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Follow UsOn June 9, PwC Consulting announced that on the completion of its separation from PricewaterhouseCoopers it would be called Monday. It had secured Monday.com for an undisclosed (but no doubt substantial) figure, and had registered IntroducingMonday.com to introduce the new name and promote the new logo and related branding elements. On June 18, however, someone registered IntroducingMonday.co.uk and created a musical website that poked fun at PwC Consulting’s failure to register the. co.uk version of their pre-launch domain name. Within hours (and with a speed that viral marketing
campaign strategists can only dream of), the news of the unauthorized website had spread by e-mail far and wide.
Fortunately for PwC Consulting, it had filed an application to register the mark MONDAY before the June 9 announcement. When these applications get examined, published and granted, PwC Consulting’s registered trademark rights and the protection of its brand will extend from the pre-launch filing dates of these applications. As a result, the firm may be able to rely on these rights if it decides to take action against anyone that registers (or has registered) a domain name that infringes on its intellectual- property rights.
| The Indian way
You have to pay a Rs1,500/- fee for a two-year domain-name registration. Domain-name registration is overseen by NCST (National Centre for Software Technology). The policy aspects of domain-name registration are overseen by IMG (Internet Management Group). The IMG consists of BSNL (Bharat Sanchar Nigam Limited), MOIT (Ministry of Information Technology), VSNL (Videsh Sanchar Nigam Limited) and NCST.The Indian domain-name policy has been liberalized to allow even foreign entities to register in India. New categories of sub domains such as <.co.in.>,< .firm.in> and <.gen.in> have been introduced. <.gen.in> is an open category and requires no prerequisites to be complied with. <.firm.in> can be availed of only by a liaison office. <.co.in> can be registered if there is a trademark registered or applied for in India. The name servers do not have to be physically located in India. A unique feature of the Indian domain-name policy is that if the domain name in question has not been used for over a year, then it is liable to be cancelled by the domain-name registrar. |
A trademark registration is granted only when an application is examined. The grant is then pre-dated to the application date. During the period a trademark owner can use the TM symbol not the ®, which is reserved only for registered marks. In India the registration process could take a leisurely seven to eight years!
ICANN solve naming disputes
Following complaints from the business community about the expense of using the courts to resolve domain name disputes, ICANN (Internet Corporation for Assigned Names and Numbers)
Its aim is to be a quick and inexpensive alternative to traditional court litigation. Arbitration is heard by accredited organisations including WIPO (World Intellectual Property Organisation). WIPO can determine arbitration involving generic top-level domains such as .com, .net, .org, .biz, .info and .name as well as some country-code domains but not .uk and some others that are administered by national bodies like Nominet UK.
| Arbitration vs the courts
The arbitration method of dispute resolution is universal. It has raised a great debate as to whether (and how) this system can be extended to other disputes on the Internet. The arbitration system can be relatively quick, often lasting about a month from filing the case to receiving the decision. This is far quicker than normal court proceedings for trademark infringement and considerably cheaper. Costs are kept to a minimum by the use of written representations rather than attendance in person. All decisions made by accredited arbitrators are binding on Internet registrars. However, such decisions are not binding in the courts, meaning that if a complaining party is unsuccessful in arbitration it can still pursue the domain-name registrant through the courts. |
ICANN has established a three-limb test, which establishes the type of dispute that can be determined. The requirements are that
l The domain name is identical or confusingly similar to a trademark or service mark in which the complaining party has
rights to
l The person who has registered the domain name has no rights or legitimate interests in respect of the domain name
l The domain name has been registered and is being used in bad faith
WIPO recently reported that by the end of 2001 it had received 3,348 domain-name disputes filed under the UDRP. Of these, the vast majority have been decided in favour of the business or individual bringing up the complaint and claiming rights in a particular trademark.
ICANN in India
ICANN’s role is universal. When a domain name dispute arises, ICANN through the relevant registrar ‘freezes’ the domain.
The domain is held while arbitration is sub judice and transferred or returned to the party successful in the proceedings.
| Whose domain is it anyway?
What do you do if you have a registered domain name, for instance pcquest.com, and someone goes and registers a name like At first instance, there is the problem of the trademark ‘pcquest’, which is at the heart of the issue. Trademark laws are laws that protect business and product names, logos, slogans and similar items. Under these laws, the first person to use a trademark in commerce (that is, to sell a product or service) is considered the owner of If you used the mark ‘pcquest’ to market your products and services before the other person registered the domain name (www.pcquestmagazine.com), you can file a trademark infringement suit, provided that your mark is distinctive and that the existence of a similar domain name could confuse your customers. In other words, will people think that you are involved with the website, or worse still, the site is the official site of As part of this suit or UDRP (Uniform Dispute Resolution Policy), you can ask the court to give you the domain name. Though the UDRP does not provide for damages, in a civil suit, you may also be able to recover damages and attorney fees. You will, of course, have to prove in court that your trademark is distinctive and that the use of your domain was confusing your customers and was indeed a case of abusive registration. To do this, you would have to prove that a significant percentage of your customers (anywhere between 5 and 50 percent, depending on the situation) would likely be confused. You should use statistically valid surveys and focus groups to prove this. To avoid this kind of problem in the future, you should always do a trademark search before registering any domain name. |
Resolving disputes
For a domain-name dispute in India, you have to file a complaint with WIPO, through the UDRP. The domain-name registrar then ‘freezes’ or ‘suspends’ the domain name. A complaint is filed both in the electronic and paper copy format at present.
Domain-name registrars interface with the user, actually companies like NetSol and Verisign register the name. In the event of a dispute, the registrar suspends the name.
Conclusion
The practical advice that comes from these examples is when considering re-branding or naming a new business, product or service, comprehensive clearance searches should be conducted. These should include pre-launch trademark searches, domain-name searches and company name searches (where appropriate). All this should be carried out early to avoid later conflicts.
As part of a comprehensive pre-launch brand-protection strategy, the clearance searches should be followed immediately by trademark applications as well as domain-name registrations and the registration of company names, where appropriate.
If legal action has to be taken in respect of unauthorized domain names, remember that the dispute resolution policies of ICANN, Nominet UK and other national bodies are in place to deal with cybersquatters and are not a substitute for trademark-infringement proceedings. There will always be some cases that fall outside the arbitration procedures or may simply require a swifter remedy, such as an injunction from a national court. Each case has to be carefully examined to determine which will be the more appropriate course of action.
For a complete discussion of domain name and other intellectual-property related issues in the new economy, you can read ‘Intellectual Property and the Internet’, a book published by Lexis Nexis Butterworths, 2002.
Rodney D Ryder is a lawyer with Anand and Anand