What is Cybersquatting?
Cybersquatting is the practice of registering an Internet domain name that is likely to be wanted by another person, business, or organization in the hope that it can be sold to them for a profit. It involves the registration of trademarks and trade names as domain names by third parties, who do not possess rights in such names. Simply put, cybersquatters (or bad faith imitators) register trade-marks, trade names, business names and so on, belonging to third parties with the common motive of trading on the reputation and goodwill of such third parties by either confusing customers or potential customers, and at times, to even sell the domain name to the rightful owner at a profit.
What is a Domain Name?
Every resource on the Internet, such as a web page or a file of information has its own address known as Uniform Resource Locator URL. A domain name is part of this address which is assigned to each computer or service on the Internet. Domain name system maps names to a series of number or IP address. These numbers are then linked with an easily read and remembered address – the domain name. The domain name need not change if the computer or service changes, whereas the series of numbers will. The domain name is intended to be more meaningful to human beings than the series of numbers. The numbers referred to above are linked with the domain name “rs. internic.net”. People who are using the domain name can therefore choose an easily remembered, and importantly, easily recognizable names in cyberspace.
The Internet Corporation of Assigned Names and Numbers (ICANN) is responsible for the administration of top level domain names. In assigning a domain, NSI uses a multi level system, including a top level domain (TLD) such as .com and .net which are considered worldwide generic. First step to acquire a domain name is to contact the administrator of the TLD and if the identical requested domain name is not already assigned, the name will be then approved by the administrator. That allocation of IP addresses and domain names worldwide is done centrally. There is a specific registration process involved. The IANA is the central internet authority that allocates IP addresses and domain names through the INTERNIC1
Laws in India
Unlike many developed countries, in India we have no Domain Name Protection Law and cyber squatting cases are decided under Trade Mark Act, 1999.
That although the Indian Courts have drawn the distinction between trade mark and domain name; wherein the Hon’ble Supreme Court in Satyam Infoway Ltd vs Sifynet Solutions Pvt Ltd; AIR 2004SC3540 has observed that the
“distinction lies in the manner in which the two operate. A trademark is protected by the laws of a country where such trademark may be registered. Consequently, a trade mark may have multiple registrations in many countries throughout the world. On the other hand, since the internet allows for access without any geographical limitation, a domain name is potentially accessible irrespective of the geographical location of the consumers. The outcome of this potential for universal connectivity is not only that a domain name would require worldwide exclusivity but also that national laws might be inadequate to effectively protect a domain name“.
The Indian Courts though have recognized the lacuna, however, in the absence of a explicit legislation, courts apply provisions of the Trade Marks Act to such disputes. The Court in Case (Supra) further observed that
“As far as India is concerned, there is no legislation which explicitly refers to dispute resolution in connection with domain names. But although the operation of the Trade Marks Act, 1999 itself is not extra territorial and may not allow for adequate protection of domain names, this does not mean that domain names are not to be legally protected to the extent possible under the laws relating to passing off“.
Dispute involving bad faith registrations are typically resolved using the Uniform Domain Name Dispute Resolution Policy (UDRP) process developed by the ICANN. Under UDRP, WIPO is the leading ICANN accredited domain name dispute resolution service provider and was established as a vehicle for promoting the protection, dissemination, and the use of intellectual property throughout the world. India is one of the 171 states of the world which are members of WIPO.
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.
Rule 4 (b) has listed, by way of illustration, the following four circumstances as evidence of registration and the use of a domain name in bad faith:
(i) Circumstances indicating that the domain name owner/registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark; or to a competitor of that complainant for valuable consideration in excess of its documented out of pocket costs, directly related to the domain name; or
(ii) The domain name owner/registrant has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) The domain name owner/registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the domain name owner/registrant has intentionally attempted to attract, for commercial gain internet users to its web site or other online location by creating a likely hood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of the domain name owner/ registrant web site or location or of a product or service on its web site or location.
India has also established its own registry by the name INRegistry under the authority of National Internet Exchange of India (NIXI), wherein the dispute related to the domain name are resolved under the .IN Dispute Resolution Policy (INDRP). The Policy has been formulated in line with internationally accepted guidelines, and with the relevant provisions of the Indian Information Technology Act 2000.
Under InRegistry, disputes are resolved under .IN Domain Name Dispute Resolution Policy (INDRP) and INDRP Rules of Procedure. These rules describe how to file a complaint, fees, communications and the procedure involved.
Role of Judiciary
Though domain names are not defined under any Indian law or are covered under any special enactment, the Courts in India has applied Trade Marks Act, 1999 to such cases.
Like in other cases under Trademarks Act, 1999 two kind of reliefs are available:
1. Remedy of infringement
2. Remedy of passing off
Remedy of Infringement: Trade mark Act permits owner of the trade mark to avail the remedy of infringement only when the trade mark is registered. Remedy of Passing off: No registration of the trade mark is required in case the owner inteeds to avail the relief under passing off.
The first case that came up before the Indian Courts was Yahoo! Inc. v. Akash Arora nad Anothers [1999 II AD (Delhi)]; in which an attempt was made to use the domain name <yahooindia.com> for Internet related services as against domain name i.e. <yahoo.com>, The Court observed that usually the degree of the similarity of the marks is vitally important and significant in an action for passing off for in such a case there is every possibility and likelihood of confusion and deception being caused. When both the domain names are considered, it is crystal clear that the two names being almost identical or similar in nature, there is every possibility of an Internet user being confused and deceived in believing that both the domain names belong to one common source and connection, although the two belongs to two different concerns.
In Tata Sons Limited and Anr Vs fashion ID Limited (2005) 140 PLR 12; the Hon’ble High Court of Delhi Court held that “The use of the same or similar domain name may lead to a diversion of users which could result from such users mistakenly accessing one domain name instead of another. This may occur in e-commerce with its rapid progress and instant (and the erotically limitless) accessibility to users and potential customers and particularly so in areas of specific overlap. Ordinary consumers/users seeking to locate the functions available under one domain name may be confused if they accidentally arrived at a different but similar web site which offers no such services. Such users could well conclude that the first domain name owner had mis-represented its goods or services through its promotional activities and the first domain owner would thereby lose their customer. It is apparent therefore that a domain name may have all the characteristics of a trademark and could found an action for passing off”
In Dr Reddy’s Laboratories Limited Vs Manu Kosuri and Anr 2001 (58) DRJ241 Hon’ble High Court of Delhi Court held that “It is a settled legal position that when a defendant does business under a name which is sufficiently close to the name under which the plaintiff is trading and that name has acquired a reputation the public at large is likely to be misled that the defendant’s business is the business of the plaintiff or is a branch or department of the plaintiff, the defendant is liable for an action in passing off and it is always not necessary that there must be in existence goods of the plaintiff with which the defendant seeks to confuse his own domain name passing off may occur in cases where the plaintiffs do not in fact deal with the offending goods. When the plaintiffs and defendants are engaged in common or overlapping fields of activity, the competition would take place and there is grave and immense possibility for confusion and deception. The domain name serve same function as the trademark and is not a mere address or like finding number of the Internet and, Therefore, plaintiff is entitled to equal protection as trade mark. The domain name is more than a mere Internet address for it also identifies the Internet site to those who reach it. In an Internet service, a particular Internet site could be reached by anyone anywhere in the world who proposes to visit the said Internet site. In a matter where services rendered through the domain name in the Internet, a very alert vigil is necessary and a strict view needs to be taken for its easy access and reach by anyone from any corner of the world. The trademarks/domain name ‘DR. REDDY’S’ of the plaintiff and ‘drreddyslab.com’ of the defendants are almost similar except for use of the suffix ‘lab.com’ in the defendants domain use. The degree of the similarity of the marks usually is vitally important and significant in an action for passing off as in such a case, there is every possibility and likelihood of confusion and deception being caused. Considering both the domains’ name, it is clear that two names being almost identical or similar in nature, there is every possibility of an Internet user being confused and deceived in believing that both the domain names belong to plaintiff although the two domain names belong to two different concerns”.
In Aqua Minerals Limited Vs Mr Pramod Borse & Anr; AIR2001Delhi 467 the Hon’ble High Court of Dehi Court has held that Unless and until a person has a credible Explanation as to why did he choose a particular name for registration as a domain name or for that purpose as a trade name which was already in long and prior existence and had established its goodwill and reputation there is no other inference to be drawn than that the said person wanted to trade in the name of the trade name he had picked up for registration or as a domain name because of its being an established name with widespread reputation and goodwill achieved at huge cost and expenses involved in the advertisement.
In Nestle India Limited Vs Mood Hospitality Pvt Limited; 2010 (42) PTC 514 (Del) the Hon’ble High Court of Dehi Court has held that in case of interim relief/injunction test of prima facie case as traditionally understood has been replaced, at least in trade mark matters, by the test of comparative strengths of the rival cases. This is also in keeping with the requirements of the said Act inasmuch as it not only describes what amounts to infringement (see: Section 29) but it also makes provision for what does not amount to infringement (see: Section 30)……Thus, apart from examining the case in the context of Section 29 of the said Act only from the standpoint of the respondent/ plaintiff, it was also incumbent upon the learned Single Judge to consider the relative or comparative strength of the appellant’s/defendant’s case both under Section 29 and Section 30 (2) (a) of the said Act.
1 Lawyers introduction to the internet, by Andrew Terrett, Masons also at http://www.law.ed.ac.uk/it&law/it-terr1htm