CYBERSQUATTING AND DOMAIN NAMES

 

The act of registering, selling, or using a domain name with the intent of profiting from the goodwill of another’s trademark is known as cybersquatting. It refers to the practise of purchasing domain names that include the names of existing businesses with the intention of reselling the names to those businesses for a profit. A Domain Name is a more user-friendly form of an Internet Protocol (IP) address, with the technical IP address hidden from sight of the viewers. The Domain Name System (DNS), a globally distributed internet database maintained by ICANN, assigns and manages addresses to Internet Web Servers. “inta.org” is an example of a domain name. The Second-Level Name is the name portion of a domain name [here, inta], and it is the domain name applicant’s responsibility to create or select this unique and scintilating name. The Top-Level Domain (TLD) is the end portion of a domain name [here,.org], and it is divided into two categories: generic top-level domains (gTLDs) and country-code top-level domains (ccTLDs). .com, .org, .gov, .net, .in, etc  are some of the most common and prevalent catogories of top level domains.

CYBERSQUATTING IN THE UNITED STATES

Cybersquatting has been a nuisance in the United States over the years. The first instance of this occurred in 1994. The first cybersquatting case in the United States occurred in 1994, and the number of cases has risen since then. Dennis Toeppen, who registered most of the well-known trademarks in the United States as domain names, is one of the most well-known cases in the United States. Dennis Toeppen was sued by the trademark owners after registering the majority of well-known trademarks. Intermatic v. Toeppen and Panavision v. Toeppen are the two most well-known cases involving Dennis Toeppen. Plaintiff owned the trademark Intermatic and sued Dennis Toeppen for trademark dilution in Intermatic v. Toeppen. Dennis Toeppen was held liable for trademark dilution by the court because the defendant’s registration of the domain name intermatic.com impaired the plaintiff’s ability to identify and differentiate its goods and services on the internet.

The court decided in favour of the plaintiff in the case of Panavision v Toeppen. Panavision had filed a lawsuit against Toeppen for registering the domain names panavision.com and panaflex.com. In this case, the court decided that offering to sell a domain name that is similar to a trademark to the trademark owner constituted commercial usage. 

The Fourth Circuit Court of Appeals stated in Virtual Works, Inc. v. Volkswagen of America, Inc. (on a dispute over the domain name “www.vw.net:”) that the mere similarity of a domain name to a well-known trademark does not prove bad faith. The cybersquatter’s bad faith intent must be established by both circumstantial and direct evidence.

The Court stated in Card Service International Inc. v. McGee that “a domain name is more than a mere internet address.” It also identifies the internet site to those who visit it, just as an individual’s name identifies a specific person, or a company’s name identifies a specific company, which is more relevant to trademark disputes.” As a result, the Court decided that McGee’s use of “cardservice.com” and “Card Service on the Caprock” constituted trademark infringement under the Lanham Act and granted permanent injunction in favour of card service international.

The Court of Appeals for the Ninth Circuit granted a preliminary injunction in favour of the plaintiff against the defendant in the case of Brookfield Communications, Inc. v. West Coast Entertainment Corp. for the use of the domain name “moviebuff.com.” The plaintiff claimed that the defendant’s domain name infringed on their trademark “MovieBuff.” The defendant claimed that they had been using the slogan “The Movie Buff’s Movie Store” as a service mark since 1986, and that they had registered the domain name “moviebuff.com” in 1996, claiming first use of the domain name. The court decided that West Coast’s seniority was not established by the mere registration of the domain name, which was not ready for actual “launching” until November 1998. The Judge decided that using the domain name as well as the word “moviebuff” as a metatag would cause consumer confusion, but that they could use the term with a space inserted (“movie buff”).

It was necessary to provide a legal remedy against cybersquatting as the number of cases of cybersquatting increased. The Anti-Cybersquatting Consumer Protection Act of 1999 was introduced as a result of this. On November 29, 1999, the Anti-Cybersquatting Consumer Protection Act (ACPA) was enacted, amending the Lanham Act and introducing a new Section 43 (d). The new section provides trademark owners a legal recourse for cybersquatting, which is the practise of registering other people’s trademarks as domain names and profiting from the sale of such domain names or traffic through the site. The ACPA makes a person liable to a trademark owner if he or she “registers, traffics in, or uses a domain name” that is either identical or confusingly similar to a “distinctive” mark or is identical, confusingly similar, or dilutive to a “popular mark” with “a bad faith intent to profit from that mark.”

Sportsman’s Market, Inc. used the logo and trademark “Sporty’s” to identify its catalogs in the case of Sporty’s Farm, LLC vs. Sportsman’s Market, Inc., which was decided under the Anti-Cybersquatting Consumer Protection Act (ACPA). The domain name “sporty’s.com” was registered by Omega Engineering, another catalog company selling scientific instruments. Omega’s owner had worked as a pilot and was familiar with Sportsman’s catalogues and sporty’s trademark. Omega transferred the domain name to a subsidiary called Sporty’s Farm after nine months after it was registered. Omega created the subsidiary with the goal of growing and selling Christmas trees. Omega intended to compete directly with Sportsman’s in the aviation consumer market, and their primary goal was to prohibit Sportsman’s from using the domain name “sporty’s.com.” The court found that Omega formed the subsidiary to find a commercial use for the domain name that had been registered and to prohibit the plaintiff from using the domain name. But for the reason that the domain name was registered prior to ACPA, the court refused to grant damages to the plaintiff. 

Courts in the United States have been unwilling to create a new type of dilution based on the use of a trademark as a domain name. Since trade mark law does not support such a monopoly, the holder of a well-known mark is not automatically entitled to use the mark as its domain name. As a result, an internet user who is the first to register a sign as a domain name and has a bona fide legal justification for using the sign as a domain name should be allowed to use it as a domain name, regardless of whether the same sign is a trade mark, as long as the use is not within the trade mark right’s boundaries. The request for a per se dilution finding was denied. A case involving Hasbro’s popular Clue trade mark is a clear example of this approach, stressing that a finding of per se dilution would have far-reaching implications that would disregard rigorous trade mark compliance requirements. Similarly, in Playboy Enterprises Inc. v. Netscape Communications Corp., a case involving non-Playboy sponsored adult banner advertisements that appeared if an internet user typed in “playboy” or “playmate” as a search term, Playboy failed to prove a probability of success on the merits of its trade mark action and to demonstrate that it would suffer irreparable damage if an interlocutory injunction was not granted.

Mahindra & Mahindra (M&M) recently won a cybersquatting case against a US-based person named Zach Segal at the World Intellectual Property Organization (WIPO) who was using the name “Mahindra” in an Internet domain. Segal was using the domain name “mahindraforum.com.” The Indian conglomerate, on the other hand, contended that the name is confusingly similar to its “Mahindra” trade mark, and that the person has no rights or legitimate interests.

CYBERSQUATTING IN INDIA

In India, there have been several incidents of cybersquatting in recent years. Domain name disputes and cybersquatting are often dealt with by the courts. In India, the Bombay High Court delivered one of the first cybersquatting judgments in the case of Rediff Communication v. Cyberbooth. In this case, the court determined that the meaning and significance of a domain name is identical to that of a company’s corporate asset. The defendant in this case had registered the domain name radiff.com, which was similar to rediff.com. The Court held that internet domain names are important and can be a valuable corporate asset, and that such a domain name is more than an Internet address and is entitled to the same level of protection as a trademark. The decision was given in favour of the plaintiff by the court.

Another one of the earliest cases on cybersquatting was Yahoo Inc. v. Akash Arora. In this case, the plaintiff filed a lawsuit against the defendants, seeking a permanent injunction prohibiting the defendants from operating any company or selling, offering for sale, advertising, or otherwise trading in any services or goods under the trademark/domain name ‘Yahooindia.Com’ on the Internet or otherwise or any other mark/domain name that is confusingly similar to or identical to the plaintiff’s trademark “Yahoo!” The defendant claimed that since the plaintiff’s trademark/domain name “Yahoo!” is not registered in India, no claim for trademark infringement can be filed.

It was also argued that no action of passing off could be brought because the plaintiff’s and defendants’ services are not goods within the meaning of the Indian Trade Marks Act, 1958. The defendant also argued that the word “Yahoo!” is a general dictionary term and is not vented and, As a result, it may not have acquired any distinctiveness, and since the defendants have been using disclaimers, there is no chance of deception, so no action of passing of is maintainable against the defendants.

The court granted the injunction, ruling that internet-based services have become internationally known and accepted, and that their providers should be protected from passing off.

Cybersquatting issues in India are primarily governed by passing off principles. There are no laws or statutes in India to prevent cybersquatting. As a result, courts often use the passing off principle when deciding cybersquatting cases.

In Titan Industries Ltd. v. Prashanth Koorapati, the Delhi High Court issued an ex-parte ad-interim injunction restricting the defendants from using the name “Tanishq” on the Internet or otherwise, as well as from participating in any other behavior that could lead to the defendants’ business and goods being misinterpreted as the plaintiff’s.

The defendant misappropriated the plaintiff’s trademark TATA in Tata Sons Ltd v. Manu Kosuri. It was registered as part of a series of domain names that included the well-known and famous trademark TATA. After referring to Rediff Communication v. Cyberbooth and Yahoo Inc. v. Akash Arora, the Court held that internet domain names were essential and valuable corporate assets, and that since they were not internet addresses, they were entitled to protection equivalent to a trade mark.

In the case of Dr. Reddy’s Laboratories Limited v. Manu Kosuri, the plaintiff Dr. Reddy’s Laboratories filed an appeal to stop the defendants from using the trade mark/domain name “drreddyslab.com.” The defendant had registered the domain name “drreddyslab.com.” The court decided that domain names are relevant in e-commerce and that the defendants were liable under the passing off statute. The plaintiff was granted a permanent injunction prohibiting the defendant from using the trade mark/domain name “drreddyslab.com” or any other mark/domain name that is identical to or deceptively similar to the plaintiff’s trade mark.

“As far as India is concerned, there is no legislation which expressly refers to dispute resolution in connection with domain names,” the Hon’ble Supreme Court mentioned in Satyam Infoway v. Sifynet Solutions. Although the Trade Marks Act of 1999 is not extraterritorial in nature and does not provide adequate protection for domain names, this does not prevent domain names from being legally protected to the extent possible under passing off laws.”

SBI Card and Payment Services Private Limited, the credit card firm of the State Bank of India (SBI), won a cybersquatting case against Domain Active Pty Ltd, an Australian company, in SBI Cards and Payment Services Private Limited v Domain Active Pty Ltd. The decision was delivered by the World Intellectual Property Organization’s (WIPO) administrative tribunal in Geneva.

The plaintiff in this case was a joint venture between GE Capital Services and the State Bank of India. The plaintiff had a range of credit cards to sell, as well as city affinity cards. The defendant registered http://www.sbicards.com as a domain name. At the World Intellectual Property Organization in Geneva, the plaintiff filed a complaint.

Because of its affiliation with plaintiff’s products and services, the WIPO Administrative Panel determined that the defendant’s website could have attracted public attention. There was also an intent to confuse the plaintiff’s product and services, as well as the plaintiff’s trademark, as to the source and affiliation of the defendant’s website. Therefore, the panel held that the defendant was liable registration of the domain name in bad faith.

In the case of Maruti Udyog v. Maruti InfoTech, a complaint was filed with the World Intellectual Property Organization’s (WIPO) arbitration and mediation centre over a dispute over the domain name “www.maruti.org.” Maruti Udyog, the well-known car manufacturer and owner of the trademark “Maruti,” proved that the trademark was associated with its products, and that a person of average intellect and shaky recollection would be led to believe that the domain name was associated with them. The respondent wanted to sell the domain name to the plaintiff in exchange for money. As a result, the panel determined that respondent intended to make profit from the registration of the complainant’s trademark as a domain name and ordered that it be transferred to the complainant.

In the case of Intel Corporation v. Anil Handa, Intel filed an application seeking an interim injunction to bar the defendants from using the term “Intel” as part of their corporate name. In the case of Intel Corporation v. Anil Handa, Intel filed an application seeking an interim injunction to bar the defendants from using the term “Intel” as part of their corporate name. The defendant argued that they had been running business in India for a long time and that the plaintiff had never complained to their corporate name even after being aware of their presence. Furthermore, the defendants’ business was completely different from that of the plaintiff, so there is no possibility of confusion.

The plaintiff Intel Corporation was refused an injunction because the defendants have been using the trademark Intel for over 15 years. “When a prima facie case is established, the court must consider other relevant factors, such as the balance of convenience and irreparable injury,” the court said. When considering the latter, the parties’ conduct becomes relevant. If one party has been behaving in a certain way for a long time while allowing the other to do the same, the same would be weighed.”

Domain name disputes are on the rise in India, but unfortunately the country lacks legislation to address the problem of cyber-squatting, which is punishable in the United States… Today, domain names have become a big trading business, with around 10,000 new ones being registered every day.

The Code of Civil Procedure is the only statute in India that governs jurisdiction (in the case of a domain name dispute). In this regard, Section 20 of the CPC provides the plaintiff two options:

 a) file a suit in the court where the defendant (or one of them) is located, or

b) file a suit in the court where the cause of action, in whole or in part, occurs.

In effect, if the plaintiff establishes that the cause of action arises within the territorial jurisdiction of the court, a court in India will have jurisdiction to hear a domain name dispute, even if the defendant is located outside the country. The current requirement is to apply trademark law principles in a way that is consistent with domain name provisions.

It is past time for India to enact strict legislation to address the problem of cyber-squatting. After all, resolving an issue once is preferable to resolving it several times.

METHODS OF RESOLVING CYBERSQUATTING DISPUTE IN INDIA

INTERNATIONAL BODIES

  1. ICANN dispute resolution policy – A trademark is protected under the laws of the country in which it is registered. Furthermore, a trademark can be registered in many countries across the world. Since the internet allows us to access information anywhere in the world without any geographical limitation, a domain name can be accessed regardless of the consumer’s location. This would be advantageous for the universal connectivity, which will give domain names worldwide exclusivity, and also because national laws will not always be sufficient to effectively protect a domain name. WIPO and ICANN is responsible for international regulation. India is one of the 171 countries which is the member of the World Intellectual Property Organization (WIPO). WIPO provides its member states with services such as providing a forum for the development and enforcement of international intellectual property policies through treaties and other policy instruments.

In 1998, the Internet Corporation for Assigned Names and Numbers (ICANN) was founded as a global internet administration, and in 1999, the UDRP (Uniform Domain Name Dispute Resolution Policy) was introduced to resolve international domain name disputes in an efficient and cost-effective manner. This was one of the most significant events in recent history, particularly in terms of resolving international legal problems arising from the existence of the borderless internet on the one side, and intellectual property rights of some users on the other.

2. Uniform Domain Name Dispute Resolution Policy – The Uniform Domain Name Dispute Resolution Policy (UDNDRP or UDRP) was introduced by ICANN as the policy for resolving domain name disputes. In the case of domain name disputes, this policy calls for arbitration rather than litigation. According to this policy, any person (complainant) can file a complaint if:

• A domain name is identical to or confusingly similar to a trademark or service mark used by the complainant.

• The domain name has been registered and is being used in bad faith by the domain name owner, who has no rights or legitimate interests in the domain name.

However, if he wants his action to succeed, he must prove all of these elements in his complaint. If the abusive registration is proven, the complainant’s domain name registration is cancelled or transferred to him, but he receives no financial remedies.

3. WIPO Arbitration and Mediation Center Decisions on Domain Names – The World Intellectual Property Organization, which is accredited by ICANN, is the principal domain name dispute resolution service provider under the UDRP. WIPO supported qualified panelists, effective and rigorous administrative procedures, as well as overall impartiality and credibility. A domain name case filed with WIPO is usually resolved in two months using on-line procedures and for a minimal fee charged. Perhaps the most extraordinary cases are heard in person.

NATIONAL BODIES

There is no legislation in India that specifically addresses cybersquatting or other domain name disputes. The Information Technology Act of 2000 (IT Act), which addresses a variety of cybercrimes, strangely ignores domain name disputes and cybersquatting. Domain names, on the other hand, can be considered trademarks based on their use and brand reputation. In the absence of effective cybersquatting laws, victims may file a lawsuit under the Trade Marks Act of 1999 for passing off and trademark infringement.

  1. “.IN”Dispute Resolution Policy – The.IN Registry formulated the.IN Dispute Resolution Policy (.INDRP) for domain name dispute resolution in India in response to these issues. According to INDRP, it follows globally recognised guidelines as well as applicable provisions of the Indian Information Technology Act 2000. The is the. IN Registry is an independent entity under the National Internet Exchange of India (NIXI) that is in charge of maintaining the IN Registry. IN ccTLD, as well as maintaining its operational stability, reliability, and security. Proceedings at the .INDRP can be initiated by any person who considers that the registered domain name conflicts with his legitimate rights or interests on the premise that:
  2. The domain name of the registrant is identical or confusingly similar to a name, trademark, or service mark in which he owns rights; or
  • the registrant has no rights or legitimate interests in respect of the domain name; and
  • the domain name of the registrant was registered or is being used in bad faith. If a complaint is filed, the registrant is expected to submit to a mandatory arbitration proceeding. In compliance with the Arbitration & Conciliation Act 1996, the.IN Registry appoints an arbitrator to the proceedings. In most cases, the arbitrator finds the domain name to have been registered and used in bad faith when:
  • The registrant acquired the domain name solely for the purpose of selling, renting, or otherwise transferring the registration to the complainant’s trademark or service mark owner, or to a competitor of the complainant, for a valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name.; or
  • the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from representing the mark in a corresponding domain name, provided the registrant has engaged in a pattern of such actions; or
  • By intentionally creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or of a product or service on the registrant’s website, the registrant has attempted to attract Internet users to his website or other online location.

The respondent’s domain name http://www.starbucks.co.in was confusingly similar to the complainant’s domain name http://www.starbuscks.in in the case of Starbucks corporation v. Mohanraj. It was argued that the respondent’s domain name is identical and confusingly similar to the complainant’s domain name. The respondent was also said to have no legitimate interest in the domain name. It was also claimed that the respondent had used the mark in bad faith.   The learned arbitrator ruled that the disputed domain name was confusing, similar, and identical to the complainant’s trademark, and that they had a right to it. The domain name should be transferred to the complainant since the respondent registered it in bad faith.

In the case of Morgan Stanley v. Bharat Jain the disputed domain name www.morganstanleybank.co.in was registered by the respondent on June 20, 2010. The complainant claimed that adding the ccTDL “.co.in.” to the contested domain name was insufficient to distinguish it from the complainant’s trademark MORGAN STANLEY. As a result, the contested domain name was confusingly identical to the trademark in question.

In the case of GOOGLE Inc. v. Gulshan Khatri (Decided on 6th May, 2011). The complainant filed the instant complaint challenging the registration of the domain name in favor of the respondent the grievance of the complainant was regarding the latter’s act of adopting identical and identical domain name and that also in respect of similar services of the respondent.

The learned arbitrator determined that the impugned domain name was identical and confusingly similar to the complainant’s other prior registered domain name and registered trademark, and directed the registry to cancel the domain name immediately and transfer it to the complainant. In 2018, October 10 the .INDRP has retrain the respondent from using the domain name and transfer the domain name in favor of the complainant.

  • Judicial Precedence – In India, there have been several incidents of cybersquatting in recent years. Domain name disputes and cybersquatting are often dealt with by the courts. In India, the Bombay High Court provided one of the first cybersquatting judgments in the case of Rediff Communication v. Cyberbooth. In this case, the court determined that the value and significance of a domain name is comparable to that of a company’s corporate asset. The defendant in this case had registered the domain name radiff.com, which was confusingly similar to rediff.com. The Court held that internet domain names are important and can be a valuable corporate asset, and that such a domain name is more than an Internet address and is entitled to the same level of protection as a trademark. The plaintiff won the case, and the court decided in her favour.

Author: Ishita Agrawal from HPNLU, Shimla.

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