DOMAIN NAME AND CYBER SQUATTING
Today in the age of information technology and the worldwide use of internet by the businesses, the domain name has gain the status of being the identification of these businesses. With the increasing use of internet for commercial purposes the importance of the domain names is also increasing. Originally, domain name was used as an address but now with the new developments it has not remained a mere address but has now assumed the importance of a business identifier and promoter. The companies, firm and eminent individuals are now naming their domain names after their trademarks and brand names. The domain name has started performing the function of a trademark and the people visiting the web page can connect and identify the company or the concerned individual.
REGISTRATION OF DOMAIN NAMES-
A domain name is unique to every company and individual. Domain Names are entitled to protection as a trademark and the trademark law applies to activities on the internet. They can be registered as trademarks upon fulfilling the condition required to be registered for a trademark. Any unique internet domain name capable of identifying and distinguishing a company's goods and services from those of other companies, as well as acting as a reliable source identifier for the concerned goods or services on the internet, may be registered and thereby protected as a trademark if it meets all other registration rules and requirements that are commonly applied to the trademarks and service marks.
The US government came up with the policy of establishing Internet Corporation for Assigned Names and Numbers (ICANN) in 1998 which is a non-profit organization managing the Domain name system (DNS). ICANN maintains high standards and procedures with respect to assignment and maintenance of domain name records. ICANN also came up with the policy of Internationalized Domain Name (IDN) which enables registration of a domain name in local language and scripts like Arabic, Devanagari etc. which are encoded by the Unicode Standard. In India, National Centre for Software Technology (NCST) is the body that regulates country level domain name registration.
However just like infringement or passing off of a trademark domain names are also prone to be misused. The act of registering, selling, or using a domain name with the intent of profiting from the goodwill of another's trademark is known as cyber squatting. It refers to the practice of purchasing domain names that include the names of established businesses with the intention of reselling the names to those businesses for a profit. Simply put, cyber squatters (also known as bad faith imitators) register third-party trademarks, trade names, company names, and so on with the intention of profiting from the prestige and goodwill of those third parties by misleading consumers or prospective customers, and in some cases, selling the domain name to the rightful owner at a profit.
LAWS DEALING WITH CYBERSQUATTING-
In India, unlike many other developed countries, there is no Domain Name Protection Act, and cyber squatting cases are decided under the Trade Mark Act, 1999.
While India lacks laws and provisions for Domain protection, the Hon'ble Supreme Court in Satyam Infoway Ltd Vs Sifynet Solutions Pvt. Ltd; 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 are not to be legally protected to the extent possible under the laws relating to passing off".
Internationally, domain names are regulated through WIPO (World Intellectual Property Organization) and ICANN (The Internet Corporation for Assigned Names and Numbers). ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) mechanism is commonly used to settle disputes concerning bad faith registrations. WIPO is the leading ICANN licensed domain name dispute resolution service provider under the UDRP, which was created to promote the global security, distribution, and use of intellectual property.
A person may complain before the administration dispute resolution service providers listed by ICANN under Rule 4(a) that:
- A domain name is "identical or confusingly similar to a trade mark or service mark" in which the complainant has rights; and
- The domain name owner/registrant has no right or legitimate interest in respect of the domain name; and
- A domain name has been registered and is being used in bad faith.
India has also developed its own registry, known as IN Registry, under the auspices of the National Internet Exchange of India (NIXI), where domain name disputes are resolved. IN Policy on Dispute Resolution (INDRP) was developed in accordance with globally recognized standards and the related provisions of the Indian Information Technology Act, 2000 to resolve the disputes. These guidelines outline how to file a lawsuit, as well as costs, emails, and the process.
PROCESS FOR DISPUTE RESOLUTION IN INDIA-
The National Domain Name Dispute Resolution Policy (NDRP) establishes the terms and conditions for resolving a dispute between the Registrant and the Complainant resulting from the registration and use of the .IN Internet Domain Name. The INDRP's Paragraph 4 similar to that of UDRP's Paragraph 4 (a) sets out the same basic premises for filing a complaint. In the event complaint is filed against the Registrant with the INDRP, the Registrant is required to apply to arbitration with .IN Registry.
Upon receipt of a complaint, the .IN Registry will select an Arbitrator from the Registry's list of arbitrators. The Arbitrator must notify the Respondent within three days of receiving the complaint. The Arbitrator would then administer the Arbitration Proceedings in compliance with the Arbitration and Conciliation Act of 1996, as well as this Policy and the rules set out therein. The Arbitrator within 60 days (extendable by maximum 30 days) of the start of arbitration proceedings has to pass an award and forward its copy to the Complainant, Respondent, and the .IN Registry. Along with the award the copies of all applications, responses, rejoinders must also be forwarded to the .IN Registry for its records and transparency.
The Paragraph 11 of the policy states that no in-person hearings will be held unless the Arbitrator agrees on request of either or both parties, that such a hearing is necessary for deciding the complaint. Further, it also states that the number of hearings shall not exceed to more than two.
In the event that an Arbitration proceeding is initiated pursuant to this policy, Registrant is prohibited from transferring a disputed domain name registration to another holder for a period of 15 working day after the proceeding is concluded, or while the dispute is pending, unless the party to whom the domain name reverted is the party to whom the domain name reverted.
In Yahoo! Inc. v. Akash Arora and Netlink Internet Services India's first cyber squatting case. The plaintiff, who was the registered owner of the domain name "Yahoo.com," was successful in obtaining a temporary order prohibiting the defendant from using "Yahooindia.com" or any other trademark/domain name that is confusingly identical to the plaintiff's trademark. Further, in Sbicards.com vs Domain Active Property Ltd the WORLD INTELLECTUAL PROPERTY ORGANIZATION ordered the Australian corporation (Defendant) to move Sbicards.com to the Indian firm, after the Administrative Panel determined that the Defendant had stolen the domain name with the intent of selling it for a large amount to a State Bank of India subsidiary later.
In another case Tata Sons Ltd Vs. Ramadasoft The defendant had a domain name registered in Tata's name. In this case, it was determined that domain names provide not only addresses but also the companies' trademarks. In this case, the domain names were confusingly identical to the plaintiff's trademark, and the defendant had used them with mala fide intent. Because of these facts, the defendant was able to pass the domain names to the plaintiff.
It is undeniable that the value of internet domain names has risen dramatically in recent years, both in terms of internet communication and online business and commerce. As the internet is fast becoming an increasingly influential and highly favoured medium for accelerated flow of products, services, business related knowledge of all kinds, by people and entities in all economic fields, there is an imperative need for having proper security to the specific domain names, including trademarks and service marks. Under the auspices of the ICANN and the WIPO, this increasingly attractive trademark protection for internet domain names is now a reality. As e-commerce progresses, the need for better and more effective ways to combat this threat becomes more pressing.
1999 IIAD Delhi 229
Case No. D2005 0271
Case No. D2000-1713