File Copyright Online - File mutual Divorce in Delhi - Online Legal Advice - Lawyers in India

Cybersquatting And Understanding Its Legal Alternatives

Today we are living in a digital world so we can't avoid the use of internet from our day today life especially in this covid pandemic situation. Earlier Internet was used for governmental purpose only but as a result of the growth of science and technology now its part of our daily life communication, health-care and also platform for banking activities and dispute resolution.
Cyberspace is a virtual computer world that works on TCP/IP protocol.

The term cyber space was first chased by William Gibson in his book " Necromancer".. Cyber space does not have any physical foundation but the virtual effect in cyberspace makes a tremendous effect in this real world. Day by day cyber crimes also increasing cybersquatting is one of such offence against intangible property like domain name.

The internet is a unique platform it makes communication world widely. It is the network of computers. Every computer connected to this network have a unique electronic address called internet protocol(IP) address. IP address are numerical in nature and it becomes veritably delicate to remember.

The convenience a word ABC grounded system called a Domain name system(DNS) was introduced. It is akin to trademark which helps to identify the particular goods and services. Most of the businessers use their trademark as domain name. Some people recognized the profitable prospect of such domain name and they started to registering famous trademarks as domain names for profit making. The original trademark owners have to pay huge amount of money to buy the domain name back from the squatters. Its known as the cybersquatting. Its a big hindrance to e-commerce and force the companies to protect their company's good will.

Cyber law is fast evolving into its realm. In India there is no specific legislation to punish cybersquatters. The cybersquatters creates confusion in the mind of customers and there by makes profit from it.

The paper deals with the following:
  • Domain name and significance
  • Functional equivalence of domain name and trademark
  • Existing laws in regulating cybersquatting
  • International response towards cybersquatting

Domain name

Today internet is similar to oxygen for this tech world. Business entities started to flourishing their activities on internet. Those domain name get more significance. Domain names are similar to trademarks and it serves the same function of trademark in online medium. Domain names are identical to telephone numbers it needn't be unique only within that area code. Domain names are easy to remember there by it makes internet user friendly and its hierarchical level allows the internet to operate efficiently.

The domain name does not change even when a person moves from one place to another. One can access a website with the same name from any part of the globe.

Domain name consist of two parts a name and extension. Registration and quick yearly renewal is essential because there is a chance to getting it registred by cybersquatters. In Card service v M. C. Gee the court held that domain names are more than just address, if the customers are unsure about the company's domain name will often guess the company's name as domain name.

Registration of domain name

Earlier the Internet Assigned Numbers Authority (INA) allocates IP address. Its followed by Network Solution Ink (NSI). In 1998 Internet Corporation for Assigned Names and Numbers(ICANN) established and it superseded IANA. It maintains high standards and procedure for allocation of domain name and they follows the first come first serve policy.

Usually domain names consist of two parts with the separation of dot and it is to be read from left to right. Domain name at the extreme right side of the dot is called Top Level Domain (TLD) and the other one is called Second Level Domain (SLD). If there is anything left to this SLD then its known as Sub Domain(SD). All these three parts comprise together to form a domain name.

For example the domain name law .micro world .com, here .com is the TLD, micro world is the SLD and law is the SD. The Top Level domain names are also two types, Generic and Geographic. The generic domain names are international in nature and it describes the type of organizations which it use. The .com, .edu, .org, .net, .gov, .int, and .mil are some them used to denote the commercial use, educational institutions, miscellaneous and non profit making organizations, network providers, governmental organizations international treaty organizations and defense respectively. Generic TLDs are of two types, Open Generic TLDs and Restricted Generic TLDs.

Open generic TLDs is available to any person and can be registered at any of ICANN's accredited registrars. .com, .org, .net etc are some of them. Restricted Generic TLD is like .mill, .int, gov etc are not available to the public its exclusively for the governmental bodies. Generic domain names are unique to the entire world and it is issued by the Network solutions Inc as part of the InterNIC.

If anyone wants to register the domain name they have to fill the forms available in the official website of InterNIC and full fill the formalities. Geographical Top Level domain names with two letter code like .in (India), .fr (France), .aus (Australia), .uk (United Kingdom) are assigned to various countries Each country has an agency called Network Information Centres for the registration of geographical domain names and it have its own registration policy. Usually persons working in such nations will get such geographical TLD's.

In 2001, ICANN introduced seven following new domain name extensions:
  • .aero stands for air - transport industry,
  • .museum for museums,
  • .coop for cooperatives,
  • .biz for business,
  • .info for unrestricted use,
  • .pro for all professionals, and
  • .name for registration by individuals.
     
ICANN also introduced a policy of Internationalized Domain Name in local language and scripts like Arabic, Devanagri etc. which are encoded by the Unicode standard.In the recent past there have been developments to allow the registration off domain name written in non ASCII characters.

The domain name can be registered for a minimum period of one yer or upto ten years. Anyway at the time of expiry they have to renew it otherwise he will lose his right over it and it will be available again for another to register.

Domain name and trademark sounds similar but there are number of differences. There is functional equivalence, they almost perform the same function but it is in two different environments one in the virtual world like cyberspace without definite boundaries and the other is in the real world with boundaries. Generally registration of trademark is at national level and for commercial use. So that persons in different nations can have same trademark for different goods and services.

Most of the time the trademark denotes any particular products of that company. Domain name registration is at global level and no two companies have the same domain name. Domain name stands for the entire company and not for any particular product. Domain name need not for commercial use and it cannot be differentiated by using different font styles or capitalisation of letters.

Rights of Registered Trademark Owner

The registered owners of trademark enjoys certain rights. As per section per section 28 of the Trademark Act, the registered proprietor enjoys the exclusive right to use the mark in relation to the goods and to obtain relief under the Act. If a trade mark which is continuously used by a person prior to the registration of a mark which is similar or identical to the registered trademark then the registered trademark owner cannot restrain the use of such mark by the prior user.

If two or more persons register the same or identical trademarks, then in such a situation no one can claim exclusive use of the mark against other. This exception is applicable to those particular registered goods and not for all goods. The trademark owner can assign the right of claim in trademark by execution of assignment deed writing.In Ramappa V Monappa the court held that the mere permission to use trademark will not amount to assignment of trademark.

The registered owner can make corrections with the leave of the registrar. The ragistrar have to advertise the application in the proper manner , if anyone raise objections then he has to decide it in fair manner. The holder of trademark has the right to obtain legal relief like damages or injunctions and also prevent unauthorized use through passing off action. These rights are subjected to limitations. The right to seek legal remedy against infringement is subject to limitations prescribed in section 30 of the Trademark Act, 1999.

Trademark Rights Applicability In Domain Name

Sometimes the well-known trademarks are used as domain name. Like trademark, domain names owner can enjoy all the rights available to a registered domain name owner and it include the right to sue for infringement and passing off. But the judicial proceedings are time consuming one so they can use the ADR mechanism like Arbitration and mediation, if there is any agreement in this behalf.

The trademark infringement laws and treaties are also applicable to the domain name disputes. The unauthorized use of such trademarks or domain name can result in loss of revenue for the owners, as well as loss of expected quality and dependability by the consumer. In spite of that it will question the credibility of that particular owner.

Cyber Squatting

The domain name registration system follows the first come fiGrabserved policy. So once a person registers a domain name similar to trademark, no other person can register it later. In cybersquatting the squatters register a domain name of important brands with the intention of selling off the same to the real owner for monetary consideration and it also known as domain name squatting. Cyber squatters also known as Cyber Pirates and Domain Name Grabbers.

In Manish Vij v Indra Chugh Case the court held that "...an act of obtaining fraudulent registration with intent to sell the domain name to the lawful owner of the name at a premium..." Many multinational companies like Tata, Bennett & Coleman, Fry's Electronics, Hertz, MC Donald's Coke, Nasdaq, Viacom, MTV, Levi's, B.Dalton, Readers Digest and Avon etc. were considered to be thet victims of cybersquatting.

India has almost 699 million of internet users. According to its latest report, the World Intellectual Property Office (WIPO) handled 4,204 cybersquatting cases in 2020 a nearly 14% increase over 2019.The major sectors affected were banking & finance, biotechnology & pharmaceuticals and internet & IT.One of the earliest judicial reference to cyber squatting is , Avery Dennison Corporation v Jerry Sumpton.

The case decided before the arrival of Uniform Domain Name Dispute Resolution Policy (UDRP). Intermatic v Toeppen and Panavision V Toeppenwere the focal cybersquatting cases and were the lead to the development of cybersquatting case law and leading to the drafting of the Anti-cybersquatting consumer protection Act in 1999.

Elements of Cyber Squatting

While analyzing the ACPA and UDRP, the plaintiff have to prove that the defendant with bad faith and intent to make profit registered, trafficked in, or used a domain name and it is identical to trademark which is entitled to protection.

High profile cybersquatting cases involving celebrities

Tome Cruise case-tom cruise went to the WIPO in 2006 with his case against Jeff Burgar who had owned the domain TomCruise.com for over 10 years. The domain redirected users to his site celebrity 1000.com which earns money with third party advertisements. Jeff Burgar was a known notorious cyber squatter. In this case Tom cruise was successful in having the domain name transferred to him.

Donald Trump case- the TRUMP trademark is distinct trademark owned by Donald Trump. He claimed that trademark laws were broken when the company 'Web-adviso ' registered TrumpIndia, TrumpBeijing, TrumpAbudabi and TrumpMumbai. Trumps lawyer were able to prove their case and court ordered Webadviso to pay $3200 in compensation . in addition ordered to transfer the four domains to TrumpJennifer Lopez succeeded in a law suit filed against a website posted indecent photos, videos and fake news about her on Jennifer Lopez.biz, with intend to profit from the sites.

Paris Hilton registered parishilton.com,soon she found that there was lots of website using her name. Such as paris.org, parishiltonsunglasses.com etc. it is an instance of cybersquatting.
The following are some of Indian cyber squatters who messed with Face book, Google and other biggest names.

The guy who owned Google .com for a minute:- Sanmay Ved,former Google employee owned Google .com for a minute in September 2015. He purchased the domain name for $12 when it was available for sale. But iorder to repurchase it from him Google has to pay huge amount.

Face book CEO Mark Zuckerberg paid $700 to Kochi's engineering student: - Amal Augustine, a final year engineering student registered the domain name maxchanzuckerg.org which was bought by Facebook's CEO for $700.

Categories of Cyber Squatting

Classic cybersquatting. It is the simple registration of a domain name established on a trademark with the intention to sell it to the real trademark owner and there by make profits.

Typo squatting It's one of the most common type of squatting also known as URL hijacking. It depends upon the chance of occurring typographical errors while entering domain names into their web browsers. So the squatter register domain names containing variant of popular trademarks and they also add advertisements to collect money. Typo squatters use such fake website to compel legitimate website owners to buy the cyber squatted domain names, generate more web traffic, and spread malware.

The typo squatting may be following:
  • Failing to put "dot" in the domain name: www.example.com;
  • A common misspelling of the intended site: exemple .com
  • A differently phrased domain name: examples.com
  • A different top-level domain: examples.org

Renewal snatching
The trademark may be registered for a particular tenure and the owners may forget to re-register the domain name. The squatters may utilities this chance and snatch the domain name. It's called "renewal snatching" and the squatters are known as drop capture. If the squatters re-register the name with the link of a duplicate website and confuse the users that they are using the original one then its called identity theft.

Name Hijacking::
Sometimes the squatters register the name of famous people and celebrities as domain name and they make profit from the web traffic related to the individual. Pop singer Madonna's name was used to create a pornographic site Madonna.com come under the purview of name hijacking.

Reverse Cybersquatting:
The squatter pressurise the domain owner to transfer the domain name to a third party, who has registered a similar trademark.its a tort as well as an unfair trade practice.

While examining all these we can say that it is generally criminal cyber squatting apart from this there are also some other forms of squatting.

Protective domain squatting:
Companies register domain names similar to their brand names to protect it from cybersquatting and they have to pay for it so its a legitimate form of squatting. it is also known as psedo cybersquatting. These are also called "blocking registrations", the target of such registration is to prohibit the legitimate right proprietors from using the domain names.

Unintentional Domain Squatting:
This is accidental cybersquatting. Sometimes persons may register a domine name identical to existing trademark and cause confusion to the customers . So the trademark owners have to initiate proceedings to buy it from them. Microsoft v Mike Rowe Soft case related to this aspect. Domain pranking, domain name ransom, affiliate marketing, hit stealing and scamming are the common ways of profit making methods of the dominer.

Identification of victim of cyber squatting
Before registering a domain name we have to check that whether it is already registered one. For that we have to enter the domain name in the address bar and press enter key. If it appears that "this domain is for sale , under construction or can't find the server" or end up on a fully functioning website with advertisement for products and services then there is a chance of cyber squatting and inorder to find out the domain name holder we can use whois.net and using it's "WHO is lookup" feature.

Remedies Available against Cyber Squatting: International Scenario:

There are several options available to the victims, as an initial step they can take an in expensive approach like sending a cease and desist letter to the cyber squatter. If this approach failed they can move to further proceedings like:
  1. Apply for arbitration procedure under ICANN.
  2. Initiate suit against the domain name owner under the Anti-cybersquatting Consumer protection Act or ACPA
  3. Class Actions against Cyber Squatter
  4. Concurrent claims
In 1999 ICANN introduced the Uniform Domain Name Dispute Resolution Policy (UDNDRP) , as per the policy the victims have to prove that the domain name is confusingly identical to the trademark of the complainant, the domain name owner has no right to register it and he has been using it with bad faith.

As per Paragraph 4(b) of the UDRP Policy if the dominer registered it for profit making by selling or with the bad intention to prevent the true owner from using it and there by disrupt his business or by creating similar mark cause confusion in the mind of customers and there by make profit are considered to be the circumstances of bad faith registration.

As per UDRP the victim can set the law in motion by institution of a complaint to any one of the seven ICANN approved dispute resolution service providers like:
  • Asian Domain Name Dispute Resolution Centre (ADNDRC)
  • The World Intellectual Property Organisation (WIPO)
  • The National Arbitration Forum (NAF)
  • E-Resolution
  • The CPR Institute for Domain Dispute Resolution
  • Arab Center for Domain Name Dispute Resolution (ACDR)
  • The Czech Arbitration Court Arbitration Centre for Internet Dispute

The advantage of UDRP is that it provides expert panel at very cheaper cost and resolve the dispute within 60 days. But they can't award any monetary compensation. The available remedies are the cancellation of the domain name or the transfer of the disputed domain name to the complainant. Another disadvantage is that the decisions are not binding and there is no appeal to correct the erroneous decision.

Multiple remedies are available under ACPA the court may allow the squatter to keep the domain name if it proves that he had legitimate reasons to register the domain name and its not for profit making. otherwise the court can order to retrieve the domain name and allows for damages including court fee. The ACPA allows a court to grant preliminary injunction and also directs to transfer or cancel of domain names.

The ACPA offers statutory damages ranging from $1,000 to $10,000 per domain name. The ability to procure in rem jurisdiction, a plaintiff no longer has to establish personal jurisdiction so long as he can prove the property can be properly included. Like others methods it also have some demerits like not competent to establish jurisdiction, proceedings are time consuming and costly one.

ACPA And UDRP: A Comparison

While comparing the ACPA and UDRP the ACPA was mainly creaed to provide remedies to the trademark owners against trademark infringement. For that the plaintiffs have to prove the bad faith intent of the defendant. But UDRP does not require that the domain name at issue be distinctive or famous at the time of registration. The ACPA's applicability is confined to the United States only but the UDRP's have world wide application.

UDRP claims are normally filed before the national Arbitration forum or the World Intellectual Property Organisation and in contrast ACPA claims are filed in federal court. UDRP requires that the domain name registration is to be done as per the rules to avoid and weed out the cyber squatters. UDRP also established an effective speedy and low cost administrative procedure to this specific category of disputes.

Uniform Domain Name Dispute Resolution Policy include only limited remedies, either transfer the domain name to the complainant or cancel the domain name. The ACPA allows the monetary damages and statutory damages additionally it can allow the attorney fees. While comparing all this its better to opt arbitration under ICANN because there is far less procedural and evidentiary requirements so its quite inexpensive and faster as compared to federal law suit under ACPA.

Legal Scenario in India
In India trademarks laws are used to address domain name disputes. The domain name concept is quite new to the indian scenario. Domain name is nothing its the address of a website which helps user to easily identify the site and enable consumers to connect to the internet. There is an international registration authority called Internet Corporation for Assigned Names and Numbers (ICANN), with limited dispute resolution power.

Registration of Domain Name in India
India has established its own registry called .IN Registry under the authority of NIXI (National Internet eXchange of India). The 1st January 2005 to 21st January 2005 were considered to be the sun rises period of India's top level domain".in". The controversies relating to ".IN "domain "names are settled in accordance with the .IN Dispute Resolution Policy (INDRP) and the INDPR Rules of procedure. It is a mandatory dispute resolution procedure.

Remedies for Domain name Disputes:
In India the victims can fight against cybersquatters by:
  • Addressing cease-and-desist letters to the cyber squatter,
  • Initiating arbitration proceedings under ICANN's rules,
  • Filing a lawsuit in federal or state courts.
Apart from this remedy of infringement and passing off are available under the Trademarks Act, 1999. To claim remedies of infringement under the trademark Act the trademark must be a registered one but for passing off remedies it's not required to be registered.

In US there is Federal Trademark Dilution Act, 1995.In India the doctrine of dilution have applied in some cases. Caterpiller Inc V Mehtab Ahmed is one among them. The Act of dilution provides protection to those marks which is well recognized one at the same time helps to preserve uniqueness and distinctiveness of their trademarks. In order to avail protection the plaintiff must shows that their trademark is famous and the defendants acts have a chance to reduce or weaken the strength and identification value of the mark.

The Indian courts have not applied this doctrine in resolving the disputes relating to cybersquatting, because as per the doctrine the mark in dispute is to be famous. The action against cyber squatters in such cases could prevail only if the mark were famous. Thus the Indian courts preferred the United Kingdom's approach and have applied the doctrine of passing off to resolve cases of cybersquatting.

Yahoo Inc. v/s Aakash Arora &Anr. is considered to be the first case related to cybersquatting, the defendant in India who register a domain name yahooindia.com and used Yahoo India as trademark which is similar to US based yahoo Inc. Not only the domain name but also the contents of the website Yahooindia .com was almost near to yahoo Inc. The High Court of Delhi passed a restraining order and also observed that the domain names requires the same protection available to the trademarks and for that trademark laws can be made applicable in this virtual world.

Indian Legislative Response Towards Cyber Squatting

There is no specific law related to cybersquatting but india use some provisions of the existing laws to address it. Section 66 ,66A of IT Act, section 405,406, 420, 468, 469 of f IPC, and section 73 of the Indian contract Act, 1872 are some of them. Apart from these sections the consumer protection Act, 2019, Trademark Act 1999 and the Limitation Act, 1963 are also applicable. As per the Limitation Act the period of limitation for filling of a suit in terms of section 134 of the Trade Marks Act is three years from the date of impugned act of infringement or passing off.

International Treaties On Cyber Squatting

The Paris Convention, Madrid protocol, Trips agreement, European community's first council directive and trademark law treaty are examples of international treaties on cyber squatting.
The paris convention of 1883 is one of oldest and prime international treaty for the protection of intellectual property. Article 6 and 10 are applicable to cybersquatting.

As per Article 6 members are prohibited from the use of, refuse to register, or cancel the registration of any symbol where use is liable to confusion with a mark that is well known in that country for use on identical or similar goods. Article 10 provides effective protection against unfair completion. The Act defines an unfair competition as" any act of competition contrary to honest practice in industrial or commercial matters". As per this definition cybersquatting is unfair competition.

Madrid protocol is based on trademark and administered by the World intellectual Property Organisation (WIPO) and it provides international registration and protection. One of the advantages is that trademark owners can protect their trademark by filing a single application in single language along with the prescribed fee according to this protocol an owner of a trademark can protect the trademark in 118 countries along with the European Union by filling a single application, in single language, with a common set of fees, in only one currency.

If an applicant wishes to use the Madrid system, then he must apply for the trademark first in the national or regional trademark office before thinking of obtaining an international protection. International registration made by utilizing the Madrid system produces the same benefits as in each contracting parties designated by the applicant. WIPO settle the cybersquatting issues through arbitration. The Madrid protocol helps to register domain name internationally and ensure international protection to the domain name and helps to prevent cybersquatting internationally.

The World Trade Organisation (WTO) introduced TRIPS agreement on first January 1995 , provides minimum standards of protections to the intellectual properties like trademarks and domain names. It is enforceable at civil and criminal courts. It defines the type of marks which are eligible for protection.and what are the various rights available to the trademark owners. The rights include copyright and related rights, trademarks, geographical indications, designs, patents, layout designs of integrated circuits and many more.

Apart from this added certain obligation on maters were the existing agreements are silent. The domain name performs the trademarks function in the cyber space. So these rights and protections are also available to the registered owners of domain name. The registered owners have the exclusive right to the domain name it helps to prevent cybersquatting. Even though the TRIPS was negotiated before the e- commerce to an extent it can be used address these cybersquatting like issues.

The European Community's first Council Directive denies bad faith registrations. The Directive requires that registration be denied only when both "bad faith" and a "likelihood of confusion" exists. If the disputed mark is not well known in the European Union, there is little chance of confusion.

Trademark Law Treaty was adopted in 1994 at a WIPO conference in Geneva, with the goal of harmonizing administrative procedures for trademark applications, powers of attorney, assignments, changes of name and address, changes in ownership, and renewals, including liberalizing requirements for legalization and certification of signatures.The TLT applies to trademarks consisting of visible signs.

The major provisions of the treaty include the acceptance of multiclass applications and the issuance of a single certificate of registration for the classes of goods and services under the Nice Classification. The TLT provides rules that are flexible enough for individual nations to adapt provisions to the demand of local issues while affording the maximum possible protection for trademarks.

Conclusion
Cybersquatting is a malicious act that damaging the good will of the reputed domain name and spoil the interest of the consumers who purchase goods and services via the internet. There are different rules and regulations to control the cybersquatting but these laws are not much effective, ACPA is comparatively good one but it also have defects.

So in order to control the cybersquatting issues the states have to develop a proper legislation by amending the existing laws according to the changed circumstances of the society. The registrar must give power to scrutinize the object of domain name registration. It is better to prevent it at the registration level. The main reason for this controversy is the first come, first served policy, so it has to be changed..

The cybersquatting is a technical issue. So it cannot be controlled by using these laws and policies alone. To control these technical issues there must have some technical assistance. Whois.net helps to find out whether the domain name is already registered. The ICANN like agencies must try to develop new applications or software's which helps to the intended domain name registrar to find out whether such intended domain or similar to such name is already registered in the concerned state or at the international level, because the cyber space is a borderless world.

So such techniques must have universal application and it must be very simple to use. There is need for a one cyber legislation which is coordinated to look after cybercrimes in all respects. If the parliament enact any new legislation, they have to avoid the confusion in society that we are applying various legislation and treaties to resolve it.

So have to make a consolidated one with clear definition of cybersquatting, there must be provisions for statutory damages and the increasing cases shows that they have not much fear on this existing punishment so have to provide much more rigorous punishment and also address the repeating offenders.


Award Winning Article Is Written By: Ms.Sreelekshmi.K.K
Awarded certificate of Excellence
Authentication No: MA214567462629-25-0522

Law Article in India

Ask A Lawyers

You May Like

Legal Question & Answers



Lawyers in India - Search By City

Copyright Filing
Online Copyright Registration


LawArticles

Increased Age For Girls Marriage

Titile

It is hoped that the Prohibition of Child Marriage (Amendment) Bill, 2021, which intends to inc...

How To File For Mutual Divorce In Delhi

Titile

How To File For Mutual Divorce In Delhi Mutual Consent Divorce is the Simplest Way to Obtain a D...

Section 482 CrPc - Quashing Of FIR: Guid...

Titile

The Inherent power under Section 482 in The Code Of Criminal Procedure, 1973 (37th Chapter of t...

Facade of Social Media

Titile

One may very easily get absorbed in the lives of others as one scrolls through a Facebook news ...

Sexually Provocative Outfit Statement In...

Titile

Wednesday, Live Law reported that a Kerala court ruled that the Indian Penal Code Section 354, ...

UP Population Control Bill

Titile

Population control is a massive problem in our country therefore in view of this problem the Ut...

Lawyers Registration
Lawyers Membership - Get Clients Online


File caveat In Supreme Court Instantly