Internet domain names have an immense market of their own. The world is seeing a new change in the field of communications which has created endless new opportunities for the citizens of cyberspace. The growing importance on the internet has fermented it into a powerful tool for businesses to promote, advertise, and sell products and services. Unfortunately, cybersquatting which is the outcome of dishonest and unlawful conduct has also increased.
Over the past decade, Internet use has grown astronomically, allowing Internet users to have increased control over web page creation, and permitting Internet users to create unique profiles for social networking. With such growth and evolution, the Internet has also become a dangerous venue where individuals hijack domain names and profit off the damage caused to a brand name.For example, where an Internet user to accidentally type “Citybank.org,” instead of “Citibank.org,” into his browser to perform online banking activities, he would stumble upon a website with misleading Citibank advertisements that would redirect him to competitors’ websites. The resulting frustration in being redirected to the wrong website would be directed in part toward Citibank and its goodwill. Such diversions, as in the Citigroup example, are not accidents; rather, they are scams intended to bring Internet users to competitors’ sites so that the domain name owners make a profit off of the Internet user’s mistake.
Cybersquatting occurs when an individual or a corporation registers a domain name that is spelt similar as an existing trademark and which is against the goodwill of the registered Trademark owner and Cybersquatters have been characterized as individuals who attempt to profit from the Internet by reserving and later reselling domain names back to the companies that have spent a huge amount of money developing the goodwill of the trademark.
The concept of cybersquatting originated at a time when most businesses were not concerned about the economic and commercial opportunities available on the internet. Some early entrepreneurs and internet enthusiasts registered the names of some well-known companies on the internet as domain names, with the intent of selling the domain names back to their parent companies when they finally got to know about such activity. Panasonic, Fry’s Electronics, Hertz and Avon were among the early victims of cybersquatters. Now, opportunities for cybersquatters are rapidly decreasing, as most businesses and companies now know that acquiring and registering domain names is a high priority.
What is a Domain Name?
Every resource on the Internet, such as a web page or a file of information has its own address known as Uniform Resource Locator URL. A domain name is part of this address which is assigned to each computer or service on the Internet. Domain name system maps names to a series of numbers or IP addresses. These numbers are then linked with an easily read and remembered address – the domain name. The domain name need not change if the computer or service changes, whereas the series of numbers will. The domain name is intended to be more meaningful to human beings than the series of numbers. The numbers referred to above are linked with the domain name “rs. internic.net”. People who are using the domain name can, therefore, choose easily remembered, and importantly, easily recognizable names in cyberspace.
The Internet Corporation of Assigned Names and Numbers (ICANN) is responsible for the administration of top-level domain names. In assigning a domain, NSI uses a multi-level system, including a top-level domain (TLD) such as .com and .net which are considered worldwide generic. The first step to acquire a domain name is to contact the administrator of the TLD and if the identical requested domain name is not already assigned, the name will be then approved by the administrator. That allocation of IP addresses and domain names worldwide is done centrally. There is a specific registration process involved. The IANA is the central internet authority that allocates IP addresses and domain names through the INTERNIC
Laws in India
Unlike many developed countries, in India, we have no Domain Name Protection Law and cybersquatting cases are decided under the Trade Mark Act, 1999.
That although the Indian Courts have drawn the distinction between a trademark and domain name; wherein the Hon’ble Supreme Court in Satyam Infoway Ltd vs Sifynet Solutions Pvt Ltd; AIR 2004SC3540 has observed that the
“Distinction lies in the manner in which the two operate. 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 Indian Courts though have recognized the lacuna, however, in the absence of explicit legislation, courts apply provisions of the Trade Marks Act to such disputes. The Court in Case (Supra) further 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“.
Disputes involving bad faith registrations are typically resolved using the Uniform Domain Name Dispute Resolution Policy (UDRP) process developed by the ICANN. Under UDRP, WIPO is the leading ICANN accredited domain name dispute resolution service provider and was established as a vehicle for promoting the protection, dissemination, and the use of intellectual property throughout the world. India is one of the 171 states of the world which are members of WIPO.
Role of Judiciary
Though domain names are not defined under any Indian law or are covered under any special enactment, the Courts in India have applied the Trademarks Act, 1999 to such cases.
Like in other cases under the Trademarks Act, 1999 two kinds of reliefs are available:
The remedy of Infringement: Trademark Act permits the owner of the trademark to avail the remedy of infringement only when the trademark is registered. The remedy of Passing off: No registration of the trademark is required in case the owner intends to avail the relief under passing off.
The first case that came up before the Indian Courts was Yahoo! Inc. v. Akash Arora and Another [1999 II AD (Delhi)]; in which an attempt was made to use the domain name for Internet-related services as against domain name i.e. , The Court observed that usually the degree of the similarity of the marks is vitally important and significant in an action for passing off for in such a case there is every possibility and the likelihood of confusion and deception, being caused. When both the domain names are considered, it is crystal clear that the two names being almost identical or similar in nature, there is every possibility of an Internet user being confused and deceived in believing that both the domain names belong to one common source and connection, although the two belong to two different concerns.
Trademark infringement on the Internet is not merely confined to squatting on a domain name; trademark infringement also includes intentionally and abusively reserving metatags similar to famous brands names on search engines such as Google. In this form of infringement, the impostor or squatter uses famous brand names as hidden text in the website, which, in turn, creates search words on search engines to lead the consumer to an impostor website.
The practice of reserving a domain name by a person or an entrepreneur in itself is not unethical but abusing this process to acquire the domain name in the name of a well-known brand or company is unethical. As the internet has now become an immensely important and highly preferred platform for growth and even regular functioning of businesses and to disseminate information, by people and commercial entities in all fields, there is an imperative need for giving adequate protection to the unique domain names just like trademarks and service marks.
It can be appropriately seen from the above mentioned cases that the Indian courts have appropriately taken this view and have repeatedly condemned the practice of Cybersquatting by giving protection to the owner of the trademark or the trade name through granting them injunction compelling the cyber squatters to refrain from using such domain names.