dispute-resolution service
provider.

Some of the dispute resolution centers which are established under UDRP Policies are:

o Arab Center for Domain Name Dispute Resolution (ACDR)

o Asian Domain Name Dispute Resolution Centre
o The Czech Arbitration Court Arbitration Centre for Internet Disputes
o National Arbitration Forum
o eResolution (Resolution of disputes through Online Services)

So far there have been more than 70,000 complaints which have been filed through UDRP policies
and many out of these have been resolved by ICANN also. Through the Administrative
proceedings done by ICANN, a conclusive remedy is decided and after that the registrant takes
action upon the infringing domain name15. Then after that only a court proceeding can be initiated.
Now, because of the number of complaints which gets registered every year because of the easy
resolution of Trade Mark issues, a fast track route has been implemented which is Uniform Rapid
Suspension System (URS) which allows rapid suspension of domain names. Under this, within 24
hours of filing the complaint, the domain name will get blocked. The respondent has 14 days to
file a response to it. A decision will be given within 5 days of filing of response. After seeing the
efficiency and cost effectiveness of URS, many people are specifically to go for this procedure
only16. Those these are the most effective ways in which ICANN looks into the disputes of domain
names, rest depends upon the national laws of other jurisdictions.

International efforts to curb clash between trademarks and domain names:

There are generally three kinds of domain name disputes that can arise. They are as follows:

1. Cyber squatting: Suppose a person owns a trademark and without his permission and any right
to his mark, some other person is exploiting his mark in bad faith.
Then, the dispute which arises for that the trademark holder:
a. “could file a lawsuit in U.S. federal court against the site owner under the Anti-Cyber
squatting Consumer Protection Act (ACPA): If the suit is successful then the Court will

15
Ibid.
16
Jan Janssen, ICANN Dispute resolution procedures, Crowell & Moring LLP, 2nd June 2017.

14
 grant the trademark holder an order requiring that the domain be transferred back to the
trademark owner. By the help of the lawsuit, the trademark holder gains the right to
require the defendant to turn over relevant documents and to interview the defendant
under oath. This process of investigation is called "Discovery" and it can be essential
to proving your case. If the trademark holder wins, it's possible that the cyber squatter
would also have to pay monetary damages. If you bring an ACPA suit, your attorney
will probably also bring other trademark law claims as well, such as violations of state
trademark laws and federal trademark laws. The cyber squatting law, ACPA, is just
one of many trademark law claims”17.
b. could initiate an ICANN-approved arbitration proceeding under the Uniform Domain
Name Dispute Resolution Policy (UDRP): If the mark holder succeeds in its arbitration
proceeding, the arbitrator can order that the domain name be cancelled or transferred
to the trademark owner. However, the mark holder cannot conduct “discovery” or
obtain monetary damages.
2. Two trademark holders, one domain name: Suppose a person owns a trademark, but some
other person also owns the same mark too and there is only one domain name. If there are two
trademark holders and both have legitimate rights to the same mark then in such situation it’s
basically seen that which domain name has been registered first because with domains it is
first-come, first-serve basis.
3. No one owns the trademark, but everybody wants the brand: It is not necessary that all domain
names are trademark protected but people wrongly attempt to use trademark law to resolve
domain name issues. In such cases also the first come first serve basis will be checked.

Cases regarding domain name disputes: India & USA:

With the increase in open markets and flow of information through various means, we can also see
a sudden increase in the disputes involving information providers also. In India also, the facility
of domain name registration has been given as mentioned in previous sections. After registering
with NIXI, a unique registered domain name is said to have been given and only the owner of it
can use it. Domain name owners get thee registered also, hence disputes arise. There are many

17
Sanchit Mehta, Cyber Squatting and its Legal Positions

15
cases since last ten years in India wherein disputes between Trade Mark of domain names are in
question. In case Rediff Communication Ltd. v. Cyberbooth18, the defendant got a domain name
registered as “Radiff.com” which was similar to that of plaintiffs. The court decided in favour of
the plaintiffs and said that domain names on internet are valuable asset to a corporation hence it
needs to be protected. In another landmark case Yahoo Inc. v. Akash Arora19, the defendant got
‘Yahoo!’ registered in India and argued that the impugned domain name is not registered in India,
so it can be used freely. The court said that plaintiff has an international reputation so; it is not
allowed to be registered by anyone else other than the owner of the Trade Mark. Most of the cases
in India are relating to Well Known Trade Marks and passing off of Trade Marks. Well Known
trademarks are difficult to justify that is why there are more disputes arising in such field.

In recent case Starbucks Corporation v. Mohanraj20, the respondent came up with a domain name
‘www.starbucks.co.in’ but there was already existing domain name registered as trade mark where
.co was not there. The court held that there is likelihood of confusion and on trial respondent could
not provide with sufficient evidence to prove their actions, hence the court gave the decision in
favour of plaintiff. There is another case with similar Morgan Stanley v. Bharat Jain21, the
respondents registered a similar domain name as that of plaintiff which was also held to be invalid
because of the international reputation of plaintiff. In another recent case, Google Inc. v. Gulshan
Khatri22, a complaint was filed by plaintiffs wherein a domain name ‘googlee.in’ was in question.
Google being a major player in international market has a lot of goodwill which it has earned over
the years. It is surprising to see why the trademark offices don’t check the phonetic and visual
similarity of the marks which come to them for registration. This is a major carelessness on the
part of Trade Mark Registry which should be considered. The court held that because of the
goodwill of Google, the respondent has to take down the domain name.

In United States, where people are very much aware about IP protection laws, there also such cases
of Trade mark infringement are encountered. In the most landmark cases of US, Dennis Toeppen
is the defendant who registered a lot of Well Known or Famous Trade Marks by their domain
names. They were heavily challenged and the courts have also canceled all the marks being

18
23 AIR 2000 Bom 27.
19
25 (1999) 78 DLT 285.
20
26.11.2009
21
28.10.2010
22
2017 SCC OnLine Del 7592

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registered by Toeppen23. There is always difference between IP laws of Indian and USA. We
consider USA as a very progressive country which is true in cases of some IP related matters but
not all the cases are being covered by them. There are loopholes in their legal systems as well and
with the change in trends, different jurisdictions are adopting to it.

Conflicts of Jurisdiction in Domain Names:

We have seen IP laws always being territorial in nature which is the reason, there are exhaustion
principles and system of registration of IPs by applying in different jurisdictions. But with the
changes in time, and internet being an important part of our lives today, there are cases which
occur online. For example, Cybercrimes is one such example and because of the nature of internet
being global in nature, the actual jurisdiction of the crime is very difficult to find out. In registration
of domain names which are part of internet, there are cases relating to cross border infringement
of trademarks. As we have seen in previous sections, the trade mark registration taken in domain
names are taken away by one person sitting in another country, so in such cases, the jurisdiction
of case of action is very difficult to find out. Concepts of Private International Law are the ones
which are most helpful in deciding such cases as they are capable of solving three important issues
in the case involving two individual parties which are Jurisdiction, Choice of Law and Recognition
of Judgments. So, in most of the cases the country of the plaintiff is considered to be the place of
trial of the case but it can be the other way round also. In some cases parties prefer to go for
arbitration and conciliation, in that case principles of International Arbitration will apply and a
proper Arbitration Agreement will be formed. The issue will still prevail because concept of
jurisdiction in IP laws and domain names will never get along. Hence, it depends on courts to
decide that whether they have jurisdiction to do the trial or not24.

Conclusion:

It is very clear from the study that trade marks should be considered as an important protection
mechanism for domain names in order to restrict any other person to not to use it. Generally, the
domain names are given on first come first serve basis but there are corporations use the already
registered ones in order to exploit the already exiting reputation of the registered trade mark.

23
Intermatic v. Toeppen, 19 947 F Supp 1227, 1230 (ND III 1996) & Panavision International v. Toeppen, 20 141 F
3d 1316 (1998).
24
Mohammed Abdeen Awadelkareem Suliman, Jurisdiction and Choice of Law in Trade Marks and Domain Names
Disputes, Thesis submitted in University of Khartoum, May 2007.

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Because of the international application of domain names, one of the main concerns is that of
jurisdiction. Like in the Private International Law there are no set laws which can be followed,
similarly in disputes of domain names it depends on the national laws of countries to decide the
proper cause of action and locus standi which could lead to proper dispensing of justice. Since
ICANN is responsible for world wide regulation of domain names, they should come up with
uniform standards because of dispute settlements. The nature of IP laws are territorial so because
of that there will be difficulty in making a uniform law. It is the need of the hour that countries
now come up with uniform model laws by ignoring their sovereignty to regulate trade mark issues.

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