Cyber Squatting is a word that has come to be linked with the
registration of domain names without the objective of using them,
in the names of popular brands or personalities exclusively for the
purpose of making money. The crux is that “name” belongs
more appropriately to another entity. Secondly, the registrant is
targeting to trade the name.
Domain name registration method commenced on the basis of the
“First come First serve” basis. The registrant authority
did not take the accountability for examining the possession/owner
of the name. Later when the internet became trendy, large popular
businesses wanted to enter the internet with their own websites and
regularly found that the domain name they were looking for had
already been booked. So, businesses who wanted the same domain name
had to pay a price, which was many times mind-boggling.
This growing cost of buying back domain names resulted in a
‘Meta society’ trademark owners coming together and
asserting that their intellectual property rights on a registered
trade mark should be extended to “domain name”. This has
developed in considering “Registration of Domain Names without
the intent of using them” as cybersquatting.
In order to prevent cybersquatting, some countries have imposed
somewhat arbitrary restrictions on domain name use such as
limitations on the choice of the domain name to match the
registrant company’s name or to contain no general terms. Some
countries have enforced restrictions on the number of domains that
a registrant can own, making it difficult for businesses to
register multiple brands. This may present a problem for many US
corporations that own hundreds of brand names. The United States of
America has the “Anti-Cyber Piracy Act” to outline the
rights on domain names.
In the absenteeism of any law, clashes regarding domain names
are fixed through the uniform Disputes Resolution Mechanism that
the registrants have agreed to practice. The WIPO has been
supportive of the Dispute Resolution based on “Trade Mark Rights“. Disputes are largely
decided through an “Arbitration Process”.
Indian locus:
- In India, certain cases have been decided like Yahoo
Inc V/s Akash Arora. In this case, the plaintiff, who is
the registered owner of the domain name ‘Yahoo.com’
accomplished in procuring an interim order restraining the
defendants and agents from dealing in service or goods on the
internet or elsewhere under the domain name
“Yahooindia.com” or any other trademark/domain names
which are deceivingly similar to the plaintiff’s trademark
“Yahoo”. - In Rediff Communication Limited V/s
Cyberbooth. The Bombay High Court has said that the
internet domain names are of significance and are a valued
corporate advantage. A domain name is more than an internet address
and is allowed for safeguard as a trademark. The development and
growth in technology and the service has rendered internet sites
also to come to be recognized and accepted and are being given
defense so as to safeguard such providers from passing off the
services rendered by others as his service.
Cyber Squatting
Cybersquatting is elucidated as “an act of procuring
fraudulent registration with an intention to sell the domain name
to the lawful owner of the name at a hefty price”. The court
in Manish Vij v. IndrChugh and The Satyam Infoway Ltd v.
Sifynet Solutions (P) Ltd case pinned the Indian domain
name situation way back in 2004 stating that-“As far as India
is concerned there is no legislation which openly refers to dispute
resolution in connection with domain names. But though the
operation of the Trade Marks Act, 1999 itself is not
extraterritorial and may not allow for sufficient protection of
domain names, this does not mean that domain names are not to be
legally protected to the grade possible under the laws pertaining
to passing off. The recent way is Reverse Domain Name Hijacking
where an attempt is made by a trademark holder to acquire a domain
name from a legitimate user by making false cybersquatting
allegations against him.
The Information Technology Act, 2000 of India along with The
Information Technology (Amendment) Act 2008 addresses many cyber
crimes and has set up a special cyber crimes cell. However, the Act
oddly overlooks the problem of domain name disputes and
cybersquatting. In the case of cybersquatting domain names may be
reflected as trademarks based on use and brand repute and so fall
under the Trade Marks Act, 1999. However, not all domain names are
trademarks.
Other than the aforementioned civil remedies, conferring to
Section 135 of the Indian Trade Marks Act, 1999 legal remedies for
cases for infringement of registered trade mark or passing off
includes an injunction, damages, or account of profits or delivery
up of infringing goods or damage of infringing goods. Section 103
enforces punishment for applying false trademarks or trade
descriptions and Section 104 enforces punishment for selling goods
or services bearing a false trademark or description, (in both
cases) which is punishable with imprisonment for a term not less
than six months and may extend to three years and with fine, not
less than Rs. 50,000 which may extend to Rs. 2 Lakhs. The Copyright
Act, 1957 is implored at times, and raids conducted, however,
domain name offenses are still struggling for legislative
clarity.
The common law remedying of passing off is available to the
possessor of the trade mark but in case his mark is registered, he
can file an action for infringement of trade mark. Plentiful cases
including that of Yahoo, Rediff, and Satyam have laid down the
subsequent guidelines-
- The defendant should have sold/ offered its goods/ services in
a manner that cheats the public into perceiving that the goods/
services of the defendant are in fact the plaintiffs. - Misrepresentation by the defendant to the public should be
proven. - The loss/likelihood of it should be proven.
In the above-mentioned Satyam case, the appellant registered
multiple domain names like www.sify.net, www.sifymall.com, etc. in
June 1999 through ICANN and WIPO, based on the word
“Sify”, created using features of its corporate name,
Satyam Infoway, which earned a wide prominence. The respondent
registered www.siffynet.net and www.siffynet.com with ICANN is 2001
and 2002 congruently as it carried on the business of internet
marketing. On the respondent’s claim to the appellant towards
the transfer of the domain name failing, the City Civil Court gave
a temporary injunction against the respondent on the ground that
the appellant was the prior user of the trade name “Sify”
which had built up enough goodwill over the time in relation to the
internet and computer services.
On appeal, the Hon’ble High Court said that the balance of
convenience between both the parties should be considered and the
respondent had financed huge sums of money in the business. It held
that customers would not be misled or confused between the two
parties as the two businesses were altogether very different.
On another appeal, the Supreme Court found that both the lower
courts agreed on the principles of passing off actions in
connection with trademarks being appropriate to domain names. The
Supreme Court said that in order to claim to pass off and restrain
the defendant from passing off its goods/ services to the public as
that of the plaintiff’s, the test of misleading the public with
respect to the uniqueness of the manufacturer/ service provider,
misrepresentation and loss or probability of it should be applied
and proven.
The appellant’s claim for being one of the leading internet
service providers in India was not contested and the words
“Sify” and “Siffy” are both visually as well as
phonetically similar to quite an extent, with or without the adding
of “net” to “siffy”. The Supreme Court did not
accept the respondent’s clarification of the word
“Siffynet” being derived from an amalgamation of the
first letter of the five promoters of the Respondent. The Court
held that there was a similarity of duplicate or similar services
by both parties and mix-up was likely, unlike claimed by the
defendant. As for the balance of convenience issue, the Court was
satisfied with the appellant’s evidence of being the former
user and having a reputation with the public with respect to
“Sify”. The respondent would not suffer great loss and
could carry on its business under a different name. The Supreme
Court set aside the High Court’s findings that no partiality
would be caused to the appellant as it had another domain name
since this would be imperative only if the case was one where the
right to use was co-equal to both the sides. The respondent’s
adoption of the appellant’s trade name was untruthful and so
the High Court’s decision was set apart while that of the City
Civil Court was declared.
Organization of Domain Names and the Regulatory Mechanism-
ICANN Domain Name Dispute Resolution Policy, OECD, WIPO
ICANN is a non-profit company that was created under the
direction of the United States Department of Commerce. The goal of
the organization is to expedite the privatization of the technical
administration of Internet names and addresses, the domain name
system. As part of this privatization effort, ICANN declared on
April 21, 1999, the selection of five companies to contribute in a
two-month test of a freshly shared registration system. During and
after the two-month test phase, apart from network solutions Inc
(NSI), America online, CORE (Internet Council of Registrars),
France Telecom Melbourne IT and register .com joined as registrars
for GTLD names (General Top Level Domain Names).com,.net, .org,
.mil, .gov, .edu,.int.
In India, the courts have made efforts to apply the principles
of trademark and in particular those concerning passing off to
settle domain name disputes. In Satyam Infoway Ltd V/s
Sifynet Solutions Pvt. Ltd. The Supreme Court has held
the domain name could be said to be a word or name which was
capable of differentiating the subject of trade or service made
available to the prospective users of the internet. On the question
of whether the principles of trademark law and in specific those
relating to passing off apply to the domain name, the court said
that “it is obvious that domain name may have all the
characteristics of a trademark and could find an action for passing
off. The court also observed that in India there is no legislation
that clearly refers to dispute resolution in connection with domain
names. But though the operation of the Trade Mark Act,1999 itself
is extraterritorial and may not permit for suitable protection of
domain names, this does not mean that domain names are not legally
protected to the degree possible under the laws relating to passing
off.
The difference between trademark and domain names lies in the
style in which the two function. A trademark is protected by the
laws of a country where such a trademark may be registered. A trade
mark therefore may have manifold registrations in many countries
across the world. On the other hand, since the internet allows for
entrance without any geographical limitation, a domain name is
theoretically accessible irrespective of the geographical location
of the consumers. The product of this potential for universal
connectivity is not only that a domain name would require universal
exclusivity, but also that national laws might be insufficient to
efficiently protect a domain name. The space required international
regulation of the domain name system which was touched through the
World Intellectual Property
Organization (WIPO) and the Internet
Corporation for Assigned Names and
Numbers(ICANN).
Jurisdictional concerns in order to settle the domain name
disputes have a huge cause of worry. Since there is no suitable law
to govern the dispute there is a muddle whether the common law
remedy of “passing off” has to be applied to redress the
domain name dispute or whether can be the application of the
Uniform Dispute Resolution
Policy (UDRP) which is given by the
ICANN. On the other hand, World Intellectual Property Organizations
(WIPO) and the Organization for Economic Co-operation and
Development (OECD) have laid down clear rules. This being the
situation there are certain case laws that have been founded by
employing the above-said mechanisms. This has formed a great
misunderstanding as to which law/mechanism has to be complied
with.
International Arbitration has a fundamental role in the
settlement of domain name disputes. Since the law relating to
domain name disputes is still in the pubescent stage the role of
International Arbitration is significant in settling domain name
disputes.
Uniform Dispute Resolution Policy created
by the ICANN is used by all official
registrars. Under this new policy, a trade mark owner can start a
relatively low-cost administrative procedure to contest the
existing domain name. In order to contest the trade mark owner must
show, firstly, that the trade mark owner owns a trademark (either
registered or unregistered) that is the same or confusingly alike
to the registered second-level domain name. Secondly, that the
party that registered the domain name has no appropriate right or
interest in the domain name and thirdly, that the domain name was
registered. Some of the important disputes settled under UDRP are
as follows:
In Bennett Coleman and Co. Ltd V/s Steven S. Lalwani and
Bennet Colman and Co. Ltd V/s Long-distance Telephone
Company the respondent registered the domain names
‘theeconomictimes.com’ and ‘thetimesofindia.com’
correspondingly which were matching to the plaintiff domain names
‘economictimes.com’ and ‘timesofindia.com’ used by
him for electronic publication of their leading newspaper ‘The
Economic Times’ and ‘The Times of India’ respectively.
The domain names in conflict redirected internet handlers to the
respondent’s website ‘indiaheadlines.com’ which
delivered Indian-related news. The WIPO panel established
satisfaction of all elements contained in para 4(a) of UDRP and
ordered the transfer of impugned domain names to the
complainant.
In Microsoft Corporation V/s Amit Mehrotra The
WIPO board found that the domain name ‘microsoft.org’
registered by the respondent was duplicate and confusingly similar
to the trademark ‘MICROSOFT’ (in which the complainant had
rights and respondent had no legitimate relevance) and that the
respondent’s domain name had been registered and was being used
in bad faith.
In the framework of the internet, where parties situated in
different corners of the world can deal with each other at a click
of a mouse, litigation of online litigation is often bothersome,
unfeasible, time-consuming, and exorbitant. Providing an
alternative approach to decide online disputes might aid in
remedying grievances and increasing consumer confidence in
e-commerce. Alternative Dispute Resolution (ADR) has a vital role
to play here.
The WIPO founded the online domain name dispute resolution
policy system for domain resolution system for domain name disputes
commonly denoted as ICANN Policy. This process is not only faster
but more cost-effective. The Uniform Domain Name Dispute Resolution
Policy was adopted by ICANN on 24th October 1999. This policy
provides for an effective administration process to resolve
disputes concerning foul and bad faith registration of domain
names. The Registrar may cancel, suspend or transfer a domain name.
The plaintiff is needed to file a complainant with an Approved
Dispute Resolution Service Provider as of date.
Judicial case laws have recognized the domain name problem and
have tried to tackle it with injunctions, domain name transfers,
and damages under the laws of passing off; however, legislature
regarding the same has deep holes which need to be filled in with
specific amendments to The Information Technology Act, 2000.
Harassment, blackmail, misuse of domain space, illegal gain,
riding on goodwill, and initial interest mix-up are part and parcel
of most domain name and cybersquatting disputes and require
consideration and action of the legislature, administrative bodies
as well as the judiciary.
The Anti Cybersquatting Consumer Protection
Act of the United
States is a major example that is
cyberspace-specific, although it is still based on old-style legal
principles of trademark law, and importantly, refers to
jurisdictional parameters of domestic law, which are demarcated by
real territorial boundaries. This act fails to account for the
worldwide reach of cyberspace, and the act reads as if the internet
were limited to the U.S. The Anti Cybersquatting Consumer
Protection Act, in the Satyam case in India, it was seen
that-“…since the internet allows for access without any
geographical limitation, a domain name is potentially reachable
irrespective of the geographical location of the consumers.
National laws may be insufficient to effectively protect a domain
name. The gap necessitated international regulation of the domain
name system (DNS). This international regulation was effected
through the World Intellectual Property Organization (WIPO) and the
Internet Corporation for Assigned Names and Numbers (ICANN)”.
If Indian law cannot highlight the issue domestically, India
ratified international law and the process should be given its
due.
Conclusion
There is an imperative role to be played by the Trade Mark Law
in India to give uniform safeguard to domain names as that of the
trade mark. Though the revealing of infringement of Intellectual
Property Rights in cyberspace is easy, effective law enforcement
poses a task. There is a need to upsurge the awareness of
Intellectual Property Rights through different activities such as
seminars, conferences, workshops, etc. There needs to be an
Intellectual Property Assistance Centre at every district level.
Industry Associations like ASSOCHAM, CII, and NASSCOM can play
important role in the dissemination and awareness of the benefits
of adopting a strong IP protection strategy for all e-businesses.
The other mechanisms that can be well-thought-out to register the
domain names are to give powers to registrars of domain names to
scrutinize the objects with which domain names are registered and
to control and administer their use through periodical checks. With
regard to the domain, name dispute resolution by the UDRP areas
such as freedom of speech, choice of law, the impartiality of
panelists, the ineffectiveness of the panelists, and elusive
definitions are anticipated to create problems in the smooth
running of what would otherwise have been a comprehensive mechanism
for the settlement of domain name disputes. The other problems
include whether the method is as fair and operative as it should
be, and the answer is indefinable. UDRP is considered to be a
better resolution compared to any other resolution. The domain name
dispute between the parties within the country can efficiently be
addressed by the local courts if the domestic laws are amended
properly to resolve Domain Name Disputes.
Cybersquatting & Regulatory Mechanisms
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guide to the subject matter. Specialist advice should be sought
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