DR.

RAM MANOHAR LOHIA NATIONAL LAW UNIVERSITY

2020-2021

DOMAIN NAME PROTECTION AND CYBERSQUATTING DISPUTES UNDER

TRADEMARK LAW

Final Draft submitted for the project work undertaken in the partial fulfillment of B.A.
LLB. (Hons)

Submitted to: Submitted by:

DR. SHASHANK SHEKHAR Raj Kunwar Singh

Professor in Law Enroll- 160101118

Semester: IX
 TABLE OF CONTENTS

INTRODUCTION 3

DOMAIN NAME PROTECTION UNDER TRADEMARK LAW 3

DOMAIN NAME DISPUTES IN INDIA 5

INTERNATIONAL DOMAIN NAME DISPUTE RESOLUTION 6

THE CONCEPT OF CYBER SQUATTING 8

CYBER SQUATTING DISPUTES IN INDIA 12

CONCLUSION 13

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 INTRODUCTION
The phenomenal growth of the Internet as a commercial medium has brought about a new set of
concerns in the realm of intellectual property.1 As the Internet grows in prominence as a venue
for business the Courts will be called upon to apply traditional legal principles to new avenues of
commerce, one of which is the advent of domain name disputes.2
The proliferation of the Internet has led to an explosion in the number of registered domain
names - those trendy ‘.com’ web addresses that have all but transformed modern business. These
days, domain names are not just names of websites of different entities, but serve as business
identifiers and promoters. A domain name is the Internet equivalent of a physical or terrestrial
address. It directs a user to a particular part of the Web where a domain name registrant stores
and displays his information, and offers his services.3 However, it is interesting to note that
Internet Accessible computers actually read a series of Internet Protocol (IP) numbers rather than
domain name. Because these numbers are random and difficult to remember, the US
Government developed a system which links each IP number to a specific domain name. This
system is commonly referred to as Domain Name System (DNS).4
This project deals with the concepts of domain name and the associated disputes and further,
how the same can be connected with the trademark law. The project also, goes on to address the
issue of cyber squatting which is a specific type of dispute between a domain name holder and a
trademark holder and the redressal mechanism for such disputes.

DOMAIN NAME PROTECTION UNDER TRADEMARK LAW

A domain name is a string of typographic characters used to describe the location of a specific
location online. Formally known as the Uniform Resource Locator or URL, it is often considered
to be the address of a certain website. A domain name is a unique name that identifies a website. 

1 Thomas v Network Solutions Inc, 176 F. 3d 500, 502 (1999).

2 Intermatic Inc v Toeppen, 947 F Supp. at 1229. See also Adam Chase, A premier on recent domain name disputes,
Virginia Journal of Law & Technology, 3 (Spring 1998).
3 People Interactive (India) Pvt. Ltd. v. Vivek Pahwa & Ors, (2016) 6 AIR Bom R 275.
4 Kenneth Sutherlin Dueker, Note, Trademark law lost in cyberspace: Trademark protection for Internet addresses,
Harvard Journal of Law & Technology, 9 ,1996, 48.

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Domain Name disputes can be covered under the ambit of the trademark law where the disputes
arise in cases of infringement of a registered domain name as well as passing off in relation to
unregistered domain names. Another specific type of domain name dispute is cyber squatting,
which is concerned with the use of a registered trademark for a domain name by another party
with a mala fide intention.5

Domain names can be registered as trademarks upon fulfilling all the conditions that are required
to be registered as a trademark. Hence, any domain name which is unique, capable of identifying
itself and distinguishing its goods and services from those of others and acts as a reliable source
identifier of concerned goods and services on the internet may be registered as a trademark.

This has been clarified by the Supreme Court in the case of Satyam Infoway Ltd. vs. Siffynet
Solutions6 where the Court reiterated that “with the increase of commercial activity on the
internet, a domain name is also used as a business identifier. Therefore, the domain name not
only serves as an address for internet communication but also identifies the specific internet site,
and distinguishes specific businesses or services of different companies. Consequently, a domain
name as an address must, of necessity, be peculiar and unique and where a domain name is used
in connection with a business, the value of maintaining an exclusive identity becomes critical. As
more and more commercial enterprises trade or advertise their presence on the web, domain
names have become more and more valuable and the potential for dispute is high.” 7 Furthermore,
in the case of Yahoo! Inc v Akash Arora8, the Delhi High Court took the view that trademark law
applies equally to domain names. Further, it held that a domain name is not merely an address,
but a primary address, and may thus enjoy the same protection which is granted to trademarks.

Domain names hold an elevated level of importance for the reason that there can be only one
user of a domain name unlike two or more users of a same or similar trademark under the
trademark law, for various classes of goods/services or under honest concurrent use. The domain
registration system follows the “first come, first serve” policy. So, once a person registers a
domain name similar to a trademark, any other person using a similar mark is denied registration

5 G. Kaufmann-Kohler and T. Schultz, "Online Dispute Resolution: Challenges for Contemporary Justice", 2004
ed., p.36.
6 Satyam Infoway Ltd. vs. Siffynet Solutions, (2004) 6 SCC 145.
7 Ibid.
8 Yahoo! Inc v Akash Arora, 78 (1999) DLT 285.

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of another domain name similar to that trademark. That means only one user is allowed to use a
particular domain name and any other application for the same domain name will be refused.
This is the main reason as to why trademark owners prefer to get their trademarks registered as
their domain names for business.

A trademark is protected by the laws of a country where such trademark may be registered.
Consequently, a trademark 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) which was effected through WIPO and ICANN. The outcome of
consultation between ICANN and WIPO has resulted in the setting up not only of a system of
registration of domain names with accredited Registrars but also the evolution of the Uniform
Domain-Name Dispute-Resolution Policy (UDRP Policy)9 by ICANN. 

DOMAIN NAME DISPUTES IN INDIA

Domain Name disputes have become prevalent in India in recent times with the increased
awareness amongst companies about the importance of domain names and benefits it can accrue
for any brand.
Recently, the Bombay High Court in the case of People Interactive (India) Pvt. Ltd. v Vivek
Pahwa10, dealt with a passing off dispute between “shaadi.com” and “secondshaadi.com”. The
Court ruled in favour of the defendants and held that the word “shaadi” is generic and commonly
descriptive. The court held that acquiring a secondary meaning would necessarily imply that the
word has transcended its original connotation and references exclusively in the public mind the
particular holder of the mark; the primary meaning must have been lost. This was not the case
here, said the court, as the only primary meaning was the destination on the internet. The court
further observed that a domain name is merely the internet equivalent of a terrestrial address – a
place where the registrant stores and displays its information or offers services. It is technically a

9 Uniform Domain-Name Dispute-Resolution Policy, 1999.

10 People Interactive (India) Pvt. Ltd. v. Vivek Pahwa & Ors, (2016) 6 AIR Bom R 275.

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mnemonic – an easy to recall replacement for the complex IP address of the website. Given that
physical addresses such as ‘10 Downing Street’ could never function as trademarks on their own,
the same goes for domain names. This case diverges from the position reiterated by Indian
Courts in previous decisions where it has been clearly established that domain name are capable
of trademark protection and hence, may not be correct legal position in that regard.
In the Bigtree Entertainment v Brain Seed Sportainment 11 case, the Delhi High Court recently
denied the Plaintiffs, proprietors and owners of the website “bookmyshow.com”, an interim
injunction against the Defendant’s use of the domain “bookmysports.com”. The Court,
considering that the prefix “bookmy” of the Plaintiff’s trademark Bookmyshow was descriptive,
not an arbitrary coupling of words and upon the Plaintiff’s failure to prove that “bookmy” has
acquired distinctiveness or secondary meaning, dismissed the application for interim injunction
filed by the Plaintiffs.
Further, a domain name should not confuse the consumers as to the origins of the services or
products defeating the principal of trademark law. In the case of Rediff Communications Ltd. v.
Cyberbooth12, the Bombay High Court while granting an injunction restraining the defendants
from using the domain name ‘RADIFF’ or any other similar name, held that “When both domain
names are considered there is every possibility of internet users being confused and deceived into
believing that both domain names belong to one common source and connection although the
two belong to two different persons.” In the case of Info Edge (India) Pvt. Ltd. v. Shailesh
Gupta13 the website using the domain name, ‘Naukari.com’ was held to be confusingly similar to
that of the plaintiff, ‘naukri.com’, with a different spelling variant establishing prima facie
inference of bad faith.

INTERNATIONAL DOMAIN NAME DISPUTE RESOLUTION

Domain name disputes can be brought by any party before the ICANN as well under the UDRP
Policy. The aspect of similarity of domain names is sought to be addressed by ICANN even at
the registration stage as Rule 214 of the Policy requires the applicant to determine that the domain
name, for which registration is sought, does not infringes or violates someone else's rights. Thus,

11 Bigtree Entertainment v Brain Seed Sportainment, CS(COMM) 327/2016.

12 Rediff Communications Ltd. v. Cyberbooth, 1999 (4) BomCR 278.
13 Info Edge (India) Pvt. Ltd. v. Shailesh Gupta, 98 (2002) DLT 499.
14 Rule 2, Uniform Domain-Name Dispute-Resolution Policy, 1999.

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if the domain name, proposed to be registered, is in violation of another person’s “trademark
rights”, it will violate Rule 2 of the Policy. In such an eventuality, the Registrar is within his
right to refuse to register the domain name. This shows that a domain name, though properly
registered as per the requirements of ICANN, still it is subject to the Trademarks Act, 1999 if a
person successfully proves that he has “rights’ flowing out of the Act. This point is further
strengthened if we read Rule 2 along with Rule 4(k) 15, which provides the parties have a right to
agitate before a court of competent jurisdiction, irrespective of the declaration or decision to the
contrary by the ICANN. Thus, a contrary decision of an Indian Court of competent jurisdiction
will prevail over the decision of ICANN.
For dispute resolution under the UDRP Policy, a person or entity may formally complain before
the competent administration-dispute-resolution services providers on the grounds that:

● Any specified domain name is very strikingly or confusingly similar to a previously

registered domain name or trademark of the complainant;
● Any accused domain name has been registered, and is blatantly being used in bad faith;
● There exists any certain case of trademark infringement against the complainant.16

The Policy by way of illustrations also indicates circumstances where a domain name would be
deemed to be infringing and used in bad faith:

● Circumstances indicating that the domain name owner/registrant has registered or the
domain name owner/registrant 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;
● The domain name owner/registrant has registered the domain name in order to prevent
the owner of the trademark or service mark from reflecting the mark in a corresponding
domain name, provided that it has engaged in a pattern of such conduct;
● The domain name owner/registrant has registered the domain name primarily for the
purpose of disrupting the business of a competitor;

15 Rule 4(k), Uniform Domain-Name Dispute-Resolution Policy, 1999.

16 Rule 4(a), Uniform Domain-Name Dispute-Resolution Policy, 1999.

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 ● By using the domain name, the domain name owner/ registrant has intentionally
attempted to attract, for commercial gain internet users, to its web site or other on-line
location, by creating a likelihood of confusion with the complainants mark as to the
source, sponsorship, affiliation, or endorsement of the domain name owner/registrant web
site or location or of a product or service on its web site or location.17

The Policy further creates limitation to these rights and carves out the following defenses:

● Before any notice to the domain name owner/registrant, the use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain name in
connection with bona fide offering of goods or services;

● The domain name owner/registrant (as an individual, business, or other organization) has
been commonly known by the domain name, even if it has acquired no trademark or
service mark rights;
● The domain name owner/registrant is making a legitimate non-commercial or fair use of
the domain name, without intent for commercial gain to misleadingly divert consumers or
to tarnish the trademark or service mark at issue.18

Therefore, ICANN provides an effective global dispute resolution platform with respect to
domain name disputes and these facilities can be availed by any entity desirous of preventing
others from using their trademark or domain names.

THE CONCEPT OF CYBER SQUATTING

The concept of Cyber Squatting also known as domain name squatting is a process of registering,
selling or using of any domain name with the intention of gaining undue profits from someone
else’s’ trademark.. 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. The Indian courts have defined ‘cybersquatting’ as “an act of obtaining

17 Rule 4(b), Uniform Domain-Name Dispute-Resolution Policy, 1999.

18 Rule 4(c), Uniform Domain-Name Dispute-Resolution Policy, 1999.

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fraudulent registration with intent to sell the domain name to the lawful owner of the name at a
premium”.19

When a person registers a domain, that person retains the rights to that domain until he/she sells
it or lets the registration expire. Therefore, cyber squatters can severely damage the brand of a
trademark owner, simply by preventing them from using the domain name corresponding to their
brand. However, this damage can go far beyond just preventing trademark owners from using the
domain for their own business endeavors. In some cases, it involves redirecting visitors to
obscene web pages, phishing sites, and even competitor's sites. This can tarnish the reputation of
the brand quite badly. The concern about cybersquatting is particularly important to owners
whose trademarks are on the weak end of the spectrum of protection. This is so because the
evidentiary demands for shutting down monetized websites or inactive domain names are quite
substantial.

There is a distinction between trademark infringement, which is defined as the unlawful use of a
business’s mark that is likely to cause confusion as to the source of goods or services, and
cybersquatting, which is defined as a violation of a business’s right to exclusive use of its mark
on the Internet.

The World Intellectual Property Organization (WIPO) also has an arbitration system in place to
combat this issue. In fact, a well-publicized case involving the WIPO occurred in 2006, when
footballer Wayne Rooney won against Huw Marshall. In early 2002, Marshall registered
WayneRooney.com after seeing Rooney play. Marshall claimed the website was a "fan site".
However, in 2006 the WIPO panel rejected Marshall's claim and ordered him to hand over the
domain rights to Rooney within 10 days.20

Another famous example is the Pepsi case in which an Italian Company, with the name of
"Partite Emozionanti Per Sportivi Italian", which, in translation, stands for "Leave the Histrionics
for Italian Sports Fans", and known for short as "P.E.P.S.I.", registered 70 domain names
incorporating the famous soft drink trademark PEPSI in relation to an extensive range of sports,
including 'pepsicricket.com', 'pepsigolf.com', 'pepsisoccer.com', 'pepsirugby.net',
19 Manish Vij v. Indra Chugh, AIR 2002 Del 243.
20 Blackshaw, Ian "Wayne Rooney wins domain name dispute." The International Sports Law Journal, no. 1-2,
2007, p. 92.

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'pepsisuperbike.net' and 'pepsivolleyball.net'. The sole panelist in this case held that there was
"opportunistic bad faith" because the domain names were so obviously connected with such a
well-known product with which the respondent had no connection.21

The concept of cyber-squatting however, is distinct from gripe sites like Mitsubishi Sucks and
Microsoft Sucks. The legal position of these sites received some clarity, when a disgruntled
customer of Career Agents Network (CAN), set up his own website using the exact same name,
but on a .biz domain instead of the .com. CAN attempted to have the site removed, but it lost in
court, because the .biz site wasn’t of a commercial nature – it was merely warning other
customers to avoid CAN which doesn’t constitute cyber squatting.22

Countries like USA have even introduced specific legislations like the Anticybersquatting
Consumer Protection Act (ACPA)23 in order to effectively tackle this problem which is going to
become more and more prominent in the coming times. While the ACPA is an “either/or” model,
which means that liability rests on proof that an alleged infringer either registered or is using the
domain name in bad faith. The UDRP is an “and” model, which means that liability rests on
proof that the alleged infringer registered and is using the domain name in bad faith.

With the UDRP each party bears its own costs and legal fees which are modest relative to a
federal action. The compensatory reasons for a trademark owner choosing the UDRP lie in the
efficiency of its procedures and the quickness in resolving disputes. Reasoned decisions are
generally delivered within 45 days of filing a complaint. Also, in the 20 years of its existence, the
UDRP has developed an impressive jurisprudence that is partly based on trademark law, but
which has essentially developed in much the same way as the common law, namely through
successive decisions which makes for a fairly predictable outcome in most cases. There is no
appellate procedure under the UDRP, but if either party is unhappy with the UDRP decision it
may commence a de novo civil action under their national law.

21 PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), Case No.
D2003-0696.
22 Career Agents Network v. Careeragentsnetwork.biz, 722 F. Supp. 2d 814 (E.D. Mich. 2010).
23 Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d).

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 REVERSE CYBER SQUATTING
Reverse domain name hijacking (RDNH) also known as reverse cybersquatting occurs where a
rightful trademark owner attempts to secure a domain name by making cybersquatting claims
against a domain name’s "cyber squatter" owner.24 This is a process which often intimidates the
owner of the domain name to transfer the ownership of their domain names to trademark owners
in order to avoid any legal action, this happens particularly in case where the domain name
holder is smaller organisation or an individual.25

Reverse domain name hijacking is most commonly enacted by large corporations and influential
or renowned individuals, in order defend their rightful trademark or to prevent any sort of
defamation in the form of libel or slander. A trademark owner engages in Reverse Domain Name
Hijacking by filing a frivolous Domain Name Hijacking (DNH) claim in an attempt to
improperly capture a domain name from a legitimate domain name registrant. The UDRP does
not, however, sufficiently discourage RDNH or provide adequate remedies for a legitimate
domain name registrant responding to a frivolous claim. 26 Given the importance of Internet
commerce, the hardship cast by RDNH, and the complex challenges of keeping up with new
technology and law, it is critical to explore RDNH in order to develop and implement sound
solutions to systematic weak points in the UDRP that lead to these abusive claims.

The arguments against UDRP reform also fail to account for the time, money, and investment
losses of legitimate domain name registrants in situations where the reverse domain name
hijacker successfully obtains a domain name after merely threatening to bring an UDRP claim 27,
thus skewing the statistics. A legitimate domain name registrant might sell its domain name,
regardless of the merits of the claim, because of the financial incentive to avoid the dispute. In
the face of a RDNH threat, a legitimate domain name registrant is in a perplexing situation.
Economically, the legitimate domain name registrant needs to ask for a transfer price that
accounts for not easily quantifiable costs such as losing business as a result of confusion,

24 Sallen v. Corinthians Licenciamentos Ltda., 2002 U.S. Dist. LEXIS 19976 (D. Mass. Dec. 19, 2000), rev’d, 273
F.3d 14, 17 (1st Cir. 2001)
25 Warren B. Chik, Lord of Your Domain, But Master of None: The Need to Harmonize and Recalibrate the
Domain Name Regime of Ownership and Control, 16 INT’L J.L. & INFO. TECH. 8, 60 (2008)
26 Andrew Allemann, UDRP panelists don’t do their job deciding reverse domain name hijacking, DOMAIN
NAME WIRE, (Aug. 20, 2012).
27 The UDRP Process, BECKMAN CTR. FOR INTERNET & SOC’Y, HARVARD UNIV. (2012),
http://cyber.law.harvard.edu/udrp/process.html

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informing consumers of the new domain name, and reprinting common advertising material. And
they must also be sensitive to the fact that an absurd demand might weigh against an ultimate
finding of RDNH if a UDRP dispute is filed after unsuccessful negotiations.

While there are certainly arguments for keeping the UDRP as is since the full consequences of
suggested reforms are not known, it seems clear that benefits from at least some reforms would
outweigh any potential negative consequences, and result in a system more balanced for both
parties. Adding monetary penalties to a finding of RDNH, having ICANN and/or service
providers make data publicly available, instituting an appeals process, and amending the mutual
jurisdiction provision are all tools that would work towards meeting the overall goals of the
UDRP and dis-incentivizing misuse of the UDRP in attempts at RDNH.

CYBER SQUATTING DISPUTES IN INDIA

Distinct from many developed countries, India has no domain name protection law and
cybersquatting cases are essentially dealt with under the Trade Mark Act, 1999. In India, victims
are provided with various options to combat Cybersquatting which include:
● Sending cease-and-desist letters to the cyber squatters,
● Initiation of arbitration proceedings under ICANN’S rules,
● Option for a trial in a state or national court.

The trademark holder also has the option of filing a case with the .in registry as the registry is
controlled by National Internet Exchange of India (Nixi) and it puts the case to fast-track dispute
resolution process from where within the 30 days of filing a complaint decision are transferred.
Even the Information Technology Act in India has no specific provisions for punishing cyber
squatters, at best, the domain name can be taken back from the cyber squatters. As there is an
absence of legal compensation under the IT Act, the .in registry had initiated proactive steps to
grant compensation to victim companies. However, it is just a beginning and still, there is no
effective system or laws to combat Cybersquatting.

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Several cases have also dealt with the issue of cyber squatting in India including:
● Yahoo! Inc. v. Akash Arora28

This was the first cybersquatting case in India. In this case, the plaintiff, who is the registered
owner of the domain name “Yahoo.com” successfully obtained an interim order restraining the
defendant from using “Yahooindia.com” or any other trademark/ domain name deceptively
similar to the plaintiff’s trademark.

● SBI Cards and Payment Services Private Limited v. Domain Active Pty. Ltd.29

In this case, WIPO ordered the Australian entity (Defendant) to transfer the domain name
“Sbicards.com” to the Indian company, as the Administrative Panel found that the Defendant had
hijacked the domain name with mala fide intention of selling it later for a hefty sum to the State
Bank of India subsidiary which amounted cyber squatting within the ambit of the UDRP.

● Tata Sons Limited v. Ramadasoft 30

In this case, the defendant had a domain name registered in the name of “Tata”. It was held in
this case that domain names not only involve addresses but also the trademarks of the companies.
The domain names in this case, were similar to the plaintiff’s trademark and the defendant had
used the names with mala fide intention and these facts entitled the trademark holder to get the
domain name transferred in his favour.

CONCLUSION
Domain name protection has become a major issue under the intellectual property laws both at
the global as well as simultaneously at the national level with the increasing impact of the
internet in people’s lives. Domain name are no longer just identifiers on the web but have
transformed into potential business service tools for every company as customers are shifting
from buying in physical stores to online shopping as well as using these websites as a
preliminary information source about any company or product.

28 Yahoo! Inc v. Akash Arora, 78 (1999) DLT 285.

29 SBI Cards and Payment Services Private Limited v. Domain Active Pty. Ltd., Case No. D2005-0271.
30 Tata Sons Limited v. Ramadasoft, Case No. D2000-1713.

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Domain names have become intertwined with the trademark law and it has been reiterated at the
international as well as the Indian level that they should be granted effective protection under the
trademark law as they end up performing the same function as a trademark. Any infringement or
passing-off of these domain names is going to adversely affect the business of any company and
could potentially hamper the image of such a company in the minds of the customers. Therefore,
it is imperative that the legislations and the courts effectively protect these domain names in the
same manner as trademarks.

Another major issue emerging under this regime is the issue of cyber squatting where individuals
and businesses are using the trademarks of well-known companies in their domain names with
the mala fide intention of encashing upon the established goodwill of these companies and
deceiving the customers into thinking that they are associated with the particular trademark.
These disputes are effectively handled by ICANN and WIPO under the UDRP Policy. However,
as we have discussed this mechanism is not without limitations which is evident from advent of
reverse cyber squatting cases where the big companies are exploiting this process to coerce
smaller companies into transferring the domain names to them even though the same might be
legitimate in nature. The reform of the UDRP Policy is essential in order to address these
concerns.

The Indian judiciary has also been mostly supportive of these concepts and ideals and has
effectively addressed domain name disputes as well as cyber squatting cases over the years. India
should use the example of the ACPA and introduce a separate legislation in order to effectively
deal with an issue of such a magnitude in an effective manner.

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