The development of the internet has resulted in the creation and growth of a global virtual market which promotes not only trade and commerce but also facilitates information exchange. This virtual market has proved to be an immense boon to the manufacturer, businessman, etc. But, this growth of internet also provides unique opportunities to the unscrupulous elements of the society to make a quick profit by exploiting the good will of others.

Registration of domain names incorporating trademarks of other legitimate users is one such method used to defraud the public. Domain names are freely available for registration on first come first served basis with little regard to trademark rights. Any person may register a domain name incorporating another’s trademark in it. This leads to association among the general public of the domain name with the trademark holder. If this kind of situation is not remedied at the earliest, it may lead to various hardships to the trademark holder such as loss of profits, dilution of mark, future litigation, loss of reputation, etc. Thus a burden has been imposed upon the legitimate right holders to actively take steps to prevent infringement of those rights and obtain remedies against such infringement.

A domain name dispute, thus, is a dispute over the right to ownership of a domain name by two or more parties. The recovery of the domain name by the legitimate owner is essential for, among others, the following reasons:

1. Protection of domain name – in the first instance, the owner of the trade mark, has the right to use the domain name. He may use the domain name to promote his goods, sell his goods, provide information about his goods, etc. The use of the domain name by others who are not entitled to the same, affects this right of the holder of the trade mark to use the domain name. The technological advancement of the past decade has afforded an opportunity to all persons to exploit a new avenue. This grants access to the manufacturer and businessmen to a wider section of the society at minimal cost. If the trade mark holder is unable to obtain the domain name and thus is obstructed from exploiting this avenue, he is put in a disadvantageous position.

2. Loss of reputation – where the domain name reflects or incorporates a trade mark, general assumption among the public would be an association among the two. Thus any person coming across such web site would assume it to belong to the trade mark holder and reliance would be placed upon its contents based upon the goodwill of the trade mark. When a problem arises at a future date due to lack of quality of products or false information provided by the site, the blame would be placed on the trade mark holder. The negligence on the part of the legitimate user would thus result in dire consequences in the form of loss of reputation among the public.

3. Trade mark infringement – the trade mark, to any businessman, is an invaluable asset as it represents the goodwill that he has earned over the years. Every trademark holder takes the utmost care to ensure that his mark is not infringed by others. In the online world, the infringement of trade mark is done through domain name registration. When a person having no rights in the trade mark, registers a domain name incorporating the trade mark, he infringes the rights of the mark holder. This infringement is as sinister as the infringement of the trade mark in the real world. It perhaps, causes more damage in the on-line world as the reach of a web site is far greater than of the infringement in the physical world. Such domain name registrations could lead to passing off of goods too.

4. Future litigation – a domain name incorporating a trade mark is generally associated with the trade mark and the public presumes the two to originate from the same source. Thus when there is any complaint against the web site, consumers tend to blame and move against the trade mark holder, especially in cases where the registrant of the domain name absconds after making a quick profit. The mark holder may be considered to be jointly liable for not clarifying the absence of any connection between the mark and the domain name at an earlier stage. To silently have let another defraud the public can be construed to have abetted to the same. The trade mark holder has a duty to ensure that the mark registered by him is not put to use by third parties to exploit people.

5. Implied acceptance – where a person knows that his rights are being infringed and does nothing to prevent the same, he is said to have acquiesced to the same. A trade mark holder, who does not object to the use of his mark in a domain name by one who is in no manner associated with the said mark, may be held responsible for any defraud committed by that person. This may be because, to not protest in such a case, may be construed to amount to an implied promise to the public about the association of the web site to him

Thus it is not only extremely important, but also an inherent duty, that a person must recover the domain name in which he has an interest.