Cyber-squatting and Trademark issues – Uniform Domain Dispute Resolution Policy
It was well said by Daniel J. Boorstin that an image is not simply a trademark, a design, a slogan or an easily remembered picture. It is a studiously crafted personality profile of an individual, institution, corporation, product or service. I would like to extend it to write that “A trademark, a design,a slogan or an easily remembered picture is a studiously crafted personality profile of an individual, institution, corporation, product or service.” Internet domain names have a immense market of their own. The world seeing a new change in the field of communications has created endless new opportunities for the citizens of cyberspace. The growing importance on the internet has fermented it into a powerful tool for businesses to promote, advertise, and sell products and services. Unfortunately, cybersquatting which is the outcome of dishonest and unlawful conduct has also increased.
Cybersquatting (also known as domain name squatting), according to the United States federal law known as the Anti-cybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. The cyber squatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price. The term is derived from "squatting", which is the act of occupying an abandoned or unoccupied space or building that the squatter does not own, rent, or otherwise have permission to use. Cybersquatting, however, is a bit different in that the domain names that are being "squatted" are (sometimes but not always) being paid for through the registration process by the cyber squatters. Cyber squatters usually ask for prices far greater than that at which they purchased it. Some cyber squatters put up derogatory remarks about the person or company the domain is meant to represent in an effort to encourage the subject to buy the domain from them. Others paid links via advertising networks to the actual site that the user likely wanted, thus monetizing their squatting.
Cybersquatting can be of various categories, most commonly seen is typo squatting, when a cyber squatter registers domain names containing variant of popular trademarks. Typo squatters rely on the fact that Internet users will make typographical errors when entering domain names into their web browsers.
Trademark infringement on the Internet is not merely confined to squatting on a domain name; courts have also held that trademark infringement includes abusively reserving “metatags” similar to famous brands on search engines such as Google. In this form of infringement, the impostor uses famous brand names as hidden text in the website, which, in turn, creates search words on search engines to lead the consumer to an impostor website. These metatags are a form of infringement because, if used in an abusive manner, they act as a mechanism to traffic Internet users to an impostor website.
Some common examples of typo squatting include:
Ø The omission of the “dot” in the domain name: wwwexample.com;
Ø A common misspelling of the intended site: exemple.com
Ø A differently phrased domain name: examples.com
Ø A different top level domain: example.org
It is pertinent to note that the domain name system is administered by the Internet Corporation for Assigned Names and Numbers (“ICANN”). ICANN is a private organization that manages and coordinates the domain name system by overseeing the distribution of unique IP addresses and domain names. However, actual domain name registration is handled by numerous domain name registries situated in various countries around the world. Amongst the various domain name disputes that have come up for consideration of courts around the world, Cybersquatting, Competitor Disputes, Parody Disputes have been predominantly the underlying issue. With the domain prices falling and more top level domains (.biz, .cn, .mob and lately .in) getting accredited, cyber squatters are making a lot of illegitimate profits. The problem arises because, the trademark owner cannot register his own trademark as a domain name as long as a cyber squatter owns the domain name. Thereby, a cyber squatter breaches the right of the trademark owner to utilize his own trademark. In this sense, the cyber squatter breaches the fundamental rights of the trademark owner to use its trademark. However, it is important to note that there is nothing wrong with the practice of reserving a domain name. The problem spawned by cybersquatting is augmented as entrepreneurs try to take advantage of the reputation of others by registering domain names which attract members of the public. Of particular concern is the growing practice of registering the names of celebrities, particularly where domain name is used for a pornography site. Popular brand names are deliberately misspelled for the sole purpose of website traffic diversion through initial interest confusion. Rival companies indulge in unfair competition thereby providing gaping holes in the system for Cyber squatters to blackmail and harass trademark owners into buying back what is rightfully their own.
2. Conceptual Discussion
2.1. DOMAIN NAMES
Each website on the Internet has an IP address behind the name. Every web server requires a Domain name system (DNS) system to translate domain name in to IP address. IP address is string of numbers such as 188.8.131.52.The domain name are made up of characters that are easier to be remembered. An example of Domain name is illustrated in
Figure 1: An example of Domain name
· ‘WWW’ means the site is linked to the world wide web;
· ‘anytrademarkname’ is the name you choose to your site,and ideally is readily identifible with your orgainsation name or core business.
· ‘.com’ indicates that your organisation name or core business
· ‘.in’ means company is registered in India
Distributed databases contain the list of domain names and their corresponding address and perform the function of mapping the domain names to their IP numeric addresses for the purpose of directing requests to connect computers on the Internet. The DNS is structured in a hierarchical manner which allows for the decentralized administration of name-to-address mapping. The DNS 1st cum 1st served policy is a breeding ground for opportunists with neither trademark registration, nor any inherent rights to “pirate” or “squat” over domain names. Domain name today serves as an on-line trademark, source identifier, indicates quality and a repository of goodwill. Since numbers are more difficult to remember, alphabetical domain names were developed to make the addresses easier for humans to remember and use when communicating on the Internet. Such names are often catchy words or well-known names of individuals or companies, for example, “nokia.com” or “samsung.com”. Thus, a domain name is a popular substitute for the all-numeric IP address of a particular server.
2.2. Classification of domain names
Domain names are divided into hierarchies. A specific domain name can be divided into a top-level domain (TLD); a second level domain (SLD) and a sub- domain (SD). Using law.harvard.edu as an example, the general template for domain names is as follows:
www.law. harvard. edu
3rd 2nd 1st
SD SLD TLD
Again, top-level domains can be classified into generic and country code TLDs. The top-level of the hierarchy appears after the last dot (‘.’) in a domain name. In harvard.edu, the top level domain name is ‘.edu’. Among the various TLDs the ‘.com’ name is the most common TLD name, and is used to indicate that the domain name is owned by a commercial enterprise. Other common top-level domain names include ‘.org’ (for non-profit organizations), ‘.net’ (for network and Internet related organizations), ‘.edu’ (for colleges and universities), and ‘.gov’ (for government entities).
In addition to these generic domain names, a top-level domain name corresponding to a two-letter country code of ISO 3166 has been assigned to every country. For instance, ‘.in’ indicates a domain in India, and ‘.fr’ indicates a French domain.
2.3. Domain Name Registration
Unlike country code top-level domain names, which are issued by authorities in each country, generic top-level domains are issued by Registrars, which are accredited by Internet Corporation for Assigned Names and Numbers (ICANN), a non-profit organization, which administers and is responsible for IP address space allocation, protocol parameter assignment, domain name system management and the root server system management. Currently, there are 157 such Registrars around the globe. Until April 1999, Network Solutions Inc was the only authority, which could issue domain names for the ‘.com’, ‘.net’. ‘.edu’, ‘.gov’, etc., generic TLDs. Currently, it costs $100 for an initial two years of use, with $50 for each additional year. The domain name is limited to twenty-six characters including the TLD, but the use of a shorter, and more user-friendly name is recommended.
As a species of intellectual property created by the digital age, domain names are most widely known and discussed. Unlike telephone numbers, domain names ending in ‘.com’ are unique for the entire world. They are easy to remember and use, and it is precisely for this reason that they have assumed a key role in e-commerce. Thus domain names have assumed much the same role in virtual space, as trademarks in real space. These factors have fuelled the drive for domain names and thereby, resulting in the consequential disputes.
2.4. Domain Name Disputes
Domain name disputes tend to fall into four categories: (i) cyber squatters, (ii) cyber parasites, (iii) cyber twins, and (iv) reverse domain name hijacking.
2.4.1. Cyber Squatters:
The term, cyber squatter, refers to someone who has speculatively registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant, who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. Sometimes parties register names expecting to auction them off to the highest bidder. This practice has led to the emergence of domain name brokers. Yet other squatters indulge in insatiable activities, eating up all names that are even remotely related to their business to preempt other squatters. In the case of British Telecommunications v One in a Million , the defendants had registered as domain names, a number of well-known trade names, associated with large corporations, including sainsburys.com, marksandspencer.com, and Britishtelecom.com, with which they had no connection. They then offered them to the companies associated with each name for an amount, much more than they had paid for them.
2.4.2. Cyber Parasites
Similar to cyber squatters, cyber parasites also expect to gain financially; however, unlike squatters, such gain is expected through the use of the domain name. In some cases, a famous name will be registered by another; in other cases, a mark that is similar to, or a commonly mistyped version of a famous name will be used. The dispute might arise between direct competitors, between those in similar lines of business, or between those who simply wish to indulge in ‘passing off’ of the name’s fame. In the Indian case of Yahoo! Inc v Akash Arora & Anr, the Delhi High Court dealt with a matter of a similar nature. The case involved a petition by Yahoo! Inc, seeking injunctive relief against the defendants who were attempting to use the domain name yahooindia.com for Internet related services. The defendants contended that firstly, there could be no passing off plaintiff’s services because the service rendered by them could not be said to be goods within the meaning of the Trade and Merchandise Marks Act, 1958,which only dealt with goods and not services, and secondly, Yahoo was a dictionary word which was not distinctive and since the defendants has been using a disclaimer, there could be no chance of deception and therefore no passing off.
The Court treated the matter as one of “passing off” and concluded that appropriation of ‘yahoo’ name by the defendants justified, bringing of this action and thereby granted an injunction against the defendants. The Court gave the following reasoning; firstly, there were several cases where services had been included with the scope of passing off. Accordingly, services rendered had come to be recognized for an action in passing off; secondly, a domain name served the same function as a trademark and was entitled to equal protection as a trademark; thirdly, the two marks were identical, save for the word, INDIA, and there was every possibility of an Internet user being confused that both domain names came from a common source. This was particularly so since Yahoo! Inc itself had used regional names after the word Yahoo!; fourthly, the disclaimer used by Akash Arora was of no relevance because, due to the nature of Internet use, the defendants appropriation of the plaintiff’s mark as a domain name and home page address could not be adequately communicated by a disclaimer; and lastly, dictionary words could attract distinctiveness.
In a similar case before the Bombay High Court, in the matter of Rediff Communication Limited v Cyberbooth, A.I.R. 2000 Bom. 27, the plaintiff had filed a case of passing off against the defendant, who had adopted the domain name radiff.com as part of their trading style, which was alleged to be deceptively similar to the domain name of the plaintiff, rediff.com. The Court findings in favour of the plaintiff held that since both, the plaintiff and the defendant had a common field of activity, both operated on the net, and both provided information of a similar nature, and both offered a chat line therefore, there is every possibility of an Internet user getting confused and deceived in believing that both domain names belong to one common source and connection although the two belong to two different persons. The Court was satisfied that the defendants have adopted the domain name radiff.com with the intention to trade on the plaintiff’s reputation and accordingly the defendant was prohibited from using the said domain name.
2.4.3. Cyber Twins
When both the domain name holder and the challenger have a legitimate claim to a domain name then they are known as cyber twins. The cases involving cyber twins are the most difficult ones, because, but for the domain name dispute, the law of trademark and unfair competition might otherwise allow each party to enjoy concurrent use of the name.
In the case of Indian Farmers Fertiliser Cooperation Ltd v International Foodstuffs Co, before the WIPO Arbitration and Mediation Centre, the dispute was relating to the domain name iffco.com. The defendants had registered the domain name iffco.com and had been using it with good faith. The complainant had domain names related to iffco.com and had a legitimate interest in the domain name. The complainant had alleged the defendant of diverting the net surfers to its own website. However, the Arbitration Centre dismissed the case, as both the parties had legitimate interest in the domain name and the complainant had failed to prove “bad faith” on the part of the defendant.
In a similar matter, which came up before the Delhi High Court, in the case of Online India Capital Co Pvt Ltd & Anr v Dimensions Corporate 23 , the plaintiffs had filed a case of passing off against the defendant, who had adopted the domain name mutualfundindia.com, which was alleged to be deceptively similar to the plaintiffs’ domain name, mutualfundsindia.com. However, the Court relying upon few other case, dismissed the plaintiffs’ contentions, as the plaintiffs had failed to prove that their domain name had acquired a secondary meaning, which is a prima facie requirement to grant a protection to a descriptive name.
2.4.4. Reverse Domain Name Hijacking
In certain cases, the complainant may try to over extend the scope of their famous name, and thereby might indulge in ‘reverse domain name hijacking (RDNH)’. RDNH is an attempt by a trademark holder, in bad faith, to take control of a domain name from another, who is not in breach of trademark laws, and who has a legitimate interest in the name. The Rules for the Uniform Domain Name Dispute Resolution Policy (UDRP) make explicit reference to RDNH. Rule 15(e) of the UDRP provides that where a complaint was brought in bad faith, such as in an attempt at RDNH, or primarily to harass the domain name registrant (which many would consider RDNH), then the panel is required to “declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
In some of the cases before the panel, bad faith is clear, such as where the complainant’s behaviour is plainly malicious and the claim brought without any basis. However, this will not be the norm, and while the UDRP lists factors illustrative of bad faith on the part of a registrant to assist identifying bad faith on their part, no such factors are listed as indicating bad faith on the part of the complainant in the RDNH context. However, this slight lacuna has been overcome by panels, which have stated that bad faith in this context is bringing a claim despite actual knowledge of a legitimate right or lack of bad faith on the part of the registrant, or where it should have been obvious that the complaint had no real prospect of success.
2.5. ICANN dispute resolution policy and WIPO
There is a distinction between a trademark and a domain name which is not relevant to the nature of the right of an owner in connection with the domain name, but is material to the scope of the protection available to the right. The distinction lies in the manner in which the two operate. A trademark is protected by the laws of a country where such trademark may be registered. Consequently, a trade mark 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. The lacuna necessitated international regulation of the domain name system (DNS). This international regulation was effected through WIPO and ICANN. India is one of the 171 states of the world which are members of WIPO. WIPO was established as a vehicle for promoting the protection, dissemination and use of intellectual property throughout the world. Services provided by WIPO to its member states include the provision of a forum for the development and implementation of intellectual property policies internationally through treaties and other policy instruments. One of the most remarkable events in the past, particularly for solving international legal problems originating through the nature of the borderless internet on the one hand and intellectual property rights of some users on the other hand, was the foundation of the ICANN (Internet Corporation for Assigned Names and Numbers) in 1998 as a worldwide internet administration and the introduction of UDRP (Uniform Domain Name Dispute Resolution Policy) in 1999 for effective and cost saving international domain name disputes.
2.6. Uniform Domain Name Dispute Policy
ICANN implemented the Uniform Domain Name Dispute Policy (UDRP) in 1999, which has been used to resolve more than 20,000 disputes over the rights to domain names. The UDRP is designed to be efficient and cost effective. In 2010 alone around 2696 cybersquatting cases were filed with the WIPO Arbitration and Mediation Centre under this Policy involving 4370 domain names across 57 countries, according to WIPO‟s official website. The UDRP is designed to solve disputes which usually arise when registrant has registered a domain name identical or confusingly similar to the trademark with no rights or legitimate interests in the name and has registered and used the domain name in bad faith Conflicts between two trademark holders or between a trademark holder and a registrant with rights or legitimate interests are not the concern for UDRP.
Particularly, the UDRP does not apply if the registrant has been known by the name, has used it in connection with a bona fide offering of goods or services, or has used it for a legitimate non-commercial purpose. The UDRP proceedings are conducted by the ICANN approved service providers. There are presently four approved dispute resolution service providers that are accepting complaints are World Intellectual Property Organization (WIPO), National Arbitration Forum (NAF), Asian Domain IJSER Name Dispute Resolution Centre (ADNCRC) and Czech Arbitration Court (CAC). Each provider follows the UDRP as well as its own supplemental rules. Under this procedure, neutral persons selected from panels established for that purpose would decide the dispute. The procedure takes approximately 45 days, costing about $1000 in fees to be paid to the entities providing the neutral persons and is handled mostly online.
3. Cybersquatting effectual Position In India
In India, there is no legislation which explicitly refers to dispute resolution in connection with cybersquatting or other domain name disputes. The Trade Marks Act, 1999 used for protecting use of trademarks in domain names is not extra-territorial, therefore, it does not allow for adequate protection of domain names. The Supreme Court has taken the view that domain names are to be legally protected to the extent possible under the laws relating passing off. In India, this law was evolved by judges and all the High Courts were of unanimous opinion, which has been picked out and approved by the Supreme Court. Indian Laws: Ground for Action The Satyam Infoway Ltd vs. Sifynet Solutions (P) Ltd case nailed the Indian domain name scenario way back in 2004 stating that- “As far as India is concerned, there is no legislation which 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 protected within India.”
In absence of the proper cyber laws the remedy that prevails is an action for passing off and the infringement of trademarks. Even then the Indian Courts have very active in providing relief in the case of Cybersquatting. Although it is another fact that the due to the increasing number of cases people have started resorting to alternate methods of dispute resolution in this field specially Uniform Domain Name Dispute Resolution Process (UDNDRP) devised by the International Corporation for Assigned Number and Names (ICANN) and World Intellectual Property Organization (WIPO) Arbitration and Mediation Council, instead of relying on the formal legal procedure. It must be notedthat the Trade and Merchandise Marks Act, 1958 (the “TM Act”) and the Information Technology Act, 2000 of India do not deal with domain name disputes.
Indian Courts, therefore, apply the rules of “passing off” with respect to such disputes. The action against passing off is based on the principle enunciated in N. R. Dongre v. Whirlpool wherein the courts said that “a man may not sell his own goods under the pretence that they are the goods of another man.” Passing off is a species of unfair trade competition by which one person seeks to profit from the reputation of another in a particular trade or business. A passing off action is a direct subject matter of the law of tort or common law of right, i.e. case law. The Act does not define passing off, but only provides the rules of procedure and the remedies available.
However the Trademark Act is devoid of any provision within purview of which the offence of Cybersquatting could be brought. Therefore in the absence of any such provision the Indian Courts have been following the principle of passing off and the guidelines and the policies of the WIPO and the UDRP.The Indian Courts have relied on the definition given by the Delhi High Court in Manish Vij vs. Indra Chugh wherein Cybersquatting has been defined as “an act of obtaining fraudulent registration with an intent to sell the domain name to the lawful owner of the name at a premium”.
3.1 INDIAN DOMAIN NAME DISPUTE RESOLUTION POLICY
“.in” is India’s Top Level Domain (TLD) on internet. The IN Registry has published the IN Dispute Resolution Policy (INDRP) which is a mandatory dispute resolution procedure. India does not subscribe to UDRP. However, INDRP has been formulated in lines of UDRP, internationally accepted guidelines, and with the relevant provisions of the Indian IT Act 2000. INDRP sets out the mechanism to resolve a dispute between the Registrant and the Complainant, arising out of the registration and use of the .in Internet Domain Name. INDRP is strikingly similar to the UDRP and constitutes the same essential premises for filing a complaint. INDRP makes it obligatory on the Registrant to submit to arbitration proceeding in an event a complaint is brought against the same with ‘.IN’ Registry. Upon receipt of complaint the .IN Registry shall appoint an Arbitrator out of the list of arbitrators maintained by the Registry. Within 3 days from the receipt of the complaint the Arbitrator shall issue a notice to the Respondent.
The Arbitrator shall then conduct the Arbitration Proceedings in accordance with the Arbitration & Conciliation Act 1996 and also in accordance with this Policy and rules provided there under. Once the arbitrator is appointed the .IN Registry shall notify the parties of the Arbitrator appointed. The Arbitrator shall pass a reasoned award and shall put forward a copy of it immediately to the Complainant, Respondent and the .IN Registry. The award shall be passed within 60 days from the date of commencement of arbitration proceeding. In exceptional circumstances this period may be extended by the Arbitrator maximum for 30 days. However, the Arbitrator shall give the reasons in writing for such extension. Evidence of registration and use of domain name in Bad Faith has to be ascertained by the Arbitrator taking in to consideration Para 6, INDRP; but without any limitation. These considerations are analogous to those provided under Para 4(b), UDRP. The Arbitrator shall ensure that copies of all documents, replies, rejoinders, applications, orders passed from time to time be forwarded to .IN Registry immediately for its records and for maintaining the transparency in the proceedings .
The policy provides that no in-person hearing is to take place (including hearings by teleconference, videoconference, and web conference), unless the Arbitrator determines, in his sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the Complaint. The remedies available to a Complainant pursuant to any proceeding before an Arbitrator is limited to cancellation of the Registrant's domain name or the transfer of the Registrant's domain name registration to the Complainant. Costs may also be awarded by the Arbitrator. The INDRP prohibits a Registrant from transferring a disputed domain name registration to another holder in case an Arbitration proceeding is initiated pursuant to this policy, for a period of 15 working days ("working day" means any day other than a Saturday, Sunday or public holiday) after such proceeding is concluded, or, while the dispute is pending, unless the party to whom the domain name registration is being transferred agrees, in writing, to be bound by the decision of the court or arbitrator.
3.1.1 Significant Cases
Bloomberg Finance L.P., (BF) vs. Mr. Kanhan Vijay
The most important case of the INDRP Arbitration Panel is that of the 2009 case of Bloomberg Finance L.P., (BF) vs. Mr. Kanhan Vijay. In this case, the domain name in question was www.bloomberg.net.in which was registered by Bloomberg Finance L.P. which was also the registered proprietor of the services mark BLOOMBERG in India and abroad, with rights from 1986 as a trade mark, trade name and corporate identity establishing widespread reputation and goodwill. The complainant had registered various domain names incorporating "Bloomberg" as the name and therefore was the prior adopter, user and registrant, although it had no reason to adopt or register www.bloomberg.net.in as domain name. The respondent’s bad faith intent was established by the Panel stating that there was a lack of due diligence or evidence on the part of the respondent towards their claims and that the domain was to be transferred to the complainant accordingly.
FIR in Cyber Squatting: Misinterpretation of IT Act
In the recent past, a FIR has been lodged by the Economic Offences Wing of the Delhi Police on the complaint of the President Secretariat citing a copy of an article published in the Economic Times, dated November 29, 2009, which allegedly pertained to the fake use of the names of politically powerful personalities as a domain name on websites. It was further alleged in the said complaint that a website exists with the domain name www.pratibhapatil.com having no connection with the Hon’ble President, which allegedly hawks financial advisory, DVD rentals, education insurance, lingerie and much more. The police made some preliminary enquiry and it was found that the website was got registered by one Joy Antony, Kala parambath, Pathadam House, Kunnappi Hissey Puliyanan, P.O. Angamaly via Kochi, Kerala. The website was found to be hosted from Germany. The website has been got removed from the internet. There was no content on the website. Only some links of the other websites were given on the website. However, when the prosecution opinion was sought on the matter, the Ld. Chief Prosecutor opined that prima facie offence u/s 66/66A IT Act and Section 469 Indian Penal Code is made out. The FIR u/s 66/66A IT Act and Section 469 Indian Penal Code was registered by the EOW promptly acting on the aforesaid complaint and the opinion of the Public Prosecutor.
The opinion simply was that a domain name containing the name of the President of India was registered having no content in it except some links of the other websites. There is no offence made out and Sections imputed under the Information Technology Act and Indian Penal Code is gross abuse of law and wastage of time by the investigating agencies that should devote its productive time to curb crimes and do some meaningful investigations into the genuine complaint registered as FIR. The Sections imputed in the aforesaid FIR has no connection with the allegations as mentioned in the FIR.
4. An approach for Squatting away these squatters
I have devised a three pronged approach which would go a long way in squatting away these squatters:
4.1. New legislation
There is an urgent need to draft a new legislation in India which would expressly deal with domain names. The courts have already pushed the envelope by giving a wide interpretation to the provisions under Trademark law to account for domain name disputes. There is no adequate protection provided against cyber squatters, this is clear from the wide ranging prevalence of this menace still. The miscreants devise new methods to dupe and extort money from the big corporations. The lack of a direct law furthers their cause as they can easily find loopholes in the law which would exonerate them from any trial. The trademarks law and the IT Act which are relied upon by the courts both have their shortcomings and fall short in affording protection. The Trademarks law has not been able to deal with the range of disputes constantly emerging in the cyberspace.
Furthermore, resorting to this archaic law would mean a lot of time being wasted in the trial courts and in the virtual world where time is of utmost essence, this is very harmful leading to the extinguishment of the right claimed. The Information Technology Act regulates mostly cyber-crimes and electronic signatures and it does not say much about Intellectual Property Rights, specifically in respect of internet related activities. The act is also silent about cybersquatting which is growing in prevalence by the day as has been Cyber Squatting: Modern Day Extortion. In many situation the Indian courts have to seek guidance from English and American laws and decision. It is thus imperative for India to legislate a law like ACPA of US and which is in sync with the standards laid down in the UDRP.
4.2. Independent Adjudicatory Body
The US national arbitration forum and the Czech arbitration court should be taken as examples and a parallel body needs to be set up in India. This body shall only decide cases relating to domain name disputes especially cyber-squatting within the domains of India. Such an institution shall prove less time consuming more expedient and more effective as the parties will not have to wait to get onto a docket, and then keep on waiting for the final decree and other paraphernalia associated with due process of law to take place.
4.3. Revamping INDRP
The INDRP needs to be given the effect of law, rather than just being a guiding policy. The problem with it being a policy is that it is not mandatory to follow, hence the regime is lax.The INDRP which is drafted on the lines of the UDRP, still has many dissimilarities which impede its application and effectiveness. Thus the inconsistencies viz., arbitration procedure under INDRP is fraught with unnecessary procedural norms, they both differ on the domain names in many places. Thus the need of the hour is to make it more compliant with UDRP and give it the shape of law.
I would also like to suggest that all arbitration decisions of the WIPO Arbitration and Mediation Centre should be made binding in India under the Arbitration and Conciliation Act 1996. An amendment can be made in the Information Technology Act 2000 stating that WIPO decisions can go to appeal before the High Court just like other arbitration decision considered as decrees under the Arbitration Act and execution petitions can be filed to enforce them accordingly. This way ICAAN and WIPO decisions will ease the overburdened Indian court system. The courts in India have decided many cases related to cybersquatting. Cybersquatting has opened the eyes of governments across the world and has prompted them to look into this phenomenon in a serious manner. Finally, in the light of still ever-increasing rate of cybersquatting in India and other countries, it is important to make a concerted effort by registrars to address and curb it at the registration level itself by looking into the claim of the person and doing some back ground checking on it rather than just blindly allocating domain names. This should go a long way in controlling cybersquatting.
4.5. Other Suggestions:
· There must be a definition of ‘cybersquatting’ in the relevant acts.
· The Trade Mark Act, 1999 must also make an accommodation for a domain name to be considered as a mark that is capable to distinguishing one good/service from another.
· A new law should be passed by the parliament that will cater directly for cases of cybersquatting.
· There should be an option of obtaining statutory damages in the new law.
· As a preventive measure, the registrars, courts and international organizations like WIPO should pool in resources to prevent the registration of domain names that are registered trademark without proof of ownership of the mark.
· Cybersquatting must be prevented at the domain name registration level by scanning new domain names in reference to existing domain names to find out deceptive similarity.
· Penalty should be imposed on repeat offenders.
5. United States’ approach to cybersquatting
5.1. Pre Anti-Cybersquatting Consumer Protection Act (ACPA), 1999
The cybersquatting law was quite unclear prior to the ACPA got enacted. There was no explicit provision that dealt cybersquatting. Before the ACPA was enacted, trademark owners relied heavily on the Federal Trademark Dilution Act (FTDA) enacted in 1995 to sue domain name registrants. The intent to curb domain name abuses. The legislative history of the FTDA specifically mentions that trademark dilution in domain names was a matter of Congressional concern motivating the Act. The two cyber-squatting landmark cases which played pivotal role in the development of cyber-squatting law in the US were: Intermatic v. Toeppen and Panavision v. Toeppen.
In the former case, the court observed that the respondent’s conduct caused trademark dilution since the registration of the domain name www.intermatic.com lessened the capacity of Intermatic to identify and distinguish its goods and services on the Internet. In the latter case, the court ruled in the favour of the plaintiff and stated that the respondent had registered domain names with the names www.panavison.com and www.panaflex.com where the defendant had put pictures of Pana valley which infringed on the plaintiff’s rights since the plaintiff had business of tourism sourcing its customers from the internet. These two cases gave an idea of the vulnerabilities of domain names that a trade mark owner who wants to make a presence in the virtual space, must keep in mind and be vigilant of. Not only this, these two land mark judgments aided in drafting the “Anti Cybersquatting Consumer Protection Act that was created specifically to prevent trademark infringement in the cyber space.
5.2. Post Anti-Cybersquatting Consumer Protection Act (ACPA), 1999
The Anti-Cybersquatting Consumer Protection Act (ACPA), is an American law enacted in 1999 that established a cause of action for registering and/or using a domain name which is confusingly similar to, or dilutive of, a trademark or personal name.4 The law was made to prevent and dither “cyber squatters” who register Internet domain names containing trademarks with no intention of creating a legitimate web site, but instead plan to sell the domain name to the trademark owner or a third party. 5 The U.S. Anti-Cyber Squatting Consumer Protection Act (ACPA) of 1999 was basically an expansion of the Lanham (Trademark) Act (15 U.S.C.) and was intended to provide protection against cybersquatting for individuals as well as proprietors of distinctive trademarked names. Under the current law, a victim of cybersquatting in the United States has two options:
a)Sue the person under the relevant provisions of the ACPA act, or
b) Go for an arbitration by using the international arbitration system created by the ICANN.
Requirements to claim under ACPA are: a) That the defendant possessed a bad faith to profit from the use of a protected name, and b) That the defendant registered or used a domain name that is indistinguishable or confusingly alike to a distinctive mark or famous mark, or is a trademarked word or name.
6. United Kingdom’s Approach to Cybersquatting
Unlike the United States, the UK has not specifically enacted a law for cybersquatting. The English Courts have dealt with cybersquatting through the 1994 Trademarks Act and through the cases. The UK approach to dealing with cybersquatting was established in the landmark English case on cybersquatting is British Telecommunications Plc v One in a Million 129 Ltd.
In this case, the defendant(s) had registered the following domain names: ladbrokes.com; sainsbury.com; sainsburys.com; marksandspencer.com; cellnet.net; bt.org; virgin.org; marksandspencer.co.uk; britishtelecom.co.uk; britishtelecom.net; and britishtelecom.com. The Court noted at the time that there was no central authority for the Internet and struggled to determine how to decide the case due to the difficulties in dealing with cybersquatting within the trade mark law framework. Namely, the issue that the defendants had not used the domain names in the course of trade in connection with goods or services, but had merely registered the domain names.
The Court eventually conducted a “passing off‟ trademark infringement analysis under 10(3), stating: “the appellants seek to sell the domain names which are confusingly similar to registered trademarks. The domain names indicate origin. That is the purpose for while they were registered. Further they will be used in relation to the services provided by the registrant who trades in domain names”. The Court also noted: 'There is only one possible reason why anyone who was not part of the Marks & Spencer Plc group should wish to use such a domain address, and that is to pass himself off as part of that group or his products of as theirs‟.
Thus in the UK, if one can show a pattern of registering domain names for the purpose of simply parking them or using them to divert traffic to the cyber squatter site, a remedy under “passing off‟ may be available. However, it is clear based on classical trademark infringement elements that the English courts had to really stretch to fit cybersquatting claims into them. For instance, the argument that simply registering a domain name and then parking it would not seem to be use in the course of trade as one is selling or buying anything. However, it is clear that English courts considered the policy implications of letting cybersquatting cases go unpunished, i.e.; the economic harm and social costs incurred by rightful trademark owners, and then determined that they would squeeze cybersquatting into traditional trademark law. It is clear though at this point, the One-in-a-Million analysis is the standard British case by which cybersquatting claims are resolved.
7. Germany’s Approach of Cybersquatting
Similar to the United Kingdom, Germany has not passed a specific statute to cover cybersquatting claims. Also like the United Kingdom, German courts typically handle cybersquatting cases through the trade mark law principles. (Specifically under the 1995 Trade 130 Mark Act). Thus, typically in Germany the elements laid out for trade mark law above in section 2.5 will be applied to a domain name infringement case. Furthermore, protection may be available under section 12 of the German Civil Code (BGB) in cases where “a company’s business function is affected as a result of the use of its 131 mark outside its normal operational area”. Additionally, a party seeking protection could assert a claim under the German Act 132 against unfair competition. However, domain name claims under this Act have been minimal to date because generally aspects of competition are already covered by trade mark laws. In addition to competition law and trade mark law, the general provisions of civil are used to fill gaps in protection, particularly the general prohibition against intentional damage contrary to public policy under section 826 of the German 133 Civil Code”. It should also be noted that Germany has also implemented the Trade Mark Harmonization Directive, and thus is an avenue for complainants to consider.
Cyber squatters have robbed businesses of their fortune. Thus looking at the current situation prevailing in the world, it can be safely assumed that cybersquatting is a menace, a menace which has no boundaries. On account of the problems highlighted and the various jurisdictions looked into, there is an urgent need to draft a new legislation in India which would expressly deal with domain names.
It is understood that goodwill and reputation of a trademark is required to be protected online and so as the need to protect the consumers from falling in the trap of misrepresentations and frauds on the world web. But at the same time, consideration is to be given to the fact that there can be an honest owner of a domain name related to one’s trade and he might not be financially capable of sustaining a trademark infringement battle with a multinational over the domain rights. So, the requirement of the criteria of legitimate interest or right in the domain names is required to be applied carefully so as to ensure that an honest owner is not deprived of his domain name and the right to use the same putting his goodwill and reputation at threat for the convenience of another.