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DOMAIN NAME PROTECTION AND CYBER SQUATTING

Introduction

Nowadays, it is difficult to imagine our life without the existence of the internet. It has become an indispensable part of our daily life. It helps us in many ways and makes our life easy. During the covid pandemic, to prevent the spread of the coronavirus, several governments of different countries imposed lockdown in their respective countries. At that time, online trade or business increasingly went digital, providing and purchasing more goods and services online. So, in today’s time when we want to buy something or want to know about something, we go through various websites on the internet and in such situations, a company’s or brand’s domain name becomes very important for their identity as domain name helps entities to establish its identity globally. It also helps various entities in promoting their business by building up an online and offline customer base by way of advertising on the internet and providing easy access to information about the business and its products or services to existing and prospective future customers[1]. In India, unlike many developed nations, there is no specific legislation to deal with the registration and protection of internet domain names and therefore, it is registered and protected under the Trademarks Act, 1999[2]. India is also one of the WIPO members, a UN specialized agency that deals with intellectual property rights.

What is an Internet Domain Name?

An internet Domain name is nothing but the address of one’s website or web address and it is commonly used to locate a website on the internet. it is popularly known as Universal Resource Locator (URL). It is just like the address or mobile number of an individual.

The Concept of Cyber Squatting

The term “Cybersquatting” may be defined as the practice of unauthorized registration and use of internet domain names that are identical or similar trademarks, or service marks of a well-known entity or person. It is also known as domain squatting. The persons who do such acts are known as cyber-squatters. They always try to take the advantage of the goodwill of a reputed and well-known organization or company. By registering such domain names in their names, cyber squatters may sell the domain names to the real owner of such trademark at a very high price or to sell counterfeit/fake products about such brand’s trademark to genuine consumers who have no clue of this kind of practice[3]. It is a serious offence against the property of an entity/firm/trade or individual. Apart from this, they may also use it to defame a company’s or brand’s image in the market.

Role of Indian Judiciary

In India, internet domain names have not been defined under any law or have not been covered under any legislation and therefore, in case of an infringement of domain names, the court decides the case under the principles/provisions of the Trademarks Act, 1999[4].

There are two types of reliefs available under the Trademarks Act, 1999:

  • Remedy of infringement: This kind of remedy is available to the lawful owner of a trademark when his trademark is registered under the Trademarks Act, 1999.
  • Remedy of passing off: When there is no registration of a trademark under the Trademarks Act, 1999, then the aggrieved party is entitled to avail of this remedy.

International Bodies

ICANN: At the international level, ICANN[5] (the Internet Corporation for Assigned Names and Numbers) is a non-profit organization responsible for administering top-level domain names. Since 1998, it has set a policy for the global domain name system.

UDRP: Uniform Domain Name Dispute Resolution Policy have been constituted by the ICANN for the resolution of problems about the registration of domain name disputes.

National Bodies: There is no special legislation that explicitly deals with the issue of domain name or cybersquatting in India. Even the Information Technology Act, 2000 which deals with offences committed in the cyber world, has no provision to deal with the issue of domain name disputes and cybersquatting. If domain name dispute is related to a country code top-level domain (ccTLD), which is “.IN” for India, then the aggrieved party may file a complaint under the “.IN” Dispute Resolution Policy (INDRP) and INDRP Rules of Procedure with the National Internet Exchange of India[6] (NIXI), also known as the “.IN” Registry. In the complaint, the aggrieved party may request for the cancellation of the Registrant’s domain name or the transfer of the domain name registration to him.

Case Laws

Yahoo! Inc v Akash Arora[7]

This is a landmark case on domain name infringement. In this case, the defendant Akash Arora’s company was registered as Net Link Internet Solutions. The company received the domain name yahoo India (yahooindia.com) which was deceptively similar to that of the plaintiff’s (Yahoo.com) and started using it including replicating the form, pattern and content of the Yahoo page. The Court had observed that typically the level of the similarity of the marks is essentially vital and significant in an action for passing off for in such a case there is every possibility and chance of confusion and misleading being caused. When both the domain names are taken into consideration, it becomes clear that the two names are relatively similar or indistinguishable. Then there is every likelihood of Internet use of being bewildered and defrauded in trusting that both the domain names come from a common source and connection, even though two have a different and unique place and come from different sources.

 Aqua Minerals Limited V. Mr Pramod Borse&Anr.[8]

In this case, the plaintiff i.e., Acqua Minerals Ltd. was a registered owner of the trademark Bisleri in India. The defendant Mr. Pramod Borse had got registered the website www.bisleri.com in his name. The Hon’ble Delhi High Court had found the defendant guilty for the infringement of trademark “Bisleri” and permitted the plaintiff to seek the transfer of the website in its name.

Starbucks corporation v. Mohanraj[9] 

In this case, the respondent’s domain name “www.starbucks.co.in” was deceptively similar to the complainant’s domain name “www.starbuscks.in”, it was contended that the domain name of the respondent is identical and confusingly similar to the complainant’s domain name. it was also contended that the respondent had no legitimate interest in the domain name. Further, it was contended that the mark was registered by the respondent in bad faith. The learned arbitrator held that the disputed domain name was confusing, similar and identical to the complainant and that they had the right to the trademark. The respondent had registered the domain name in bad faith and so the domain name should be transferred to the complainant

Conclusion

As more and more companies have started operating their business through online and physical modes, the practice of cybersquatting has also been increasing day by day. There is an urgent need for more stringent laws to penalize the offenders of such offences. India also should draft specific legislation to deal with such kinds of offences so that this kind of offence can be prevented from occurring and also, the rights of real and lawful trademark owners can be protected in the cyber world too.

Author(s) Name: Priyanka Gupta (Adamas University, West Bengal)

References:

[1] ‘What to do in case of a website or domain name dispute’ (The Economics Times, 31 December 2021)
<https://economictimes.indiatimes.com/news/how-to/what-to-do-in-case-of-a-website-or-domain-name-dispute/articleshow/88606670.cms> accessed 16 February 2022

[2] India: Should domain names receive same protection as trademarks? (World Trade Review, 01 March 2017)

<https://www.worldtrademarkreview.com/online/india-should-domain-names-receive-the-same-protection-trademarks> accessed 17 February 2022

[3] Cybersquatting: What it is and what can be done about it (NOLO, 24 January 2020)

<https://www.nolo.com/legal-encyclopedia/cybersquatting-what-what-can-be-29778.html> accessed 18 February 2022

[4] Nikhil Mishra and Damini Sharma, ‘CYBERSQUATTING AND TRADEMARK ISSUES: AN ANALYSIS WITH REFERENCE TO INDIA’ (Manupatra)

<https://docs.manupatra.in/newsline/articles/Upload/732b8573-24a1-4cb3-b98d-60a6fa364c0a.pdf> accessed 19 February 2022

[5] ‘WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP)’ (WIPO, 22 March 2015)

<https://www.wipo.int/amc/en/domains/guide/> accessed 20 February 2022

[6] Pratibha Ahirwar ‘Domain Name Dispute And Cybersquatting in India – Part II’ (Mondaq, 26 February 2019)

<https://www.mondaq.com/india/trademark/784296/domain-name-disputes-and-cybersquatting-in-india-part-ii> accessed 20 February 2022

[7] Yahoo Inc. vs. Akash Arora 1999 IIAD Delhi 229,78 (1999) DLT 285

<https://indiankanoon.org/doc/1741869/> accessed 21 February 2022

[8]Aqua Minerals Limited V. Mr Pramod Borse&Anr. AIR 2001 Delhi 463, 93(2001) DLT 203

<https://indiankanoon.org/doc/1597432/> accessed 21 February 2022

[9] SSRANA – Case Laws in India (S. S. RANA & CO., 2015)

<https://ssrana.in/ip-laws/domain-names-india/domain-names-case-law-india/> accessed 22 February 2022