Introduction
Cybersquatting is one of the cyber crimes which is as old as the World Wide Web itself. It is also known as domain name squatting. When an individual or a company registers a domain name and such domain name is similar to a trademark of another establishment and then maliciously tries to sell the same for profit, it is known as cybersquatting.
A domain name is a unique name that is given to a website. No two websites can have the same domain name. This domain name is often a person’s or company’s name or trademark. With the help of a domain name, a particular website can be easily accessed.
For example, when we search for a specific topic on the internet, the internet search engine[1] shall locate all the websites that contain relevant information to that specific topic. Many individuals and companies usually look for an identifiable domain name so that the internet users can easily locate their websites.
Cybersquatting – Definition
According to the Anti–Cybersquatting Consumer Protection Act (ACPA) of the United States, cybersquatting is defined as the: “registration, trafficking in or using of a domain name that is identical or confusingly similar to a trademark, a service mark of another that is famous mark at the time of the registration of the domain name, without regard to the goods or services of the parties, with the bad faith intent to profit from the goodwill of another’s mark which:
(a) results in consumer fraud and public confusion as to the true source of sponsorship of goods and services;
(b) impairs electronic commerce, which is important to interstate commerce and the United States economy;
(c) deprives legitimate trademark owners of substantial revenues and consumer goodwill; and
(d) places unreasonable, intolerable, and overwhelming burdens on trademarks owner in protecting their valuable trademarks.”
Types of Cybersquatting
1. Typo squatting – While creating a website address into a web browser, internet users may make certain typographical errors. So, they are lead to a substitute website which is created by a cyber squatter when a user types an incorrect address. This is also called URL Hijacking.
Typo squatters may also create a fake website that almost resembles the original website by using the same layout, color schemes, logos and content to trick its internet users.
2. Identity theft – Once a domain name is registered successfully, it also needs to be renewed periodically. When such domain names are not renewed by their previous owners unintentionally, the cyber squatters immediately purchase such domain names. They use special software applications to monitor the expiry of some specific domain names. After registering the expired domain names, cyber squatters duplicate the original websites and thus misleading the genuine visitors of such websites.
3. Name Jacking – The name jackers usually target the names of famous celebrities and register a domain name associated with such targeted names. The primary reason for doing so is to benefit from the web trafficking related to such famous personalities. However, the US Anti–Cybersquatting Consumer Protection Act provides trademark protection to such personal names which have reduced name jacking to a greater extent.
4. Reverse Cybersquatting – In order to secure the domain names of legitimate owners, the cyber squatters may impose certain pressure to transfer the ownership of the person or company that owns the legitimate trademark of such domain names. Since its an unfair business practice, the reverse cyber squatters are liable to compensate its victims for the damage done.
5. Phishing – It is a kind of cyber fraud that misuses confidential financial information and other personal or sensitive data. Phishers usually send disguised emails that appear to have been sent from legitimate trademark owners. Phishing scams also include fake websites that appear as hosted by legitimate or reputable institutions.
Understanding Domain name
The Domain Name System (DNS) is a system that transfers a domain name into an IP address, which is a string of numbers. This system is structured in a hierarchical manner and follows a first come first serve policy for the registration of domain names. Since domain name serves as an online trademark by means of a source identifier, it represents the quality and goodwill of the concerned individuals or company.
The domain name system is administered by the Internet Corporation for Assigned Names and Numbers (“ICANN”) ICANN was formed in November 1998 as a non-profit, private sector corporation “to take over responsibility for the IP address space allocation, protocol parameter assignment, domain name system management, and root server system management functions . . . .”[2]
The problem arises when the trademark owner cannot register his own trademark as a domain name as long as a cyber squatter owns the domain name. Thus we can say that a cyber squatter breaches the right of the trademark owner to utilize his own trademark. In this sense, the cyber squatter breaches the fundamental rights of the trademark owner to use its trademark.
Legal Framework
Uniform Domain Name Dispute Policy
ICANN introduced the Uniform Domain Name Dispute Policy (UDRP) in 1999, which has been used to resolve more than 20,000 disputes over the rights to domain names. The UDRP is designed to be efficient and cost effective. The UDRP is designed to solve disputes which usually arise when registrant has registered a domain name identical or confusingly similar to the trademark with no rights or legitimate interests in the name and has registered and used the domain name in bad faith. Conflicts between two trademark holders or between a trademark holder and a registrant with rights or legitimate interests are not the concern for UDRP.
Anti-Cybersquatting Consumer Protection Act
The Anti–Cybersquatting Consumer Protection Act (ACPA) has provided for the prevention and prohibition of cybersquatting to a greater extent. When a cybersquatting case emerges, the Court brings a successful action based on the three main determinants. First, the Court must decide whether the contested mark was distinct or famous at the time of registration of the domain name. Second, the court must decide whether the domain name is identical or confusingly similar to the mark. Third, the court must determine whether the domain name holder registered the mark as a domain name in bad faith with an intention to acquire illegitimate profit.
World Intellectual Property Organization
The World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre has taken a step to provide an Internet system for the administration of commercial disputes involving intellectual property. This is a unique form of dispute solving mechanism that is introduced to be used both for filling of evidence and for document exchange. It is an efficient and inexpensive service. In such a mechanism the arbitration takes place online.
Major Case Laws
World Wrestling Federation case[3]
This was the first cybersquatting case decided under the UDRP by WIPO in 1999. A California resident registered the domain name “worldwrestlingfederation.com”. A few days later he offered to sell this domain name for an inflated price to the US based World Wrestling Federation (WWF) itself. The WWF filed a suit and alleged that it was a violation of the WWF’s trademark. The Court held that the domain name registered by the respondent was identical or confusingly similar to the WWF’s trademark. Therefore the respondent was ordered to transfer the registration of the domain name to the complainant, WWF.
Google Inc. v. Herit Shah (2009)[4]
An Indian teenager, Herit Shah had registered a domain name “googblog.com”. The search engine giant Google Inc had contended that this domain name was confusingly similar to its trademark. Hence WIPO had ordered to transfer the rights of the domain name to Google Inc. and the company was successfully able to defend its own intellectual property rights.
Maruti Udyog v. Maruti Infotech[5]
The plaintiff, Maruti Udyog, a well-known car manufacturer had filed a complaint with WIPO against the respondent who had a clear intention to make an unmerited profit by using the domain name “maruti.org”. Hence the WIPO Panelists ordered the respondent to transfer the domain name to Maruti Udyog.
Tata Sons v. The Advanced Information Technology Association (AITA)[6]
The Tata Sons had filed a complaint against AITA with WIPO for the illegal registration of the domain name “tata.org”. Tata was well known for its quality products and the respondents were merely hoarding this domain name without activating it. Hence WIPO passed an award in favour of the Tata Sons and the domain name was thus transferred.
Conclusion
Cyber squatting is a major concern especially for the domains involving financial transactions, for example, when the credit card details are being robbed. In various judicial decisions, the courts have realized that the Passing-off action is an effective principle for deciding cybersquatting cases. Passing-off action means 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 rights of the public. However, the alarming rate of such cyber crimes in India demands a stringent law to protect the rights of its citizens.
References
- https://wipo.int>amc>html
- Latest Trends in Cybersquatting – Infosec Resources <http://resources.infosecinstitute.com/topic/latest-trends-in-cybersquatting>
- Cybersquatting and Domain Names and its regulations <http://legalservicesindia.com/article/1745/Cybersquatting-and-Domain-Names.html>
- Cyber Squatters and laws on cyber squatting in India <http://blog.ipleaders.in/laws-tackling-cyber-squatters-cyber-squatting/amp>
- Cybersquatting <http://lawteacher.net/free-law-essays/business-law/business-law-law-essays.php>
- What is Cybersquatting? <http://computerhope.com/jargon/c/cybersquatting.html>
- “Cybersquatting: Blackmail on the Information Superhighway”- By John D. Mercer
- “The Latest Cybersquatting Trend: Typosquatters, Their Changing Tactics, and How To Prevent Public Deception and Trademark Infringement” – By Dara B. Gilwit, Washington University School of Law
- “Cybersquatting and its Effectual Position in India” – Article in The Journal of Scientific and Engineering Research, February 2015
- “Cybersquatting: Threat to Domain Name” – International Journal of Innovative Technology and Exploring Engineering (IJITEE), April 2019
- “Cybersquatting, Typosquatting, and Domaining under the Anti-Cybersquatting Consumer Protection Act” – By Carl C. Butzer and Jason P. Reinsch
[1] A “search engine” is a website or software program that searches an online database and then gathers and reports “matches” information that contains or is related to specific terms.[THE AMERICAN DICTIONARY OF THE ENGLISH LANGUAGE 4th ed. 2000]
[2] About ICANN (last modified Mar. 26, 2000) <http://www.icann.org/general/>
[3] World Wrestling Federation Entertainment, Inc. v. Michael Bosman; case no. D99-0001 <http://www.wipo.int/amc/en/domains/decisions/1999/d1999-0001.html>
[4] Google Inc. v. Herit Shah; case no. D2009-0405 <http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0405.html>
[5] Maruti Udyog Limited. v. Maruti Software Private Limited; case no. D2000-1038 <http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-1038.html>
[6] Tata Sons Ltd. v. The Advanced Information Technology Association; case no. D2000-0049 <http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0049.html>
This article has been written by Deepthi Seran, B.A. LL.B (Hons) student at Mahatma Gandhi University.
Also Read – Complete Procedure of Trademark Registration in India
