Cybersquatters used to register domain names that were similar to the names of well-known individuals. Now, there is a trend of registering the ad-lines of companies as domain names.

THERE have been various domain name disputes where cybersquatters had registered domain names that were identical to or are confusingly similar to the trademarks of companies.

Where the companies had registered the above trademarks it has been relatively easy for them to evict such cybersquatters. Even if such trademarks were not registered the companies have been able to receive favourable awards by proving that they have obtained trademark rights in the names.

Domain name dispute resolution providers have been pro-active and have held that a person has common law rights in his/her name and in Julia Robert's case ordered the transfer of domain www.juliaroberts to Julia Roberts.Till recently cybersquatters registered domain names that were similar to the names/trademarks of companies and names of well-known individuals. Now there has been a trend of registering the ad-lines of companies as domain names.Such cases raise some interesting questions as to the rights of the company in such ad-lines, the steps that the company would have to take to establish their rights in such ad-lines, and the corresponding domain names.

These issues have been addressed in a recent case of Cox & Kings where the brand name and the ad-line of the company were registered as domain names. Cox & Kings (Complainant) was organising group package holidays under the brand Duniya Dekho and introduced the base line Add More To Your World which was featured as an integral part of most of the advertisements of the Complainant. The Complainant had applied for the registration of a trademark with the words Duniya Dekho -- Cox and Kings.

The domain names duniyadekho.com and addmoretoyourworld.com were registered by a person (Respondent) who offered to sell the domain names for valuable consideration.

ICANN Policy

The Complainant filed a case before the World Intellectual Property Organisation (WIPO) and sought transfer of the above domain names. Under the ICANN Policy, which governs the resolution of domain name disputes the Complainant must prove that:

1. The domain name in issue is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

2. The respondent has no rights or legitimate interests in respect of the domain name; and

3. The domain name has been registered and is being used in bad faith.

Trademark Rights

A person has to prove that he has trademark rights in the mark that has been registered as a domain name. A person may acquire trademark rights in a mark through registration of such marks, or he may establish rights to a mark through use, which are referred to as common law rights.

Registration of Trademarks

A person can register a trademark if the mark is inherently distinctive or is an invented word. Thus a person may easily register a mark which consists of an invented word.``WIPRO'' is an invented word, it is an abbreviation of the original name of Wipro Limited, i.e, Western India Vegetable Products Limited, ``DROPOVIT'' was coined from ``Drop of vitamin'' and ``WHISQUEUR'' was invented using the words ``whisky'' and ``liqueur''.

It may not be possible to register trademarks that consist of words that are generic, descriptive or laudatory. Thus it may not be possible to register trademarks such as ``travel agency'' it would be generic or words such as ``best'', as they would be descriptive.

However, if by continuous use the mark has acquired distinctiveness, i.e. people associate the mark with the goods produced by the owner of the mark, then the owner of such mark can claim trademark rights in such mark.

Trademarks and ad-lines

In cases where the ad-lines have been registered as a trademark the company would have already established that the mark is not generic or descriptive or has acquired distinctiveness before the relevant registration authority.If the ad-lines have not been registered as trademark the panel would have to determine if the Complainant has acquired trademark rights in such a phrase.

A person can prove such rights by advertisements where the phrases are used by him. It would also be necessary to prove that the public recognises the mark as belonging to the Complainant. Thus articles and comments associating such a mark with the Complainant by third parties would establish distinctiveness.

Composite trademarks and independent use

Companies usually use their ad-lines in conjunction with their trademarks. An interesting issue arises as to whether such use would grant the company trademark rights over such ad-lines. To establish trademark rights in a particular phrase which is used in a composite mark it has to proved that the phrase has been used independently of the composite mark. The person would have to prove that the phrase has been used by him and that it is recognised by people as having a separate commercial presence and personality.

Thus references to the phrases in newspapers and articles by third parties would enable a person to prove that the phrase has obtained a separate commercial impression quite apart from the composite trade mark and forms an essential feature of the composite mark and has come in trade to be used to identify the goods of the owner of the mark.

To be continued.