Cybersquatting in India
– An article by Lavanya Goinka
Every business or organisation, large or small, likes to have a presence on the Internet in today’s environment. With the advancement of technology, it has become easier for a company or organisation to sell its goods and services over the internet, which has a wide reach among the general public. This is commonly accomplished by launching websites under the company or business’s name after registering the website’s name, also known as the domain name. A domain name is usually made up of a company’s or organization’s trademark, and it can act as a classing trademark signifying the company’s awareness and goodwill in the marketplace.
What is a domain name?
In a technical sense, a domain name is an alpha-numeric mnemonic device that can be translated onto an Internet Protocol (IP) address, making it easier for users to navigate the web than if they had to memorise the details of each IP address they intended to visit. Because IP addresses are entirely numeric, they are difficult to recall and are not visually appealing, which led to the development of a domain name system (DNS), which is a common substitute for all of a server’s IP addresses, such as “apple.com,” “amazon.com,” and so on. These domain names can be registered under the owner’s preferred name. In today’s environment, a domain name functions as an online trademark, source identification, quality indicator, and reservoir of goodwill. Because clients cannot physically try a product over the Internet, they must rely heavily on the previous reputation and goodwill of the individual advertising the goods. As a result, domain names can be said to represent an organization’s trademark and to be important corporate assets.
What is cybersquatting?
The value of domain names has increased by over 46.4 percent worldwide since 1995 as a result of the significant growth in Internet usage. Large firms and businesses choose to register domain names in the names of the countries in which they conduct business. However, in the domain name market, people other than the proprietors of these large corporations and well-known businesses have a predisposition to register the names of these large corporations and well-known firms as domain names. Cyber-squatting is the practise of registering a domain name in the name of a well-known and/or registered trademark or a confusingly similar trademark and then attempting to sell that domain name to the trademark owner or a third party with the intention of selling it at a higher profit to the trademark owner. In the case of Manish Vij v. Indra Chugh, the Delhi High Court described cyber-squatting as “the act of acquiring a false registration with the goal of selling the domain name to the rightful owner at a premium.”
What are domain name disputes?
Because of the worth and power of a domain name, businesses are willing to spend any amount of time and money to obtain them. Unlike the traditional trademark system, where identical trademarks can be owned by numerous people depending on factors like geography or the type of products or product, the virtual world has a rule that only one person can own a domain name. In the first, an individual or group with no other rights to a name may register a website with that name, resulting in a domain name dispute. Extortion, appropriation of goodwill, diversion of web traffic, defamation, dilution, and other goals may be pursued. The second type of issue occurs when there is a dispute between people who are equally entitled to a name, which is a common occurrence given the worldwide nature of the internet.
Legal analysis
There is no explicit regulation in India that addresses cybersquatting and other domain name disputes. The Trade Marks Act of 1999, on the other hand, is utilised to protect trademarks in domain names. The Trade Marks Act of 1999 has a restriction in that it is not extraterritorial, and hence does not give effective protection for domain names. Despite the lack of such legislation, the Indian courts have been highly active in awarding remedy in cases of cyber-squatting.
Yahoo Inc. v. Akash Arora was India’s first cybersquatting case. Yahoo Inc., situated in the United States, has sought an injunction against the defendant Akash Arora, who had registered a deceptively identical trademark as “Yahoo.com.” The High Court of Delhi issued an injunction in favour of the plaintiff, prohibiting the defendant from using the term “Yahoo!” since it infringed on Yahoo Inc.’s trademark. Because the defendant’s domain name was deceptively similar, consumers were easily deceived, despite the defendant’s disclaimer and the addition of the word “India” to its domain name.
The Rediff case is another important case in the establishment of Indian domain name law. The High Court of Bombay held in Rediff Communication Ltd. v. Cyberbooth and Others that “a domain name is more than an internet address and is entitled to same protection as a trademark.” In this case, the plaintiff sought an injunction against the defendant for registering a domain name in the plaintiff’s likeness, arguing that the domain name was deceptively similar to theirs. There was a shared activity area. The judge was convinced that there was a clear intent to deceive and that the defendants’ sole objective in registering was to profit from the plaintiffs’ goodwill and reputation.
Satyam Infoway Ltd v. Sifynet Solutions (P) Ltd., a 2004 decision, is claimed to have nailed the Indian domain name scenario. “As far as India is concerned, there is no legislation which specifically refers to dispute resolution in connection with domain names,” the Supreme Court stated in this case. However, just because the Trade Marks Act of 1999 is not extraterritorial and may not provide enough protection for domain names does not indicate that they are not protected in India.” In this instance, the judgement favoured the plaintiff because the respondent had registered domain names that were confusingly similar to the Plaintiff’s domain name. The Court stated that domain names have all of the features of a trademark, and that an action of passing off can be found in cases involving domain names.
The common law approaching to Cybersquatting
The defendant in Marks & Spencer v. One-in-a-Million has registered domain names for multiple corporations under his name. The defendant’s actions, according to the Court, demonstrated an intentional habit of registering domain names that are similar to the names of well-known brands, as well as an intent to deceive the public by picking such a domain name. In all five cases, the High Court granted an injunction, stating that injunctions are awarded by the courts when a name is chosen with the intent to cause passing off or to be used fraudulently. Both parties had a valid interest in using the domain name in the case of Prince Plc v. Prince Sportswear Group Inc. The plaintiff, a computer services corporation situated in the United Kingdom, had registered “prince.com” as a domain name.
When the defendant attempted to register the same domain name, they discovered that the plaintiff had already done so. The defendant wrote to the plaintiff through their solicitors, requesting that the domain name be assigned to the plaintiff and that the plaintiff’s use and registration of PRINCE as a domain name constituted infringement and dilution of the defendant’s trademark rights. The judge refused to order a damages investigation since there was no evidence of damage. Second, the lordship denied the plaintiff’s request for a declaration that the plaintiff’s domain name registration and use did not infringe on the defendant’s UK trademark. For a declaration of non-infringement, the plaintiff had the burden of proof. However, an injunction was obtained against the defendants, stopping them from continuing to threaten the plaintiff with infringement proceedings.
Conclusion
Cybersquatting has become so common in today’s world that it has been dubbed a modern-day form of extortion, making it a significant legal issue. The Anti-Cybersquatting Consumer Protection Act was enacted in the United States in 1999 to try to resolve conflicts in this area; however, there is no such legislation in India that specifically addresses cyber-squatting. In India, all cyber-squatting proceedings are decided under trademark law, which is bound to be unproductive.
The focus should not be on investigating every conflict from a trademark standpoint, because litigation is not always the best option, as it results in a significant waste of time and money. As a result, new legislation dealing especially with cyber-squatting is urgently needed in India. Although the courts have used trademark law to resolve these domain name disputes, there is no explicit statute or legislation dealing with cyber-squatting in the Information Technology Act. In many circumstances, the courts must go to English and American laws and judgements for guidance. As a result, a law like the ACPA, which was enacted in the United States, is a necessity of the day. In 2015, the number of cases submitted in the WIPO Arbitration and Mediation Center increased by around 4.6 percent (2754) when compared to the previous year.
Another idea, in light of this, could be the creation of a national arbitration forum in India that deals with domain name disputes, similar to the US National Arbitration Forum and the Czech Arbitration Court. Unlike Indian courts, such entities will aid in the faster and more effective resolution of issues.
In addition, rulings of the WIPO Arbitration and Mediation Center and ICANN in domain name disputes should be made enforceable on Indian courts, easing the already congested Indian court system. Finally, these disagreements could be greatly decreased if the registrar conducts a background check before to allocating the domain name, hence reducing the likelihood of a future dispute. Another option is to publish the to-be-allotted domain names in a journal, similar to how trademarks are published in trademark journals. Such cyber-squatting techniques would go a long way toward decreasing and preventing domain name conflicts.