cybersquatting in india

8/20/2019 Cybersquatting in India

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Domain Names & Cyber Squattingin India – Recent Cases

Assignment – Paper III

Trademarks

Submitted by:

Arpit Jain

Roll No- 10

Post Graduate Diploma in Intellectual Property Rights


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Objective of the Assignment

The Objective of this Assignment is to Study recent cases related tocybersquatting and domain name disputes, the legal scenario and position in

India, role of judicdiary, case laws related to cybersquatting and domain name

disputes.

Methodology followed

Search- Blog, Journal, Acts, web search

Opinion on case studies

Interpretation

Conclusion

Blogs( spicy ip, watchdog, Patent act, rediff business)

Analysis of the following cases

Yahoo! Inc. v. Akash Arora

Tata Sons Ltd Vs. Ramadasoft

Sbicards.com vs Domain Active Property Ltd.

Bennett Coleman & Co Ltd Vs. Steven S Lalwani

Tata Sons Limited and Anr Vs fashion ID Limited

Dr Reddy's Laboratories Limited Vs Manu Kosuri

Satyam Infoway Ltd. v Sifynet Solutions

Tata Sons Ltd v. Monu Kasuri & others

Nestle India Limited Vs Mood Hospitality Pvt Limited

Aqua Minerals Limited Vs Mr Pramod Borse & Anr


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DECLARATION

Certified that this Assignment is my original work and that I have clearly

mentioned all the sources from where I have taken any material from others’

work and I have not presented this partly or fully to any other Institution/ College

/ University.

I have complied with all the formalities prescribed in this regard.

I would like to thank the Course Co-ordinator Ms. Anna Bhashir for her Support

and Guidance in helping me to complete this Assignment.

Date :

(ARPIT JAIN)

Roll No – 10

PGD (IPR)


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Introduction

The internet has brought a revolution which can be equalled with the industrial

revolution of the 19th century. The internet was launched as a communication

tool for the masses but, within a few years, it became one of the most important

tools of modern day communication be it for business transactions, governmental

policies, social interaction etc. It has comprehensively extended the reach of

technology and acquisition of data. It has provided opportunities to millions and

also brought liabilities to many especially in the field of intellectual property, data

privacy etc. The Internet has become a very powerful tool, having the ability to

create jobs, shorten product life cycles, circumvent international communications

barriers, and transcend political and social boundaries. The challenge the law has

faced in recent years is, how to foster the development of intellectual property on

the Internet while preventing its unauthorized use.


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Domain Names

We have addresses for our homes and offices. The same way domain names are

nothing but simple forms of addresses on the internet. These addresses enable

users to locate websites on the net in an easy manner. Domain names correspond

to various IP (Internet Protocol) numbers which connect various computers and

enable direct network routing system to direct data requests to the correct

addressee. In other words a domain name is a “uniform source locator”.

Domain names are of two types. The following figure would give a better idea:-

Besides locating sites, domain names also have a function of identifying

businesses and their goods and services on the net, which gives them an edge


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over their competitors. The introduction of new generic top-level domains

(GTLDs) to complement those already existing (.com, .org, .net, .edu, .gov, .mil

and .int) has been the subject of intense debate for a number of years. The ICANN

(Internet Corporation for Assigned Names and Numbers) has played a very

important role in getting these new domain names passed. The domain names

can be registered by approaching any ICANN accredited registrar.

Domain Names in India

It is a general practice where companies desire to obtain such domain names

which can be easily identified with their established trademarks. This helps the

public to identify the company as there is no physical contact between the two of

them. Domain names and trademarks are connected with each other. If a

company or an individual register a domain name which is similar to or identical

to someone else’s trademark or domain name and then tries to sell the same for a

profit. This is known as “Cybersquatting”.

Domain names are big business nowadays, for the past several years,

domain names, the “real estate of the Internet,” have generated substantial

returns for savvy investors, who often refer to themselves as “domineers.” Today,

a domain name holder can display pay-per-click advertising on a website, and sit-

back and let the money roll in while Internet users click on those ads. A single

domain name can bring in hundreds of dollars a day, and many domain name

holders have thousands or even millions of domain names.


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What is Cyber Squatting?

According to Wikipedia ‘Squatting’ means occupying an abandoned or unoccupied

space or building, usually residential, that the squatter does not own, rent or

otherwise have permission to use.

So Cyber-squatting refers to the bad faith registration of a domain name

containing another person’s brand or trademark in a domain name. It can be

defined as registering, trafficking in, or using a domain name with bad-faith i.e.

mala fide intent to make profit from the goodwill of a trademark belonging to

someone else. The cyber squatter then offers to sell the domain to the person or

company who owns a trademark contained within the name at an inflated price.

With the domain prices falling and more top level domains (.biz, .cn, .mob and

lately .in) getting accredited, cyber squatters are in business fultime.

Categories of Cyber Squatting

Cyber squatting can be of various categories, most commonly seen is typo

squatting, when a cyber squatter registers domain names containing variant of

popular trademarks. Typo squatters rely on the fact that Internet users will make


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typographical errors when entering domain names into their web browsers. Some

common examples of typo squatting include:

The omission of the “dot” in the domain name: wwwexample.com;

A common misspelling of the intended site: exemple.com

A differently phrased domain name: examples.com

A different top-level domain: example.org

# Daniyal Waseem of Quetta in Pakistan was using the domain name

‘rediffpk.com’. To this, the NASDAQ -listed Indian firm had contended that the

disputed Internet site was identical in part and confusingly similar as a whole to

the ‘Rediff’ trademark, for which it has rights. Finding that Waseem had no rights

to the REDIFF mark the WIPO Panel concluded the proceeding by transferring

Rediff.com.pk to the Indian REDIFF trademark owner Rediff.com India Ltd.

Moreover cyber squatters also rely on the fact that trademark holders often

forget to re-register their domain names, because domain registration is for a

fixed period and if the owner does not re-register the domain name prior to

expiration, then the domain name can be purchased by anybody. Cyber squatters

will snatch up a domain name as it becomes available. This process is often

referred to as “renewal snatching.”


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Legal scenario

Some countries have specific laws against cyber squatting beyond the normal

rules of trademark law. The United States, for example, has the U.S. Anti-cyber

squatting Consumer Protection Act (ACPA) of 1999. This expansion of the

Lanham (Trademark) Act (15 U.S.C.) is intended to provide protection against

cyber squatting for individuals as well as owners of distinctive trademarked

names.

A victim of cyber squatting in the United States has two options:

a. sue under the provisions of the Anti cyber squatting Consumer

Protection Act (ACPA), or

b. use an international arbitration system created by the Internet

Corporation of Assigned Names and Numbers (ICANN).

In court system, jurisdiction is often a problem, as different courts have ruled that

the proper location for a trial is that of the plaintiff, the defendant, or the location

of the server through which the name is registered.

Recognizing the problems raised by clash between domain name system and

trademarks, the World Intellectual Property Organization (WIPO) Arbitration and

Mediation Centre has developed an online Internet based system for

administering commercial disputes involving intellectual property. This Dispute

Resolution Mechanism is unique in that it is designed to be used online both for

document exchange and for filling of evidence. However, the original

documentary evidence will still be needed to be filled in a physical form. The


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dispute resolution is simply signed and thus, providing an inexpensive and

efficient service and does not in any way seek to take the place of national

jurisdiction. A successful complainant’s remedy is limited to requiring the

cancellation of the registrant’s domain name or the transfer of domain name

registration to the complainant.

The procedure will be handled in large part online and is designed to take less

than 45 days with a provision for the parties to go to courts to resolve their

disputes or contest the outcome of the procedure.

Internationally, the United Nations copyright agency WIPO (World Intellectual

Property Organization) has, since 1999, provided an arbitration system wherein a

trademark holder can attempt to claim a squatted site. In 2006, there were 1823

complaints filed with WIPO, which was a 25% increase over the 2005 rate. In 2007

it was stated that 84% of claims made since 1999 were decided in the complaining

party’s favor.

WIPO is the UN’s specialized agency for developing a balanced and accessible

international system in the field of intellectual property rights


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Legal Position in India

In India victims of cyber squatting have several options to combat cyber

squatting. These options include: sending cease-and-desist letters to the cyber

squatter, bringing an arbitration proceeding under ICANN’s rules, or bringing a

lawsuit in state or federal court. Whatever strategy a victim of cyber squatting

elects to use, that person should not dismiss the serious effects that cyber

squatting can have if left unchecked.

A case could be filed with the .in registry handled by National Internet Exchange

of India(NiXI) who brings the matter to fast track dispute resolution process

whereby decisions are transferred within 30 days of filling a complaint.

Like always our legal system is silent on this matter too, there is no provision in

the current or proposed Information Technology Act in India to punish cyber-

squatters, at best, the domain can be taken back. Though there is no legal

compensation under the IT Act, .in registry has taken proactive steps to grant

compensation to victim companies to deter squatters from further stealing

domains. Most squatters however operate under guise of obscure names.

Under NIXI, the IN Registry functions as an autonomous body with primary

responsibility for maintaining the .IN ccTLD (country code top-level domain) and

ensuring its operational stability, reliability, and security. It will implement the

various elements of the new policy set out by the Government of India and its

Ministry of Communications and Information Technology, Department of

Information Technology.


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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 “


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Dispute Resolution

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


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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 orderto 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.


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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.


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CYBER-SQUATTING CASES

Yahoo! Inc. v. Akash Arora

Probably the first reported Indian case is, wherein the plaintiff, who is the

registered owner of the domain name “yahoo.com” succeeded in obtaining an

interim order restraining the defendants and agents from dealing in service or

goods on the Internet or otherwise under the domain name “yahooindia.com” or

any other trademark/ domain name which is deceptively similar to the plaintiff’s

trademark “Yahoo Although, as on the date of writing, there are very few

reported judgments in our country, newspaper reports and information from

reliable sources indicate that there are at least twenty-five disputes pertaining to

domain names pending before the Delhi High Court itself.

Tata Sons Ltd Vs. Ramadasoft

Tata Sons, the holding company of India’s biggest industrial conglomerate, the

Tata Group, won a case to evict a cyber-squatter from 10 contested internet

domain names. Tata Sons had filed a complaint at the World Intellectual Property

Organisation.

The Respondent was proceeded ex-parte. The Panel concluded that the

Respondent owns the domain names. These domain names are confusingly

similar to the Complainant’s trademark TATA, and the Respondent has no rights

or legitimate interests in respect of the domain names, and he has registered and

used the domain names in bad faith. These facts entitle the Complainant to an

order transferring the domain names from the Respondent.


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squatters. Apart from global brands, celebrities domains are also targeted by the

squatters like Amitabh Bachhan, Sonia Gandhi, Sushmita Sen and Gul Panag.

Cyber-sqatting is a major concern especially for the domains which involve

financial transactions, because usually these squatters may some times fool

people and misuse take their credit card details. So many corporates and banks

have their special dedicated IT teams which keep a check on all these domains.

Tata Sons Limited and Anr Vs fashion ID Limited (2005)

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"


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Dr Reddy's Laboratories Limited Vs Manu Kosuri and Anr 2001 (58)

DRJ241

The 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


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'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".

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.

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


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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.

In another case the defendant registered a number of domain names bearing the

name Tata. It was held by the court that domain names are not only addressesbut trademarks of companies and that they are equally important. (Tata Sons Ltd

v. Monu Kasuri & others 2001 PTC 432)

In a case which was taken up by the WIPO administrative panel where SBI Card

and Payment Services Private Limited (a joint venture between GE Capital

Services, the largest issuer of private label credit cards in the world, and the State

Bank of India (SBI), the largest Indian bank) filed a case against an Australian

entity on cybersquatting. Domain Active Pty Limited which was incorporated in

Australia had registered a domain name www.sbicards.com. The administrative

panel held that domain name registered by the Australian entity was in bad faith

and it could have attracted attention from the public because of its affiliation to

SBI Cards products and services.


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In Bennett Coleman & Co Ltd. v. Steven S Lalwani and Bennett Coleman & Co

Ltd. v. Long Distance Telephone Company (Cases No D2000-0014 and 2000-

0015, WIPO), the arbitration panel gave a decision in favour of the plaintiff. In this

to the respondent had registered domain names www.theeconomictimes.com

and the www.timesofindia.com with network solutions of the United States.

These two names are similar to the names of the Plaintiff’s websites

www.economictimes.com and www.timesoftimes.com. Another important fact

was that the respondent’s websites using the domain names in contention

redirect the users to a different website www.indiaheadlines.com which provided

India related news.

In Satyam Infoway Ltd. v Sifynet Solutions 2004 (6) SCC 145, the Respondent had

registered domain names www.siffynet.com and www.siffynet.net which were

similar to the Plaintiff’s domain name www.sifynet.com. Satyam (Plaintiff) had an

image in the market and had registered the name Sifynet and various other

names with ICANN and WIPO. The word Sify was first coined by the plaintiff using

elements from its corporate name Satyam Infoway and had a very wide

reputation and goodwill in the market. The Supreme Court held that “domain

names are business identifiers, serving to identify and distinguish the business

itself or its goods and services and to specify its corresponding online location.”

The court also observed that domain name has all the characteristics of a

trademark and an action of Passing off can be found where domain names are

involved. The decision was in favour of the plaintiff.

Passing off action is where 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


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complainant. It is an action to preserve the goodwill of the complainant and also

to safeguard the public. In India cybersquatting cases are decided through the

principle of Passing off. India does not have a law for prohibition of

cybersquatting. Therefore, courts interpret the principle of Passing off with regard

to domain names.


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Conclusion

Looking at the current situation prevailing in the world, it is certain that

cybersquatting is a menace. It is a menace which has no boundaries. In my

opinion, it is similar to terrorism. The only difference is that in the latter human

life is affected. Cybersquatters have robbed businesses of their fortune. Looking

from the Indian perspective cybersquatting has been prevalent since internet

came to the subcontinent. The courts in India have decided many cases related to

cybersquatting. It is the imperitive for the parliament to enact a law which would

deal with this menace. As of now there is no such law which prohibits

cybersquatting like that of the United States.

Urgent need for definite laws

There is a urgent need for the strict laws in this field, so that these squatters could

be punished and these crimes could be avoided in future. The new domain name

dispute law should be intended to give trademark and service mark owners legal

remedies against defendants who obtain domain names “in bad faith” that are

identical or confusingly similar to a trademark. And the plaintiff may elect

statutory damages and has discretion to award in damages for bad faith

registration. It should act as an important weapon for trademark holders in

protecting their intellectual property in the online world.

Cybersquatting has opened the eyes of governments across the world and has

prompted them to look into this phenomenon in a serious manner.


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BIBLIOGRAPHY:

• ‘Law relating to patent, trademark, copyright, design and geographical

indications’- B. L. Wadehra, Universal Law Publishing Co. Pvt. Ltd.

• ‘Intellectual Property Law in India’- P.S. Narayan, Gogia Law Agency, Hyderabad.

• ‘Law of Intellectual Property’- S.R. Myneni, Asia Law House, Hyderabad.

• ‘Protecting Intellectual Property in the Internet Age’- Karnika Seth (Cyber

Lawyer), Seth Associates.

• ‘Regulating Intellectual Property Rights on the Internet’- Aashit Shah,

Government Law College Law Review, 1999-2000.

• ‘Reinventing a sensible view of trademark law in the information age’- Melinda

S. Giftos.

• ‘Cybersquatting is a big business in India’- www.indiaforensic.com

• www.iprsonline.org

• www.wikipedia.com

cybersquatting in india

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