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New Concepts in Trademark Jurisprudence

The internet domain name disputes have raised many unprecedented issues which the courts in many jurisprudence were, time and again, called to resolve and in the process many new terms were coined which enriched trademark jurisprudence vocabulary. Some of these new concepts are :-

1.      Cyberquatting

Cyberquatting typically refers to the extortionate conduct of the registrant whose domain name represents the trademark or trade name of someone else which he has registered as his domain name with a sole purpose to sell it or offer to sell it to the true owner of the trademark holder for ransoms. Cybersquatters have also been referred to as cyber pirates and domain name grabbers. There is no legislation or any provision in any legislation in India dealing specifically with the cybersquatters. In America , Federal Trademark Dilution Act 1995 was passed to provide protection to the owners of the famous trademarks and it was anticipated that it will help to stem the use of deceptive Internet addresses taken by those who are choosing marks that are associated with the products and reputation of others. The cybersquatting issues are now directly dealt under Consolidation Appropriation Act of 2000 which has been enacted to prevent any person from making profit or creating mischief by registering a mark used in commerce as his domain name. A person will be liable to the owner of the protected mark including personal name, in a civil action, if he with a bad faith, intend to profit from that mark, registers, traffics I or uses a domain name that is:
(a)     Identical with or confusingly similar to a distinctive mark, or
(b)     Dilative of the mark that was famous when the domain name was registered, or
(c)     Identical or confusingly similar to the famous mark.

Case: In K.C.P.L Inc. v. Nash 49 U.S. P.Q. 2d 1584, 1586 (S.D.N.Y. 1998), the defendant before making an offer to sell his domain name to the complainant had developed his web site and was carrying business of information service. His offer to sell the domain name was not considered as constituting cybersquatting.

2.      Reverse Hijacking

Reverse domain name hijacking is an attempt to deprive a registered domain name holder of his domain name. It is possible in many situations and may not involve bad faith, it is possible that a domain name registrant may be associated in any way with a domain name that is based on the trademark of the other or domain name holder may itself have legitimate interest in the name , e.g., he may be the concurrent user of the trademark.

3.      Metatages

“Web” contains a wealth of information on various sites, each dealing with a particular subject. Each site can be accessed in several different ways. A user wishing to access a site has to enter its domain name in the web browser’s address window. The user’s computer would find then the particular web site to be accessed by the user but where a user does not know the domain name if the site which he is looking for the alternative available to him is to use commercial search engines. The user has to type key words based on trademark or trade name or other guessable words. Every search engine has a programme called “spiders’ and crawlers” that collect web site addresses and index them by analyzing the displayed text, titles and addresses so that search engines associate them to the indexed websites. However if a keyword search term is found in a Websites metatags, that site will usually be rated as more relevant and the page will be listed high on the search results.

4. Keyword Banners

The wealth of information available on web pages of different Websites is easily navigated with the help of search engines that are available to users free if charges. the search engines derive revenue by selling advertising rights to specific search terms under an arrangement known as “keyword buys”. The advertising takes place generally in the form of banners or small graphic images displayed horizontally on the top of the web page. These banners may be either random banners advertising, or key word banners. The advertising rights to the key word banners are sold by the search engines for fee. Then the banners of the purchaser of the advertising rights appear on the space.

Case: In Playboy Enterprises, Inc. v. Netscape Communication, the plaintiff alleged that his trademarks “play boy” and “play mate” were keyed by the defendant into a group of over 450 words and attempted to sell the group to advertisers for their use in banner ads. Jude Stottler laid down that the practise does not involve trademark use and in any event this is covered by fair use doctrine. The search engine did not use the term playboy and playmate in their trademark form when marketing these keywords to advertisers or in the Algorithm that makes possible keying of the ads to the keywords.

5. Hyperlinks

Hyperlinks have transformed “World Wide Web” into a real web which provides a navigational tool that enables users of the web to connect directly and quickly to another web site, It is connecting link between the Websites on Internet. In Germany , the owner of the web site is responsible for links to other Websites where the linked Websites offend German laws even if the linked website is outside Germany. The courts have taken the view that the links to home pages created by a competitor in order to promote business without the clear ans express information that these were products of the other company offended German Competition Law.

Jurisdiction in Trademark Dispute

Internet allows parties to execute transactions without disclosing their identity and the parties may not even know each other’s location. The parties may be in two different countries or even continents. A website may be accessed from any place. It has been argues that the complexities of Internet do not allow for the application of traditional legal paradigms and instead require a separate governing body- a new legal regime. In order to maintain uniformity in the application of principles across the globe, and avoid forum shopping, the Internet Corporation of Assigned Names and Numbers (ICANN) has adopted Uniform Dispute Resolution Policy.

The exponential growth of electronic commerce has been experienced in the recent past. The business methods and market structure have been transformed. In India like other parts of the globe, e- commerce has been on the rise since 1999. The increased competition in using Internet for business promotion, preference for easy to remember words for composing domain names and realization of the importance of presence of business over Internet combined together to give rise to innumerable disputes between the trademark holder and domain name registrant. The advent of Internet has impacted upon the application of existing substantive and procedural doctrines. The jurisdictional reach of the courts is confined to the national borders. The principles governing jurisdiction, evolved and established by the courts, followed state boundaries and parties more clearly understood the scope of their jurisdiction as well as the location of other parties with whom they are transacting.

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