Trademarking Generic Top Level Domain: A New Era of Digital Brand Protection

 The Author, Wafiya Faiz, 3rd year, BA.LLB, Jamia Millia Islamia. She is currently interning with LatestLaws.com and the Indian Dispute Resolution Centre.

I. Introduction

In today's digital world, the internet has become a necessity. It is rightly said that the Internet is the need of the hour. Most of us are internet explorers. We surf through different websites everyday for multiple purposes. It’s not possible to spend a single day without visiting any website. In order to visit a website, one needs to type its name followed by the domain name, for instance ONGC.com. The silver lining of progress is always seen to come with their own challenges. The benefit of advancement should always be confronted with the accompanying problems. The advent of free speeches also opens the door to hate speech that threatens social cohesion. Similarly, trademark is one such area of law where challenges emerged at great pace as every brand assert its ownership. Building a huge brand needs passion, purpose and hours of hard work. In today’s fast paced work, having an online presence is important for businesses. It helps in spreading the brand value. To build such a presence, owning a brand name is paramount. Domain names hold a strong business identity. Therefore, such commercial domains need protection. Without a trademark, other businesses can easily copy one’s brand assets.

GTLD which stands for generic top level domain is indifferent to any particular country or region. It is available worldwide. These domains are usually used for generic purposes such as .net for network infrastructure and .org for non profit organisation. These domains appear right of .dot. They are the last part of a URL (Uniform resource located) address. It is important to understand Top Level Domains (TLD). They have been around for many years. The current TLDs are split into various categories and are governed by ICANN, The Internet Corporation for Assigned Names and Numbers. These categories include Generic, country-code, sponsored, Infrastructure and reserved. Among them, Generic Top Level Domains are the top rated TLDs. 

ICANN is a public-private partnership that is responsible for the functions related to Internet names and numbers, for instance allocation of IP addresses^[1]. All domains which are referred to as URLs are globally distributed under ICANN. The Internet Corporation for Assigned Names and Numbers (ICANN) has launched a new gTLD program, enhancing top level domains. It enables the largest expansion of the domain name system^[2]. It was in 2005 that ICANN's Generic Names Supporting Organisation (GNSO) began a process which considered the introduction of new gTLDs^[3]. As gTLDs become more popular in the contemporary time, the new challenges have begun to emerge extensively. The concern regarding security of these domains grew day by day to prevent perpetrators from misusing it. This calls for a trademark protection of the top level domains. Though these are already governed by the  ICANN, still there are numerous threats to the use of these domains. For instance, Cybersquatting which refers to use of an internet domain name with mala fide intention so that the user gets profit from the goodwill of a trademark which originally belongs to someone else^[4]. Typically a cyber squatter uses a domain name that is identical to the famous general domain, thereby creating confusion for web surfers^[5]. This is done dishonestly to sell the domain back to the original owner of the domain name. For example using domains similar to trademarks, such as misspelled versions (www.google.com), to mislead users.

DOMAIN NAME AS TRADEMARK

Trademark is commonly used to protect consumers by differentiating services and goods of one company to another. This helps in reducing the confusion and to ensure uniqueness of each other's enterprises. However, in the offline commercial sector, only one entity can own a specific domain which often leads to confusion as many other users claim rights to similar names. With time evolving, companies now focus more on domain-centric brands rather than a broad range of products or services. This approach of enterprises helps them to focus on specific areas and understand customers' needs. This rise of domain-centric brands ensures distinctiveness to each brand, making it different from others. Simply owning a domain name will not entitle a person to the rights of a trademark. To avail a legal protection, registering the domain name is essential. This will also allow the owner to take action against anyone who infringes on his rights. A domain name serves as the digital footprint of businesses. Indian courts and tribunals have varied views on the enforceability of domain names. Bombay High Court’s famous case of the domain name, People Interactive Pvt. Ltd v Vivek Pahwa arose out of the use of the domain name secondshaadi.com, which resembles the well-established shaadi.com trademark. The court ruled that the presence of similar names, such as shaadi, shows that it has not reached any exclusivity and thus it doesn’t possess the necessary distinctiveness to merit trademark protection. The inference that can be made from this judgement is that domain names must exhibit a distinct name to qualify as a trademark.  The court held that “ A domain name serves as a unique address on the internet, directing users to a specific website. While some domain names are inherently distinctive and can function as trademarks (e.g., google.com), generic or descriptive domain names (e.g., bookstore.com) typically do not qualify for trademark protection”^[6].

Trademarks work as a unique identifier of goods and services. The owner of an already known trademark exercises rights in its use. However, with the rapid increase of commercial businesses and each enterprise focusing on its market reach, advertising the product is equally important. Some businesses use their established trademark as a domain name. It is often seen that such domain names have already been used. It is important to note that Trademark rights in commercial domain names are more limited than in any other areas. Using a trademark in domain name is not mandatory though some register them. Registering a domain name is generally considered a safer action^[7]. It provides a stronger legal protection and also the exclusive right to use the name for goods/services. A domain name can be registered and protected under the Trade Marks Act 1999 on conditions that it meets every requirement[8]. In common parlance, legal action is filed against infringement of intellectual property rights. While on infringement of a registered trademark domain names, a complaint can be filed. The volume of trademark complaints is abundant and to resolve that an efficient dispute resolution system is essential. A uniform domain name dispute resolution (UDRP) helps to resolve disputes through domain name dispute resolution policy at the national level. Domain name infringement can occur when someone else uses the domain in  an unauthorised or conflicting manner. To avail dispute resolution, the complainant must meet the criteria outlined in the dispute resolution process. These disputes can occur globally, and in cases of trans-border disputes, the Uniform Domain Name Dispute Resolution Policy at the international level can be used[9]. This policy helps in providing a standardised and uniform framework. The process of UDRP is set up by ICANN (the Internet Corporation for Assigned Names and Numbers) in order to resolve disputes of wrongful registration of domain names. The final WIPO report formed the core of Uniform Dispute Resolution Policy (UDRP)^[10]. World Intellectual Property Organisation (WIPO) is a specialised agency of the United Nations that promotes Intellectual Property (IP) worldwide. It is authorised by ICANN to handle disputes under UDRP. Thus, allowing trademark holders to resolve the dispute without undergoing court proceedings. Domain name infringement occurs when practices like cyber squatting are involved. It takes place when someone registers a domain name not with the intention of any legitimate use but to sell it to brand owners at high prices and often make profits. In this way, they also mislead the customers and harm the brand’s reputation.

In India, disputes related to domain names are governed by .IN Dispute Resolution Policy^[11]. Herein, disputes related to gTLDs are governed by the Uniform Domain Dispute Resolution Policy (UDRP) while disputes of ccTLDs are governed by INDRP. It is managed by the national Internet exchange of India (NIXI)^[12]. Established in 2006 in line with the rules of WIPO, INDRP has resolved multiple cases.

RISE OF GENERIC TOP LEVEL DOMAIN AND TRADEMARK CHALLENGES.

The rise of gTLDS is because of the expansion of the Domain Name System(DNS)^[13]. It introduces new generic Top-Level Domains( gTLDs). ICANN allowed entities to apply for new gTLDs. These work as an extension at the end of website addresses which include .com, .org, .net, etc^[14]. These expansions can also include brand-oriented TLDs such as .amazon, .google, and .apple. Brand owners can now also apply for gTLDs. Similarly gTLDs can also be geographic specific including .India and others. The two most common types of top-level domain(TLD) are country code top-level domains(ccTLDs) and generic top level domain (gTLDs)^[15]. Despite being the largest group of TLDs on the Internet, its number has always been low compared to ccTLDs. However, ICANN in view of the expansion of the Internet launched the gTLD program to diversify the supply of domain extensions. These programs serve as an initiative to expand the Domain Name System by allowing businesses, enterprises, communities, and organisations to apply for their own gTLDs. [16] The first round of the program was opened in 2012 and received a large number of applications. Examples of the popular gTLDs over the past decades are - .online, .top and .shop. ICANN has announced plans to open its second application window for new gTLDs during spring 2026^[17].

With the emerging cybersquatting, ICANN opened the registration for new gTLDs. Similarly, it also created a trademark information exchange center to protect brand interest^[18]. ICANN aims for protecting brand owners’ interest. The trademark information exchange center is a clearinghouse which verifies information from trademark holders and distributes to registries and registrars. On registering a trademark with the trademark clearinghouse, the user will get notified when a third party files an application to register a domain which is similar to a registered trademark. Additionally, the third party will also receive a warning that the said trademark is already registered with clearinghouse.^[19] The trademark owner will get a notification from a third party, ignoring the warning. For registering the trademark with the trademark clearinghouse, certain documents are required which includes proof of ownership of the trademark and the use of the trademark in commerce.  However, it is important to note that TMCH cannot replace the registration of a trademark with any relevant national or regional trademark office.^[20] TMCH also follows  a sunrise period. It acts as a pre-registration period for new generic Top-Level Domains(gTLDs)^[21]. Before a new gTLD is made available to the public, trademark holders have rights to apply for domain names  to prevent any potential cyber squatters or others from registering it before. Sunrise period also allows trademark owners to have their brand names secured as domain names. This period lasts for a minimum of 30 to 60 days subject to registry operators. It is only those trademark holders who have a registered trademarks in the TMCH are eligible to participate in the sunrise period. With the expansion in gTLDs, there are more possibilities of trademark abuse. To overcome this, TMCH offers trademark Claims service which is followed by the sunrise period. It lasts for 60 days, during which the trademark clearing house notifies trademark holders in case of a third-party attempt to register or register a domain name which is identical to or matches the existing record.^[22] TMCH helps protect the brand but does not grant any legal trademark rights. However, there is a prerequisite for using trademark clearing house, it is only available to holders of registered or court- validated trademarks. For instance, if a domain name is already registered under Indian trade registry then it will be eligible to apply in TMCH which ICANN authorises. Prior registration is necessary. Trademark clearing house or TMCH work as a brand protection tool and it safeguards against any misuse. It plays an important role in ICANN’s new gTlD program.^[23] TMCH works more of a centralised database which enables trademark holders to register their trademark. This benefits holders to get early access to domain name registrations and notification when any new domain is registered with a similar name.

Registering a gTLD with a trademark clearinghouse is not the same as the general trademark registration process followed as per the Trademark Registration Act, 1999. gTLDs can be registered as trademarks in India, provided they meet certain conditions of distinctiveness. It is worth keeping in mind that one cannot trademark a generic gTLD, such as .com, .net, or .org, because they are considered too generic or descriptive. However, if such domains are distinctive, then they can be registered. Registering a generic top-level domain as a trademark in India is possible but requires careful attention to legal requirements. Section 9(1)^[24] of the Trademark Act 1999 prevents registration of those marks which are devoid of any distinctiveness and are not capable of distinguishing the goods or services. An exception to this section exists stating that such marks shall not be declared invalid, provided they acquire a distinctive character. To register a gTLD domain name as a trademark in India, the standard process required for trademark registration under the 1999 Act must be followed. The first step involves conducting a search in the Trademark Registry database to reduce the risk of legal dispute. Following this, the identification of classes of goods and services related to the domain name is required to be done[25]. After this, an application form must be filled out, followed by document submission ^[26]. The entire process is similar to that of registration of any other trademark. There are gTLDs and domain names incorporating gTLDs which have been registered as a trademark in India. Under the Trademark No. 1831796, .com is registered as a standalone trademark in India^[27]. This reflects a more liberal approach to domain-related marks. Additionally, there are other domain names as well which are registered as trademarks in India, including Internet.com, Go.com, booking.com and others[28].

EVOLVING JURISPRUDENCE IN DOMAIN NAME TRADEMARK

Generic top-level domains, which include .com, .net and .org, are at the centre of trademark disputes in India. The recent case of TATA Sons & TATA Digital v. Indian Members Benefit Fund Ltd.^[29] is centered around the dispute of domain tatafindigital.com which appeared to be confusingly similar to Tata Sons’ and Tata Digital’s trademarks. On findings of the panel, it came to a conclusion that the domain name was confusingly similar to the TATA trademarks and the use of domain was with malafide intention. WIPO Panel ruled in favour of Tata and ordered the transfer of domain to TATA^[30]. In yet another case of Khadi & Village Industries Commission V. Shashank Malik^[31] Khasi & village industries commission(KVIC), owner of the well-known “KHADi” trademark challenged the registration of Khadiherbs.com. On findings of the panel, it came out that the domain was confusingly similar to the “KHADI” trademark. It was also found that the domain was registered in bad faith and with the intention to sell it to the third party. Therefore, the panel ordered the transfer of the domain to KVIC[32]. It is important to keep in mind that distinctiveness is the core requirement for any mark including a gTLD or a domain name containing gTLD to be registered. Distinctiveness can be inherent or acquire it later on. In trademark, secondary meaning also known as acquired distinctiveness which refers to a situation where words, phrases are not inherently distinctive but becomes so by gaining recognition with the product.^[33] Trademarks registry generally do not grant exclusive rights to gTLD as they are not unique to any one entity^[34]. This general principle does not apply when a domain name having gTLD is used widely and has also acquired distinctiveness in the minds of consumers. In such cases it can be registered. In the leading case of living Media India Limited V. Jitender V. Jain and Anr.^[35] The question before the court was whether “AAJ TAK” being a generic term hold any distinctiveness. It was concluded by the court that the individual term being descriptive had gained uniqueness when combined together, thus preventing others from using it^[36].

When it comes to domain name trademarks, one of the most famous cases in the US that is frequently cited is United States Patent & Trademark Office ET AL. V. Booking.com B.V.^[37] where the Supreme Court affirmed the ruling by the United States Court of Appeals. Combination of the generic word booking with the generic-top level domain “.com” is capable of receiving the trademark^[38]. On refusal of registering the domain by United States Patent and Trademark Office (USPTO), the applicant, “Booking.com” initiated a civil action against USPTO^[39]. The contention of the appellant was that the term “Booking.com “ holds distinctiveness and is not generic. Meanwhile a survey took place whose result revealed that 74.8% of the consumer base considers “booking.com” as a brand and not a generic service.^[40] The district court took a decision in favour of the appellant and found the domain being eligible for registration. The US court of appeal accepted the district court’s ruling. The case concludes that when booking.com is considered as a whole then it is not a generic term. The US Supreme Court reviewed the petition and ruled that booking.com can register its domain name. This case gives a conclusion that a generic name if followed by .com is eligible for trademark. By registering a domain as a trademark, it protects from cyber squatting. Standalone gTLDs include .com which in rare cases only get registered but such registrations are deemed as exceptional. Registration of generic top level domain names generally took place when attached with another domain name as in the case of Booking.com.

In the context of India, Indian Trade Mark Registry grants registration to generic domain names as trademark but enforcing those registration can be challenging^[41]. The issue of registering generic names was first brought in 2006 INDRP (Indian Dispute Resolution Policy) arbitration case which involved the domain name Internet.in. The term INTERNET was held under class 34. The complainant argued that the registration had a pattern of acquiring well-known trademarks as domain names. While the complainant was a registered proprietor of the trademark Internet in class 34^[42]. After a thorough review process, the arbitrator found that the domain name Internet.in and the mark Internet hold similarity^[43]. It was concluded that the registrant cannot retain this domain name^[44]. Since the matter involves  Indian dispute Resolution policy, the matter reached to Delhi High court under section 34 of the Arbitration and conciliation Act of 1996  on grounds of public policy violation and patent illegality^[45]. The goods sold on the website Internet.in were different. However, this argument was neither accepted by the tribunal nor the court and this fact alone does not hold the registration different from the Internet. The Delhi high court allow the arbitrator’s award  for cancellation of the registration of the domain^[46]. However, the further order of the arbitrator which directed for confiscation of the said domain name by the registry was found to be without any legal basis. The domain name Internet.in was not transferred to the complainant as according to High court’s interpretation, he failed to demonstrate actual use of the Internet trademark and the word is generic^[47]. Thus, the request for transfer of domain name was dismissed. It can be concluded that the decision of a single judge followed by a division bench is well-reasoned. This case also reflects that generic words as a domain name are more likely to get cancelled unless generic words have been trademarked in India. Registering a trademark in India by the Trade Mark Registry is not a tedious task, however, enforceability requires a legal framework to work. The first dispute over the domain name occurred back in 1993 in the name mtv.com.^[48] After that there have been many rulings around the world under national as well as uniform domain name dispute resolution policy^[49]. With the growing dependency on Internet databases, it is essential to register domain names. A stringent dispute mechanism has been set up both at domestic and international level to resolve any conflicts in relation to trademark of domain names. Despite all the efforts, finding the right balance between the rights of trademark holders and the growing competition remains a key struggle. It has always been a question of law whether domain names serve as a trademark in India. In the landmark case of satyam infoway ltd v. Sifynet solution pvt ltd^[50], The court observed the legal status of domain names within the framework of trademark law. Although there is no specific legislature which primarily deals with domain names under the trademark law, the court held that domain names are indeed the subject governing principle of law. After an elaborate discussion on section 2(zb)^[51],  2(m)^[52], and 2(a)^[53], The court came to a conclusion that the role of domain name was only to provide the address to the computers but with time, it has evolved from being an address on the Internet to carry out functions like commercial activities at such a large pace^[54]. This has provided a domain name and identity of a business. Therefore, domain name qualifies as service under section 2(z) of the trademark act, 1999^[55]. It was emphasised by the court in this case that using an identical or similar domain name could result in consumer confusion. It will have a similar effect as that of passing off action which is done to safeguard business goodwill. It will apply equally to the domain names.  Thus, on the issue of applicability of passing off, the SC concluded that domain names are to be protected under the same law of passing off as described under the Trade Marks Act, 1999. 

The problem lies in the definition of intellectual property law. It holds the subject copy rights, patents, geographical indications, etc. However, there is no mention of domain names in any existing international conventions, and thus the domain name lacks any statutorily list meant in the intellectual property category.^[56]

ICANN and Trademark registration

Domain names are greatly used all over the Internet. Every new entrepreneur and even the existing one is ready to register his domain name under trademark law. This requires time and money. The involvement of money needs a systematic procedure. However, the increasing use of trademark in the domain name raises alarming concerns which leads to challenges to the ICANN and national legal framework. It is inevitable to say that domain names and trademarks operate on two different levels.  While the former is confined to the virtual world, the later focuses on the real world. Similarly, trademarks are more confined to the national level and domain names are always international in nature.^[57] In India, it is the national Center for Software Technology (NCST) that governs domain name registration nationally. It was in 2006 that NCST added domains like “ind.in” and “ gen.in” under the category of .in.^[58] The benefit of these two domain names was that the necessity of the applicant having his presence in the country for registration was no more required. Prior to this, applicants had to mandatorily have their office in India for registration of domain name under “Co.in” and “org.in”. In January 2005, the government of India designated the National Internet Exchange of India (NIXI) as the .IN Registry, being the official registry for the .in domain name^[59]. NIXI operates as a not for profit organisation.^[60] It is crucial to note that ICANN is the authority that handles Domain name systems globally. The enforcement of trademark rights is not directly from ICANN but it rather acts as a facilitator which establishes a framework to help trademark owners against any kind of domain name abuses such as cyber squatting and infringement. Key rights protection mechanisms such as uniform domain name dispute resolution policy, Trademark clearing house work to protect any kind of abuse. While trademark clearing houses used to prevent issues before they arise, UDRP is a remedy for trademark infringement that has already taken place.^[61]

FUTURE OF DIGITAL BRAND PROTECTION

The growing threat in the domain name system has escalated the market abuse of brands through fake domains and websites^[62]. This creates both financial and reputational risks for companies.^[63] These challenges are not only confined to domain name trademarks but also include jurisdictional disputes. However, with the rise of Artificial intelligence and machine learning, there is a shift in brands' activities for trademark and domain infringements. This is even expected in future for brand names protecting their domain using AI. It helps in the automated detection of trademark violations on digital platforms.^[64] Algorithms can identify a large amount of data to identify unauthorised uses of trademarks. Thus, it reduces the manual search burden and also allows for frequent responses to any abuse.^[65] It can analyse trends of industries and brand names as per the company’s standard[66]. Additionally, AI can also create appealing logos based on market analysis. Litigants even use AI in analysis cases and its outcomes. However, with benefits it provides, AI also poses accuracy and reliability concerns. It is not a credible source to rely upon entirely. Domain name dispute resolution in the future will involve increased reliance on existing mechanisms like the Uniform Domain Resolution policy. There are also chances of incorporating elements of online dispute resolution for an efficient approach.In the Indian context, the future of domain name dispute resolution is more inclined towards adopting ODR (Online Dispute Resolution). The United state patent and trademark office (USPTO) is now incorporating AI technologies for efficient trademark search^[67]. Similarly the European Union Intellectual Property Office (EUIPO) has also used AI tools. With the use of AI, similar trademarks can be identified.  The World Intellectual Property office has also introduced AI-powered image search tools for trademarks. India has also adopted an AI tool in its Indian registry website to search for trademarks. This step was taken to improve intellectual property management in India. It aims to make trademark searches faster and more accurate.^[68]

Law is a demanding career. Any discrepancy can significantly create potential harm. Flawed algorithms can reduce the reliability of AI-driven trademark monitoring.^[69] Consumers always brand emotions and the way it makes them feel. With the help of Brain scans or eye-tracking^[70]It would be helpful to even see consumers' response to different trademarks which will eventually gather a  kind of data to make a mark unique from others. Increased business activities on the Internet makes domain name even more valuable and makes it requisite for trademark protection. This also creates an alarming need for trademark laws to adapt to the changing landscape. Domain names as discussed above are recognised as distinct forms of intellectual property. It needs protection under trademark law to safeguard the company's brand identity and also to prevent potential infringement^[71]. The future of domain name protection involved hybrid approaches which include traditional trademark systems along with new block chain based and AI powered tools. While all these mark as a turning point for registration of domain names, disputes are bound to arise. Dispute resolution mechanism as it exists now will likely enhance its potentials of addressing challenges.

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