Topic: Domain Dispute in India: Need of Laws for Protection

Name: Harshita Gadiya

Enrolment No.: 312018004

Module: Intellectual Property Rights

Module Leader: Ms. Arpita Yadav

School of Law

BBA LLB 18
Introduction

Internet has been a predominant boom catalyst because the ball into the modern technology
and can lie equalled with the manufacturing revolution to that amount took place among the
nineteenth century. Internet was at the start simply seen as a communication device but inside
solely a not much years it has grown to be certain regarding the just important tools for
current period commercial enterprise transactions, governance policies and neighbourly
interaction. Domain Names are an essential issue about whether we use Internet.
Cybersquatting is a risk in opposition to the rights of Domain Name Holders. With the
advancements of Internet science yet fast growth about E-commerce of India, Websites have
become a vital race of commercial things to do because organizations round the world. It
becomes quite necessary as of certain a present-day technology the Domain Names which
refers in imitation of the name of an internet site yet the address should hold a criminal safety
beneath a unique system from practices as Cybersquatting. Domain Names bear become a
treasured asset for the businesses.

When we talk about the intellectual property of intellectual property, we often confuse that
cyber-space and cyber-attackers can be treated in this area when explicitly classified under
the IT ACT 2000. But in some cases, there are subjects that cannot be made part of the
information technology but rather require attention relative to intellectual property rights and
this concept of cybersquatting is therefore such a subject.

Cybersquatting and domain name the two concepts are dealt with in the Trademark Act,
1999, not by the explicit provision, but by the Indian court approach. The crime rate in the
field of cybersquatting attended a drastic increase in the decade of the past affecting the rights
of the holder of intellectual rights.

Disputes Arising out of Domain Name

Second level domain names (SLD) are the usual objectives that form the subject of disputes
in the form of what is known as cyber scientist. Cybersquatting is a malicious practice to
scare away consumers by accessing the true owner of goods. Such a practice, therefore,
implies the abusive registration of a domain name in the bad faith when using the registered
trademark of another person or the Soundalikes / LookAlikes of that brand.
Cybersquatting: Cyber Scatting is the practice of registering a domain name with the
applicant where the person is registering it doesn't have an interest in the domain but register
it with hope sold at a much higher price to benefit.

The term “cybersquatting” has been defined by the Indian courts 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”.1

Domain Name This is the practice of buying a well-known company's domain

Squatting name to extort money from the parent firm.

-Typo squatting which is also called URL Hijacking. In this form

the Internet users make any typographical errors while inputting
Typosquatting
the web address in the browser this leads them to a substitute
website which is created by cybersquatters for earning money.

Cybersquatters with the help of special software easily invigilate

the expiration dates of targeted domain/website names. After
Identity Theft registering the domain names that are lapsed, cybersquatters may
link them with websites that are a clone of the websites of the
previous domain name owners.

This is the act of registering a name having goodwill of its own or

Name Jacking which is reflective of endorsement by the person whose name is
included in the domain name.

Domain Name Vs. Trademark

A domain name is an easy net protocol address to that amount allows customers to get entry
to the production and website out of anybody nook about the world. A valid domain name
consists on twain parts, the Second-Level Domain and the Top-Level Domain. The previous
is the unique identification on a brand, via a unique name, i.e., Google, Amazon, Flipkart, etc.
The recent forms the accessibility part of the area name, thru suffixes like.org, in., .gov, etc.

1
Manish Vij And Ors. vs Indra Chugh And Ors. on 29 January, 2002.; https://indiankanoon.org/doc/492412/
A trademark is an exceptional picturesque representation concerning the product. It approves
consumers in imitation of perceive the production or prevent its abuse in the market.

A trademark promotes a brand fame while a domain name protects that beyond unauthorized
usage. A trademark identifies a manufacturer while a domain name will increase its
accessibility. The territorial authority over trademark then domain name will become a
staunch distinction among the two. A trademark is registered within a country, while a
domain name is recognized at some point of the ball without anybody territorial time about
the same.

Current Legal Scenario

India does not bear a sui generis yet some sordid dictation to that amount addresses the
trouble over cyber-squatting. India has lengthy witnessed the problem in one shape then the
other. The forward occasion used to be beside Yahoo.com, the e-mail work provider, within
the action of Yahoo Inc. vs. Aakash Arora & Anr, where the infringer was once held liable.

However, as per the prevalent laws, cyber-squatting be able be challenged through course on
case of national courts through launching an intercession proceeding before an ICANN-
approved panel then for my part sending a cease-and-desist observe in imitation of the
cybersquatters. A law executes additionally stay facing including the National Internet
Exchange concerning India (via in registry), as is regarded because of its fast arbitral
proceeding on delivering a pain in a mouth. Therefore, the Arbitration & Conciliation
Act regarding 1996 is deployed whilst making use of the .IN Dispute Resolution Policy
(INDRP).

What the country wishes is a system that acknowledges domain-name disputes with ultimate
seriousness. Until then, the Trademark Law shall interpret the definition regarding a mark
between extra extensive connotations below quantity 2(m)2 in accordance with consist of
domain names as like well. It pleasures enable get right of entry to according to court along
proper felony composition in imitation of remember over in conformity with forestall
vagueness.

2
“mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods,
packaging or combination of colours or any combination thereof;
A fascicle on corporations in India hold additionally confronted the disturbing on
cybersquatting in the current past. India has an absolutely unique legal position beyond as
about the developed countries. India does no longer have a Domain Name Protection
dictation after bear together with Cases over Cybersquatting. The Indian Courts have dealt
with cases referring to cybersquatting the use of Trade Mark Act,1999

The Hon’ble Supreme court has expressed within the suit about Satyam Infoway Ltd versus
Sifynet Solutions 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”.3

1. Is there a provision for registration of domain name as a trademark?

Domain names from its very nature are just like an address, for e.g., House no. 14, Vesu
Road, Surat. The domain name in itself is a completely unique identification to the volume
that it can't be equal for 2 persons. A domain name can encompass call of any individual or
any time period that's descriptive, which consequently deduce that domains can't be below
the purview of Trademarks. In this on-line realm wherein e-trade has won recognition day via
way of means of day, area call turns into the most important supply for figuring out items and
services. Therefore, ensuing Indian judiciary to deal the idea of area call infringement below
Trademark regulation.

2. If now no longer Trademark, which regulation need to govern the offence of

Cybersquatting in India?

Currently, seeing the popularity of regulation found in India, the topics associated with
cybersquatting may be delivered below the awareness of courtroom docket via way of means
of litigation via way of means of sending quit and desist letters to the cyber squatters, and via
way of means of beginning Arbitration intending below regulations installed via way of
means of ICANN. The disputes also can be registered to National Internet Exchange of India
below in registry which gives fast resolution. The Information Technology Act, 2000, being
the principle regulation the movement of cyber legal guidelines stays silent withinside the

3
Satyam Infoway Ltd vs Sifynet Solutions AIR 2004 SC 3540; https://indiankanoon.org/doc/1630167/
topics of Cybersquatting. Thus, the precept of passing- off comes into play for area call
disputes.

Jurisdictional Issue of Domain Name

The mere reputation of domains does now no longer make sure their protection. Lack of any
precise rules to guard the net identifiers of manufacturers creates a vacuum of criminal
resorts. The Trademarks Act, 1999, has no extra-territorial jurisdiction. Thus, domains locate
themselves remediless outdoor the Indian borders. Furthermore, the global statutes guiding
domains and trademarks, do now no longer shape a binding impact on Indian courts.
Remedies beneath Neath World Intellectual Property Organisation (WIPO), Internet
Corporation for Assigned Names and Numbers (ICANN) and the Uniform Domain
Resolution Policy (UNDP) do now no longer follow to the jurisdiction of courts and can't be
protected withinside the precept of res judicata.

The precept become reiterated with the aid of using the Court withinside the case of
Beiersdorf A.G. vs Ajay Sukhwani, even as handling the tussle of a famed trademark of
"NIVEA". The Court, even as figuring out upon the problem, denied the defendant`s
argument of the problem already being settled with the aid of using WIPO. The courtroom
docket reasoned that the selections with the aid of using global companies do now no longer
shape a stand just like that of the arbitral award, and the equal can't be held to be binding at
the events or at the courtroom docket. The petition of the plaintiff succeeded, presenting him
rights over the call and domain. Similarly, withinside the recuperation healthy of Citi Corp.
vs Todi Investors, the Delhi High courtroom docket allowed the recuperation and the petition,
enunciating that IN Dispute Resolution Policy (INDRP), does now no longer exhaust the
treatment of the events.

Indian Dispute Resolution Policy

The Internet Corporation for Assigned Names and Numbers (ICANN) established the
decision-resolution policy of uniform domain names (UDRP) to resolve disputes over the
registration of Internet domain names. In addition, as India is a signatory of the World
Intellectual Property Organization (WIPO), it is required to follow the UDRP process. As a
result, India has developed a dispute resolution policy of Indian domain names (INDRP) with
standards compatible with UDRP. INDRP has several provisions that are comparable to
UDRP. The following are some of the outstanding qualities of it:

Appointment of arbitrator for disputes with respect to domain names;

 The conduct of arbitration procedures must be in accordance with the provisions of

the Arbitration and Conciliation Law, 1996
 The referee in the Cases should will approve a reasonable award within 60 days after
the start of arbitration procedures
 The referee must give reasons for the prize.

The case of YouTube LLC V. Rohit Kohli, in which the respondent recorded the domain
name "www.youtube.co.in", was remarkable that he was presented under the port of INDRP.
The trademark in the Name belongs domain to a corporation called "YouTube". The Board
found that the domain name was phonetically and conceptually similar to the trademark of
the plaintiff and, therefore, awarded the name of the domain to the original owner of the
registered trademark.

In addition, some clauses of the Information Technology Act of 2000 and the India Criminal
Code of 1860 can be applied in case of cyber charming in India. The following are some of
the supposed:

Counterfeiting under Article 469 of the IPC: a person found forging with the intention of
damaging the reputation of any part, or knowing that the forged document will be used for
that purpose, will be punished with the imprisonment of any of the description by a term that
It can extend to three years, as well as a fine.

Section 66 of the Information Technology Act of 1999: Under this provision, anyone who
commented any act mentioned in Section 43 is punishable by a result up to three years, a fine
of up to five lakh rupees, or both.

Section 66A: This clause punishes anyone who uses a computer or communication resource
device to transmit "severely offensive" or "threatening" material.

Corona Virus as an Opportunity for Cybersquatters

A catastrophic virus swept the planet in the year 2020. Today, the globe is trying to stay alive
in the face of the deadly virus Covid-19. The virus has claimed the lives of many people and
continues to do so, and it may do so for some time. Many people, rich and poor, have taken
advantage of this circumstance to serve the needy to the best of their abilities and to give
back to the world. Generosity and charity stories have swept the globe. On the other side,
there are fraudsters who will take advantage of any scenario to deceive for financial benefit.
The 'indicators of origin' for the internet, domain names, are exploited as vehicles to
distribute fraud online users who are unwary and often vulnerable.4

Scammers and plagiarizers are by their very nature opportunistic. They are on the lookout for
an opportunity to strike, and this pandemic was the best they could have hoped for. Due to
the ongoing national and worldwide lockdown, the entire world had gone online. Everything
was sold and purchased online, from food to groceries to prescriptions to fruits and veggies
and everyday items, making it an opportunity for those who just want to make money off of
everything. The 2009 swine flu pandemic is an example of taking advantage of a scenario
like this. At least four UDRP complaints were made by the pharmaceutical corporation
Hoffmann-La Roche against domain names that contained the words "swine” and "flu," as
well as one of its trademarks, which it won each time.5

When something new arises, people from all over the world duplicate it, whether it's a dance
routine, a meme challenge, an Instagram reel video, or something else entirely. Similarly,
when a word, phrase, or logo becomes popular, there is a rush to register it as a trademark.
Unsurprisingly, domain names, the most widely used internet medium, have become part of
the same pattern, in which a new term or phrase that is trending globally is merged with other
words, letters, or numbers to be registered as a domain name. Coronavirus and COVID-19,
two new words that have emerged in this pandemic, have been evidently combined with
several well-known brand names to create a new domain name and make money, you need a
name for registration. WIPO had administered 50,000 UDRP-based procedures spanning
almost 91,000 domain names and involving parties from over 180 countries by November 20,
2020.6
4
James Taylor, "Cybersquatting and Opportunism: The Heightened Threat During Coronavirus",
Globaldatinginsights (2020).

5
Doug Isenberg, Cybersquatters Take Advantage of 'Coronavirus' Domain Names, available at
https://giga.law/blog/2020/3/26/cybersquatters-coronavirus.
6
World Intellectual Property Organization, "WIPO Cybersquatting case filing surges during COVID-19 Crisis",
(WIPO 2020)
Online Dispute Resolution

ODR, at its most basic level, refers to the use of ICT tools to help parties resolve their
conflicts. This includes using a variety of communication technology, such as audio-visual
tools, ranging from simple to complex. Phones, smart phones, LED screens, spreadsheets,
and e-mail are just a few examples and communications applications, with the goal of
facilitating dispute settlement at its core without any actual gathering of the parties ODR, on
the other hand, should not be interpreted to mean only e-ADR. At a higher level, through the
application of algorithmic aid, ODR can act as a fourth party at this stage. Tools that aid in
the resolution of disputes between parties. This type of technology can be in the form of
intelligent decision support systems, clever negotiating tools, and automated resolution are all
examples of intelligent decision support systems as well as machine learning. Eventually,
ODR can also assist with multi-door conflict resolution by using custom-made mechanisms
for specific parties and their disputes.

Current Scenario

Despite being in the early stages of ODR development, India has shown early promise in
ODR integration at all three levels–the judiciary, the government, and the private sector.
Some of the first during the COVID-19 induced lockdown, developments were extremely
valuable where brick-and-mortar courts and dispute resolution bodies operate came to be
severely limited.7 For example, the Supreme Court will hear arguments in April 2020 was
able to list 357 cases for hearing, accounting for only 2.48 percent of all cases. The number of
cases scheduled to be heard by the Supreme Court in April 2019 (14381 cases). 8 As a result,
while the courts and, to a lesser extent, ADR centres have been responsive, much more needs
to be done to ensure that ICT tools do not come to grinding halt.

A strong ODR framework in India will necessitate a comprehensive data protection law
capable of addressing both confidentiality and security concerns that frequently arise. As a
result of ODR processes, in December 2019, the Ministry of Electronics and

7
Secretary General, Supreme Court of India, ‘Circular’ (Supreme Court of India, 26 March 2020) accessed 2
October 2020
8
Shreya Tripathy and Tarika Jain, ‘Caseload During COVID-19 (April 2020): A Look at the Numbers’ (Vidhi
Centre for Legal Policy, 2020) accessed 23 September 2020
 Telecommunications tabled The Personal Data Protection Bill, 2019, was introduced in
Lok Sabha by the Ministry of Information Technology Sabha. A Joint Parliamentary
Committee is currently reviewing the Bill (JPC) after consulting with experts and
stakeholders.9

Challenges

It is generally difficult to adopt ODR in nations where people rely heavily on the courts and
when ADR alternatives for dispute settlement are underutilised. Despite the expenses and
delays involved with the court, there is a lack of trust in ADR for a variety of reasons that
have already been discussed elsewhere. However, in the future, it will be necessary to build
capacity in order to deliver high-quality ADR services via mediation and arbitration. This
will aid in a quicker transition to ODR.

In Garware Walls Ropes Ltd. v Coastal Marine Constructions & Engineering Ltd.10, the
Supreme Court found that an arbitration agreement cannot take effect until the stamp duty is
paid. Despite the fact that the Central Government has made the process of paying stamp duty
through e-Stamps and online payment easier, state laws still require parties to attach a copy of
the eStamp certificate to the agreement as proof of stamp duty payment.

The antiquated process clashes with the end-to-end online dispute resolution process and
poses roadblocks for ODR. Furthermore, there are no provisions in India for document
notarization via the internet. In Afcons Infrastructure Ltd v Cherian Varkey
Construction, the Supreme Court declared that court-ordered mediation sessions are deemed
Lok Adalat, and so settlements obtained via such proceedings are enforceable under Section
21 of the Legal Services Authorities Act, 1987.11

Cases Details
 Yahoo! Inc. v Akash Arora In this case the respondents were victimisation the domain name
and Anr "yahooindia.com," which was identical to the plaintiff' trademark
"Yahoo," one amongst the foremost vital verdicts on trademark passing
off through domain names were handed down. The respondents, on the
9
Ministry of Parliamentary Affairs, Joint Committee on the Personal Data Protection Bill, 2019 seeks views and
suggestions (Press Information Bureau, 3 February 2020) accessed 28 September 2020
10
Garware Walls Ropes Ltd. v Coastal Marine Constructions & Engineering Ltd. 2019 SCC Online SC 515
11
Afcons Infrastructure Ltd v Cherian Varkey Construction Co (P) Ltd (2010) 8 SCC 24

Reddif Communication
Limited v Cyberbooth and
Anr
SBI Card and Payment
Services Private Limited vs
Domain Active Property Ltd
Indian Oil Corp Vs Nitin
Jindal
Vodafone Group Plc v. Rohit
Bansal
Tata Sons Limited and Anr
v. fashion ID Limited
Acqua Minerals Limited. v.
Pramod Borse & Another
Arun Jaitley v. The Network
Solutions Pvt. Ltd
opposite hand, claimed that the services offered didn't meet the
definition of merchandise below the Indian Trademark Act. Yahoo, on
the opposite hand, was granted associate injunction since net services
are considered goods worldwide.
In this case the respondent had registered the name "radiff.com," that
was a dead ringer for the plaintiff' domain name "reddif.com." The
court recognized the domain name as a registered trademark. during
this case, the court dominated in favor of the petitioner, finding that a
site name could be a valuable company asset.
Payment Services Private Limited has filed a claim against an
Australian entity on Domain Active Pty Limited registered domain
name www. sbicards. com similar to products of SBI Card, a
subsidiary of State Bank of India. The Regulatory Commission finds
that the Australian legal entity has registered the domain name in bad
trust.
The disputed domain name indianoil.org is similar to the plaintiff's
trademark "INDIAN OIL" except for the addition of the .org notation.
The trademark "INDIAN OIL" is famous and has a considerable
reputation attached to it. The order has apparently been passed by
Christopher J Pibus, Sole Member of the WIPO Administrative Group,
who stated that Indian Oil Corp has the exclusive right to use the
domain name because it is a well-known and operating company Nitin
Jindal to transfer website ownership.
The arbitrator in this case found that the element of bad faith was
established on part of The panel found that the defendant intentionally
registered the domain name "vodafone. co. in" This case ordered the
transfer of the domain name to the Complaining Party. a civil court in
India and therefore if the aggrieved party intends to make a claim, then
The general civil court can make an order under the General Court.
The Delhi High Court held that using an equivalent or similar name
could lead to user redirection which could lead to those users
mistakenly accessing one name and not another. This is possible in e-
commerce with its rapid growth and instantaneous (and virtually
unlimited) accessibility to users and potential customers, especially in
areas of overlap.
Defendant Mr. Borse registered a domain name www.bisleri.com in his
own name, which is similar to a trademark of Bisleri in India. The
Delhi High Court stated that the defendant was liable for trademark
infringement which allowed the transfer of the domain name to the
plaintiff's name.
Mr. Jaitley is a prominent personality in India. He is the former
Minister of Finance of India (2014-2019). The defendant in this case
registered the domain name www.arunjaitley.com. Mr. Jaitley had
 worked tirelessly to obtain the name from the offender, but the
defendant wanted a price much higher than the original cost. The Delhi
High Court concluded that the defendant had committed an offense of
offending the registration of a famous person's domain name. The
domain name has therefore been transferred to Mr. Jaitley.

Conclusion & Recommendations

New Legislation: We are now in the third decade of the 21st century, and the internet is
widely used. There are no unique laws in India that regulate or oversee cybersquatting.
Cybersquatting should be governed by a separate law that regulates and governs the concept
of cybersquatting. Furthermore, there are no set remedies or penalties for cybersquatting;
until today, incidents of cybersquatting were determined on an individual basis, according to
the judge`s view. Some of the following points must be included in the proposed legislation:

Recognition of domain name as a registered trademark

Remedies for passing off

Remedies such as transferring of the domain name including the original trademark to the
original trademark holder

Independent Adjudicatory Body: At present, cybersquatting cases are handled by the

courts, but there is no distinct body to handle cybersquatting cases. The government should
set up a court to deal with cybersquatting cases, and the appointed judge must be an expert in
the field. Not only does this help handle cybersquatting issues with a high level of
competence, but it also eases the burden of judicial authorities' cases. It also helps to resolve
the case quickly. Judiciary activities in cybersquatting and trademark issues under the
Trademark Law of 1999: Courts are now active in tackling cybersquatting cases and are
aware of the threat posed by cybersquatting. As the use of the Internet increases over the next
few years, India currently does not have a specific cybersquatting law, so strict judicial
measures will be needed to combat cybersquatting.

Cybersquatting at present is the quickest developing cybercrime which desires

instantaneously interest and care. Every invention and discoveries include pros and cons, so
is the case with the net. With India being one of the finest customers of net there have to be
right legal guidelines to cope with scammers and cybercrimes. In my view, the legal
guidelines have end up vintage and the troubles are new, consequently those vintage legal
guidelines want to be refurbished. This is an age of net, wherein the whole lot is only a click
on away, consequently now no longer offering the actual proprietors of the internet site with a
right safety will bring about greater instances of the hastily developing cybersquatting. Law is
made for the gain of the society and desires to be renewed after each decade or every time it
seems that there's a want for its renewal. The Alternative Dispute agreement installed
beneathneath WIPO or ICANN had been a fulfilment to a splendid extent. More emphasis
may be given at the registration of case associated with cybersquatting to be completed
beneathneath them. These are a number of the issues and proposal for the equal in my view. I
trust the Indian Judiciary have constantly performed a splendid lively function in being a
changemaker withinside the society and feature constantly impacted the society with their
sudden decisions, so can be nowadays or withinside the coming instances beforehand they
may apprehend the want for a powerful regulation for the offences of cybersquatting.