DOMAIN NAME DISPUTE AND CYBER SQUATTING
Cybersquatting, is a crime against the laws and regulations of cyber law. It can be defined as registering, trafficking in, or using a domain name with bad-faith i.e. mala fide intent to make profit from the goodwill of a trademark belonging to someone else. The cybersquatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price.
The term is derived from "squatting", which is the act of occupying an abandoned or unoccupied space or building that the squatter does not own, rent or otherwise have permission to use. Cybersquatting however, is a bit different in that the domain names that are being "squatted" are (sometimes but not always) being paid for through the registration process by the Cybersquatters. Cybersquatters usually ask for prices far greater than that at which they purchased it. Some cybersquatters put up derogatory or defamatory remarks about the person or company the domain is meant to represent in an effort to encourage the subject to buy the domain from them1. Some common examples of cyber squatting includes:
- The omission of the “dot” in the domain name: wwwexample.com;
- A common misspelling of the intended site: exemple.com
- A differently phrased domain name: examples.com
- A different top-level domain: example.org
The practice that's come to be known as cyber-squatting originated at a time when most businesses were not savvy about the commercial opportunities on the Internet. Some entrepreneurial souls registered the names of well-known companies as domain names, with the intent of selling the names back to the companies when they finally woke up. Many multinational companies like Tata, Bennett & Coleman, Mc Donald’s etc were among the first victims of cybersquatting2.
The clash of the new technology with preexisting trade mark rights resulted in several high profile decisions as the courts of many countries tried to coherently address the issue (and not always successfully) within the framework of existing trade mark law. As the website itself was not the product being purchased, there was no actual consumer confusion, and so initial interest confusion was a concept applied instead3.
Most courts particularly frowned on cyber squatting, and found that it was itself a sufficiently commercial use (i.e., "trafficking" in trade marks) to reach into the area of trademark infringement. Most jurisdictions have since amended their trademark laws to address domain names specifically, and to provide explicit remedies against cyber squatters.
This international legal change has also led to the creation of ICANN (International community for assigned names and numbers), Uniform Domain-Name Dispute-Resolution Policy (UDRP), which attempt to streamline the process of resolving who should own a domain. This is particularly desirable to trade mark owners when the domain name registrant may be in another country or even anonymous.
Registrants of domain names also sometimes wish to register the domain names themselves (e.g., "XYZ.COM") as trade marks for perceived advantages, such as an extra bulwark against their domain being hijacked, and to avail themselves of such remedies as confusion or passing off against other domain holders with confusingly similar or intentionally misspelled domain names.
As with other trade marks, the domain name will not be subject to registration unless the proposed mark is actually used to identify the registrant's goods or services to the public, rather than simply being the location on the Internet where the applicant's web site appears. Amazon.com is a prime example of a protected trademark for a domain name central to the public's identification of the company and its products4.
The World Intellectual Property Organisation (WIPO) Arbitration and Mediation Center deals with domain name disputes under the new Uniform Dispute Resolution Policy applicable to generic top-level domain names adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999. The WIPO Center’s Domain Name Dispute Resolution service has been established specifically to administer domain name disputes with the availability of electronic case filing facilities and a well developed case administration system5.
Resolving Domain Name Disputes6:
Domain name dispute may be resolved in one of the following ways:
A. Court proceedings or litigation
Generally, courts all over the world have applied Trademark Laws in order to resolve domain name disputes. Normally the following factors are taken in account by the courts in case of an infringement and/or passing off action with respect to domain name dispute:
Whether the domain name in dispute is:-
i. Identical or deceptively similar with the already registered trademark;
ii. Identical or deceptively similar to a mark that has acquired reputation in the market;
iii. Deceptively similar to already existing domain name;
iv. Adopted in a bad faith;
v. causing confusion or likely to cause confusion in the mind of general public with respect to real owner
vi. Causing damage or likely to cause damage in terms of business and goodwill.
B. Administrative Proceeding7
Uniform Domain Name Dispute Resolution Policy commonly known as UDRP provides the trademark owners an effective mechanism for resolving the disputes arising out of domain name registered and use in bad faith. UDRP is an international body, formed based on the recommendation of World Intellectual Property Organization (WIPO) that provides for resolving domain name dispute regardless of where the registrar, the domain name registrant or complaining trademark owner is located. Under UDRP trademark owner may submit dispute arising from alledge abusive registration of domain name by way of filing a complaint with the approved dispute resolution service provider requesting the resolution of domain name dispute.
In UDRP proceeding with respect to domain name dispute, complainant has to ensure the presence of all the three below mentioned elements:
- That the impugned Domain name is identical or confusingly similar to his trademark or service mark in which he has rights;
- That the claimant of impugned domain name has no rights or legitimate interests in it; and
- That the impugned domain name has been registered and is being used in bad faith.
For constituting that domain name has been registered and is being used in bad faith following elements may be taken as evidence:
a. circumstances indicating that impugned domain name has been registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the bona fide owner of the trademark or service mark or to a competitor of that owner, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
b. impugned domain name is registered in order to prevent the bona fide owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the allegee have engaged in a pattern of such conduct.
c. impugned domain have been registered primarily for the purpose of disrupting the business of the bona fide owner of the trademark or service mark.
d. by using the impugned domain name, allegee intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the bona fide owner of the trademark or service mark as to the source, sponsorship, affiliation or endorsement of his website or location or of a product or service on his website or location.
It is recommended that while choosing and adopting a domain name proper availability searches should be conducted. It includes pre-launch trademark searches and domain name searches in order to avoid conflicts and legal hassles. Once a domain name is adopted and business is commenced under it one can incur losses with the onset of any such conflict.
First Cybersquatting Case (Word Wrestling Federation case)8:
The first cybersquatting case under the WIPO was decided on January 14, 2000.
The US based World Wrestling Federation (WWF) brought a suit against a California resident who registered the domain name worldwrestlingfederation.com and offered to sell it to WWF at a huge dividend a few days later. The WWF alleged that the domain name in question was registered in bad faith by the registrant in violation of WWF’s trademark.
It was held that the domain name registered by the respondent was ‘identical or confusingly similar’ to the trademark of WWF and the respondent had no legitimate rights or interests in the domain name. Therefore the respondent was ordered to transfer the registration of the domain name to the complainant, WWF.
Cybersquatting in India
As on date, domain names are not defined under any Indian law. Section 2(z) of the Trade Marks Act, 1999, defines trademarks as marks capable of being represented graphically, distinguishing goods or services of one person from those of others. Mark is defined to include a “name” and any abbreviation thereof. The Act has a wide definition for services extending the ambit in relation to business of any commercial or industrial activity. The short point which the Court had to decide is whether a domain name has the characteristics of a trade or service which is available to potential users of the internet.
The concept of a domain name is new to Indian legal thinking. As such, a domain name is nothing but the address of a website, easily identifiable and user friendly, to enable consumers to connect to the internet. There is an organisation, Internet Corporation for Assigned Names and Numbers (ICANN), which is an international registration authority with limited dispute resolution powers. However, an ICANN registration does not confer any intellectual property rights9.
India’s top level domain is “.in”. The sunrise period for the “.in” domains was from 1st January, 2005 to 21st January, 2005. During this period owners of registered Indian trademarks or service marks were given an opportunity to apply for “.in” domains.the booking was opened to the public from 16th February, 2005. INRegistry is the official ‘.in’ registry. INRegisty is operated under the authority of NIXI(National Internet eXchange of India). NIXI is a non-profitable company registered under section 25 of the Indian Companies Act. NIXI has been set up to facilitate improvement Internet services in India.
The disputes relating to “.in” domain name are resolved in accordance with the .INDispute Resolution Policy (INDRP) AND THE INDPR Rules of Procedure. THE “.in Domain Name Dispute Resolution Policy” (INDRP) set out the terms and conditions to resolve a dispute between the Registrant and the Complainant, arising out of the registration and use of an “.in” internet Domain Name10.
A complaint can be filed with the .IN Registry on the following ground:
1. The Registrant’s domain name is identical or confusingly similar to a name , trademark or service mark in which the Complainant has rights,
2. The Registrant has no rights or legitimate interests in respect of domain name.
3. The Registrant’s domain name has been registered or is being used in bad faith.
Companies in India have faced the brunt of cybersquatting in the recent past. Besides, the courts in India have been extremely vigilant in protecting the trademark interest of the domain owners who have suffered from cybersquatters.
The first case in India with regard to cybersquatting was Yahoo Inc. V. Aakash Arora & Anr.,1999 PTC(19) 201 where the defendant launched a website nearly identical to the plaintiff’s renowned website and also provided similar services. Here the court ruled in favour of trademark rights of U.S. based Yahoo. Inc (the Plaintiff) and against the defendant, that had registered itself as YahooIndia.com. The Court observed, “it was an effort to trade on the fame of yahoo’s trademark. A domain name registrant does not obtain any legal right to use that particular domain name simply because he has registered the domain name, he could still be liable for trademark infringement.”
The Bombay High Court in Rediff Communication v. Cyberbooth & Anr AIR 2000 Bom. 27=2000(1) RAJ 562(Bom.)observed that the value and importance of a domain name is like a corporate asset of a company. In this case the defendant had registered a domain name radiff.com which was similar to rediff.com. The court gave a decision in favour of the plaintiff.
In another case the defendant registered a number of domain names bearing the name Tata. It was held by the court that domain names are not only addresses but trademarks of companies and that they are equally important. (Tata Sons Ltd v. Monu Kasuri & others 2001 PTC 432)
In Bennett Coleman & Co Ltd. v. Steven S Lalwani and Bennett Coleman & Co Ltd. v. Long Distance Telephone Company (Cases No D2000-0014 and 2000-0015, WIPO), the arbitration panel gave a decision in favour of the plaintiff. In this to the respondent had registered domain names www.theeconomictimes.com and the www.timesofindia.com with network solutions of the United States. These two names are similar to the names of the Plaintiff’s websites www.economictimes.com and www.timesoftimes.com. Another important fact was that the respondent’s websites using the domain names in contention redirect the users to a different website www.indiaheadlines.com which provided India related news.
In Satyam Infoway Ltd. v Sifynet Solutions 2004 (6) SCC 145, the Respondent had registered domain names www.siffynet.com and www.siffynet.net which were similar to the Plaintiff’s domain name www.sifynet.com. Satyam (Plaintiff) had an image in the market and had registered the name Sifynet and various other names with ICANN and WIPO. The word Sify was first coined by the plaintiff using elements from its corporate name Satyam Infoway and had a very wide reputation and goodwill in the market. The Supreme Court held that “domain names are business identifiers, serving to identify and distinguish the business itself or its goods and services and to specify its corresponding online location.” The court also observed that domain name has all the characteristics of a trademark and an action of Passing off can be found where domain names are involved. The decision was in favour of the plaintiff.
In Satyam Infoway Ltd. v Sifynet Solutions 2004 (6) SCC 145, the Respondent had registered domain names www.siffynet.com and www.siffynet.net which were similar to the Plaintiff’s domain name www.sifynet.com. Satyam (Plaintiff) had an image in the market and had registered the name Sifynet and various other names with ICANN and WIPO. The word Sify was first coined by the plaintiff using elements from its corporate name Satyam Infoway and had a very wide reputation and goodwill in the market. The Supreme Court held that “domain names are business identifiers, serving to identify and distinguish the business itself or its goods and services and to specify its corresponding online location.” The court also observed that domain name has all the characteristics of a trademark and an action of Passing off can be found where domain names are involved. The decision was in favour of the plaintiff.
In 2009, Internet software company Google Inc. won a cyber squatting case against an Indian teenager who had registered a domain name googblog.com. The domain name, Google contended, was confusingly similar to its trademark. Experts felt that complaints regarding cyber squatting were on the rise and organizations such as the World Intellectual Property Organization (WIPO) were being approached by trademark holders to resolve such disputes. On May 15, 2009, the World Intellectual Property Organization (WIPO) ordered an Indian teenager, Herit Shah (Shah), who had been using the domain name 'googblog.com', to transfer the rights of the domain to Google Inc. (Google).(Google Inc.v.Herit Shah,Case No. D2009-0405)
In countries like India, where there was an absence of relevant cyber laws to prevent this practice, such cases were decided within the ambit of trademark laws. Passing off action is where the defendant is restrained from using the name of the complainant to pass off the goods or services to the public as that of the complainant. It is an action to preserve the goodwill of the complainant and also to safeguard the public. In India cybersquatting cases are decided through the principle of Passing off. India does not have a law for prohibition of cybersquatting. Therefore, courts interpret the principle of Passing off with regard to domain names11.
CONCLUSION:
The active involvement of WIPO in resolving disputes regarding domain names has played a vital role in evolving concrete principles in this field. It provides a streamlined, cost-effective and swift procedure to review the claims before it. Generally the cases are expected to be decided within 45 days after filing!The World Intellectual Property Organisation (WIPO) saw a 20 per cent increase in the number of cybersquatting(abusive registration of trademarks as domain names) cases filed in 2005 as compared to 2004. In 2005, a total of 1,456 cybersquatting cases were filed with WIPO's Arbitration and Mediation Centre, according to a WIPO release. This is just one of the solutions to the many complexities concerning the Internet.
Looking at the current situation prevailing in the world, it is certain that cybersquatting is a menace. It is a menace which has no boundaries. Cybersquatters have robbed businesses of their fortune. Looking from the Indian perspective cybersquatting has been prevalent since internet came to the subcontinent. The courts in India have decided many cases related to cybersquatting. It is the imperitive for the parliament to enact a law which would deal with this menace. Cybersquatting has opened the eyes of governments across the world and has prompted them to look into this phenomenon in a serious manner. It is high time India and other countries come out with legislations to protect this virus from spreading.
REFERENCE:
1. www.wikipedia.com
2. Domain Names and Cybersquatting ,By Ashwin Madhavan, www.ijl.com
3. Cyber squatting is a big business in India’-www.indiaforensic.com
4. ‘Law relating to patent, trademark, copyright, design and geographical indications’- B. L. Wadehra, Universal Law Publishing Co. Pvt. Ltd.
5. www.WIPO.com
6. ‘Intellectual Property Law in India’- P.S. Narayan, Gogia Law Agency, Hyderabad.
7. www.WIPO.com
8. ‘Regulating Intellectual Property Rights on the Internet’- Aashit Shah, Government Law College Law Review, 1999-2000.
9. FINANCIAL EXPRESS, JUNE 10, 2004
10. Intellectual property issues and cyber space by Rohans Nagpal, version 2.1, April 2008.
11. ‘Protecting Intellectual Property in the Internet Age’- Karnika Seth (Cyber Lawyer), Seth Associates.
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