A recent decision of the Delhi High Court, deals with the inextricable link between Domain names and Trade Marks, and more specifically a domain name containing a generic term - namely,“internet”.
The decision addresses petitions that challenge an award by the sole Arbitrator, appointed by the National Internet Exchange of India (NIXI) to adjudicate the issue.
The domain name “internet.in” was registered by one Stephen Koenig, and was complained against as being identical and confusingly similar to Jagdish Purohit’s trademark “internet”. It was alleged that the acquisition of the domain name was a fall out of Koenig having no legitimate interests in the domain name, and hence, acquired in bad faith.
The Arbitrator in view of the nature of the term "internet" and .IN Dispute Resolution Policy (INDRP), had awarded that the domain name be struck down and denied the plea to transfer the domain name to Purohit.
The High Court, however, held that the cancellation of the registration of the domain name ‘internet.in, would not automatically entitle the transfer of the domain name in favour of the defendant. Clearly, as the Court noted, the Respondent was unable to show that he was actually using the trademark ‘internet’ in his business.
Additionally, the Court stated that the fact that the word ‘internet’ is generic and that the trademark ‘internet’ of the Respondent is therefore a weak one, are relevant considerations that support the decision of the learned Arbitrator to decline the prayer for transfer of the domain name ‘internet.in’ in the respondent's favour.”
To this extent, the Delhi High Court, was in agreement with the Arbitrator’s decision. However, in one sentence, the Judge held that the direction in the impugned Award that the domain name ‘internet.in’ should be confiscated and kept by the .IN Registry, be set aside.
This to me, seems somewhat strange. If a term is generic, and hence a holder of a related domain name is said to be squatting upon the use of such a domain, why should the same not be confiscated? After all, if the law governing domain names follows the rationale behind trade marks, this is a natural corollary, especially since generic terms are disentitled from protection as trade marks.
If this is the case, what about trademarks that have become generic? The most common example that comes to my mind is Google, which has attained a tone of usage similar to a verb, rather than being used as a proper noun or adjective.
Am sure a player as big as Google has acquired domain names with nearly every possible top-level domain name. So in a hypothetical situation, where a deceptive or confusingly similar variant of google.com is registered as a domain name, will Google loose all its rights? Or is Genericism a trade off to being as big a brand as Google is?
I think some of our readers will be able to throw in some predictions. For now, I hope that 2012 brings about interesting quirks and questions for the blog to pursue!!