INTRODUCTION
Cybersquatting takes place when an individual or a corporation registers a domain name that is similar to an already existing trademark and tries to sell the same for gaining profit. The concept of cybersquatting emerged when most businesses were not anxious about the economic and commercial opportunities available on the internet. Some individuals registered the names of established companies on the internet as domain names with the objective of selling the domain names back to its parent companies when they were made aware of such a doing. Internet domain names have a colossal platform of their own. The world is seeing a revolution in the area of communications which has widened the scope and produced unlimited opportunities for the inhabitants of cyberspace. The Internet has become an essential tool for businesses to promote, advertise and sell their products and services.
However, opportunities for Cybersquatters are diminishing as most businesses and companies are now aware that acquiring and registering the domain name is a top priority.
WHAT IS A TRADEMARK?
As per section 2 (zb) of the Trade Marks Act, 1999 “trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colors.” In simple words, a trademark is a symbol, word, phrase or design that helps to distinguish the goods or services of one party from that of another.[i]
WHAT IS CYBERSQUATTING?
Cybersquatting is the practice of registering a domain name that is similar to or identical to someone else’s trademark or domain name and then tries to sell the same for a profit. It is the process of registering trademarks and trade names as domain names by third parties, who do not have the right to register such names. In simple words, Cybersquatters register business names, trade names and trademarks which belong to third parties with the common intention of trading on the goodwill of such third parties by confusing consumers, and sometimes, Cybersquatters even sell the domain name to the rightful owner at a very bulky price.
There are variations to cybersquatting. Typosquatting is used very frequently where a cybersquatter registers a domain name that constitutes variants of well-known trademarks. Typo squatters are of the idea that the internet users will make a typographical error while entering the domain name into the web browser.
Examples of Typosquatting include:
- A common misspelling of the intended site: exemple.com
- A differently phrased domain name: examples.com
- The omission of the “.” in the domain name: wwwexample.com
- A different top-level domain: example.org
- Renewal Snatching: When the domain name holder forgets to re-register the domain name then such a name is registered by the cybersquatter. If the domain name holder does not re-register the domain name before its expiry then such a domain name is available for purchase to anybody.
WHAT IS A DOMAIN NAME?
A domain name is the name and address of a website by which Internet users can have access to a particular website, this is known as the Uniform Resource Locator (URL). A domain name is a mixture of letters and numbers, and it is used in variants of domain name extensions, e.g. ‘.in’, ‘.com’, ‘.org’, etc.
It is a primary requirement for a domain name holder to register the domain name before he can utilize it. Every domain name is distinctive, no two domain names can be identical. For instance, if someone enters www.xyz.in, it will take the internet user directly to the domain name holder’s webpage and nowhere else.
‘INTERNIC’ was an authority that primarily regulated the administration of registration of domain names. At first, the ‘INTERNIC’ did not take the burden to check the ownership of the name. It was later when the internet had gained recognition and well-established companies wanted to get their domain names registered, but it was noticed that the domain names they were looking for had already been registered by the cybersquatters. In consequence, the company which wanted to acquire the domain name was forced to pay a heavy price to these cybersquatters. The Internet Corporation of Assigned Names and Numbers (ICANN) supervises the administration of registration of domain names now.
LAWS IN INDIA
There are no Domain Name Protection Laws in India and Cybersquatting cases are decided under the Trade Mark Act, 1999, as opposed to other developed countries.
Thus, just like in other cases under the Trade Marks Act, 1999 two kinds of reliefs are available:
- Remedy of infringement
- Remedy of passing off
The Hon’ble Supreme Court in Satyam Infoway Ltd vs Sifynet Solutions Pvt Ltd; AIR 2004SC3540 has observed the following.
“distinction lies in the manner in which the two operate. A trademark is protected by the laws of a country where such a trademark may be registered. Consequently, a trademark 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 have made a distinction between domain names and trademark, however, due to the deficiency of the appropriate legislature in this regard, the courts have applied provisions of the Trade Mark Act,1999 to such disputes. The Court in the above-mentioned case 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 extraterritorial 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”.[ii]
Uniform Domain Name Dispute Resolution Policy (UDRP) is a process developed by the ICANN which resolves disputes involving registrations made in bad faith. Under UDRP, WIPO is the leading ICANN accredited domain name dispute resolution service provider that protects, promotes, and disseminates the utilization of intellectual property globally.
A person is required to file a complaint before the administrative dispute resolution service providers listed by ICANN. Rule 4 (a) lists the following disputes:
(i) If a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) If the domain name’s owner has no right or legitimate interest in respect of the domain name; and
(iii) If a domain name has been registered and has been used in bad faith.
Further, Rule 4 (b) lays down the following four circumstances as evidence of the registration and the use of a domain name in bad faith:
- Circumstances indicating that the owner of the domain name 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name owner’s documented out of pocket costs directly related to the domain name; or
- The owner of the domain name has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the owner has engaged in a pattern of such conduct; or
- The owner of the domain name has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
- By using the domain name, The owner of the domain name has intentionally attempted to attract, for commercial gain, internet users to the owner’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the owner’s web site or location or of a product or service on the owner’s web site or location.[iii]
India has established its own registry known as In Registry. It is regulated by the National Internet Exchange of India (NIXI) which resolves disputes related to domain names under the IN-Dispute Resolution Policy (INDRP). The Policy is consistent with internationally accepted guidelines and with the relevant provisions of the Indian Information Technology Act, 2000.
CASE LAWS
Yahoo Inc. v Akash Arora & Anr.
In Yahoo Inc. v Akash Arora & Anr. [78 (1999) DLT 285] the defendant used the domain name <yahooindia.com> for Internet-related services as against domain name i.e. <yahoo.com> against which the plaintiff sought a restraining order against the defendant. The Court held that the degree of similarity of the marks is essential in an action against passing off and for determining the confusion and deception to be caused. When both the domain names were compared, it was evident that the two names were identical in nature and that there was every possibility of confusion and deception among the internet users that both the domain names belonged to the same source but in reality, the two names belonged to two different sources. The Court granted the injunction against the defendants and ruled in favour of the plaintiff. It was observed that the service which was rendered by the plaintiff on the internet was recognized globally. The Court settled that the term “Yahoo!” was a dictionary word as it had gained sufficient distinctiveness and uniqueness to entitle the plaintiffs to be safeguarded against passing off.
Rediff Communication Limited v Cyberbooth
In Rediff Communication Limited v Cyberbooth [1999 (4) BomCR 278] the defendant registered the domain name ‘radiff.com’, which was identical to the plaintiff’s domain name ‘rediff.com’. The Court decided in favor of the plaintiff and observed that the degree of value and importance enclosed to a domain name makes the domain name a vital asset of any company. The Court was also of the opinion that a domain name is not merely an internet address and it should be entitled to protection equal to that of a registered trademark.
Dr Reddy’s Laboratories Ltd v Manu Kosuri
In Dr Reddy’s Laboratories Ltd v Manu Kosuri (2001 IVAD Delhi 583) the defendant used the domain name, ‘drreddyslab.com’, which was similar to the plaintiff’s trade name. The Court held that the domain name is a vital element of e-commerce and that the defendants were liable under passing off. The Court ruled in favor of the plaintiff and granted a permanent injunction against the defendants restricting the defendants from using the domain name ‘drreddyslab.com’ or any other domain name or mark which was deceptively similar or identical to the plaintiff’s trademark or domain name.
Ht Media Limited & Anr vs Brainlink International, Inc. & Ors
In Ht Media Limited & Anr vs Brainlink International, Inc. & Ors on 28 April, 2020, the defendant owned the domain name ‘www.hindustan.com’ which was identical to plaintiff’s trademarks “Hindustan” and “Hindustan times”. The negotiations between the plaintiff and the defendant for buying out the trademark was not fruitful and therefore, in the instant case, the plaintiff sought for a permanent injunction against the defendant from using the domain name or any other mark similar to that of the plaintiff’s trademark. However, the defendant which is a United States-based company filed a declaratory suit for non-infringement against the plaintiff before the United States District Court for the Eastern District of New York and in the instant case before the Delhi High Court, the plaintiff sought for a permanent injunction against the defendant from proceeding with the suit filed by them in the United States. The Court held it to be a case of cybersquatting and further observed that the defendant had not used the domain name since the year 2000 and that the exorbitant price quoted by the defendant to the plaintiff pointed out its mala fide intention. Therefore, the court granted an interim injunction and an anti-suit injunction in favor of the plaintiff and restrained the defendant from creating any third-party rights in the impugned Domain name and using directly or indirectly any mark similar to that of the plaintiff.
CONCLUSION
The internet has become an essential and highly preferred tool for expansion and functioning of businesses. Hence, adequate protection should be given to the domain names like in the case of trademarks. Looking at the present conditions prevailing around the world, cybersquatting is a threat with no boundaries. The practice of acquiring a domain name by a person is not wrong in itself but misusing the domain name of a well-known company or brand by such a person is not moral.
As observed from the abovementioned case laws, the Indian courts have frequently condemned the practice of cybersquatting and have given protection to the trademark owners by granting injunctions against the defendants and compelling the cybersquatters to desist from using the domain name. however, there is a need to introduce strict laws regarding cybersquatting which would protect the domain name owners from people who acquire domain names wrongfully with mala fide intentions.
[i] http://ipindia.nic.in/writereaddata/Portal/ev/TM-ACT-1999.html
[ii] https://indiankanoon.org/doc/1630167/
[iii]https://www.icann.org/resources/pages/policy-2012-02-25-en#:~:text=All%20other%20disputes%20between%20you,other%20proceeding%20that%20may%20be
This article has been written by Hetvi Gandhi a 3rd-year law student pursuing BLS. LL.B. from Government Law College, Mumbai.
Also Read: Types of Cyber Crime
