A few decades ago, there were limited modes of communication and information dissemination. Telegram, fax, postal mails, etc. were some of the popular means of information sharing. With time, as technology advanced, so did the mode of communication. The recent technological developments like internet and mobile devices have altogether taken the science of communication to a new level.Today, it just takes a click to share and transmit information from one corner of the globe across the other.
Internet has revolutionized the digital world and with the emergence of world wide web (www) the face of modern technological era has completely changed . This is the digital generation where everyone, from private sector to the government sector, from MNCs to small and medium enterprises, from educational institutions to the banking sector , is marking well on their online presence.
Before starting with the main topic of the post, it would be essential to have an understanding some basic terminologies. To begin with, domain name is the address of a particular site on the Internet. The domain names map to unique Internet Protocol (IP) numbers that serve as a routing address on the Internet. The domain name system (DNS) translates Internet names into IP numbers needed for the transmission of of information across the network. On the Internet, the domain name is that part of the Uniform Resource Locator (URL) that tells domain name server using the DNS whether and where to forward a request for a web page.
Domain names are divided into hierarchies. The top level hierarchy is top-level domains (TLDs) that includes generic top-level domain names (gTLDs), eg: .net, .com. .info, .edu. and the country code top-level domain names (ccTLDs), eg: .in for India, .pak for Pakistan. Then comes the second level domain names that comes directly to the left of the top-level domain name in an Internet address, eg: http://www.google.com, where .com is the top-level domain name and google is the second level domain name. There cannot be two identical second level domain under the same top level domain names. It is , in fact, equivalent to a unique address on the Internet. The disputes mainly arise over second level domain names.
A domain name acquires the features of a trademark or a brand and is a means of demarcation of a certain business entity, its goods and services. Therefore, it has become imperative to get the second-level domain names to be registered so that others do not infringe or pass off on the domain names of others. This function was taken up by ICANN ( Internet Corporation for Assigned Names and Numbers). It is a non-profit organization, created under the direction of the U.S. Department of Commerce. Its main aim is to facilitate the privatization and registration of the Internet names and addresses.
It has been observed that some crooks and defrauders tend to take advantage of the goodwill of some well established firms by using their domain names in their web addresses ill-legitimately, thus, drawing their customers to their site or in some cases to sell the names back to those firms for a ransom, a practice technically known as cybersquatting.
According to the U.S. Federal Law known as Anti-Cybersquatting Consumer Protection Act, cybersquatting is the registering , trafficking in, or using a domain name in bad faith with an intent to earn profit from the goodwill of a Trademark belonging to someone else. It is generally, a practice to register the names of well-established and reputed firms as domain names, with the objective to sell the names back to those firms when they were aware of this. Panasonic, Avon, Hertz are some of the victims of cybersquatters. Another variant of cybersquatting is Typosquatting , also known as URL Hijacking, wherein an user accidentally types an incorrect web address that may be linguistically similar to the web address he intended to enter, which may lead the user to an alternative website owned by a cybersquatter. Notable examples are – ‘goggle.com’ ( for google.com), which infects the user with spyware. Another is ‘yuube.com’ ( for youtube.com) that targets youtube users and http://www.airfrance.com has been typosquatted by http://www.arifrance.com, diverting the users to a travelling site peddling discount travel.
Legal Resolution to combat Cybersquatting and Cybersquatters
In general, the cybersquatters undergo trails as per the Trademark Act and Rules. Some countries also have specific laws against cybersquatting , notable example being that of the United States. The United States of America have the U.S. Anticybersquatting Consumer Protection Act (APCA) of 1999. It is an expansion of the Lanham (Trademarks) Act which is intended to provide protection against cybersquatting for individuals as well as owners of the distinctive trademark names. Under APCA a trademark owner is authorized to sue an alleged cybersquatter in federal court and obtain a legal notice to transfer the domain name back to the trademark’s owner.
In order to stop a cybersquatter, the owner must prove all of the following:
- The domain name registrant has a bad-faith, intent to earn profit from the mark.
- The mark was distinctive at the time the domain name was first registered.
- The domain name is identical or confusingly similar to the trademark.
- The mark qualifies for protection under federal Trademark Laws.
But if the accused proves that he had a fair reason to register the domain name and the name was acquired in good faith then the court would probably allow him to keep the domain name.
Using the ICANN Procedure
The Internet Corporation for Assigned Names and Numbers have adopted the Domain Name Dispute Resolution Policy which results in an arbitration of the dispute , not litigation. Under this new policy , a trademark owner can initiate a relatively inexpensive administrative procedure to challenge the existing domain name. In order to persuade, the trademark owner must prove:
- That the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name.
- That the party that registered the domain name has no legitimate right or interest in the domain name, and
- That the domain name was registered and used in bad faith.
India and Cybersquatting
Unlike other developed countries, India does not have domain name protection law and cybersquatting cases are decided under the Trademark Act, 1999. An individual or firm in India, in order to resolve the domain name disputes, can approach WIPO , as under URDP WIPO is the leading ICANN accredited domain name dispute resolution service provider and India is one of the 171 member states that are signatories to WIPO.
The Indian Judiciary decides the cases related to cybersquatting and domain name disputes under the Trademarks Act, 1999 and provides two kinds of relief:
- Remedy for Infringement: Under this, the Act authorizes the owner of the trademark to avail the compensation for the infringement only when the trademark is registered and that registered trademark is being used by a person, other than the owner, in bad faith.
- Remedy of passing off: Passing off in India is a tort ( tort is a civil wrong that unfairly causes someone else to suffer loss or harm resulting in legal liability for the person who commits the tortious act) actionable under common law and mainly used to protect the goodwill of unregistered trademarks. In this the owner can avail remedy if he proves that he is the true owner of the trademark and has been using the trademark from a very long time.
Some of the notable Cybersquatting cases
1) Yahoo!Inc vs Akash Arora and others (1999): In this case the plaintiff ( one who brings a case against another in a court of law), Yahoo!Inc who is the registered owner of the domain name ‘yahoo.com’ succeeded in getting an interim injunction (a temporary order given by a court of law which tells someone either to do or not do something until an official decision on the case can been made) against the defendants (an individual, company, or institution sued or accused in a court of law), Akash Arora from dealing in any services on the internet under the domain name yahooindia.com. The court observed that the domain names yahoo.com and yahooindia.com were deceptively similar and creating confusion among the users with ordinary intelligence.
2) TATA Sons Ltd vs Ramadasoft: TATA Sons Ltd, the holding company of the TATA Group and the promoter of the major operating TATA companies filed a complaint at the Delhi High Court against Hyderabad based software firm Ramadasoft. The defendant used TATA in their domain names , thereby, diverting the business of TATA Sons Ltd. TATA Sons Ltd proved the averments made by Ramadasoft and the high court in an ex-parte order (Ex parte refers to those proceedings where one of the parties has not received notice and, therefore, is neither present nor represented.) barred the Hyderabad-based software firm and granted permanent injunction , restraining it from operating business in goods and services under any domain names containing the word TATA.
3) Benett Colman & Co. Ltd vs Steven S. Lalwani : Benett Colman & Co Ltd had been using the domain name ‘theeconomictimes.com’ since 1996. It filed a complaint at the WIPO Arbitration and Mediation Center against Steven S Lalwani, USA, who had registered the similar domain name in 1998. The complainant registered the trademark ‘The Economic Times’ in India for newspapers, journals, magazines, books and other literary works on March 28, 1973, and since 1996 has held the domain name – ‘theeconomictimes.com’ for electronic publication of its newspapers. The Respondent used similar domain name, thus, redirecting the users to the site ‘indiaheadlines.com’ which provided India related news and articles. In accordance to the Dispute Resolution Policy , the Panel directed that the complainant have a substantial reputation in their newspaper titles arising from the electronic publication and held that the respondent registered the similar domain name in bad faith, with an intention to draw the internet users to their website by creating a likelihood of confusion with the complainant’s mark. The Panel ordered Steven S Lalwani to transfer the domain name back to Benett Colman Co & Ltd.
4)The eBay Case : Online retailer eBay Inc, an American Multinational Corporation and e-commerce company, filed cybersquatting infringement complaint at the World Intellectual Property Organisation in November in 2014. The evidence and documents filed at the WIPO administered Arbitration and Mediation Center identified 1153 domain names that were registered in bad faith by a user in Shijazhuang (China), operating under the company name Hangzhou Aiming Network. The domains were registered on August 4, 2014. All domain names included the word ‘ebay’ with 3 numbers preceding either .net or .com suffix. The Panel at WIPO administered Arbitration and Mediation Center gave its decision in January this year. The judgement said that all the domain names were deceptively similar to the trademark registered by the complainant and ordered to transfer the domain name back to its true and legitimate owner.
5) Novartis vs Eko Prayento: Switzerland based pharmaceutical giant- Novartis filed a complaint at the Asian Domain Name Dispute Resolution Center ( ADNDRC) against an Indonesian firm, Eko Prayento. Novartis stated that it was the legal owner of the trade name ‘Novartis’ and had also registered the domain name Novartis-venturefund.com, but because of its internal oversight the domain name was not renewed in 2013. As a result the name was subsequently acquired by Eko Prayento in bad faith for selling, renting or transferring the name back to Novartis for a cost. The Panel at the ADNDRC found that the disputed domain name was confusingly similar to that of the mark of Novartis and thus, gave its decision in favor of Novartis and ordered the Indonesian firm to transfer the domain name Novartis-venturefund.com back to its legitimate owner.
General steps to be followed in order to curtail cybersquatting
In order to protect the domain name from being used in bad faith by some crooks, following simple steps should be kept in mind:
- Once the website is set up, the very first step is to think of a unique domain name. It is advised to use the top-level domain name as .net, .biz, .org, .info for additional safety.
- Once the domain name is decided, it has to be registered under an authorized organization like the ICANN. ICANN has selected 5 companies to function as registrars. These are: Network Solutions Inc, America Online , CORE (Internet Counsil of Registrars), France Telecom/Orlean, Melbourne IT and Register.com
- If the domain name is already registered, still a cybersquatter is using it deliberately in bad faith then one can always sue that person using legal means as mentioned above.
Cybersquatting poses a major threat to the internet community and it is ,thus, imperative for the judiciary system to formulate stricter laws to curb this plague afflicting the netizens. At the same it is necessary for the e-commerce society and the users to be vigilant and aware of these sneaky minds and the legal procedure to be followed thereafter when become one of the victims while operating in the online world.