Author Name:   mahimapradeep

cybersquatting and domain names and the regulations relating to it

Cybersquatting and Domain Names

Rapid developments and enhancements in information technology have brought a new platform for trade and business. They have increased their significance and presence in the “online markets” with the help of their trademarks to attract consumers. Hence, in this scenario, trademarks play an important role in cyberspace and therefore, increasing the need for their protection.

Disputes over rights to domain names, which serve as a source – identifying function in cyberspace, similar to a trademark, arise at the heart of this intersection between international trademark law and the Internet1. In an effort to reconcile the unique complexities presented by domain name disputes, a host of vehicles have been developed by which aggrieved parties may assert their rights such as the Uniform Domain Name Dispute Resolution Policy (UDRP) promulgated by the Internet Corporation for Assigned Names and Numbers (ICANN), the nonprofit organization that manages the DNS.2

Role of Domain Name

Internet Protocol (IP) addresses, which consist of a string of numbers separated by periods, are used to identify Internet sites. A domain name provides a corresponding alphanumeric address which is easier to remember and often intuitive. For example, www.ibm.com is IBM’s website.3

Accordingly, domain names represent the same purposes as trademarks, online, for business and commercial purposes. They serve to identify the source of goods and services, such as:
· Promotion of business and building up of customer base online and offline by was of advertising on the web.
· Establishment of the credibility of the website and the business of the Internet.
· Easy access to customers and prospective customers.4

Cybersquatting

Registration of domain names are done on ‘first come – first serve’ basis. This gives rise to many problems as any person can register any domain name of their choice regardless of whether that name holds any trademark or goodwill of a commercial/business enterprise or represents any kind of organization. This lead to the reserving of many well known trade names, brand names, company names, etc. by individual/corporations other the ones with a genuine interest in the domain name, with a view to trafificking/doing business on the said domain name to the genuine buyer5.

Cyber-squatters, also known as “cyber-pirates”, beat a company to the punch by reserving a company name or trademark as a domain name in the hope of profiting when the company wants to reserve its own name.6 Essentially, cyber squatters fraudulently obtain these domain names with the intent to sell it to the lawful owner of the name at a higher price or premium. The cyber squatters quickly sell the domain names to other non-related entities, thereby enabling passing off and diluting of famous trademark or trade names.7 Passing off is a form of unfair trade practices in which one party seeks to profit from the other party’s reputation.

The main problem lies in the fact that two owners cannot have the same domain name. Hence, although cyber squatters are not completely restricting corporations from registering any domain name of their choice, it can be argued that cyber squatters are not preventing the right of corporations to domain names. However, by registering the most obvious as a domain name (e.g., the name of the corporation itself), cyber squatters force corporations to find other ways to attract consumers to their Internet pages8. Instead of simply typing an obvious domain name for a corporation, customers are forced to use a search engine, which may cause additional confusion or delay when accessing the desired site.9 Moreover, with the programming of search engines, often enough websites of the competitor’s with similar domain names pop up.

Consumers seeking the page of a specified trademark owner will likely turn to a search engine because an initial attempt of typing in the domain name (For example, ‘www.trademark.com’) does not yield the desired result as a cyber squatter has already registered that domain. Therefore, the trademark owner is injured in three ways10:

1. Using a search engine will inconvenience the consumer, because he may possibly have to wade through thousands of other sites to get to the desired site. Thus, this increases the customers search costs and makes it more likely that the customer will become frustrated with the trademark owner, regardless of the quality of her products or services.

2. The search engine route likely will bring up many Internet sites of the trademark owner’s competitors.

3. The frustration that customers face with this problem may convince customers to use alternative, non-Internet means to get the desired products. This fact, combined with the likely frustration from the search engine process might make customers, originally searching to purchase the trademark owner’s products, shift their purchases to the trademark owner’s competitors.11

Consequently, protecting domain names and its identity has become important.
The cases so far, have showed that the conflicting issue in related to the use of the goodwill of a trademark by an infringer in the domain name to divert the customers or potential customers of the owner of the trademark to a website not associated with that trademark, or use of meta tags resulting in dilution of trademark or unauthorized registration of the trademark as domain name with the intent to extort money or to prevent the owner from using the trademark.12

Law relating to domain names and cybersquatting

Uniform Domain Name Dispute Resolution Policy (UDRP) is an internet-based system that resolves complaints made by owners of trademark when facing trademark conflict. Being neither a court nor an arbitration authority it controls deletion/ transfer of domain names. According to the policy, a complainant can bring action on grounds including a domain name being identical/ confusingly similar to a trademark/ service mark, domain name owner has no rights/ legitimate interests in the same or the domain name so registered is being used in bad faith. After the approval of all these stipulations the registration is proved, or domain registration cancelled/ transferred to complainant. However, no financial remedies are a part of the UDRP mechanism.

UDRP is defined as an “expedited administrative proceeding”, and under it the trademark holder complaints to the approved dispute resolution provider. UDRP may also be referred to as a legally qualified specific contract term. For country-code top-level domains like .uk and .de, UDRP applies only if the country administrator voluntarily adopts it. Generic top-level domains like .com and .org are under UDRP’s scope. It is a cheap, fast and easy alternative to complex court procedures and long hours.

WIPO is the most important dispute-resolution service provider under the UDRP, accredited to ICANN for domain names. It provides skilled panelists, thorough administrative procedures and complete credence. It takes about two months for a WIPO case to be resolved, with a small fee to be made. A case with higher complexity may be heard in person.13

A person may complain before the administration dispute resolution service providers listed by ICANN under Rule 4 (a) that:
(i) A domain name is "identical or confusingly similar to a trade mark or service mark" in which the complainant has rights; and
(ii) The domain name owner/registrant has no right or legitimate interest in respect of the domain name; and
(iii) A domain name has been registered and is being used in bad faith.

Role of the Judiciary

In India, currently, there is no legislation or provision relating to disputes with regard to domain names or cybersquatting therefore, the Trademarks Act plays an influential role in decisions of the court. Unlike other countries that have recognized this menace, India has only relied upon the precedents of the courts.

However, in the case of Satayam Infoway v. Siffynet Solutions14, the Hon’ble Supreme Court indicated to the need for domain, as follows:

“The original role of a domain name was no doubt to provide an address for computers on the Internet. But the Internet has 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 that are associated with such domain name. A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its good or services, and to specify its corresponding online Internet location. Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical.”15

Moreover, in case of Rediff Communication v Cyberbooth15 the court decided that the value and importance of a domain name is equitable to being like the company’s asset and therefore, domain names must be treated like corporate assets and must also be protected as such, similar to trademarks.

Yahoo Inc v. Akash Arora17 was another such case where the plaintiff sought permanent injunction to restrain the defendants from using the trademark or domain name yahooindia.com or such deceptively similar to the trademark “Yahoo” for any commercial purposes. The defendants argued that as Yahoo was not trademarked in India, there is no infringement, as it did not fall under the definition of goods under Indian Trade Marks Act, 1958. Yet, the plaintiff was granted the injunction, as services rendered on Internet are globally recognized as goods and Yahoo’s trademark ought to be protected.

As there are no special laws or statutes to prevent cybersquatting in India, the principle of passing off is primarily applied.

As was seen in the case of Tata Sons Ltd V Manu Kosuri18, Tata’s trademark was misappropriated. The defendant registered many domain names incorporating the trademark Tata. The court held as domain names are valuable corporate assets, they are entitled to trademark equivalent protection.

References:
1. Singh, Bhavna, “Cyberquatting and Domain Name Disputes; Under the Trademark Law”, p. 6
2. Lisa M. Sharrock, “The Future of Domain Name Dispute Resolution: Crafting Practical International Legal Solutions from within the Journal, Vol. 51, No. 2 (Nov., 2001), p. 817-849UDRP Framework”, Duke Law
3. Golinveaux, Jennifer, “What’s in a Domain Name: Is “Cybersquatting” Trademark Dilution”, 33 U.S.F.L. Rev. 641 1998 – 1999, p. 641
4. Singh, Bhavna, “Cyberquatting and Domain Name Disputes; Under the Trademark Law”, p. 7.
5. Singh, Bhavna, “Cyberquatting and Domain Name Disputes; Under the Trademark Law”, p. 8.
6. Golinveaux, Jennifer, “What’s in a Domain Name: Is “Cybersquatting” Trademark Dilution”, 33 U.S.F.L. Rev. 641 1998 – 1999, p. 641.
7. Manish Vij v. Indra Chugh, AIR 2002 Delhi 243
8. Mercer, John D., “Cybersquatting: Blackmail on the Information Superhighway”.
9. Ibid
10. Mercer, John D., “Cybersquatting: Blackmail on the Information Superhighway”.
11. ibid
12. Singh, Bhavna, “Cyberquatting and Domain Name Disputes; Under the Trademark Law”, p. 10.
13. http://www.wipo.int/amc/en/center/faq/domains.html#7, accessed on April 18, 2014
14. AIR 2004 SC 3540
15. ibid
16. AIR 2000 Bom 27
17. 78 (1999) DLT 285
18. 90(2001)DLT659; 2001 PTC 432

This article has been Awarded Certificate of Excellence for Original Legal Research work by our Penal of Judges

ISBN No: 978-81-928510-1-3
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