What is domain name?

Domain name is an identification string that defines a realm of administrative

autonomy, authority or control within the internet. Domain names are formed by the
rules and produces of the domain name system (DNS). Any name registered in the
DNS is a domain name. In general, a domain name represents an internet protocol
resource, such as a personal computer used to access the internet, a server computer
hosting a website or the website itself or any other service communicated via the
internet. There are only a limited number of such domains. For example, gov –
government agencies, edu – educational institutions, org – organizations (non profit),
com – commercial business, etc.

In simple terms, domain name is the address of a web site that is intended to be easily
identifiable and easy to remember, such as yahoo.com. These user friendly addresses
for websites help connect computers and people on the internet. Because they are easy
to remember and use, domain names have become business identifiers and
increasingly, even trademarks for the domain names – sony.com, for example,
business attract potential customers to their websites.

Domain Names Be Registered And Protected As A Trademark

Domain names can be registered and protected as trademark at national and

international level, provided that the domain names do satisfy all conditions to be duly
registered and protected like trademark. Any unique internet name which is capable of
identifying and distinguishing goods or services of a company from that of other
companies, and can also act as a reliable source identifier for the concerned goods and
services on the internet, may be registered and thus protected as trademark, if it
satisfies all other rules and requirements for registration which are commonly
applicable to the trademarks. For proper registration of a domain name as a
trademark, this must be unambiguously unique from all other domain names and well
known trademarks on the internet, so that it does not mislead or deceive customers of
other companies engaged in the same or different fields, or violate public order or
morality. Such cases might give rise to instances of trademark infringement litigation.

In the case of Satyam Infoway Ltd v. Sifynet Solutions Pvt. Ltd. , the dispute
which arose was that whether internet domain names are recognizable as other
intellectual properties such as trademark? To which the court held that:

"The original role of a domain name was no doubt to provide an address for
computers on the internet. But the internet has developed from a mere means of
communication to a mode of carrying on commercial activity. 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."

Another issue is the registration of names of popular brands with a slight spelling
variation like pesi.com and radiff.com for the sole purpose of diverting traffic to their
website through typing errors. ‘A significant purpose of a domain name is to identify
the entity that owns the website.’ A domain name should not confuse the consumers
as to the origins of the services or products defeating the principal of trademark law.

In Rediff Communications Ltd. v. Cybertooth & Another , the Bombay High

Court while granting an injunction restraining the defendants from using the domain
name ‘RADIFF’ or any other similar name, held

“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.”

Again, in the case of Info Edge (India) Pvt. Ltd. vs. Shailesh Gupta and Anr. , 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.

CYBERSQUATTING
The internet’s unavoidable presence and use in our daily lives is the pinnacle of
modern technological innovation. However, this progress has also served as a
breeding environment for a variety of illegal activities. Cybersquatting is one such
activity that has gained interntaional and national attention.
Cybersquatting is defined as registering, trafficking, or using a domain name in bad
faith with an intention to profit from the trademark holder’s goodwill, as defined by
the Anti cybersquatting Consumer Protection Act, 1999, it is also known as
domain squatting. The word comes from the phrase “squatting,” which refers to
inhabiting an abandoned place or land that is not the squatter’s own. Most of the time,
the cybersquatter sells the domain name at a premium to the firm or individual who
owns the trademark.

HISTORY OF CYBERSQUATTING
“The rising number of alleged cybersquatting cases shows the growing premium
placed on domain names by companies and individuals operating in the wired
environment” – Francis Gurry
The threat of cybersquatting was raised in the late 1990s when the internet was just
becoming a global sensation. Most firms were unconcerned about the commercial and
economic potential offered by the internet during this time. Cybersquatters bought the
domain names of well-known companies with the intention of selling them to the
concerned company. Early victims of cybersquatting included Panasonic, Hertz,
Fry’s Electronics, and Avon.
TYPES OF CYBERSQUATTING

1. Domain Name Squatting, This is the practice of buying a well-known

company’s domain name to extort money from the parent firm.
In Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd, the respondent
obtained the domain names www.siffynet.net and www.siffynet.com, which
were confusingly similar to the plaintiff’s www.sifynet.com. The Supreme
Court held that “Domain names are commercial identifiers, serving to identify
and distinguish the firm itself or its goods and services, as well as to define its
associated online address”.

1. Identity Theft, domain names are acquired for a fixed period, after which
they expire if they are not re-registered. When a domain name expires, a cyber
squatter can use software tools to register it. Alert angling and extension
exaggeration are two methods of Domain Name identity theft.
2. Uniform Resource Locator Hijacking, commonly known as Typosquatting.
If any typographical errors are made while typing the web URL into the
browser, it is forwarded to a substitute website that is utilized by
cybersquatters to make money. For instance, Google’s typosquatting site
Goggle.com installed malware on visitors’ computers. The malware displayed
pornographic pictures in spam pop-ups and downloaded SpySheriff antivirus,
which damaged victims’ machines.
3. Name-Jacking, In this type of squatting, an individual’s name is acquired as a
top-level Domain Name.

Laws on Cybersquatting in India

INDIAN DISPUTE RESOLUTION POLICY IN INDIA

The Internet Corporation for Assigned Names and Numbers (ICANN) established
the Uniform Domain Name Dispute Resolution Policy (UDRP) to resolve disputes
over the registration of internet domain names. Further,as India is a signatory to the
World Intellectual Property Organization (WIPO), it is required to follow the UDRP
process. As a result, India has developed an Indian Domain Name Dispute
Resolution Policy (INDRP) with UDRP-compliant standards. INDRP has several
provisions that are comparable to UDRP. The following are some of the salient
qualities of the same:

 Appointment of arbitrator for disputes regarding domain names;

 Conduction of Arbitration proceedings should be according to the provisions
of the Arbitration and Conciliation Act, 1996
 The Arbitrator in the caseshould pass a reasonable award within 60 days from
commencement of arbitration proceedings
 Arbitrator shall give reasons for the award

The case of YouTube LLC v. Rohit Kohli, in which the respondent registered the
domain name “www.youtube.co.in,” was a notable one brought under the INDRP’s
purview. The trademark in the domain namebelongs to a corporation called
“YouTube.” The Board found that the domain name was phonetically and
conceptually similar to the complainant’s trademark and hence granted the domain
name transfer to the trademark’s original owner.
In addition, a few clauses of the Information Technology Act of 2000 and
the Indian Penal Code of 1860 may apply in the event of cybersquatting in India.
The following are some suchprovisions:

1. Forgery under Section 469 of the IPC: A person found forging with the
intent to harm the reputation of any party, or knowing that the document
forged will be used for that purpose, shall be punished with imprisonment of
either description for a term that may extend to three years, as well as a fine.
2. Section 66 of the Information Technology Act of 1999: Under this
provision, any person who commits any act referred to in section 43
dishonestly or fraudulently is punishable by imprisonment for a term up to
three years, a fine up to five lakh rupees, or both.
3. Section 66A: This clause punishes anyone who uses a computer resource or
communication device to convey “grossly offensive” or “menacing” material.

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.

2. Remedy of passing off- Whereas, if the owner wishes to avail the remedy of

passing off, no registration of a trademark is required.

Social Media :- New target for a Cyber Squatter to tarnsih the brand

The term ‘Social Media’ came into being as a mechanism or way for people around
the world to interact, communicate, and stay in touch with their friends, family
members, acquaintances, and new individuals using many innovative technologies on
the internet. With the emergence of various social media platforms, like Facebook,
Twitter, Instagram, LinkedIn, and so on, a new type of cybersquatting has been on the
rise, which revolves around registering the trademarked names or brands belonging to
notable entities or individuals on prime social media networks.

Due to the increasing popularity of social media platforms, many organizations and
business companies now own profiles and accounts on such platforms to earn more
loyal customers. Many such platforms also offer verification tags to well-known
individuals and entities to enable them to build strong goodwill and a reputation for
their brand and trademarks.

While Tony La Russa (the former manager of the St. Louis Cardinals and Oakland
Athletics) dismissed his lawsuit against Twitter voluntarily, his dispute showcased the
hazards associated with the username feature on social media platforms. Tony La
Russa had filed a complaint against Twitter alleging cybersquatting. The dispute
involved a Twitter account with Tony La Russa’s name, picture, and description
saying, “Hey there! Tony La Russa is now using Twitter.” This account on Twitter
encouraged the other Twitter users to follow it and receive updates about Tony La
Russa. Tony La Russa believed that the updates shared were defamatory and nasty.
He even contended the account’s creator for creating it with bad faith and making
profits from Tony La Russa’s trademark. However, Tony La Russa ended up filing a
dismissal voluntarily after the parties involved solved the dispute.

The offensive usage of tags and the reservation of usernames on social media
platforms are exceedingly harmful to the trademark holders. When we talk about
Facebook in this scenario, the American multinational technology conglomerate
accepts that username infringement can be a serious issue, specifically in cases when
someone else tries building a reputation with a trademark on which its rightful owner
has spent significant time, money, resources, and effort building. Cybersquatting
through infringement of usernames prohibits the trademark owners from using such
known usernames and obstructs their ability to use their trademarks on those specific
social media channels.

It is imperative to keep in mind that reservation of usernames with bad intent can
defame and tarnish the trademark’s reputation as well, eventually leading to
trademark owners losing control over the reputation of their respective trademarks.
Let us discuss Clean Flicks, Inc. v. Daniel Dean Thompson to understand this aspect
better. In this lawsuit, cybersquatting committed by the defendant spoilt the Clean
Flicks trademark. To put it straightforwardly, the defendant registered Clean Flicks
Media as his username on Myspace, a social networking service based out of the
United States. The defendant tried making others believe that he was one of the
founders of Clean Flicks Media. Finally, he was arrested for possession of child
pornographic contents, statutory rape, and many other incidents and crimes reflecting
an image opposite to the family-friendly image portrayed by Clean Flicks. Due to the
arrest of the defendant, news stories associated Clean Flicks Media with him as
Myspace and Clean Flicks had to enforce legal action to safeguard their prestige.
Therefore, it would be wise to mention that reserving usernames through cheating
leaves trademark owners with no control over the reputation of their marks, which, in
turn, could end up harming their image and trademarks.

Measures & Steps Taken by Social Media Platforms to Reduce Cybersquatting

Facebook

If registered trademarks are infringed upon on Facebook, the platform reserves the
exclusive right to reclaim usernames. Trademark holders and proprietors are
accountable for reporting Trademark Infringement instances using Facebook’s
online ‘username infringement form’ or ‘trademark report form.’ Moreover,
usernames on Facebook need ‘mobile number authentication,’ which implies that
obtaining a username requires a user to validate his account using his mobile device.

Instagram

The free, online photo and video-sharing social networking service – Instagram – is
the new trending platform among millennials. Since the number of Instagram users is
increasing exceptionally, there have to be adequate measures to avoid cybersquatting.
Instagram follows the concept of ‘verified accounts’ to control identity confusion. On
Instagram, verified accounts are marked with a blue tick, which indicates that the
profile is confirmed by the platform to be the authorized profile for the brand or
individual representing it.

Twitter

Twitter’s ‘name squatting regulation’ prohibits cybersquatting, thereby eliminating

the occurrence and creation of ‘username for sale’ profiles or accounts on the
platform. Twitter ensures that selling, extorting money, or other forms of payment in
return for usernames leads to the account suspension of the party or individual
involved in the same. Furthermore, the platform has an ‘impersonation policy’
prohibiting non-parody impersonation.

An account on Twitter is said to be guilty of impersonation if it provides incorrect

details or creates confusion in the minds of others. Accounts with such a motive may
be permanently suspended on Twitter. The platform’s standard to define parody is
whether or not an average person would be knowledgeable to realize the fake profile
is a joke. Lastly, following Tony La Russa’s lawsuit, Twitter introduced the concept
of ‘verified accounts’ to prohibit identity confusion. The ‘verified account’ insignia
on a Twitter profile indicates it is a legitimate and genuine account.