By Vaishali Chaubey
Published On: November 13, 2021 at 16:56 IST
Introduction
Internet have propelled growth of commercial world. It is the first choice of modern day. Domain name being user- friendly emerges as the sole business identifier. Registration of domain name is on first come first serve basis that encourages cybersquatters to get domain name of well-known or similar trademark that are not registered. Cybersquatting is long-standing issue and has been a common form of online fraudulent. This demand a law to balance visitors do not deceived and owners’ rights are not infringed.
What is cybersquatting, trademark and domain name?
Cybersquatting or domain squatting is registering a reputed trademark or popular names as domain name to confuse customers and visitors and to gain profit from a trademark belonging to someone else. Cybersquatter buys domain name in a bad faith to gain profit from trademark’s goodwill.
Trademark is a distinctive visual symbol or word or combination of both applied to article of commerce. Section 2(1)(zb) of Trademark Act 1999 states trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person of those of others and may include shape of goods, their packaging and combination of colours.
According to the World Intellectual Property Organization (WIPO), domain names are the human-friendly forms of Internet addresses, and are commonly used to find web sites.[i] Domain Name System [DNS] makes rules and procedure for domain name. Domain name is registered in DNS. A domain name is an identification string that defines a realm of administrative autonomy, authority or control within the Internet. It helps in locating web page on internet. Domain name are made of character that is easy to remember.
Types of Cybersuqatting
Cybersquatting take place in different forms. Most seen forms are:
- Typo squatting: A similar URL to a well-known domain name of victim that has some typographical error that a internet user makes while inputting website address. It is mainly to confuse user and gain profit and data. It is also known as URL hijacking. Yuube.com is used similar to youtube.com
- Identify threat: Domain name needs to be renewed periodically. A system is used by cybersquatters to keep eye on unrenewed domain name. In identity threat an unrenewed domain name is purchased by cybersquatter. Once cybersquatters register the expired domain name for themself they link it with website that is unrenewed and appears to be similar to visitor.
- Name Hijacking: In this well-known name are registered as domain name to get benefit from names of popular individual, entity or brand names.
- Reverse Cybersquatting: To get domain name pressure is imposed and owner is intimidated to transfer ownership of legitimate trademark.
Why to protect domain name?
- Protect from scam, spam mails, hijacking and unwanted mails.
- Prevent renewal of domain name on expiration by cybersquatter.
- Prevent Unauthorised transfer
- To protect owner’s profit
- To hide personal details of owner and visitor.
Can domain name be protected as trademark?
Yes domain name can be protect as trademark only if registered/unregistered trademark is wordmark. Domain name that is similar and misleading customer must be protected. Unauthorised use of domain name that is a wordmark breaches or infringes right of owner and thus is protected under Trademark Act 1999.
To get protection domain name needs to satisfy all condition that is required to get protected for trademark that is in Section 2(1)(zb) of Trademark Act 1999 states trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person of those of others and may include shape of goods, their packaging and combination of colours.
International Organizations
- Internet Corporation for Assigned Names and Numbers [ICANN]
It is a not-for-profit organization based in Southern California that was founded in 18 September 1998 to help the US government manage certain functions that maintain the core infrastructure of the Internet. It is headquartered at Los Angeles, California, United States. It helps to coordinate the supply of IP addresses, manages the domain name system and root servers and maintains the central repository for IP addresses. ICANN currently manages more than 180 million domain names and four billion network addresses in 240 countries.
- Uniform Domain-Name Dispute-Resolution Policy [UDRP]
UDRP was inaugurated on 1 December 1999. It deals with dispute arising out of registration of domain name. UDRP currently applies to all generic top level domains, some country code top-level domains, and few older top level domains in specific condition.
Providers of the UDRP are:
- Canadian International Internet Dispute Resolution Centre (CIIDRC)
- The Asian Domain Name Dispute Resolution Centre (ADNDRC)
- National Arbitration Forum (NAF)
- World Intellectual Property Organization (WIPO)
- Czech Arbitration Court, Arbitration Center for Internet Disputes
- The Arab Center for Dispute Resolution (ACDR)
Three elements must be there to file complaint in UDRP:
- The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- The registrant does not have any rights or legitimate interests in the domain name; and
- The domain name has been registered and the domain name is being used in bad faith.[ii]
Anti-cybersquatting Consumer Protection Act (ACPA)
This act protects trademark owners from misuse of domain names. In addition to transferring or deleting the disputed name, the owner can request financial compensation of between $ 1,000 and $ 100,000 per domain. Under the ACPA, a trademark owner may bring a cause of action against a domain name registrant who:
- Has a bad faith intent to profit from the mark
- Registers, traffics in, or uses a domain name that is:
- Identical or confusingly similar to a distinctive mark
- Identical or confusingly similar to or dilutive of a famous mark.[iii]
World Intellectual Property Organization Arbitration and Mediation Centre
It is an intergovernmental organization based in Geneva, Switzerland, with 182 member states. It is widely regarded as the most important organization for dispute resolution service on a global scale for solutions to problems in relation to the abusive registration and misuse of domain of the Internet names. first case determined under it by WIPO was World Wrestling Federation Entertainment, Inc Vs Michael Bosman.
Laws in India to protect Domain Name
Trade Marks Acts 1999 is applied in case of domain name disputes. Surprisingly there are no domain name protection laws in India. As per the Indian Trade Mark Act, 1999 section 29(5) A registered trademark is infringed by a person if he uses such registered trademark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trademark is registered.
- By sending cease-and-desist letters to the Cybersquatters.
- Initiation of arbitration proceedings under ICANN’S rules.
- Option for a trial in a state or federal court.
Case to protect domain name can be filed in court of law. Remedies available under Trademark act 1999 are applied. Remedies that are available are:
- Remedy of infringement for registered trademark
- Remedy of passing off for unregistered trademark
Section 29 of Trademark Act 1999 explains the way of Infringement of registered trademark. Trademark is infringed by a person who not being the proprietor of trademark uses trademark that is either similar, identically similar or deceptively similar with registered trademark.
Section 135 of Trademark Act 1999 lays down civil relief available in case of passing off and infringement. Relief available are injunction that may be interlocutory order or ex-parte whichever court decides, damages or account of profit with or without any order of delivery up of infringing labels and marks.
Landmark Judgements
- Yahoo!, Inc. Vs Akash Arora & Anr 1999.[iv] – Using domain name YahooIndia.com
FACT: In this case, plaintiff filed a suit initiate passing off against defendant Akash Arora for using domain name YahooIndia.com that is identical and deceptively similar to plaintiff trademark Yahoo!
HELD: Delhi high court ruled that domain name and trademark plays is similar. Mere disclaimer was not sufficient. YahooIndia.com was deceptively similar to Yahoo and was prohibited to use.
- Tata Sons Limited Vs Mr. Manu Kishori & Ors. on 9 March, 2001.[v] – Misappropriation of the plaintiff’s trademark TATA as part of a series of domain names
FACT: Since 1917, the plaintiff has been the Registered Proprietor of the trademark TATA in relation to various goods in various classes. Aside from India, the plaintiff has trademarks registered in nine other countries in various classes. It is also claimed that the plaintiff is one of India’s oldest and largest business conglomerates, with a global reputation due to its various international operations. The lawsuit stems from the defendants’ misappropriation of the plaintiff’s trademark TATA as part of a series of domain names featuring the well-known and famous trademark TATA that they have registered.
HELD: that Internet domain names are not just Internet addresses, but are in fact extremely important and valuable corporate assets, which as such are entitled to protection equivalent to trademarks.
- Reddy’s Laboratories Limited Vs Manu Kosuri And Anr. on 28 February, 2001.[vi] – Using domain name relating to Dr. Reddy.
FACT: Plaintiff instituted a suit for permanent injunction against the Defendants for passing off along with the relief of restraining the Defendants from registering a domain name or operating any business on the internet or otherwise under the domain name `drreddyslab. com` or any trademark which is identical or deceptively similar to the Plaintiff`s trade mark DR. Reddy.
HELD: The court found that the domain name held an important position in e-commerce and found that the defendant was responsible for passing off. An injunction has been given to the plaintiffs and the defendants are prohibited from using the trademark and/or domain name “drreddyslab.com” or other trademarks/domain names identical to or similar trademarks.
- Satyam Infoway Ltd Vs Siffynet Solutions Pvt. Ltd on 6 May, 2004.[vii] – Whether internet domain names are recognizable as other intellectual properties such as trademark.
ISSUE: In this case dispute which arose was that whether internet domain names are recognizable as other intellectual properties such as trademark?
HELD: “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, and distinguishes specific businesses or services of different companies. 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. As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high.”
Conclusion
Cybersquatting is generally bad faith registration of another’s trademark in a domain name. Domain name helps to build a business protection of it is important due to its numerous benefits. There are many laws and organization in world that protects domain name from the unauthorized registration and useof identical or similar to trademarks, service marks, company names, or individual names.
Beside so many laws and organization cybersquatting continue to be a great threat to society. Cases of misuse shows that there is urgent need to protect them from cybersquatters and there is an urgent need for stringent laws to encounter this problem.
ABOUT THE AUTHOR
Vaishali Chaubey has completed PG diploma in IPR from Government Law College, Maharashtra. She is always looking for opportunities to learn new things. She is inquisitive about legal research. She believes that through consistency and hard work anything can be achieved.
Edited by: Aashima Kakkar, Associate Editor, Law Insider
References
- Cybersquatting – position in India
- Cyber Squatting Laws in India
- icann
- Rupali Mukherjee, “Domain of cheats: Cybersquatters using Covid to spread infodemi”
- Guide to WIPO Domain Name Dispute Resolution
- International Journal of Innovative Technology and Exploring Engineering (IJITEE), “Cybersquatting: Threat to Domain Name”
- Trademark Act 1999
[i] Frequently Asked Questions: Internet Domain Names (Last visited on November 2, 2021)
[ii] Uniform Domain-Name Dispute-Resolution Policy (Last visited on November 2, 2021)
[iii] AntiCybersquatting Consumer Protection Act (ACPA)
[iv] Yahoo!, Inc. Vs Akash Arora & Anr 1999 IIAD Delhi 229, 78 (1999) DLT 285
[v] Tata Sons Limited Vs Mr. Manu Kishori & Ors 2001 IIIAD Delhi 545, 90 (2001) DLT 659, 2001 (58) DRJ 306, 2001 (2) RAJ 311
[vi] Reddy’s Laboratories Limited Vs Manu Kosuri And Anr. 2001 IVAD Delhi 583, 2001 (58) DRJ 241, 2001 (3) RAJ 122
[vii] Satyam Infoway Ltd Vs Sifynet Solutions (P) Ltd.AIR 2004 SC 3540