The first commercial Internet domain name (.com) was registered On 15 March 1985, under the name Symbolics.com by a computer systems firm in Cambridge, Massachusetts. By 1992 fewer than 15,000 dot.com domains were registered. In December 2009 there were 192 million domain names. A big fraction of them are in the .com, which as of March 15, 2010 had 84 million domain names ,and Till 26th September 2011 133,215,044 Active, including 11.9 million online business and e-commerce sites, 4.3 million entertainment sites, 3.1 million finance related sites, and 1.8 million sports sites. The role of a domain name is to provide an address for computers on the Internet. The Internet has, however, developed from a mere means of communication to a mode of carrying on commercial activity.

With the increase of commercial activity on the Internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for Internet communication but also identifies the specific Internet site. In the commercial field, each domain name owner provides information/services, which are associated with such domain name.

Critics often claim abuse of administrative power over domain names. Particularly noteworthy was the VeriSign Site Finder system which redirected all unregistered .com and .net domains to a VeriSign webpage. For example, at a public meeting with VeriSign to air technical concerns about Site Finder , numerous people, active in the IETF and other technical bodies, explained how they were surprised by VeriSign's changing the fundamental behavior of a major component of Internet infrastructure, not having obtained the customary consensus. SiteFinder, at first, assumed every Internet query was for a website, and it monetized queries for incorrect domain names, taking the user to VeriSign's search site.

Unfortunately, other applications, such as many implementations of email, treat a lack of response to a domain name query as an indication that the domain does not exist, and that the message can be treated as undeliverable. The original VeriSign implementation broke this assumption for mail, because it would always resolve an erroneous domain name to that of SiteFinder. While VeriSign later changed SiteFinder's behaviour with regard to email, there was still widespread protest about VeriSign's action being more in its financial interest than in the interest of the Internet infrastructure component for which VeriSign was the steward.

Despite widespread criticism, VeriSign only reluctantly removed it after the Internet Corporation for Assigned Names and Numbers (ICANN) threatened to revoke its contract to administer the root name servers. ICANN published the extensive set of letters exchanged, committee reports, and ICANN decisions.

There is also significant disquiet regarding the United States' political influence over ICANN. This was a significant issue in the attempt to create a .xxx top-level domain and sparked greater interest in alternative DNS roots that would be beyond the control of any single country.

Additionally, there are numerous accusations of domain name front running, whereby registrars, when given who are queries, automatically register the domain name for themselves. Network Solutions has been accused of this.

The well-known Yahoo! case in 1999 was one of the earliest decisions to protect a domain name in a passing-off case. A single judge of the Delhi High Court granted relief to Yahoo! Inc’s petition seeking injunctive relief against the defendants, who were attempting to use the domain name "yahooindia.com" for internet-related services. Yahoo! contended that the defendants had not only adopted a deceptively similar domain name, but also copied the format, content, color scheme and source code of the India section of Yahoo!’s website. At that time, service marks were not recognized by the applicable trademark legislation; however, the court held that the domain name could be protected on the basis of passing off. Therefore, the court granted an injunction against the owner of a domain name on the basis of an existing IP right.

Further The issue concerning protection of domain names came up before the Supreme Court of India in the case of Satyam Info way Ltd. v Sifynet Solutions P.Ltd (2004(28) PTC 566). The Court, in an authoritative decision has held that internet domain names are subject to the same legal norms applicable to other intellectual properties such as trade marks. The Court further held: “The use of the same or similar domain name may lead to a diversion of users which could result from such users mistakenly accessing one domain name instead of another. This may occur in e-commerce with its rapid progress and instant (and theoretically limitless) accessibility to users and potential customers and particularly so in areas of specific overlap. Ordinary consumers/users seeking to locate the functions available under one domain name may be confused if they accidentally arrived at a different but similar website which offers no such services. Such users could well conclude that the first domain name owner had misrepresented its goods and services through its promotional activities and the first domain owner would thereby lose their custom. It is apparent therefore that a domain name may have

all the characteristics of a trade mark and could found an action for passing off.” The Court further held that there is no legislation in India which explicitly refers to dispute resolution in connection with domain names. The operation of the Trade Marks Act, 1999 is also not extra territorial and may not allow for adequate protection of domain names. This does not mean that domain names are not to be

legally protected to the extent possible under the laws relating to passing off. The Court further held that “a domain name is accessible by all internet users and the need to maintain an exclusive symbol for such access is crucial….. Therefore a deceptively similar domain name may not only lead to a confusion of the source but the receipt of unsought for services. The court observed that “It may be difficult for the appellant to prove actual loss having regard to the nature of the service and the means of access but the possibility of loss in the form of diverted customers is more than reasonably probable.

Commenting on the issue of passing off, the court observed that “it is an action not only to preserve the reputation of the plaintiff but also to safeguard the public.” The court held that “the appellant is the prior user and has the right to debar the respondent fromeating into the goodwill that it may have built up in connection with the name.”

The Supreme Court has dealt with the question of whether internet domain names are subject to the legal norms applicable to other IP rights such as trademarks (eg, in Satyam Infoway v Sifynet Solutions Ltd). Satyam Infoway Limited was an incorporated company with several domain names (eg, "sifynet", "sifymall.com" and "sifyrealestate.com") registered with international registrars under ICANN. Satyam claimed to have invented the word "sify" using elements of its corporate name. At a later date, Sifynet Solutions Pvt Ltd began an internet marketing business under the domain names "siffynet.net" and "siffynet.com", and also obtained registrations from the relevant authorities.

Examining the applicability of the trademarks principle of passing off to domain names, the court stated that ordinary consumers seeking to locate the functions available under one domain name could be confused if they accidentally arrived at a different but similar website which offered no such services. Such users could conclude that the first domain name owner had misrepresented its goods and services through its promotional activities, resulting in the first domain name owner losing customers. As such, the court concluded that a domain name may have all the characteristics of a trademark and could lead to an action for passing off.

Regarding the case at hand, the court stated that since a passing-off action is based on the goodwill possessed by a trader, the appellant would succeed only if it could demonstrate that the public associated the name "Sify" with the services provided by the appellant. The court relied on evidence produced by the appellant to hold that the goodwill and reputation claimed by the appellant in the trade name "Sify" were established. Furthermore, apart from the close visual similarity between "Sify" and "Siffy", there was a phonetic similarity between the two names. The court also recognised the prior use by Satyam of the domain name and rejected the respondent’s contention that the parties carried on different business activities. Therefore, the Supreme Court allowed the appellant’s appeal and confirmed the grant of an injunction against the respondent.

The Indian judiciary has not only examined the applicability of the principles of passing off in domain name cases, but also determined questions of jurisdiction on the basis of whether a website is passive or interactive in nature, among other considerations. In a fairly recent case the Delhi High Court held that the mere presence of a website and accessibility by an audience in a particular jurisdiction does not automatically give the courts of that country jurisdiction. Jurisdiction of the forum court is not based merely on the interactivity of the website accessible in the forum state. In addition to the degree of interactivity, the nature of the activity permissible and whether it results in a commercial transaction must be examined (Banyan Tree Holding (P) Limited v A Murali Krishna Reddy, MANU/DE/3072/2009; Sholay Media Entertainment v Yogesh Patel, MANU/DE/0262/2010; Presteege Property Developer’s v Prestige Estates Projects Pvt

A trademark is protected by the laws of a country where such trademark may be registered. Consequently, a trademark may have multiple registrations in many countries throughout the world.
On the other hand, since the internet allows for access without any geographical limitation, a domain name is potentially accessible irrespective of the geographical location of the consumers. The outcome of this potential for universal connectivity is not only that a domain name would require world wide exclusivity but also that national laws might be inadequate to effectively protect a domain name.

The lacuna necessitated international regulation of the domain name system (DNS). This international regulation was effected through WIPO[3] and ICANN[4]. The outcome of consultation beor service on its web site or location.

The defenses available to such a complaint have been particularized "but without limitation", in Rule 4 (c) as follows:
(i) Before any notice to the domain name owner/registrant, the use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with bona fide offering of goods or services; or
(ii) The domain name owner/registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) The domain name owner/registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These rules indicate that the disputes may be broadly categorized as: (a) disputes between trademark owners and domain name owners and (b) between domain name owners inter se.
A prior registrant can protect its domain name against subsequent registrants. Confusing similarity in domain names may be a ground for complaint and similarity is to be decided on the possibility of deception amongst potential customers. The defenses available to a complaint are also substantially similar to those available to an action for passing off under trademark law. As far as India is concerned, there is no legislation, which explicitly refers to dispute resolution in connection with domain names. But although the operation of the Trade Marks Act, 1999 itself is not extra territorial and may not allow for adequate protection of domain names, this does not mean that domain names are not to be legally protected to the extent possible under the laws relating to passing off[6].

Broadly stated in an action for passing off on the basis of unregistered trademark, generally for deciding the question of deceptive similarity the following factors to be considered:
a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.

b) The degree of resemblances between the marks, phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they are used against the registered owner of the trademark, particularly if the trademark has a transformer reputation. This, principle recognizes the mandate of protecting the well-known trademarks, as required by the TRIPS Agreement and the Trademarks Act, 1999. Thus, even if a domain name is registered in good faith and innocently, the passing off action is maintainable against the registrant.
(c) The registration of domain name with the Registrars recognized and approved by the ICANN may not

have the same consequences as registration under the Trademarks Act, 1999. For instance, a registration under the Act carries with it a presumption of validity.

(d) The Act considers even an innocent infringement or passing off as wrong against the right holder, unlike domain name where mala fides has to be proved. Thus, it does not matter whether the person offending the right does so fraudulently or otherwise.

(e) The Act will have overriding effect over any other law, which is in conflict with it. Further, since it is in conformity with the TRIPS Agreement, it is equally in conformity with the well-accepted international standards. It must be noted that Rule 4 (k) provides that the proceedings under the UDNDR Policy would not prevent either the domain name owner/registrant or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution, either before proceeding under ICANN's policy or after such proceeding is concluded. This shows that there is a simultaneous and double protection available under the Act.

(f) The provisions of the Act are in conformity with the TRIPS Agreement and the W.T.O provisions. These provisions are mandatory in nature unlike the provisions of W.I.P.O, which are persuasive and discretionary in nature. The UDNDR Policy is formulated under the provisions of W.I.P.O; hence it is not binding on parties whose rights are flowing from the Act. The distinction is crucial since in case of conflict between the Policy and the Act, the latter will prevail and will govern the rights of the parties falling within its ambit.

(g) The Act allows the making of an 'International application' resulting in automatic protection in designated countries mentioned in it. This gives a more wider and strong protection to the trademark and makes its misappropriation harsh and punitive.

(h) The procedure for registration under the Act is more safe and reliable, as it is not granted on a first come first basis. The safeguards provided under the Act are properly followed and only thereafter a trademark is granted. Thus, the right recognized under the Act is more reliable, strong and authentic.

The need of the present time is to harmoniously apply the principles of the trademark law and the provisions concerning the domain names. It must be noted that the moment a decision is given by the Supreme Court and it attains finality, then it becomes binding on all the person or institutions in India. It cannot be challenged by showing any 'statutory provision' to the contrary. This is so because no statutory provision can override a 'Constitutional provision' and in case of a conflict, if any, the former must give way to the latter. This settled legal position becomes relevant when we consider the decision of the Supreme Court in Satyam case (supra) in the light of the above discussion. The various landmark judgments of the Supreme Court have conferred the 'most strongest protection' to the domain names in the world. The only requirement to claim the same is that we must appreciate them in their true perspective and apply them in a purposive and updating manner.
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Footnotes:
1.Banyan Tree Holding (P) Limited v A Murali Krishna Reddy, MANU/DE/3072/2009;
2,Sholay Media Entertainment v Yogesh Patel, MANU/DE/0262/2010
3.Internet 192 Million Domain Name Registrations, Feb 22, 2010. Evangelista, Benny. 2010."25 years of .com names." San Francisco Chronicle. March 15, p.1
4. M/s Satyam Infoway Ltd v M/s Sifynet Solutions Pvt. Ltd, (2004) 6 SCC 145, Lakshmikant v 5.Chetanbhat Shah, JT 2001 (10) SC 285.
6. World Intellectual Property Organisation.
7.The Internet Corporation for Assigned Names and Numbers.
8.M/s Satyam Infoway Ltd v M/s Sifynet Solutions Pvt. Ltd, (2004) 6 SCC 145.
9.M/s Satyam Infoway Ltd v M/s Sifynet Solutions Pvt. Ltd, (2004) 6 SCC 145.
10. Section 27.
11.Lord Diplock in Erwen Warnink BV v J Townend & Sons, 1979(2) AER 927.
12. Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd, JT 2001 (4) SC 243.
13.Wander Ltd v Antox India Pvt Ltd, 1990 Suppl SCC 727 [11] Lakshmikant v Chetanbhat Shah, JT 2001 (10) SC 285.
14.Cadila Healthcare Limited v Cadila Pharmaceuticals Limited, JT 2001 (4) SC 243.
15.M/s Satyam Infoway Ltd v M/s Sifynet Solutions Pvt. Ltd, (2004) 6 SCC 145.
16.Section 27.
17.Sections 2(1) (m) and Section 2(1)(z) respectively.
18.Section 2(2) (b).
19.N. R. Dongre vs. Whirlpool Corporation, 1996 (16) PTC 583.
20.M/s Satyam Infoway Ltd v M/s Sifynet Solutions Pvt. Ltd, (2004) 6 SCC 145.
21.Section 31.
22.Lakshmikant v Chetanbhat Shah, JT 2001 (10) SC 285.
23.Sections 154 and 155.
24.Article 141 of the Constitution of India.
25.McCullagh, Declan (2003-10-03). "VeriSign fends off critics at ICANN confab". CNET News.com. Retrieved 2007-09-22.
26.Internet Corporation for Assigned Names and Numbers (ICANN). "Verisign's Wildcard Service 27.Deployment". Retrieved 2007-09-22.
28.Mueller, M (March 2004). Ruling the Root. MIT Press. ISBN 0262632985.
29.Slashdot.org, NSI Registers Every Domain Checked
30.The Trademarks Act, 1999
31.Mr. Praveen dalal ,consultant and Advocate ,Delhi High Court.