CYBERSQUATTING AND THE NEED FOR LEGISLATION IN INDIA

INTRODUCTION

What is Cybersquatting?

The act of registering an Internet domain name in bad faith or with the aim to benefit from the goodwill or trademark of another person is known as cybersquatting. Cybersquatters, likewise referred as fallacious imitators, register domain names on the internet that are trademarks of another company with the intention of exploiting its goodwill and reputation by deceiving customers and, occasionally, even selling the domain name to the legitimate owner at a monetary gain.

IMPORTANCE OF DOMAIN NAME

Every website on the internet has what is known as a URL, and a domain name is a component of that. A domain name links to an IP address, which is connected to an easily readable and understood address. A domain name Domain name holds great importance to every entity as it may represent a brand or a company on the internet and may be held crucial for building a brand, establishing legitimacy, add credibility to the business. 

LEGAL RESOLUTION

In India, there does not exist any specific law governing or regulating cybersquatting or a Domain protection law to date.

The courts rule the cases under the Trademark Act 1999. On this, the Hon’ble Supreme Court of India has quoted the case of Satyam Infoway Ltd v. Sifynet Solutions Pvt. Ltd[1], The Hon’ble Supreme Court of India decided the first case involving domain name protection. The court made a distinction between the nature of a trademark and a domain name, citing as “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“.

Even if the domain names are not defined and even after the absence of a special enactment or an exclusive law dealing with the same the cases are ruled under the Trademark Act 1999 which offers two kinds of relief namely remedy of infringement, and remedy of passing off. Which may appear inadequate in certain cases. And hence for the adequate protection of domain names India needs to enact a new law.

Moving on to a global viewpoint, some countries, unlike India, have laws against cybersquatting that go beyond the requirements of a trademark, for instance. The United States Federal Law was approved in the United States of America that is the Anti-cybersquatting Consumer Protection Act in 1999[2] which can be used by India to enact and adapt to a similar law.

Also since 1999 WIPO which is the World Intellectual Property Organization laid out an administrative process wherein a website might be claimed by a trademark owner. That is squatted. The caseload before WIPO has been seeing a gigantic growth as we can see the increasing time spent by people on the internet and given the significance or importance of domain names in today’s modern era. All the cases before the WIPO are resolved before the Uniform Domain-Name Dispute-Resolution Policy[3] (UDRP) before the WIPO’s arbitration and mediation centre, also International registrars such as WIPO or the ICCN provide people with a modicum of well-regulated protection to domain names

NOTABLE CASES

‘Yahoo INC v. Akash Arora’[4]

Yahoo INC vs. Akash Arora is one of India’s landmark cases on ‘cybersquatting’. This was the first time that The Honorable Delhi High Court had declared domain names to have the same level of protection as trademarks. This is important as it is a key IP law issue related to transmissions under Indian trademark law. The case also addressed the application of Sections 29[5] and 27[6] of the Trademark Act to that domain names.

Before this ruling, domain names were not registered as trademarks because they had to pass a distinctiveness test. Domain names were a legal Grey area in India when registering trademarks. For a website name to qualify for trademark registration, check whether the name can act as a trademark for the company’s goods and services, in addition to being a website name. Therefore, courts have the power to block the operation of companies that are using seemingly similar trademarks. The principle of passing off under trademark law is interpreted as follows. If a particular defendant conducts business under a name similar to either the plaintiff’s “famous” or “proprietary” Internet domain name, the similarity between the two companies on the market may mislead the public into confusing the company’s products or services with those of another company.

Dr. Reddy’s Laboratories Limited v. Manu Kosuri and Anr[7]

The claimant company was started in 1984, to do R&D activities within the field of drugs. Additionally, the claimant company had registered a site name ‘drreddys.com’. However, in January 1999, the litigant came to understand that the Defendants are in the process of registering domain names in India and that they registered a site name as ‘drreddyslab’. A permanent Injunction was granted in favor of the litigant and also the defendants were restrained from exploiting the name, ‘drreddyslab.com’, which was a copy of the plaintiff’s established name. The Hon’ble court additionally agreed that the domain names are vital and hold a key position in e-commerce and commanded that the litigants were accountable for passing off the name and thereby granted a permanent injunction against the defendant.

NOTABLE CASES

  • Tata Sons Limited and Anr v. fashion ID Limited[8]
  • Aqua Minerals Limited v. Mr. Pramod Borse & Anr[9]
  • Nestle India Limited v. Mood Hospitality Pvt Limited[10]

CONCLUSION

Domain names are extremely significant to everyone since, as we enter the 3rd decade of the twenty-first century, using the Internet is the most important tool and prominent resource that practically everyone in the world uses. There is no exclusive law regulating and governing cybersquatting, unlike other nations. We need specific laws governing and setting out rules and remedies for damage concerning domain name protection or cybersquatting. The courts of today are adopting a proactive stance in matters involving cybersquatting and are fully aware of the danger it brings. In order to deter cybersquatting, the judiciary must take strict measures due to the anticipated increase in internet usage.

Author(s) Name:  Ayush Pravin Shende (SPPU)

References:

[1]Satyam Infoway Ltd v. Sifynet Solutions Pvt. Ltd, 2004 (3) AWC 2366 SC

[2] Anti-cybersquatting Consumer Protection Act 15 U.S.C. § 1125(d) 1999(US).

[3] ICANN, https://www.icann.org/resources/pages/help/dndr/udrp-en, (last visited Mar. 4, 2023).

[4] Yahoo INC v. Akash Arora, 1999 IIAD Delhi 229.

[5] The Trademark Act, 1999, § 29, Acts of Parliament, 1999 (India).

[6] The Trademark Act, 1999, § 27, Acts of Parliament, 1999 (India).

[7]Dr. Reddy’s Laboratories Limited v. Manu Kosuri and Anr, 2001 IVAD Delhi 583

[8] Tata Sons Limited and Anr v. fashion ID Limited, 117 (2005) DLT 748.

[9] Aqua Minerals Limited v. Mr. Pramod Borse & Anr, AIR 2001 Delhi 463.

[10]Nestle India Limited v. Mood Hospitality Pvt Limited, 2010 (42) PTC 514 (Del).

error: Content is protected !!