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What’s in a (domain) name?

When Shakespeare proclaimed that ‘a rose by any other name would smell just as sweet’, he probably wasn’t talking about domain names. The desire of vanity websites and recent incidence of cybersquatting has given rise to a curious case in which a prominent Indian politician has had to lay claim to his own name (on the Internet) with little success.

jaitley

In mid-2009, Arun Jaitley, leader of the Bharatiya Janta Party, attempted to buy the domain name “www.arunjaitley.com” but was unable to do so. What followed was an interesting dispute that lead to a decision by the Delh High Court on the proprietary rights in a person’s name and its extension into cyberspace as a domain name. When Arun Jaitley sent a letter to the domain registrar ‘Network Solutions’ requesting registration of the domain name, he received a notice asking him to purchase the domain for anything between $11,725-$14,475. Jaitley argued that the registration was clearly made in bad faith, with the sole purpose of extracting monetary gain. He also adduced evidence to show that there had been collusion between the defendants, who floated different entities in order to transfer the domain and prevent Jaitley from registering it.

The basis for claiming intellectual property rights in the name ‘Arun Jaitley’ was that it was a ‘rare combination of two words’, coupled with his fame and achievements. This, it was argued, removed it from the basket of ‘personal names’ and into the class of ‘source indicators’, which embodied Arun Jaitley’s persona, including his successful practice as an advocate. Once this had been established, the Satyam case was sufficient to demonstrate that domain names are equally protected under the Trade Marks Act, despite not being explicitly classified as a ‘mark’.

Accepting these arguments, the court held that domain names are protected under the law of passing off, and personal names constituting domain names should be granted similar protection, especially when they are inherently distinctive and popular. On the issue of bad faith, the court relied on the Uniform Domain Name Disputes Resolution Policy (UDRP) to invoke the complaint redressal mechanism.

In its observations, the court remarked that the demand for $11,725-$14,475 as the auction price for the domain was an exorbitant sum and was a clear indication of dishonest intention. Since the domain registrars had violated the court’s injunction order on the domain transfer, and had floated multiple entities to control the impugned domain, there was also a suggestion of collusion with the objective of extracting commercial gain by selling the domain name. This was a clear violation of the UDPR and evidence of mala fide intention in trafficking the domain name. Therefore, it granted punitive damages to Arun Jaitley amounting to INR 5,00,000 for “causing hardship and harassment and mental torture to [Jaitley]” and restrained the defendants from adopting or using the mark “Arun Jaitley” in any manner whatsoever in cyberspace. It also directed the domain to be transferred to Jaitley with immediate effect.

So the next time you try to register a domain name, make sure it isn’t shared by someone with a flourishing legal practice.

(Image from Kkm010 under a CC BY-SA 2.0 license)

About Amlan Mohanty

Amlan is a lawyer based in India. He has been writing about technology and intellectual property for the last five years.