The Anatomy of Trademark Issues in Cyberspace – By Radhika Verma

INTRODUCTION

What is trademark? A trademark is a recognizable insignia, phrase, word, or symbol that denotes a specific product and legally differentiates it from all other products of its kind. A trademark exclusively identifies a product as belonging to a specific company and recognizes the company’s ownership of the brand.

PROMINENT ISSUES

Trademark has been a recurrent topic of discussion on the internet. But many risks are associated with its usage as well which has to be taken care of. Cyberspace is a vast and comprehensive field because of which it triggers numerous trademark-related issues. The most important and prominent ones are “Domain Name” related issues. 

A domain name is part of the address and location of a site on the internet. While trademark have been around for a long time, domain names are comparatively a latest concept attracting public attention.

With the globalization and commercialization of the Internet, Domain name has become  an ideogram of goodwill and recognition. Besides cyberspace, Domain names are now being frequently used in real world as well. It is being shown on television commercials, magazine covers, and even on the sides of buses etc. The basic structure of internet is Internet Protocol which is used for computer server communication in the numeric form and known as IP address in common parlance. But it is often difficult to retain such IP addresses in my mind for a longer period. So, to rip apart such problem Domain names have been brought into picture. It is acting as a good alternative of IP address. Some famous domain names are .BLOG for blogs, .COM for commercials, .CO for company, .LOANS for loans, etc.

Disputes over ownership of the domain names are mounting up for a number of reasons. The domain name has been considered as corresponding to a trademark. Therefore, those who own the mark for the no-internet business wish to use the same on the internet; it is seen as a valuable addition to the branding of goods or services as a whole. Trademark law has territorial influence. Therefore, different businesses trading under the same mark in various parts of the world may have what they consider to be the same valid claim to a particular domain name, as no domain name can be identical therefore only business house can have a particular name.

In India, the domain name disputes are administered and managed by the Indian Domain Name Dispute Resolution Policy (commonly as .INDRP Registry). The INDRP has its own set of rules and policies under which the complaint is filed against the domain name infringement. The INDRP have their list of panel members to decide the complaints. (https://www.registry.in/IN%20Domain%20Name%20Dispute%20Resolution%20Policy%20%28INDRP%29)

IMPORTANT CASE LAWS ON THE ISSUE OF DOMAIN NAME 

Green Products Co. v. Independence Corn By-Products Co. (ICBP) [1]–Brief facts of the case are stated herein. Both the companies were competitors to each other in the market of corncob by-product. ICBP got the domain name (greenproducts.com) registered but did not post a website as yet. The court held that the intention of ICBP was to use its confusing domain name to lure potential customers to the site once it was created and wanted to be benefited unjustly from the use of Green Product’s name. Court further said that consumers might not get confused after visiting the website but even after it, they may buy the product from ICBP’s site only. On these findings, the court found it a fit case for infringement.

Maruti.com et al. v. Maruti Udyog Ltd.et al [2]– Brief facts of the case are stated herein. Where Maruti Udyog, an Indian company which has its reputation with its name in India had also registered its domain name in the United States with marutiudyog.com, whereas the respondent got the domain name as “Maruti.com” When the plaintiff made a complaint before WIPO panel regarding such infringement, the decision was made in favour of  Maruti Udyog. Also, the respondent had got stamped as a cyber-squatter three times by WIPO panel in WIPO arbitration cases filed by Onida, Hero Honda and Maruti. Yet when the case approached the United States courts, the WIPO panel decisions were considered non-binding. Even the United States Anti Cybersquatting Consumer Protection Act was said not to have applied. 

The court further held that as Maruti did not manufacture or sell its cars in the United States and so were not entitled to protection under their land law of trademark i,e. Lanham Act, 1946.

Apart from Domain Name issue , there are several other trademark issues in Cyberspace:-

1) Linking & Framing– Using deep links, frames and other graphics on your website can sometimes be problematic as it is an infringement of other website owner’s right. For an instance- Deep linking allows visitors to bypass information and advertisements at the home page and go directly to an internal page. There is no law or court ruling that prohibits deep linking. However, businesses dislike deep links because:

On the other hand “Framing” is the process of allowing a user to view the contents of one website while it is framed by information from another site, similar to the “picture-in-picture” feature offered on some televisions. Framing may trigger a dispute under copyright and trademark law theories, because a framed site arguably alters the appearance of the content and creates the impression that its owner endorses or voluntarily chooses to associate with the framer. (https://www.nolo.com/legal-encyclopedia/linking-framing-inlining-30090.html)

2) Meta Tagging – It’s a technique whereby a word, let’s say “College” is inserted in the keywords section of the site, in order to increase the chances of a search engine returning the site although the site may have nothing to do with the inserted word.

3) Jurisdiction Issues- As we all know, internet greatly dilutes the significance of physical location of the parties, as transactions in cyberspace are not geographically defined. Any person can access internet from any place in the world. An information may pass from several networks. First decision by a Federal Court of Appeal on issue of jurisdiction in cyberspace was Cybersell, Inc v. Cybersell, Inc [3]. Brief facts of the case are stated herein. Plaintiff was an Arizona Corporation, that advertised its commercial services over the internet and defendant was a Florida Corporation offering web page construction services over the internet. Plaintiff company alleged that the allege Florida trademark infringer should be subject to personal jurisdiction of Federal Court in Arizona because a website which advertises a product or service is intended for use on a worldwide basis. The court applied “Minimum Contacts” test to determine the issue. Court held that conduct of defendant does not amount to “purposeful availment “ under the said test. It was only a passive usage and not a commercial usage.

4) Dilution- Dilution happens when trademark owner’s trademark  which is quiet famous or a similar one is used in such a way to dilute the distinctive quality of the mark.

Dilution is therefore different from normal trademark infringement because trademark infringement always involves a probability of customer confusion, whereas dilution can occur even if customers wouldn’t be misled. For example, if a person sells sex aids named “Microsoft,” no consumer is likely to associate Fred’s products with the software company, Microsoft. However, because Microsoft has become such a strong and famous mark, the use of the word on sex aids would definitely trivialize the software company’s mark (dilute its strength by tarnishing its reputation for quality or blurring its distinctiveness)-(https://www.nolo.com/legal-encyclopedia/what-trademark-dilution.html) 

5) Trademark Searching and Policing- Sometimes when a company conducts trademark search, with domain names, it is highly possible that search result may not show the trademarks actually in use.  Same is the case with trademark policing. Trademark owner should keep policing their trademark in order to prevent the loss of trademark strength. Which sometimes becomes difficult as cyberspace is indeed a vast arena.

As we can see that several trademark issues are there in cyberspace. So we need to strengthen our legal framework to provide resolution for such problems. The number of internet users has increased tremendously since its introduction. We cannot curtail such figures but yes we can enact legislations and incorporate rigorous penal provisions to solve the disputes related to internet or cyberspace. 

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Radhika is an advocate based in New Delhi. She holds Enhelion Certifications in Cyber Laws and White Collar Crimes & Financial Frauds.

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[1] No. C-97-177-MJM

[2] U.S. Dist. Civil No. L-03-1478

[3] INC.F.3d 414 (9^th Cir.1997)

Disclaimer: The views or opinions expressed are solely of the author.