Registering a Domain Name as a Trademark | IP Attorney in Delhi NCR | IP Lawyer in Delhi NCR |

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As the world is moving towards globalization, e-commerce websites have also started dominating the market. Keeping this evolution in mind the relevancy of Domain Names in the world on the internet has started playing an important role. The Domain Names in the internet platform play the exact role that of the trademark in the physical world and there has been many attempts to file trademark applications carrying the Domain Name for brand registration and company logo registration.

What is a Domain Name?
if we put it in layman’s terms it will mean something related to the online portal or something which is used as a source identifier in the world of the internet. If we delve into the concept, then the role of Domain Name is not limited to that it is much more and it plays a very important role in the world of the internet. Domain names are user-friendly and easy to remember addresses that the internet users use to locate any source in the vast worldwide web (www) where the source can be that of a business source, organizational source, educational source, a generic, or a country-specific source. This importance of Domain Name has been discussed in Peoples Interactive India Pvt v. Vivek Pahua (Civil Suit No. 846 of 2015) wherein the Hon’ble Bombay High Court held that Domain Name is the equivalent of a physical address it directs the user to a particular part of the web where the domain name holder/owner stores and display his information regarding its product and offers his services.

Are Trademark and Domain Name same or different?
To this, the answer is Yes, there are a lot of similarities between Trademark and Domain Name like:

1. Both of them are protected for 10 years
2. Both of them are considered as a market concept
3. Both of them act as a source identifier for the consumer in the market
4. Both of them are responsible for identifying business sources
5. Both of them are associated with product and services
6. Both of them are vulnerable in terms of misrepresentation resulting from confusing/deceptive similarity
7. Both of them should have the feature of distinctiveness

Now that it has been established that Domain Name and Trademark don’t have a huge difference except for the fact that one is used in the online portal and the other one is used in the physical world, the question of whether it can be registered as a trademark or not? Should be looked into. To this the answer is Yes, at the national and international levels, domain names can be registered and protected as trademarks or service marks, provided that they meet all of the requirements to be properly registered and protected as trademarks and service marks.

Can a domain name be registered as a Trademark?
Any unique internet domain name that is capable of identifying and distinguishing a company’s goods or services from those of other companies, as well as acting as a reliable source identifier for the concerned goods or services on the internet platform/market, may be registered and thereby protected as a trademark, provided it satisfies all other registration rules and requirements that are commonly applied to them.

In the case of Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd (3028 of 2004) the Hon’ble Supreme Court held that “the original purpose of a domain name, without a doubt, was to provide an internet address for computers. However, the internet has evolved from a simple means of communication to a way of doing business. When commercial activity on the internet grows, a domain name is often used as a business identifier. As a result, the domain name not only acts as an internet address but also specifies the particular internet site and distinguishes specific businesses or services of various organizations. As a result, a domain name as an address must be peculiar and exclusive, and where a domain name is used concerning a company, the importance of maintaining the identity becomes non-negotiable and hence must be considered.

Also in the case of Rajat Agarwal v. Spartan Online (C.S. No. 35 OF 2017) the Calcutta High Court also cited the Satyam Infoway Ltd v. Sifynet Solutions Pvt. Ltd (3028 of 2004) and held that a domain name is an instrument of a commercial enterprise not only because it facilitates the ability of the consumer to navigate the internet to find the website they are looking for but also at the same time serves to identify and distinguish the business itself or its goods/services and to specify its corresponding internet location. Hence a Domain Name must necessarily be distinctive and unique to the individual business on the internet platform.

To sum it up a person can register their domain name as a trademark but he/she should keep certain things in mind like the domain name being distinctive and unique. Apart from that if it is a brand that has gained a lot of reputation in the market, have a large customer base and goodwill attached with the product, and is yet to get itself a domain name registration, then it is advisable to do it very soon as there might be instances that there might already be a cyber-squatter in the online platform taking advantage of one’s absence in the online portal and trying to squat on the goodwill attached on one’s Trademark.
Authored By: Adv. Anant Sharma & Swayamsiddha Das