TOPIC-

CYBERSQUATTING AND TRADEMARK

LAW IN INDIA

SUBMITTED TO: - SUBMITTED BY: -

MISS. SANGHEETA JAKHAR MITALI RAKHECHA
ASSISTANT PROFESSOR 190260
MODY UNIVERSITY B.B.ALLB 4TH YEAR
 CONTENTS
WHAT IS CYBERSQUATTING?................................................................4
TYPES OF CYBERSQUATTING................................................................4
WHAT IS DOMAIN NAME?.......................................................................4
LAWS IN INDIA...........................................................................................6
CYBERSQUATTING AND DOMAIN NAMES UNDER THE LAWS OF
TRADEMARK...............................................................................................6
ICANN DISPUTE RESOLUTION POLICY AND WIPO...........................7
ROLE OF JUDICIARY.................................................................................8
CONCLUSION............................................................................................11
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.

TYPES OF CYBERSQUATTING

 Typo squatting: Typo squatting is often referred to as ‘URL hijacking’ or a ‘sting

site ‘is a type of Cyber Squatting. Typo squatters convert the common mistakes made
by internet users while typing a web address into a web portal. To trick the web users,
the typo squatters may also fabricate a website that resembles the original site by
using a similar layout, colour schemes, logos, and content.
 Combo squatting: Combo squatting does not use misspellings but rather affixes a
word or a series of words to popular and known trademarks.
 Identity Theft: In identity theft, cybersquatters purchase a web portal that was
accidentally not renewed by the previous owner. After registering the domain names
that are lapsed, cybersquatters may link them with websites that are a clone of the
websites of the last name domain owners. This way, cybersquatters misguide the
visitors of their websites into trusting that they are visiting the websites of the
previous domain name owners.
 Name Jacking: Name jacking refers to registering domain names in the name of an
individual, usually a dignitary or a public figure. Name jackets benefit from the web
traffic related to the domain built in the name of particular famous individuals.
 Reverse-Cybersquatting: Reverse-cybersquatting, also known as reverse domain
name hijacking and commonly abbreviated as RDNH, refers to an attempt to obtain a
domain name lawfully owned by another person.

WHAT IS DOMAIN NAME?

However, you may have searched any website and must have encountered the domain name,
and you must have been thinking what is the relation between the domain name and the
website. So, it’s simple that domain name helps you to search the website on the internet.
There is certain naming with the help of which we can identify the website on the internet.
Every website is connected with some IP (internet protocol address) which is a numerical
address that tells the browser. Therefore, a domain name is a basic easy-to-remember name of
IP address, and with which the help of a domain name we can find more IP addresses.

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.

Domain names are more than just addresses, as the court propounded in –

Card service int’l. v/s McGee2 . “a customer who is unsure about the company’s domain
name will often guess that the domain name is also the company’s name”.

1
Lawyers’ introduction to the internet, by Andrew Terrett, Masons also at http://www.law.ed.ac.uk/it&law/it-terr1htm
2
Card service int’l. v/s McGee, 950 SUPP. 737 (1997).
MTV networks INC vs curry3 . “a domain name minoring a corporate name may be a
valuable corporate asset, as it facilitates communication with customer case”.

LAWS IN INDIA

Unlike many developed countries, India has no law that can protect domain names.
Therefore, cybersquatting cases are resolved under the Trademarks Act 1999. In the absence
of a specific statute, the Indian courts extend the scope of the Trademarks Act 1999 to such
conflicts, given the gap in such specific issues. In the case of Satyam Info way Ltd. v. Sifynet
Solutions Pvt Ltd., the Court observed that “As far as India is concerned, there is no
legislation that 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.”

CYBERSQUATTING AND DOMAIN NAMES UNDER THE LAWS OF

TRADEMARK

As stated earlier there are no provisions or legislation of disputes regarding domain names or
cybersquatting, therefore the trademark act plays an important role in the decision of the
court. According to WIPO in recent times cybersquatting has significantly increased hand
which shows the importance of domain names in this connected world. Indian companies
have also faced the impact of cybersquatting in recent times securing the protection of
domain names is too slow and irritating as India has no domain name protection law as well
as cybersquatting law. All the cases of cybersquatting are dealt with under the trademark
law,1999. There are two types of actions taken if your domain name is infringed, one is on
the ground that your trademark and intellectual property are violated and the second on the
ground of passing off.

The first case that came before the Indian courts was Yahoo! Inc. v. Akash Arora and others 4,
in which an attempt was made to use the domain name for Internet-related services as
opposed to the domain name i.e., The Court observed that in an action for passing off, the
degree of resemblance of the marks is usually vitally important and remarkable, because there
is every possibility and the likelihood of confusion and deception being caused in such a case.
When both domain names are considered, it is clear that the two names are nearly identical or
3
MTV networks INC vs curry, 867 F. Supp. 202 (1994).
4
Yahoo! Inc. v. Akash Arora and others, (1999)78 DLT 285.
similar. As a result, there is a good chance that an Internet user will be confused and misled
into believing that the two domain names belong to the same source and connection, even
though they belong to two separate concerns.

In Tata Sons Limited and Anr Vs fashion ID Limited 5. the Hon'ble High Court of Delhi Court
held that "The use of the same or similar domain name might cause a deviation of users that
might result from such users coincidentally accessing one domain name rather than another.
This might occur in e-commerce with its fast progress and instant (and the erotically
limitless) accessibility to users and potential customers and particularly so in areas of specific
overlap. Standard consumers/users seeking to discover the functions available under one
domain name may be confused if they accidentally appear at a different but alike website that
offers no such services. Such users might well presume that the first domain name owner had
misrepresented its goods and services through its promotional activities and also the first
domain owner would thereby lose their customer. It is apparent that a domain name may have
all the characteristics of a trademark and could find an action for passing off".

The Hon'ble High Court of Delhi has held in Aqua Minerals Limited Vs Mr. Pramod Borse &
Anr6 that unless and until a person has a credible explanation as to why he chose a particular
name for registration as a domain name or for that purpose as a trading name that was already
in long and prior existence and had established its fame and goodwill, there is no other
reasoning to be drawn than that the said person wanted to trade in the name of the trade name
he had chosen. Domain Active Property Ltd against Sbicards.com 7 In this case, the WORLD
INTELLECTUAL PROPERTY ORGANIZATION ordered the Australian entity (Defendant)
to transfer Sbicards.com to the Indian company, after the Administrative Panel determined
that Defendant had hijacked the domain name with the intent of selling it for a large sum to a
State Bank of India subsidiary later.

ICANN DISPUTE RESOLUTION POLICY AND WIPO

A trademark is protected under the laws of the nation in which it is registered. Furthermore, a
trademark may be registered in several countries around the world. Because the internet
allows us to access information from anywhere in the world, a domain name can be accessed
regardless of the consumer's location. This will be advantageous because of the universal
connectivity, which would offer domain names worldwide exclusivity, and because national
5
Tata Sons Limited and Anr Vs fashion ID Limited, (2005) 30 PTC 182.
6
Aqua Minerals Limited Vs Mr Pramod Borse & Anr, (2001) 93 DLT 203.
7
SBI Cards and Payment Services Private Limited v. Domain Active Pty. Ltd. Case no. D2005-0271;
rules may not always be sufficient to properly defend a domain name. WIPO and ICANN
both had an impact on international regulation. India is one of the 171 countries that make up
the World Intellectual Property Organization (WIPO). WIPO provides its member nations
with services such as providing a venue for the creation and implementation of international
intellectual property policies through treaties and other policy instruments 8. The unified
domain resolution policy has been established by ICANN (UDRP). The UDRP is policies
that apply to disputes arising from the registration and usage of domain names between
registrants and third parties. Disputes arising under these policies can be lodged with one of
the policy's approved dispute-resolution service providers9 . The UDRP was established to
protect well-known companies and trademarks from abusive registrations by third-party
registrants who register confusingly similar domain names in bad faith for financial gain. It's
vital to keep in mind that the UDRP covers all gTLDs and ccTLDs that have voluntarily
adopted the policy10.

During the development of the UDRP Policy and Rules, the WIPO Arbitration and Mediation
Centre (WIPO Centre) served as technical advisors to the ICANN drafting committee. To
supplement the UDRP Policy and Rules, the WIPO Supplementary Rules were adopted.
Individual TLDs may be subject to additional dispute resolution policies in certain
instances11. The World Intellectual Property Organization, which is accredited by ICANN, is
the primary domain name dispute resolution service provider under the UDRP. WIPO
supplied qualified panellists, efficient and detailed administrative procedures, as well as
overall impartiality and integrity. A domain name case filed with WIPO is usually resolved in
two months utilizing online procedures and for a small price. Only the most unusual cases are
heard in person.

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:

8
Satyam Info way Ltd. Vs Siffynet Solutions Pvt. Ltd. (2004) Supp (2) SCR 465.
9
UDRP, ICANNWIKI (Feb. 23, 2017, 6:19 pm)
10
Domain Name Dispute Resolution Policies, ICANN, https://www.icann.org/resources/pages/dndr-2012-02-
25-en#udrp
11
WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP), WIPO,
https://www.wipo.int/amc/en/domains/guide/index.html
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 intends to avail the relief under
passing off.

The first case that came up before the Indian Courts was Yahoo! Inc. v. Akash Arora and
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 serves 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 defendant’s 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 Delhi 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 Delhi 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.

CONCLUSION

Taking into account the current global scenario. Cybersquatting has risen dramatically over
time, with the World Intellectual Property Organization recently announcing that the number
of incidents of cybersquatting has reached an all-time high. In 2010, trademark holders filed
2696 cybersquatting cases involving 4370 domain names, up from 16 percent in 2008 and 28
percent in 2009. To combat cybersquatting, there is a need for a law that will act as a weapon
for preserving trademark holders' intellectual property in the virtual world, as well as
solutions for trademark owners against defendants so that it will be easy for the plaintiff to
obtain stats.