Domain Names and Cyber Squatting in India

DOMAIN NAMES

We have addresses for our homes and offices. The same way domain names are nothing but simple forms of addresses on the internet. These addresses enable users to locate websites on the net in an easy manner. Domain names corresponds to various IP (Internet Protocol) numbers which connect various computers and enable direct network routing system to direct data requests to the correct addresses. In other words, a domain name is a “uniform source locater”.[1] Besides locating sites, domain names also have a function of identifying business and their goods and services on the net, which gives them an edge over the competitors. The introduction of new generic top level domains (GTLDs) to complement those already existing (.com, .org, .net, .edu, .gov, .mil and .int) has been the subject of intense debate for a number of years. The ICANN (Internet Corporation for Assigned Names and Numbers) has played a very important role in getting these new domain names passed. The domain name can be registered by approaching any ICANN accredited registrar.

Further, domain names can be categorized as follows:

TLD – Top-Level Domains

These are at the highest level in the DNS structure of the Internet. There are several different types of TLD’s, being:

ccTLD – country code Top Level Domains

Two letter domains are established for geographical locations; for example; .in signifies India. When originally designated, usually only residents of a country could register their corresponding ccTLD; but over the years quite a few countries have allowed parties outside their shores to register website names. An example of this is Tuvalu (.tv).

In the case of .in domain names, strict rules are still in place (and that’s a good thing). For example, .in registrants must still be India or have registered business interests in India. The registration eligibility criteria for in names has meant .in is still strongly associated with India and has fostered a great deal of trust and confidence in local and even overseas online shoppers.

gTLD – generic Top Level Domain

The best known generic TLD’s include .com, .net, .biz, .org and .info – these can be registered by anyone, anywhere in the world. However, some of the new gTLD’s more recently released have various restrictions.

IDN ccTLD – internationalised country code top-level domains

A top-level name with a specially encoded format that allows it to be displayed in a non-Latin character set (i.e. special characters).

Below the TLD’s are various other levels:

Second level

Directly below a TLD in the DNS hierarchy, there is SLD, e.g. xyz.com

In simple terms, a second level domain is the name just to the left of the domain extension, the .com or .net. The website Microsoft.com was reserved for explaining the relationship between top-level domains (TLDs) and second level domains (SLDs). Here, the word “Microsoft” – directly to the left of the final dot – is the second level domain. In the website Microsoft.com, the word “Microsoft” is the SLD.[1]

Third level

Directly below a second level in the DNS hierarchy. e.g. Microsoft.com.in

The difference between second and third level can be a little confusing. For example, Microsoft.com is considered a second level domain, but Microsoft.com.in would be classed as a third level. In here, ‘.com’ would ne TLD, The SLD will be the word ‘Microsoft’ and the third level domain would be ‘.in’.

Subdomain

It is a Part of a higher ranked domain name in DNS hierarchy; e.g. Microsoft.hotmail.com.in[2]

Some services offer subdomain “registration” – but this usually isn’t ideal for businesses and should probably be avoided for establishing a commercial website as the registrant of the upper hierarchy name has control over the address. Having your own name can also help with credibility.

DOMAIN NAMES IN INDIA

It is a general practice where companies desire to obtain such domain name which can be easily identified with their established trademarks. This helps the public to identify the company as there is no physical contact between the two of them. Domain names and trademarks are connected with each other. If a company or an individual register a domain name which is similar to or identical to someone else’s trademark or domain name and then tries to sell the same for a profit. This is known as ‘cybersquatting’.

Domain names are big business nowadays, for the past several years, domain names, the “real estate of the Internet”, have generated substantial returns for savvy investors, who often refer to themselves as “domineers.” Today, a domain name holder can display pay-per-click advertising on a website, and sit- back and let the money roll in while Internet users click on those ads. A single domain name can bring in hundreds of dollars a day, and many domain name holders have thousands or even millions of domain names.

MEANING OF CYBER SQUATTING

The word ‘squatting’ means occupying an abandoned or unoccupied space or building, usually residential, that the squatter do not own, rent or otherwise have permission to use.[3]

So Cyber-squatting refers to the bad faith registration of a domain name containing another person’s brand or trademark in a domain name. It can be defined as registering, trafficking in, or using a domain name with bad-faith i.e. mala fide intent to make profit from the goodwill of a trademark belonging to someone else. The cyber squatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price. With the domain prices falling and more top level domains (.biz, .cn, .mob and lately .in) getting accredited, cyber squatters are in fulltime business .

Categories of Cyber Squatting:

Cyber Squatting can be of various categories, most commonly seen is typo squatting, when a cyber squatter registers domain names containing variant of popular trademarks. Typo squatters rely on the fact that Internet users will make typographical errors when entering domain names into their web browsers. Some common examples of typo squatting include:

The omission of the “dot” in the domain name: wwwexample.com; A common misspelling of the intended site: exemple.com

A differently phrased domain name: examples.com

A different top-level domain: example.org

Daniyal Waseem of Quetta in Pakistan was using the domain name ‘rediffpk.com’. To this, the NASDAQ-listed Indian firm had contended that the disputed Internet site was identical in part and confusingly similar as a whole to the ‘Rediff’ trademark, for which it has rights. Finding that Waseem had no rights to the REDIFF mark the WIPO Panel concluded the proceeding by transferring Rediff.com.pk to the Indian REDIFF trademark owner Rediff.com India Ltd[4].

Moreover cyber squatters also rely on the fact that trademark holders often forget to re-register their domain names, because domain registration is for a fixed period and if the owner does not re-register the domain name prior to expiration, then the domain name can be purchased by anybody. Cyber squatters will snatch up a domain name as it becomes available. This process is often referred to as “renewal snatching.”

LEGAL SCENARIO

Some countries have specific laws against Cyber Squatting beyond the normal rules of trademark law. The United States, for example, has the U.S. Anti-Cyber Squatting Consumer Protection Act (ACPA) of 1999[5]. This expansion of the Lanham (Trademark) Act (15 U.S.C.) is intended to provide protection against Cyber Squatting for individuals as well as owners of distinctive trademarked names.

A victim of cyber Squatting in the United States has two options:

i) sue under the provisions of the Anti Cyber Squatting Consumer Protection Act (ACPA), or
ii) use an international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN).

In court system, jurisdiction is often a problem, as different courts have ruled that the proper location for a trial is that of the plaintiff, the defendant, or the location of the server through which the name is registered.

Recognizing the problems raised by clash between domain name system and trademarks, the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre has developed an online Internet based system for administering commercial disputes involving intellectual property. This Dispute Resolution Mechanism is unique in that it is designed to be used online both for document exchange and for filling of evidence. However, the original documentary evidence will still be needed to be filled in a physical form. The dispute resolution is simply signed and thus, providing an inexpensive and efficient service and does not in any way seek to take the place of national jurisdiction. A successful complainant’s remedy is limited to requiring the cancellation of the registrant’s domain name or the transfer of domain name registration to the complainant[6].

The procedure will be handled in large part online and is designed to take less than 45 days with a provision for the parties to go to courts to resolve their disputes or contest the outcome of the procedure.

Internationally, the United Nations copyright agency WIPO (World Intellectual Property Organization) has, since 1999, provided an arbitration system wherein a trademark holder can attempt to claim a squatted site. In 2006, there were 1823 complaints filed with WIPO, which was a 25% increase over the 2005 rate. In 2007 it was stated that 84% of claims made since 1999 were decided in the complaining party’s favour[7].

WIPO is the UN’s specialized agency for developing a balanced and accessible international system in the field of intellectual property rights.

LEGAL POSITION IN INDIA

In India victims of Cyber Squatting have several options to deal with Cyber Squatting. These options include: sending cease-and-desist letters to the cyber squatter, bringing an arbitration proceeding under ICANN’s rules, or bringing a lawsuit in court. Whatever strategy a victim of Cyber Squatting elects to use, that person should not dismiss the serious effects that Cyber Squatting can have if left unchecked[8].

A case could be filed with the .in registry handled by National Internet Exchange of India(NiXI) who brings the matter to fast track dispute resolution process whereby decisions are transferred within 30 days of filling a complaint.

Like always our legal system is silent on this matter too, there is no provision in the current or proposed Information Technology Act[9] in India to punish cyber- squatters, at best, the domain can be taken back. Though there is no legal compensation under the IT Act, but the Trademarks Act, 1999 provides for penalties to grant compensation to victim companies to deter squatters from further stealing domains. Most squatters however operate under guise of obscure names.

Under NIXI, the IN Registry functions as an autonomous body with primary responsibility for maintaining the .IN ccTLD (country code top-level domain) and ensuring its operational stability, reliability, and security. It will implement the various elements of the new policy set out by the Government of India and its Ministry of Communications and Information Technology, Department of Information Technology.

LAWS IN INDIA

Unlike many developed countries, in India we have no Domain Name Protection Law and Cyber Squatting cases are decided under Trade Mark Act, 1999.

That although the Indian Courts have drawn the distinction between trade mark and domain name; wherein the Hon’ble Supreme Court in Satyam Infoway Ltd v. Sifynet Solutions Pvt Ltd[10], 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 trade mark 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”[11].

The Indian Courts though have recognized the lacuna, however, in the absence of an 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 extra territorial and may not allow for adequate protection of domain names, this does not mean that domain names”.

In Yahoo! Inc v. Akash Arora[12], which is Probably the first reported Indian case, where the plaintiff, who is the registered owner of the domain name “yahoo.com” succeeded in obtaining an interim order restraining the defendants and agents from dealing in service or goods on the Internet or otherwise under the domain name “yahooindia.com” or any other trademark/ domain name which is deceptively similar to the plaintiff’s trademark “Yahoo Although, as on the date of writing, there are very few reported judgments in our country, newspaper reports and information from reliable sources indicate that there are at least twenty-five disputes pertaining to domain names pending before the Delhi High Court itself[13].

In Tata Sons Ltd v. Ramadasoft[14]t, Tata Sons, the holding company of India’s biggest industrial conglomerate, the Tata Group, won a case to evict a cyber-squatter from 10 contested internet domain names. Tata Sons had filed a complaint at the World Intellectual Property Organisation. The Respondent was proceeded ex-parte. The Panel concluded that the Respondent owns the domain names. These domain names are confusingly similar to the Complainant’s trademark TATA, and the Respondent has no rights or legitimate interests in respect of the domain names, and he has registered and used the domain names in bad faith. These facts entitle the Complainant to an order transferring the domain names from the Respondent[15].

In Dr Reddy’s Laboratories Limited v. Manu Kosuri and Anr.[16], The Hon’ble High Court of Delhi Court held that “It is a settled legal position that when a defendant does business under a name which is sufficiently close to the name under which the plaintiff is trading and that name has acquired a reputation the public at large is likely to be misled that the defendant’s business is the business of the plaintiff or is a branch or department of the plaintiff, the defendant is liable for an action in passing off and it is always not necessary that there must be in existence goods of the plaintiff with which the defendant seeks to confuse his own domain name passing off may occur in cases where the plaintiffs do not in fact deal with the offending goods. When the plaintiffs and defendants are engaged in common or overlapping fields of activity, the competition would take place and there is grave and immense possibility for confusion and deception. The domain name serve same function as the trademark and is not a mere address or like finding number of the Internet and, Therefore, plaintiff is entitled to equal protection as trade mark. The domain name is more than a mere Internet address for it also identifies the Internet site to those who reach it. In an Internet service, a particular Internet site could be reached by anyone anywhere in the world who proposes to visit the said Internet site. In a matter where services rendered through the domain name in the Internet, a very alert vigil is necessary and a strict view needs to be taken for its easy access and reach by anyone from any corner of the world.

The trademarks/domain name ‘DR. REDDY’S’ of the plaintiff and ‘drreddyslab.com’ of the defendants are almost similar except for use of the suffix ‘lab.com’ in the defendants domain use. The degree of the similarity of the marks usually is vitally important and significant in an action for passing off as in such a case, there is every possibility and likelihood of confusion and deception being caused. Considering both the domains’ name, it is clear that 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 plaintiff although the two domain names belong to two different concerns”.

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (UDRP)

Dispute 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[17].

A person may complain before the administration dispute resolution service providers listed by ICANN under Rule 4 (a) that:

(i) A domain name is “identical or confusingly similar to a trade mark or service mark” in which the complainant has rights; and

(ii) The domain name owner/registrant has no right or legitimate interest in respect of the domain name; and

(iii) A domain name has been registered and is being used in bad faith.

Rule 4 (b) has listed, by way of illustration, the following four circumstances as evidence of registration and the use of a domain name in bad faith:

(i) Circumstances indicating that the domain name owner/registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark; or to a competitor of that complainant for valuable consideration in excess of its documented out of pocket costs, directly related to the domain name; or

(ii) The domain name owner/registrant has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

(iii) The domain name owner/registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the domain name owner/registrant has intentionally attempted to attract, for commercial gain internet users to its web site or other online location by creating a likely hood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of the domain name owner/ registrant web site or location or of a product or service on its web site or location.

India has also established its own registry by the name ‘IN’ Registry under the authority of National Internet Exchange of India (NIXI), wherein the dispute related to the domain name are resolved under the .IN Dispute Resolution Policy (INDRP). The Policy has been formulated in line with internationally accepted guidelines, and with the relevant provisions of the Indian Information Technology Act 2000.

Under ‘In’ Registry, disputes are resolved under .IN Domain Name Dispute Resolution Policy (INDRP) and INDRP Rules of Procedure. These rules describe how to file a complaint, fees, communications and the procedure involved.

ROLE OF JUDICIARY

Though domain names are not defined under any Indian law or are covered under any special enactment, the Courts in India has applied Trade Marks Act, 1999 to such cases.

Like in other cases under Trademarks Act, 1999 two kind of reliefs are available:

Remedy of infringement
Remedy of passing off

Remedy of Infringement: Trade mark Act permits owner of the trade mark to avail the remedy of infringement only when the trade mark is registered. Remedy of Passing off: No registration of the trade mark is required in case the owner intends to avail the relief under passing off.

CONCLUSION

Looking at the current situation prevailing in the world, it is certain that cybersquatting is a menace. It is a menace which has no boundaries. In my opinion, it is similar to terrorism. The only difference is that in the latter human life is affected. Cyber-squatters have robbed businesses of their fortune. Looking from the Indian perspective cybersquatting has been prevalent since the internet came to the subcontinent. The courts in India have decided many cases related to cybersquatting. It is imperative for the parliament to enact a law that would deal with this menace. As of now, there is no such law that prohibits cybersquatting like that of the United States.

There is an urgent need for the strict laws in this field, so that these squatters could be punished and these crimes could be avoided in future. The new domain name dispute law should be intended to give trademark and service mark owners legal remedies against defendants who obtain domain names “in bad faith” that are identical or confusingly similar to a trademark. And the plaintiff may elect statutory damages and has the discretion to award in damages for bad faith registration. It should act as an important weapon for trademark holders in protecting their intellectual property in the online world.

Cybersquatting has opened the eyes of governments across the world and has prompted them to look into this phenomenon in a serious manner.

[1] https://www.domain.com/blog/2019/01/01/what-is-a-second-level-domain/ (last visited on October, 02)

[2] The example mentioned herein is completely fictional and does not resemble any domain name in real.

[3] https://en.wikipedia.org/wiki/Squatting (last modified on September, 25)

[4] Rediff.com India Ltd. V. Daniyal Waseem (2010)

[5] U.S. Act of 1999

[6] WIPO Arbitration and Mediation Centre, Guide to WIPO Domain Name Dispute Resolution 3 (WIPO)

[7] https://www.wipo.int/pressroom/en/articles/2019/article_0003.html (last visited on October, 02)

[8] https://www.indiafilings.com/learn/cybersquatting-laws-india/ (last visited on October, 02)

[9] Information Technology Act, 2000 (Act 21 of 2000)

[10] AIR 2004 SC 3540

[11] https://www.itlaw.in/satyam-infoway-ltd-vs-siffynet-solutions-pvt-ltd-2004/ (last visited on October, 03)