SYMBIOSIS LAW SCHOOL, PUNE

Internal Assessment I – Trademark Law

RESEARCH OUTLINE

CYBER SQUATTING AND PROTECTION OFFERED BY TRADEMARK LAW:

NAVIGATING THE DIGITAL FRONTIER

Submitted by:

NAME PRN DIVISION

Aarya Karande 20010125516 D

Shreyas Kulkarni 20010125317 D

Semester: VI, 4th Year

Course: BA LL.B. (H)

Batch: 2020-2025

Submitted to: Dr. Ujwal Nandekar and Dr. Kirti Bikram

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 TABLE OF CONTENTS

Introduction................................................................................................................................2
literature review.........................................................................................................................4
Issues addressed by the research paper......................................................................................7
Objectives...................................................................................................................................7
Methodology..............................................................................................................................7
Conclusion and Suggestions......................................................................................................8
Expected Outcome.....................................................................................................................9
References................................................................................................................................11
case laws...............................................................................................................................11
research papers.....................................................................................................................11
online sources.......................................................................................................................11

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 CYBER SQUATTING AND PROTECTION OFFERED BY
TRADEMARK LAW: NAVIGATING THE DIGITAL FRONTIER

INTRODUCTION

Domain names contribute to business identification in the age of Information Technology.

Originally, a domain name served as an address, but with the advent of new technologies, it
now serves as a corporate identity and marketing tool.

Cyber Squatting involves registering third-party Trademarks, trade names, company names,
and other similarly spelled terms with the intention of earning profit from the prestige and
goodwill of such third parties by deceiving consumers or prospective customers, or by selling
the domain name to the legitimate owner for an exorbitant price.The act of cybersquatting is
committed with the intent of using the goodwill of a renowned company to earn profit. The
Delhi High Court defined cybersquatting 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" in Manish
Vij v. Indra Chugh1.

India does not have an exclusive piece of legislation to tackle the menace of cyber squatting
and cases pertaining to cyber squatting are registered under the Trademark Act, 1999. The
scope of the Trade Marks Act should be extended to provide protection to domain names.

Yahoo! Inc. v. Akash Arora & Anr2 is the first cyber squatting case of India. The
complainant was successful in obtaining a temporary injunction barring the defendant from
using "Yahooindia.com" or any other domain name that is confusingly similar to the
complainant's trademark.

In Rediff Communications Ltd v. Cyberbooth 3 the defendant registered a domain name

"radiff.com" that was similar to the prominent website rediff.com. The court established that
a domain name is more than an internet address and is entitled to the same protection as a
registered trademark. In Tata Sons Ltd v. Monu Kasuri & others 4 the defendant registered
multiple domain names containing the name Tata. The court specifically ruled that domain

1
AIR 2002 Del 243
2
1999 IIAD Delhi 229, 78 (1999) DLT 285
3
1999 (4) BomCR 278
4
2001 IIIAD Delhi 545

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names are not only internet addresses, but also the trademarks of companies, and that they are
of equal significance hence they should get protection under the Trademark Act, 1999.
Several well established businesses like Amul, Fox news, and Mitsubishi have been victims
of cybersquatting.

The authors of this paper believe that effective redressal of cyber squatting requires work to
be done in two directions: acknowledgement of domain name as subject matter of trademark
and prohibition of cybersquatting. With the expansion of e-commerce, a business may have
only an online presence; this online presence will require a domain name that serves as an
identifier for the business. What recourse will the owner of the earlier domain name have if
another entity attempts to misrepresent and profit from its goods under this domain name, for
example by inserting a comma or underscore in the SLD and registering it? If identified as a
trademark, the domain name owner will have legal recourse to terminate the confusingly
similar or deceptively similar domain name. In this light, it is highly recommended that
statutory provisions dealing with cybersquatting be enacted as soon as feasible and in the
meanwhile the Trademark Act can be employed to deal with the same.

The Internet ICANN devised the Uniform Domain Name Dispute Resolution Policy
(UDRP) to handle disputes over the registration of internet domain names. As a signatory to
WIPO India is also required to comply with the UDRP procedure. As a consequence, the
Indian Domain Name Dispute Resolution Policy (INDRP) conforms to the UDRP. There
are a number of provisions in the INDRP that are similar to those in the UDRP.5

The proposed research article intends to the explain how cybersquatting can hamper the
goodwill of a reputed business. It acknowledges the need of establishing a separate
legislation to deal with this issue however it suggests a temporary solution that can be
implemented in the meantime. The paper explores the role played by the Trademark Act in
combating this issue through several judicial precedents. It also provides amendments that
can be made to the Trademark Act to make it more efficient to deal with the issue of
cybersquatting.

5
Kashish Wadhwa, Domain Name and Cyber Squatting, 4 INDIAN J.L. & LEGAL Rsch. 1 (2022).

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 LITERATURE REVIEW

1) Cyber Squatting: A study of legal framework in India6

Author: Shaunak Deshpande

This paper explains the legal framework in international context and in Indian context. This
paper attempts to explore the protection provided to domain names against the malpractice of
cybersquatting. It establishes the need of enacting a distinguished legislation to govern issues
regarding cybersquatting. The paper displays how the Trademark Act has protected the
domain names in the past.

Research gap: It fails to acknowledge that the process of enacting a separate Act can be time
consuming hence a temporary mechanism is required to protect domain name against the
malpractice of cybersquatting. It fails to acknowledge the loopholes in the Trademark Act,
1999 that can hinder the process of protecting domain names. The paper does not suggest
potential amendments that can be made to the Trademark Act to make it competent to deal
with the cybersquatting.

2) Domain name and cyber squatting7

Author: Kashish Wadhwa

This paper explain the dispute resolution mechanism in India with regard to cybersquatting. It
establishes that the Indian courts have acknowledged the malpractice of cybersquatting by
providing remedies through the Trademark Act, 1999. This paper displays how famous
brands like Amul and Fox news have been victims of cybersquatting.

Research gap: The research paper fails to establish the need the of enacting a separate piece
of legislation to deal with the malpractice of cybersquatting which has shown extensive
growth due to the advent of several e-commerce platforms. It explains the role of the
Trademark Act in protecting domain names through judicial pretendants however it fails to
establish the need to expand the scope of trademark law to deal with this issue more
effectively.

6
Shaunak Deshpande, Cyber Squatting: - A Study of Legal Framework in India, 3 INT'l J.L. MGMT. & HUMAN.
1825 (2020).
7
Kashish Wadhwa, Domain Name and Cyber Squatting, 4 INDIAN J.L. & LEGAL Rsch. 1 (2022).

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3. The Web of Cybersquatting: Do we need a Law to clean it8

Author: Rupal Jaiswal

This research paper establishes the foundation for creation of an anti-cybersquatting

legislation and it also examines the role played by the Trademark Act in combating
cybersquatting. It enables us that adding domain names to the subject matter of trademark can
help in combating cybersquatting. It also suggests amendments that can be made to the
Trademark Act, 1999 to make it efficient enough to deal with cybersquatting. It
acknowledges the issue of jurisdiction that can arise as cybersquatting is committed through
online platforms. It also discusses the international framework against cybersquatting that can
pave way for the establishment of a separate legislation.

Research gap: This paper explains the role played by Trademark Act,1999 to protect domain
names and it also provides alternate mechanisms that tackle the same issue however it fails to
compare them. It does not establish which one of them is a better mechanism to deal with the
issue of cybersquatting.

4. Cybersquatting and trademark infringement9

Author: Jeetika Aggarwal and Priyanshi Bainwala

The research paper establishes the significance of domain name. It explains how
cybersquatting can hamper the goodwill of a renowned company. It explains how India deals
with the issue in absence of a distinguished legislation and explores the role played by the
Trademark Act in protecting domain names against cybersquatting. It also discusses the
international framework pertaining cybersquatting.

Research gap: The paper fails to examine the competency of the Trademark Act, 1999 to
deal with this issue. Addition of domain name to subject matter of trademark is not sufficient.
Certain amendments should be made to the Trademark Act. The need of these amendments in
not established and suggestions regarding the same are not provided.

5. Cybersquatting: Blackmail on the information superhighway10

8
Jaiswal, R. The Web of Cybersquatting: Do we need a Law to clean it?
9
Jeetika Aggarwal & Priyanshi Bainwala, Cybersquatting and Trademark Infringement, 4 INT'l J.L. MGMT. &
HUMAN. 1220 (2021).
10
John D. Mercer, Cybersquatting: Blackmail on the Information Superhighway, 6 B. U. J. Sci. & TECH. L. [290]
(2000).

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Author: John D Mercer

This paper talks about the issue of cybersquatting and it explains how this issue has severely
impacted the good will of several reputed brands. This paper deals with the mechanism
involved in committing cybersquatting and its implications.

Research gap: This paper fails to display the legal mechanism that is prevalent to combat the
issue of cybersquatting. It does not provide any suggestions to solve the issue and it merely
revolves around the concept of cybersquatting.

ISSUES ADDRESSED BY THE RESEARCH PAPER

The research paper intends to acknowledge the following issues:

i) Whether domain names can be protected as trademarks under the Trademark Act,
1999?
ii) Whether the Trademark Act,1999 is sufficient to curb the menace of cybersquatting?

OBJECTIVES

i) To examine the linkage between domain names and trademarks

ii) To examine the role of the Trademark Act, 1999 is the process of curbing the
menace of cybersquatting
iii) To analyse the loopholes in the Trademark Act, 1999 that can act as an hurdle in the
process of proving protection to domain names
iv) To device the scope of expansion for the Trademark Act, 1999 that will enable it to
provide adequate protection to domain names against cyber-squatting.

METHODOLOGY

Qualitative and Quantitative methodology will be used for this study. This research will
mainly be doctrinal in nature. The research will be based on secondary data collected from

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various online sources and publications. The quantitative data will include the data on
prevalence of cybersquatting in India and the various trends will be classified with the help of
statistical tools. The qualitative data will be collected from various research articles, online
sources, blogs, journals and existing research papers and publications. Triangulation is the
research strategy that will be used to collect and interpret data.
Since, collecting primary data for this paper is not a viable and practical option as several
aspects of cybersquatting are technical, only the secondary sources of data would be
extensively used in the research for achieving its objectives.
Statistical tools to be used: Microsoft Excel

case laws

research Secondary library

articles sources resources

staturtory
provisons

CONCLUSION AND SUGGESTIONS

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The domain of legal protection against cybersquatting in India is yet to expand. The advent of
information technology has paved way for several malpractices and cybersquatting is one of
them. India does not have an exclusive legislation that prohibits the unethical practice of
cybersquatting. The lack of this exclusive jurisdiction has threatened the goodwill of several
renowned companies. The authors of this paper have identified the need of a distinguished
legislation that deals with cybersquatting however we do acknowledge that the process of
enacting a new legislation can be time-consuming hence a temporary solution is needed to
curb the menace of cyber-squatting which is rapidly increasing. The Trademark Act, 1999 has
been employed by the Indian courts to govern the issue of cybersquatting. The authors
believe that protecting domain names as trademarks is a potential solution to safeguard the
goodwill of companies by protecting their domain names.

The following suggestions can help in curbing the menace of cybersquatting:

1. The definition of mark in Section 2(m)11 should be amended to explicitly include

domain names within its scope.
2. Existence of an identical or confusingly similar trademark in the same class of goods
or services on the offline market should be a relative ground for refusal of domain
name registration as a trademark.
3. The scope of Section 10312 should be expanded to include any person who provides
online access to goods or services or publishes any information about such goods or
services on a website with a domain name similar to an already existing trade mark.
4. If the application for a trademark is pending or the trademark's title is in dispute, the
law must prohibit the registration of a domain name that is identical or confusingly
similar to the one involved in litigation.
5. A new chapter could be added to the Trademarks Act, 1999 that contains a general
prohibition on cybersquatting that violates trademarks. Cybersquatting, for this
purpose, should be broadly defined to include the following
 registration of domain names based on pure speculation;
 registration of a deceptively similar domain name to capitalise on the goodwill
of a specific business;
 registration for the purpose of making money; and

11
The Trademark Act, 1999, S.2(m)
12
The Trademark Act, 1999, S.2(m)

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  registration for the purpose of disrupting the normal functioning of the
Internet.

EXPECTED OUTCOME

Some outcomes that are expected out of the research paper are as follows:
i. how the current trademark legislation can be expanded to provide protection against
cybersquatting.
ii. how to deal with the issue of jurisdiction as courts cannot usually exercise jurisdiction
under national laws when the cybersquatter is situated in another country.
iii. how to trademark the domain name of a company (procedure)

REFERENCES

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 CASE LAWS

1) Manish Vij v. Indra Chugh, AIR 2002 Del 243

2) Yahoo! Inc. v. Akash Arora & Anr, 1999 IIAD Delhi 229
3) Rediff Communications Ltd v. Cyberbooth, 78 (1999) DLT 285
4) Tata Sons Ltd v. Monu Kasuri & others, 1999 (4) BomCR 278

RESEARCH PAPERS

1) Kashish Wadhwa, Domain Name and Cyber Squatting, 4 INDIAN J.L. & LEGAL
Rsch. 1 (2022).
2) Shaunak Deshpande, Cyber Squatting: - A Study of Legal Framework in India, 3
INT'l J.L. MGMT. & HUMAN. 1825 (2020).
3) Jaiswal, R. The Web of Cybersquatting: Do we need a Law to clean it?
4) Jeetika Aggarwal & Priyanshi Bainwala, Cybersquatting and Trademark
Infringement, 4 INT'l J.L. MGMT. & HUMAN. 1220 (2021)
5) John D. Mercer, Cybersquatting: Blackmail on the Information Superhighway, 6 B. U.
J. Sci. & TECH. L. [290] (2000).
6) Harsh Karote, Cybersquatting and trademark issue: uniform domain resolution policy,
Vol 1 Issue 3, Journal of Legal Research and Juridical Sciences

ONLINE SOURCES

1) https://blog.ipleaders.in/cybersquatting-indian-trademark-act/
2) https://articles.manupatra.com/article-details/Cybersquatting-and-Trademark-Issues-
An-analysis-with-reference-to-India
3) https://www.khuranaandkhurana.com/2022/02/04/the-web-of-cybersquatting-are-
laws-needed-to-clean-up-the-web/

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