CYBER SQUATTING: MODERN DAY EXTORTION1

TABLE OF CONTENTS

Table of Cases……………………………………………………………………….…………...………ii
Table of Abbreviations...………………………………………...……………………..…..…..ii
1. INTRODUCTION ............................................................................................................... 1

1.1 Aims and Objectives ........................................................................................................... 2

1.2 Research Methodology:-................................................... Error! Bookmark not defined.

1.3 Research Scheme:- ........................................................... Error! Bookmark not defined.

2. DOMAIN NAME BASICS ................................................................................................... 3

3. CYBER SQUATTING: MEANING AND ISSUES ............................................................... 5

4. U.S. APPROACH TO THE PROBLEM OF CYBERSQUATTING ..................................... 7

4.1 Significant Case laws.......................................................................................................... 8

4.1.1 Pre ACPA ............................................................................................................... 8

4.1.2 Post ACPA ............................................................................................................. 9

5. THE UNIFORM DISPUTE RESOLUTION POLICY (UDRP) Approach........................ 11

5.1 First Cybersquatting Case (Word Wrestling Federation case): ...................................... 12

5.2 Indian Case Laws under UDRP ....................................................................................... 13

6. INDIAN APPROACH ....................................................................................................... 14

1
Labanyendu Das, Roll no. 2008–34, 9th Semester

i
 Cyber Squatting: Modern Day Extortion

6.1 Indian Laws: Ground for Action ...................................................................................... 14

6.2 Significant Case laws........................................................................................................ 15

7. INDIAN DOMAIN NAME DISPUTE RESOLUTION POLICY ....................................... 17

8. CONCLUSION AND SUGGESTION ............................................................................... 19

8.1 New legislation ................................................................................................................. 19

8.2 Independent Adjudicatory Body ....................................................................................... 20

8.3 Revamping INDRP ........................................................................................................... 20

8.4 Arbitration ........................................................................................................................ 20

9. BIBLIOGRAPHY .............................................................................................................. 22

9.1 Articles, Books & Reports Referred: ................................................................................ 22

9.2 Websites Referred: ............................................................................................................ 23

9.3 Statutes Referred: ............................................................................................................. 23

TABLE OF CASES

American Civil Liberties Union v. Reno .................................................................................... 5

Aqua Minerals Ltd. v. Cyberworld .......................................................................................... 18
Bennett Coleman & Co Ltd. v. Steven S Lalwani .................................................................... 17
Google Inc.v.Herit Shah .......................................................................................................... 18
Hero Honda Motors v. Rao Tella ............................................................................................ 15
Intermatic v. Toeppen .............................................................................................................. 10
Interstellar Starship Services Ltd. v. Epix Inc ......................................................................... 12
Jack In The Box Inc. v. Jackinthebox.Org ............................................................................... 11
Manish Vij v. Indra Chugh......................................................................................................... 7
Maruti Udyog v. Maruti Infotech ............................................................................................. 14
Morrison & Foerster v. Wick ................................................................................................... 11
N. R. Dongre v. Whirlpool ....................................................................................................... 17
Panavision v Toeppen .............................................................................................................. 10
Rediff Communication v. Cyberbooth & Anr ........................................................................... 17
Satyam Infoway Ltd v. Sifynet Solutions (P) Ltd...................................................................... 16
Tata Sons Ltd v. Monu Kasuri & others .................................................................................. 17
 Cyber Squatting: Modern Day Extortion

Tata Sons v. The Advanced Information Technology Association ........................................... 15

Yahoo Inc. v. Aakash Arora & Anr……………………………………………………….... 17

ABBREVIATIONS

 www World Wide Web

 v. Versus
 ed. Edition
 (ed.) Editor
 1. INTRODUCTION
What is in a name! That which you call rose by any other name would smell as sweet!
-William Shakespeare

Shakespeare said, what‟s in a name? Plenty, if it is an Internet domain name. Domain names
can be registered for fun, profit or to be used as an intermediate to help the surfers to obtain
information that they seek on the World Wide Web. Internet domain names have a huge
market of their own. The world witnessing a new change in the field of communications has
created endless new opportunities for the citizens of cyberspace. The growing importance
that the internet has played in the consumers‟ lives and the world–wide change in
consumption habits has turned it into a powerful tool for businesses to promote, advertise,
and sell products and services2. Unfortunately, as with most of the tools, use of internet is
also subject to dishonest and unlawful conduct. Hence resultantly, it is this potential of
domain names to facilitate in business growth that has skewed the way that the legal system
has come to accommodate them in recent years. Initially scholars worldwide debated how to
characterize domain names especially in the context of their relationship with the trademark
law.3 However with the advent of a few specific domain name dispute resolution system
worldwide, this debate has been put to rest at least in the global context. However the
situation in India is still archaic as a proper formula for dispute resolution, though prescribed
in the INDRP, is still not prevalent. The INDRP and its problem will be discussed during the
course of this paper, but for now it would suffice to say that it is just a policy and not an
applicable law per se.

Having said that, there are still various problems which plague the current international
dispute resolution mechanisms. The current dispute resolution mechanisms are focused on the
protection of commercial trademark interests, often to the detriment of other socially
important interests that may be present in a given domain name. If the global information

2
Zohar Efroni, “The Anticybersquatting Consumer Protection Act and the Uniform Dispute Resolution Policy:
New Opportunities for International Forum Shopping?” 26 The Colum. Jour. of Law & the Arts 335 (2003).
3
See Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117, 121-22, 124-33 (D. Mass. 1999), aff'd, 232 F.3d
1 (1st Cir. 2000);Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d 1430, 1432-34, 1436-41
(S.D.N.Y. 1997), aff'd, 152 F.3d 920 (2dCir. 1998); Panavision Int'l, L.P. v. Toeppen, 938 F. Supp 616, 618-19,
621-22 (C.D. Cal. 1996), aff'd 141 F.3d 1316 (9th Cir. 1998)[hereinafter Panavision I]; Jacqueline Lipton,
What's in a (Domain) Name? Web Addresses as Loan Collateral, 2 J. Info. L. & Tech(1999), at
http://www2.warwick.ac.uk/fac/soc/law/elj/jilt/1999_2/lipton

1
 Cyber Squatting: Modern Day Extortion

society continues down the current road of protecting these interests at all costs, other
important social norms relating to Internet use will not have a chance to develop, and the
Internet will become permanently skewed in favor of commercial trademark. It is also to be
noted that even in the realm of purely commercial interests, the current domain name dispute
resolution mechanisms are somewhat lacking. The ACPA and the UDRP (discussed in detail
(infra)) are extremely limited in their ability to deal with disputes between two legitimate
holders of similar trademarks with respect to a corresponding Internet domain name interests.
Thus, society will miss out on the potential to develop the Internet in general and the domain
name system in particular, in new and useful ways.

The malice of cyber squatting has affected many businesses worldwide. Businesses have
fallen prey to so called cyber squatters, individuals who register Internet domain names
containing trademarks of others4.The classic cyber squatting scam works as follows: The
cyber squatter registers an Internet address (known as a “domain name”) 5 that includes
another person's trademark. For example, the cyber squatter might register the domain name
“logitech.com” containing the trademark “Logitech” held by the Logitech Company (a
famous computer peripherals company).6 Thereafter, the cyber squatter tries to sell the
“logitech.com” domain name to the Logitech Company. A company in Logitech's position is
often willing to pay a ransom to the cyber squatter because of the importance of a domain
name in the increasingly Internet-focused business world. This is so because the domain
name directs an Internet user to a particular web site. As a business matter, Logitech simply
has to ensure that someone using the Internet address “logitech.com” would reach Logitech.7

1.1 Aims and Objectives

This study aims to provide an overview of the malice of CYBERSQUATTING. This study
seeks to look at the problem of cyber squatting as a modern form of extortion. The paper goes
onto look into other jurisdictions chiefly United States as that is the harbinger of all major

4
Michael P.Allen, “In Rem Jurisdiction from Pennoyer to Shaffer to the Anticybersquatting Consumer
Protection Act,”11 George Mason L. Rev. 243 (2000).
5
Domain names are the familiar and easy-to-remember names for Internet locations. It is easier to reach a
company's web site if its domain name corresponds to the company's name or leading product. For example,
Ford Motor Company's web site may be accessed at "ford.com."
6
S. Ahmed, Cybersquatting: Pits and Stops, [2010] ILI Law Review 79
7
Supra note 3at 244.
 Cyber Squatting: Modern Day Extortion

internet related legislations. The ACPA, 1999 and the UDRP have been looked into. The
Indian perspectives combined with the current legal framework have been highlighted and the
lacuna therein has been pointed out. The researcher finally has submitted his suggestions
which are basically four pronged to tackle this menace in the Indian context

2. DOMAIN NAME BASICS

Before examining cyber squatting, it is essential to understand the technical background
against which the issues discussed in the paper have arisen. An Internet domain name is an
alpha-numeric mnemonic device that can be mapped onto an Internet Protocol (“IP”) address
to enable users to “surf the Web” more easily than if they had to remember the details of each
IP address they wanted to visit.8 Numeric IP addresses direct a computer to open a particular
page on the World Wide Web, but are relatively meaningless to a human Internet user. On the
other hand Internet domain names, can be easily remembered because their forms are usually
chosen in a manner which relates to the entity whose Web site the person might want to
access: for example, xerox.com for the Xerox Corporation.

In the case of American Civil Liberties Union v. Reno, Judge Mokenna has explained the
Internet address system, as follows: each host computer providing Internet services has a
unique Internet address. Users seeking to exchange digital information with a particular
internet host require the host‟s address in order to establish a connection. Hosts actually
posses two fungible addresses a numeric IP address and alphanumeric domain name with
greater mnemonic potential.9

The Domain Name System (DNS) uses two components: the domain name and its
corresponding Internet Protocol (IP) number. A domain name is the human-friendly address
of a computer whereas an IP number is the unique underlying numeric address, such as
192.91.247.53. 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

8
H.L. Capron & J.A. Johnson, Computers: Tools for an Information Age, 543 (8th ed. 2004).
9
Shine Joy, Domain Name, Cybersquatting and Domain Dispute Resolution, accessed online at
www.legalservices.com on 3 November 2012.
 Cyber Squatting: Modern Day Extortion

Internet10. The DNS is structured in a hierarchical manner which allows for the decentralized
administration of name-to-address mapping.11
The DNS 1st cum 1st served policy is a breeding ground for opportunists with neither
12
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 goodwill13. 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 server14.

It is pertinent to note that the domain name system is administered by the Internet
Corporation for Assigned Names and Numbers (“ICANN”).15 ICANN is a private
organization that manages and coordinates the domain name system by overseeing the
distribution of unique IP addresses and domain names.16 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, Cyber squatting, Competitor Disputes17, Parody Disputes18 have been

10
The Management of Internet Names and Addresses: Intellectual Property Issues, Interim Report of the WIPO
Internet Domain Process (WIPO, December 23, 1998), pp2-3.
11
William Black, “The Domain Name System” in Edwards and Waelde (eds.), Law and the Internet: A
Framework for Electronic Commerce 125 (Hart Publishing Co., Oxford, 2000).
12
Stacy B. Sterling, “New Age Bandits in Cyberspace: Domain Names Held Hostage on the Internet”, 17
Loyola of Los Angeles Entertainment L. Rev. 733 (1997).
13
Bagby and McCarthy, The Legal and Regulatory Environment of e-Business- Laws for Converging Economy,
Thompson South Western West (2003).
14
Nandan Kamath, Law Relating to Computers, Internet and E-Commerce – A Guide to Cyberlaws 167
(Universal Law Publishing Co., Delhi, 4th edn., 2009).
15
According to the organization's own Web site:
The Internet Corporation for Assigned Names and Numbers (ICANN) is an internationally organized, non-profit
corporation that hasresponsibility for Internet Protocol (IP) address space allocation, protocol identifier
assignment, generic (gTLD) and countrycode(ccTLD) Top-Level Domain name system management,androot
server system management functions. These services were originally performed under U.S. Government
contract by the Internet Assigned Numbers Authority (IANA) and other entities. ICANN now performs the
IANA function.ICANN, Welcome to ICANN!, at http://www.icann.org/new.html
16
Ibid.
17
Registration of domain names that contain company name or trademarks of one‟s competitors.
 Cyber Squatting: Modern Day Extortion

predominantly the underlying issue. In this paper the researcher shall be focusing chiefly on
the menace of cyber squatting.

3. CYBER SQUATTING: MEANING AND ISSUES

Cyber squatting is the act of registering a domain name that is same as, or confusingly similar
to, the trademark of another with the intention of selling (at a profit) the domain name to the
trademark owner19. The Indian Courts have relied on the definition given by the Delhi High
Court in Manish Vij v. Indra Chugh20 wherein Cyber squatting 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”.

The term squatting refers to the act of occupying an abandoned or unoccupied space or
building, usually residential, that the squatter does not own, rent or otherwise have
permission to use. Thus drawing from this definition, Cyber-squatting refers to the bad faith
registration of a domain name containing another person‟s brand or trademark in a domain
name. The cyber squatter then extorts the company and offers to sell the domain to the person
or company who owns a trademark contained within the name at an inflated price which may
be accredited as a sort of ransom. 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 trademark21.

18
Registration of a domain name that resembles a company‟s name or trademark and then using it in connection
with a website that includes commentary or makes a political or satirical statement about it
19
Roger Leroy Miller, Frank B. Cross, The Legal and E-Commerce Environment Today, South-Western
College Publishing (2002)
20
AIR 2002 Del 243
21
John D. Mercer, "Cybersquatting: Blackmail on the Information Superhighway", 6 Boston University Journal
of Science and Technology Law 11 (2000).
 Cyber Squatting: Modern Day Extortion

However, it is important to note that there is nothing wrong with the practice of reserving a
domain name.

The problem spawned by cyber squatting 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 site22. 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. The nuisance of cyber squatting is also evident from the fact that
cyber squatting disputes filed with the World Intellectual Property Organization (WIPO) in
2006 increased by 25% as compared to 2005.23

22
See, „How the Net Pirates Almost Stole My Good Name‟, Mail on Sunday, 19th March 2000
23
Supra n. 13.
 Cyber Squatting: Modern Day Extortion

4. U.S. APPROACH TO THE PROBLEM OF CYBERSQUATTING

The US legislature has put in place the Anti Cybersquatting Consumer Protection Act, 1999
(ACPA). The Act creates civil liability for bad-faith registration with the intent to profit from
domain names that are identical or confusingly similar to someone‟s distinctive trademark24.
The Act also provides for protection of personal names25 along with remedies which include
injunction, forfeiture or cancellation of domain name26, actual damages or profits, or elective
statutory damages of between $ 1,000 and $ 100,000 per domain name27.

Under ASPA, a unique additional right is created by the Act in favor of the trade mark owner.
By virtue of this right, the trade mark owner can file an “in rem” action against the domain
name itself (as opposed to the registrant of the domain)28. However the sine qua non for such
an action can be brought only if “in personam” (i.e. personal) jurisdiction cannot be obtained
or if the appropriate defendant cannot be found after notice is sent and published by means
directed by the court29. The remedies available in an “in rem action” are limited to forfeiture,
cancellation or transfer of the domain name30.

There are two requirements to prove the validity of a claim under the ACPA, the onus of
which lies on the plaintiff. The first element appreciates whether the defendant possessed bad
faith intent to profit from the use of a protected name and the second element considers

24
15 USC § 1125 (a)(d)(1)(A)(1) of ACPA.
25
15 USC §1129 (b) of ACPA.
26
15 USC § 1116 of ACPA.
27
15 USC § 1117 of ACPA.
28
15 USC § 1125 (d) (2) of ACPA.
29
15 USC § 1125 (d) (2) (A) of ACPA.
30
15 USC § 1125 (d) (2) (D) (i) of ACPA. See also, Graham JH Smith, Internet Law and Regulation, Sweet &
Maxwell ( 3rd ed., 2002).
 Cyber Squatting: Modern Day Extortion

whether the defendant registered or used a domain name that (i) is identical or confusingly
similar to a distinctive mark or famous mark or (ii) is a trademarked word or name.
4.1 Significant Case laws
Now the case laws under this section can be categorized into two sections. The first section
deals with cases which led to the formulation of the ACPA and the second after the
incorporation of the Act.

4.1.1 Pre ACPA

The two landmark cases which were pivotal in the development of cyber squatting case law
decisions in the US are Intermatic v. Toeppen31 and Panavision v Toeppen32. In Intermatic
v. Toeppen, the court gave a decision in the favour of the plaintiff which owned a federal
trademark registration for Intermatic. The Court observed that the respondent, Mr Toeppen‟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. Furthermore the court added that the use of Intermatic‟s name on the
respondent‟s web page diluted the value of the mark.

The second case was Panavision v Toeppen33, wherein the court ruled in favour of the
plaintiff again. In this case it was Panavision which had filed a case against Toeppen. The
respondent Toeppen had registered domain names with names “www.panavision.com” and
panaflex.com. The defendant had put up pictures of Pana valley which infringed on the
plaintiffs right as the plaintiff thrived on the business of tourism sourcing its customers from
the internet.

These two cases give an insight into the vulnerability of Domain names and urges the
trademark holders to be careful from these modern day cyber extortionists. These two
judgments have played a vital role in the drafting of the Anti Cybersquatting Consumer
Protection Act. It was enacted to specifically target trademark infringements in cyberspace. In
the year 2000 another well known cybersquatter John Zuccarini lost two suits under the

31
947 F. Supp. 1227 (N.D. Ill. 1996)
32
141F.3d 1316 (1998)
33
Ibid.
 Cyber Squatting: Modern Day Extortion

newly enacted Anti Cybersquatting Consumer Protection Act (ACPA).34 The two federal
courts ordered him to pay huge amount of statutory damages amounting to US $ $500,000
plus attorney‟s fees.35

4.1.2 Post ACPA

In Morrison & Foerster v. Wick36, the plaintiff was the owner of the registered trade mark
“Morrison & Foerster”, which was used for legal services. The defendant registered the
domain names “morrisonfoerster.com” and “morrissonandfoester.com”. The web pages
carried a few slogans as well as hyperlinks to other anti-Semitic and racist domain names
such as “letsdosomeillegalsteroids.com” and “noirishneedapply.com”. The plaintiff alleged
that the defendant was guilty of trade mark infringement and dilution and also violated the
Act. Although the court only dealt with the provisions of the Act, the courts conclusions
equally apply to trade mark infringement and dilution proceedings.
The court held that as ampersands (&) cannot be used in domain names, the defendant‟s
disputed domain names were virtually identical to the plaintiff‟s trade mark name and also
remarked that prejudice was present in that the defendant harmed the plaintiff‟s goodwill by
tarnishment. The court was further of the opinion that the defendant‟s use of the disputed
domain names constituted commercial use.
In the case of Jack In The Box Inc. v. Jackinthebox.Org37, the court held that the act of
registration by the defendant was in connection with the sale of the right to use the domain
name, either as a good or service. This sale (from the domain name registrar to the unknown
registrants) „constituted use in commerce‟ and there was no need to actually develop a
working website for the illegal use of the mark to constitute commercial use. The act of
registering a domain name itself comprised a commercial act because it involved a sale
between the registrant and the registrar. The court thus concluded that it met the definition of

34
Ashwin Madhavan, Domain Names and Cybersquatting, accessed online at http://www.123oye.com/job-
articles/cyber-law/cybersquatting.htm on 8 November 2012.
35
Ibid.
36
94 F. Supp. 2d 1125 (D. Colo. 2000), available at:
cyber.law.harvard.edu/ilaw/DomainNames/MorrisonFoerster.htm on November 3, 2012.
37
143 F Supp. 3d 590 (E.D. Va. 2001), available at:
http://www.finnegan.com/JackInTheBoxIncvjackintheboxorg on November 3, 2012
 Cyber Squatting: Modern Day Extortion

“use in commerce” as per the law.”38 The facts were that the plaintiff was the owner of the
registered trade mark “Jack in the Box”. The defendant registered the domain name
“jackinthebox.org” and “jackinthebox.net”, but created no web sites for these domain names.
The question arose whether the defendant was using these domain names in commerce, for
the purpose of trade mark infringement.
However, it is pertinent to note that an Internet domain name resembling a famous trademark
does not in itself, establish bad faith for purposes of the Act. This was seen in the case of
Interstellar Starship Services Ltd. v. Epix Inc.,39 wherein a computer enthusiast did not
have “bad faith intent” to profit from “Epix” trademark when he obtained “epix.com” domain
name, for purpose of claim under ACPA, even though enthusiast offered to sell domain name
to trademark holder. The offer was in context of settlement negotiations and offer was in
context of investment that enthusiast had already invested in website‟s non-infringing
content, offer was made by enthusiast‟s attorney, enthusiast performed web search on “Epix”
before registering “epix.com” and did not find any such site, and enthusiast adopted domain
name as descriptive term to connote electronic pictures.

38
Ibid
39
304 F. 3d 936 (9th Cir. 2002), available at: cyber.law.harvard.edu/property00/domain/Interstellar.html on
November 3, 2012.
 Cyber Squatting: Modern Day Extortion

5. THE UNIFORM DISPUTE RESOLUTION POLICY (UDRP) APPROACH

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 cyber squatting 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.40 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.41
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 noncommercial purpose42.
The UDRP proceedings are conducted by the ICANN approved service providers. There are
presently four approved dispute resolution service providers that are accepting
complaints43.Each provider follows the UDRP as well as its own supplemental rules. These
are World Intellectual Property Organization (WIPO),44 National Arbitration Forum (NAF),45

40
http://www.wipo.int/multimedia/en/DG/press_releases/press_conf_2011_03_31.swf
41
Para. 4(a) of UDRP.
42
Para. 4(c) of UDRP.
43
The list of present and former approved providers for UDRP is available at
http://www.icann.org/en/dndr/udrp/approved-providers.htm on November 3, 2012.
44
Approved on Dec. 01, 1999.
45
Approved on Dec. 23, 1999.
 Cyber Squatting: Modern Day Extortion

Asian Domain Name Dispute Resolution Centre (ADNCRC)46 and Czech Arbitration Court
(CAC).47
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.
Rule 4 (a) mentions applicable disputes in the events wherein:
1. The domain name is identical or confusingly similar to a trademark or service mark in
which the complainant has rights; and
2. There are no rights or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith.
Rule 4 (b) explains the evidence of registration and Bad Faith use.
This is also known as the 'cyber squatting test’. Although the policy requires proof of all
these three elements, in practice, the complainant will establish trademark or common law
rights in the domain name, and generally, that the registrant operated in bad faith48.
5.1 First Cyber squatting Case (Word Wrestling Federation case)49:
This was the first case decided under the UDRP by WIPO. The proceedings were initiated on
Dec 9, 1999.The US based World Wrestling Federation (WWF) brought a suit against a
California resident who registered the domain name “worldwrestlingfederation.com” and
offered to sell it to WWF at a huge dividend a few days later. The WWF alleged that the
domain name in question was registered in bad faith by the registrant in violation of WWF‟s
trademark. It was held that the domain name registered by the respondent was „identical or
confusingly similar‟ to the trademark of WWF and the respondent had no legitimate rights or
interests in the domain name. Therefore the respondent was ordered to transfer the
registration of the domain name to the complainant, WWF.
Overall, the UDRP, as operated by WIPO and other Approved Providers, is very popular. The
procedure is quicker and cheaper than normal litigation. The jurisdiction is international in
nature50.

46
Approved on Feb. 28, 2002.
47
Approved on Jan. 23, 2008.
48
Leah Phillips Falzone, “Playing the Hollywood Name Game in Cyber Court: The Battle Over Domain Names
in the Age of Celebrity-Squatting”, 21 Loyola of Los Angeles Entertainment Law Review 289, 304 (2001).
49
„Regulating Intellectual Property Rights on the Internet‟- Aashit Shah, Government Law College Law Review,
1999-2000.
 Cyber Squatting: Modern Day Extortion

5.2 Indian Case Laws under UDRP

Since the UDRP is an efficient and cost-effective means of resolving disputes relating to
wrongful registration of domain names in the gTLDs, a growing number of Indian companies
have chosen to settle their domain name disputes through the UDRP.
In Maruti Udyog v. Maruti Infotech51, a complaint was filed with WIPO over a dispute
relating to the domain name “maruti.org.” Maruti Udyog, a well known car manufacturer,
proved that the trade mark “Maruti” was associated with its products and that a person of
average intelligence and imperfect recollection would be led to believe that the domain name
was associated with them Moreover, the respondent sought to sell the domain name to the
complainant for valuable consideration The WIPO panelists, therefore, held that there was a
clear intent on the part of the respondent to make unmerited profit from the registration of the
domain name and transferred the name to Maruti Udyog.
Non-activation of the disputed mark is also an indication of the mala fides of the respondent.
In Tata Sons v. The Advanced Information Technology Association (“AITA”)52, Tata
Sons filed a complaint against AITA with WIPO for the illegal registration of the domain
name “tata.org.”. The WIPO panelists held that “Tata” was a well known name, linked to
high quality products The name “Tata” was a family name and had no dictionary meaning.
Further, both AITA and Tata were based in the same city and AITA was bound to know of
Tata‟s reputation Further, AITA had not activated the disputed domain name which indicated
that AITA was merely hoarding the domain name. In this case the WIPO panelists held that
even if the web-site were activated, the facts would lead them to believe that the registration
was in bad faith The domain name was, therefore, transferred by ICANN to Tata Sons based
on the award granted by WIPO in favour of Tata Sons.
Another dispute where passive holding of a domain name indicated that its registration was in
bad faith occurred in the case of Hero Honda Motors v. Rao Tella53, in relation to the
domain name “herohonda.com.” The complaint was filed with the WIPO by Hero Honda
Motors, Honda‟s joint venture company in India against Rao Tella, a person based in the
United States of America, who had registered the domain name for a website dedicated to

50
David Kitchen, David Llewelyn, et. al. (eds.), Kerly‟s Law of Trade Marks and Trade Names 733 (Sweet &
Maxwell, London, 14th edn., 2005).
51
Accessed at http://arbiter.wipo.int/domain/decisions/2000-0520.html on 4 November 2012.
52
Accessed at http://arbiter.wipo.int/domain/decisions/2000-0049.html on 4 November 2012.
53
Accessed at http://arbiter.wipo.int/domains/decisions/html/d2000-0365.html on 4 November 2012.
 Cyber Squatting: Modern Day Extortion

fans of Honda However, Mr. Tella had not activated the website The WIPO panelists held
that the domain name was identical to the trade mark of the complainant, and the domain
name was transferred to Hero Honda Motors.

6. INDIAN APPROACH

In India, there is no legislation which explicitly refers to dispute resolution in connection with
cyber squatting or other domain name disputes54.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.

6.1 Indian Laws: Ground for Action

55
The Satyam Infoway Ltd v. 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 Cyber squatting. 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

54
Ashwani K. Bansal, Law of Trademarks in India 642 (Centre for Law, Intellectual Property & Trade, New
Delhi, 2nd edn., 2006).
55
AIR 2004 SC 3540
 Cyber Squatting: Modern Day Extortion

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 noted that 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
56
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 Cyber squatting 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.
6.2 Significant Case laws
The first case in India with regard to cyber squatting was Yahoo Inc. v. Aakash Arora &
Anr.,57 .In this case the defendant launched a website nearly identical to the plaintiff‟s
renowned website and also provided similar services. Here the court ruled in favor of
trademark rights of U.S. based Yahoo. Inc (the Plaintiff) and against the defendant, that had
registered itself as YahooIndia.com. The Court observed that it was an effort to trade on the
fame of yahoo‟s trademark. The court further added that a domain name registrant does not
obtain any legal right to use that particular domain name simply because he has registered the
domain name, he could still be liable for trademark infringement.
The Bombay High Court in Rediff Communication v. Cyberbooth & Anr58 held that a
domain name is like a corporate asset of a company. In this case the defendant had registered

56
(1996) 5 SCC 714)
57
1999 PTC(19) 201
58
AIR 2000 Bom. 27; 2000(1) RAJ 562(Bom.)
 Cyber Squatting: Modern Day Extortion

a domain name radiff.com which was similar to rediff.com. The court gave a decision in
favor of the plaintiff.
In Tata Sons Ltd v. Monu Kasuri & others , the defendant registered a number of domain
names bearing the name Tata. It was held by the court that domain names are not only
addresses but trademarks of companies and that they are equally important.59
The arbitration panel of the WIPO in Bennett Coleman & Co Ltd. v. Steven S Lalwani and
Bennett Coleman & Co Ltd. v. Long Distance Telephone Company60, gave a decision in
favor of the plaintiff. In this to the respondent had registered domain names
www.theeconomictimes.com and the www.timesofindia.com with network solutions of the
United States. These two names are similar to the names of the Plaintiff‟s websites
www.economictimes.com and www.timesoftimes.com. Another important fact was that the
respondent‟s websites using the domain names in contention redirect the users to a different
website www.indiaheadlines.com which provided India related news.
In Satyam Infoway Ltd. v Sifynet Solutions61, the decision was again in favour of the
plaintiff, wherein the Respondent had registered domain names www.siffynet.com and
www.siffynet.net which were similar to the Plaintiff‟s domain name www.sifynet.com. Satyam
(Plaintiff) had an image in the market and had registered the name Sifynet and various other
names with ICANN and WIPO. The word Sify was first coined by the plaintiff using
elements from its corporate name Satyam Infoway and had a very wide reputation and
goodwill in the market. The Supreme Court held that the domain names were business
identifiers, serving to identify and distinguish the business itself or its goods and services and
to specify its corresponding online location. The court also remarked that domain name had
all the characteristics of a trademark and an action of Passing off can be found where domain
names are involved.
In Google Inc.v.Herit Shah62, on May 15, 2009, the World Intellectual Property
Organization (WIPO) ordered an Indian teenager, Herit Shah (Shah), who had been using the
domain name 'googblog.com', to transfer the rights of the domain to Google Inc. (Google).

59
2001 PTC 432
60
Cases No D2000-0014 and 2000-0015, WIPO
61
2004 (6) SCC 145
62
Case No. D2009-0405
 Cyber Squatting: Modern Day Extortion

In Aqua Minerals Ltd. v. Cyberworld63, the Delhi High Court passed a verdict in favour of
the Aqua Minerals Ltd which owned the trade mark “Bisleri” and restrained Cyberworld
from using the domain name, “bisleri.com”.
In India, due to the absence of relevant cyber laws cases are decided within the ambit of
trademark laws by interpreting the principle of Passing off with regard to domain names.

7. INDIAN DOMAIN NAME DISPUTE RESOLUTION POLICY I.E. “.IN”

DISPUTE RESOLUTION PROCESS
“.in” is India‟s Top Level Domain (TLD) on internet.64 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
2000.65 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.
Para 4, INDRP is strikingly similar to Para 4 (a) of 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 under66.
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

63
2001 21 PTC 619 (Del)Domain Name Dispute Resolution in India, a note by Majumdar and Co. accessed
online at www.majumdar.com/domainipcase/notecaselaws on 6th November 2012.
64
S. Ahmed, Cybersquatting: Pits and Stops, [2010] ILI Law Review 79
65
Ibid.
66
Para 5 (iii), INDRP Rules of Procedure, available at:
http://www.inregistry.in/policies/dispute_resolution/indrp on November 3, 2012.
 Cyber Squatting: Modern Day Extortion

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 extension67.
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.68
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 proceedings69.
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 Arbitrator70.
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.71
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

67
Para 5 (c), INDRP Rules of Procedure, available at:
http://www.inregistry.in/policies/dispute_resolution/indrp_rules on November 3, 2012.
68
Para 5 (d), INDRP Rules of Procedure
69
Para 10, INDRP Rules of Procedure
70
Para 10, INDRP Rules of Procedure
71
Para 12, INDRP Rules of Procedure
 Cyber Squatting: Modern Day Extortion

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.

8. CONCLUSION AND SUGGESTION

On account of the problems highlighted and the various jurisdictions looked into, the
researcher would like to submit a few suggestions which according to him are the need of the
hour with regard to combating this menace. The researcher has devised a three pronged
approach which would go a long way in squatting away these squatters.
8.1 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.72

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.73The 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 cyber squatting which is growing in prevalence by the day as has been

72
Supra n.63
73
ibid
 Cyber Squatting: Modern Day Extortion

74
discussed (supra). 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.

8.2 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. 75

8.3 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.

8.4 Arbitration
The researcher 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.

Thus looking at the current situation prevailing in the world, it can be safely assumed that
cyber squatting is a menace, a menace which has no boundaries. The researcher has equated

74
Ibid
75
Ibid.
 Cyber Squatting: Modern Day Extortion

this ransom collecting method as a method of terrorizing/extortion, in the researcher‟s

opinion, it is similar to terrorism. The only difference being that in the latter human life is
affected. Cyber squatters have robbed businesses of their fortune. The courts in India have
decided many cases related to cyber squatting. Cyber squatting has opened the eyes of
governments across the world and has prompted them to look into this phenomenon in a
serious manner. The United States by enacting the ACPA, has taken a monumental step in
protecting domain names in its cyberspace. It is the imperative for the parliament to enact a
law which would deal with this menace moving along from the current position where there
is no law which prohibits cyber squatting like that of the United States.

Finally, in the light of still ever-increasing rate of cyber squatting 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 cyber squatting.
 Cyber Squatting: Modern Day Extortion

9. BIBLIOGRAPHY
9.1 Articles, Books & Reports Referred:
 „How the Net Pirates Almost Stole My Good Name‟, Mail on Sunday, 19th March
2000
 Ashwani K. Bansal, Law of Trademarks in India 642 (Centre for Law, Intellectual
Property & Trade, New Delhi, 2nd edn., 2006).
 Bagby and McCarthy, The Legal and Regulatory Environment of e-Business- Laws
for Converging Economy, Thompson South Western West (2003).
 David Kitchen, David Llewelyn, et. al. (eds.), Kerly‟s Law of Trade Marks and Trade
Names 733 (Sweet & Maxwell, London, 14th edn., 2005).
 Graham JH Smith, Internet Law and Regulation, Sweet & Maxwell ( 3rd ed., 2002).
 John D. Mercer, "Cybersquatting: Blackmail on the Information Superhighway", 6
Boston University Journal of Science and Technology Law 11 (2000).
 Leah Phillips Falzone, “Playing the Hollywood Name Game in Cyber Court: The
Battle Over Domain Names in the Age of Celebrity-Squatting”, 21 Loyola of Los
Angeles Entertainment Law Review 289, 304 (2001).
 Michael P.Allen, “In Rem Jurisdiction from Pennoyer to Shaffer to the
Anticybersquatting Consumer Protection Act,”11 George Mason L. Rev. 243 (2000).
 Nandan Kamath, Law Relating to Computers, Internet and E-Commerce – A Guide to
Cyberlaws 167 (Universal Law Publishing Co., Delhi, 4th edn., 2009).
 Nicholas Smith and Erik Wilbers, “The UDRP: Design Elements of an Effective ADR
Mechanism”, 15 The American Review of International Arbitration 215 (2004).
 Roger Leroy Miller, Frank B. Cross, The Legal and E-Commerce Environment
Today, South-Western College Publishing (2002)
 Stacy B. Sterling, “New Age Bandits in Cyberspace: Domain Names Held Hostage on
the Internet”, 17 Loyola of Los Angeles Entertainment L. Rev. 733 (1997).
 Cyber Squatting: Modern Day Extortion

 The Management of Internet Names and Addresses: Intellectual Property Issues,

Interim Report of the WIPO Internet Domain Process (WIPO, December 23, 1998),
pp2-3.
 William Black, “The Domain Name System” in Edwards and Waelde (eds.), Law and
the Internet: A Framework for Electronic Commerce 125 (Hart Publishing Co.,
Oxford, 2000).
 Zohar Efroni, “The Anticybersquatting Consumer Protection Act and the Uniform
Dispute Resolution Policy: New Opportunities for International Forum Shopping?” 26
The Colum. Jour. of Law & the Arts 335 (2003).

9.2 Websites Referred:

 cyber.law.harvard.edu/ilaw/DomainNames/MorrisonFoerster.htm
 cyber.law.harvard.edu/property00/domain/Interstellar.html
 en.wikipedia.org/wiki/Cybersquatting
 http://www.finnegan.com/JackInTheBoxIncvjackintheboxorg
 http://www.icann.org/en/dndr/udrp/approved-providers.htm
 http://www.icann.org/en/dndr/udrp/policy.htm
 http://www.inregistry.in/policies/dispute_resolution/indrp
 www2.bc.edu/~herbeck/cyberlaw.gallo.htm

9.3 Statutes Referred:

 Anti Cyber squatting Consumer Protection Act, 1999 (ACPA)
 Indian Dispute Resolution Policy,2005 (INDRP)
 Indian Dispute Resolution Policy, Rules of Procedure, 2005
 Uniform Dispute Resolution Policy,1999 (UDRP)
Cyber Squatting: Modern Day Extortion