TRADEMARK CYBER-SQUATTING LAWS IN INDIA

Shrishti Mittal*

INTRODUCTION

The intellectual property right is a kind of legal right of the owner that protects the creation,
invention, symbol or design, etc. of the person who created them so that they can enjoy their
property without the disturbance of others by preventing a third person from using or copying
them for a specified time. Intellectual Property is an intangible property that is a result of
human creativity. There are various types of Intellectual Property for eg. Patent, Trademark,
Copyright, etc. Intellectual Property Right gives a person an exclusive right to use his or her
creation which means that nobody else can copy or use that creation without the prior
permission of the owner of that creation.

Intellectual property rights give the right of ownership to the people of their innovative product.
Under the Intellectual Property Law, Trademark includes a name, sign, or word that
differentiates one person's goods from others. It acts as a marketing tool that helps in
increasing the financial resources of the business. With the advancement in technology,
almost all business organizations have started operating on the online platform as well. For
this, they require a Domain name. The domain name is the address of the website of the
business or the organization that helps the web users easily find a business or organization,
online. Without a domain, a name computer has no idea where to look for a web page. Hence,
a domain name often considers a brand and it should also be trademarked to prevent its
misuse. One problem which is faced by the most online business organization with a popular
domain name is Cybersquatting.

CYBERSQUATTING

Cybersquatting generally refers to the practice of buying up domain names that use the
names of existing businesses with the intent to sell the names for a profit to those businesses.
In this practice cybersquatter or domain squatter registers trade-marks, trade names,
business names, and so on, with the intent of profiting from the goodwill of someone else's
trademark and even by selling the domain name to the rightful owner at a profit.

*
4th Year Student at CPJ College of Higher Studies and School of Law, Guru Gobind Singh Indraprastha University
[Authored on: 24.02.2021]

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DOMAIN NAME

The domain name is a unique name that helps to identify a particular website. It is the
address of the website that any person type in the browser URL bar to visit any particular
website. It takes the form of two elements. For example, the domain name whatsapp.com
consists of the website’s name (WhatsApp) and the domain name extension (.com). It can be
any combination of letters and numbers, and it can be used in combination with the various
domain name extensions, such as .com, .net, and more.

A domain name helps to locate a particular web page and send emails. Without a domain
name, a computer would have no idea where to look for a web page and e-mail routers would
not be able to send e-mails. It is very essential to register a domain name before one can use
it. Every website has a different domain name, which means that two websites cannot use the
same domain name.

HISTORY OF CYBERSQUATTING

The well-known practice of cybersquatting comes into the picture when most business
organizations were not aware of the scope of their business on the online platform. At that
time cybersquatters took advantage of it and registered the names of well-known companies
as domain names, with the intent to sell those domain names back to the companies at a very
high profit. Some companies which are the victims of cybersquatting are Panasonic, Avon,
Hertz, etc. But now the opportunity of cybersquatting is diminishing because most of the
companies now know the value of domain names and treat them with high priority.

The Internet Corporation of Assigned Names and Numbers (ICANN) a domain name
regulatory authority is responsible for the administration of top-level domain names. To
acquire a domain name the person first has to contact the administrator of the TLD and if the
identical requested domain name has not already been assigned to any other person, only
then the name will be approved by the administrator. There is a specific registration process
involved. The IANA is the central internet authority that allocates IP addresses and domain
names through the INTERNIC.

TRADEMARK CYBERSQUATTING- LAWS IN INDIA

Unlike many developed countries, in India, we have no Separate Domain Name Protection
Law and cybersquatting cases are decided and dealt with under Trade Mark Act, 1999. The

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Hon'ble Supreme Court in Satyam Infoway Ltd vs Sifynet Solutions Pvt. Ltd. 1 had
observed 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 to be legally protected to the
extent possible under the laws relating to passing off".

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (UDRP)

The Internet Corporation of Assigned Names and Numbers (ICANN) a domain name
regulatory authority has adopted a Uniform Domain Name Dispute Resolution Policy (UDRP)
for dealing with the disputes involving bad faith registrations (Cybersquatting). It is the
process for the resolution of disputes regarding the registration of internet domain names.
UDRP applies to all generic top-level domains (.com, .net, .org, etc.). It sets out the terms and
conditions in connection with a dispute between the registrant and any party other than the
registrar over the registration and use of an Internet domain name. Some of the providers of
UDRP are:

1. The Asian Domain Name Dispute Resolution Centre (ADNDRC)

2. National Arbitration Forum (NAF)
3. World Intellectual Property Organization (WIPO)
4. Czech Arbitration Court, Arbitration Center for Internet Disputes
5. The Arab Center for Dispute Resolution (ACDR)

A complainant in a UDRP proceeding must ensure that the following three elements must be
there for him to succeed:

⚫ The domain name which is in conflict is identical or confusingly similar to

a trademark or service mark in which the complainant has rights;
⚫ The domain name registered by the registrant does not have any rights or legitimate
interests in the domain name; and
⚫ The domain name which is in conflict must be registered and the domain name is being
used in bad faith.

In a UDRP proceeding, some factors will be considered by the panel to make out the case of
bad faith (Cybersquatting). They are as follows:

⚫ Whether the registration of the domain name by the registrant was primarily to disrupt the
business of a competitor;

1
Satyam Infoway Ltd vs Sifynet Solutions Pvt. LtdMANU/SC/0462/2004

Published in Article section of www.manupatra.com

⚫ Whether the registration of the domain name by the registrant was 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;
⚫ Whether the registration of the domain name by the registrant was primarily for the
purpose to prevent the owner of the trademark from reflecting the mark in a
corresponding domain name if the domain name owner has engaged in a pattern of such
conduct; and
⚫ Whether by using the registered domain name, the registrant has intentionally attempted
to attract, for commercial gain, internet users to the registrant's website, by creating a
likelihood of confusion with the complainant's mark.

If any party loses a UDRP proceeding, in many jurisdictions he or she can still bring a lawsuit
against the registrant of the domain name under local law and if a domain name registrant
loses a UDRP proceeding, it must file a lawsuit against the trademark holder within ten days
to prevent ICANN from transferring the domain name.

.IN DISPUTE RESOLUTION POLICY (INDRP)

The .in top-level domain is operated under the authority of the National Internet Exchange of
India or NIXI. Hence, the Disputes related to .in domains are handled by the .IN Dispute
Resolution Policy and the INDRP Rules of Procedure. According to the rules of INDRP, any
person who thinks that a registered domain name conflicts with his legitimate rights or
interests may file a complaint to the .IN Registry on the following grounds:

⚫ The domain name which is in conflict is identical or confusingly similar to

a trademark or service mark in which the complainant has rights;
⚫ The domain name registered by the registrant does not have any rights or legitimate
interests in the domain name; and
⚫ The domain name which is in conflict must be registered and the domain name is being
used in bad faith.

ROLE OF JUDICIARY IN CYBERSQUATTING CASES

As discussed earlier, there is no separate law to deal with the cases of cybersquatting and the
cases are decided and dealt with under Trade Mark Act 1999. Like in every other case under
the Trademarks Act of, 1999 two kinds of reliefs are available to the aggrieved party. They are:

1. Remedy of infringement- As per the Trademark Act,1999 the remedy of infringement is

available to the owner of the trademark only when the trademark is registered.

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2. Remedy of passing off- Whereas, if the owner wishes to avail the remedy of passing off,
no registration of a trademark is required.

VICTIM OF CYBERSQUATTIN IN THE UNITED STATES

Victims of cybersquatting in the United States have two options-

1) He has an option to Sue under provisions of the Anti-Cybersquatting Consumer Protection
Act.
2) He can Use an international arbitration system created by the Internet Corporation of
Assigned Names and Numbers (ICANN).

SOME CASES OF CYBERSQUATTING IN INDIA

1. Yahoo!, Inc. vs Akash Arora2

This was the first case of cybersquatting that came up before the Indian Courts. In this case,
the defendant was using the domain name <yahooindia.com> for Internet-related services
which is deceptively similar to the plaintiff’s trademark “Yahoo.com”. The court in this case
observed that to bring an action of passing off the degree of the similarity of the marks is
vitally important and significant and in this case, there is every possibility and likelihood of
confusion and deception being caused. By looking at both the domain names it is clear that
the same are identical or similar in nature and there is every possibility that the Internet user
will be confused and deceived in believing that both the domain names belong to the same
owner, although the two belongs to two different persons. The plaintiff had 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.

2. Aqua Minerals Limited Vs Mr. Pramod Borse& Anr3

In this case, the plaintiff was the registered owner of the trademark “Bisleri” in India. The
defendant Mr. Pramod Borse& Anr registered the website www.bisleri.com in its name. The
Delhi High Court held the defendant is guilty of infringement of trademark and allowed the
plaintiffto seek the transfer of the website in its name.

2Yahoo!,
Inc. vs Akash Arora MANU/DE/0120/1999
3
Aqua Minerals Limited Vs Mr. Pramod Borse& Anr MANU/DE/0642/2001

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3. Sbicards.com v. Domain Active Property Ltd.4

Sbicards.com was ordered by the World Intellectual Property Organization (WIPO) to be

transferred to the Indian Company from an Australian entity, which steals the domain name
planning to later sell it at a profit to the State Bank of India subsidiary. The board
acknowledged SBI Card counsel’s contention that “the Australian organization was in the
business of purchasing and selling domain name through its site.

4. Rediff Communication Limited v. Cyber booth and Anr.5

In this case, the Bombay High Court granted an injunction restraining the defendant from
using the domain name “RADIFF” or any other similar name, as it was held that when both
domain names are considered, there is every possibility of internet user being confused and
deceived into believing that both domain names belong to one common source and
connection.

CONCLUSION

With the increase in online business activities, the practice of cybersquatting is increasing.
More strict laws are required to punish the offenders of this crime. Like many other countries,
India should also introduce separate laws to deal with these kinds of crimes so that these
crimes can be avoided in the future. The plaintiff should also be provided with an option to
obtain statutory damages. Therefore, such a law should be enacted which will be effective in
protecting the rights of the owner of the trademark in a virtual world as well.

4
Sbicards.com v. Domain Active Property Ltd. Case No. D2005 0271
5
Rediff Communication Limited v. Cyber booth and Anr. MANU/MH/0308/1999

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