India: DNS The Menace: Cybersquatting

It is an established fact that the internet is a tool used by everyone from all walks of life. The domain name that connects us with the internet universe is one such area of internet which is raking in big bucks. They are host names that identify Internet Protocol (IP) resources such as web sites and are formed by the rules and procedures of the Domain Name System (DNS). One of the main purposes of domain names is to deliver easily ascertainable, recognizable and memorisable names into an exponential address Internet source. Hence when anyone types or clicks on website then they get directed to the same.

However in recent times people not vested with rights over names of registered trademarks register them as domain names with malafide intentions and bad faith so as to ride on the existential reputation and goodwill of 'parties' and create confusion amongst the minds of consumers/potential consumers. This prevalent practice is defined as Cybersquatting; whereby an internet domain name is registered, despite being preferred by another individual with respect to their business or organization, with the idea of profit making. 'Cybersquatters' also attempt to sell the domain name to the rightful owner at a certain price so as to make fast and easy profit.

To solve domain name disputes and cybersquatting, some solutions provided include: World Intellectual Property Organization (WIPO) under the Uniform Domain Name Dispute Resolution Policy (UDRP) under the propagated by the Internet Corporation for Assigned Names and Numbers (ICANN), a not-for-profit organization managing the DNS. WIPO provides expert opinion and credibility via governmental measures and winding up of any matter listed there takes about 2 months along with a nominal fee.

Legal Position: International

The UDRP is an internet based system that decides complaints by trademark owners when opposed to trademark conflict under domain names and controls deletion/ transfer of domain names. Any complainant may bring an action on grounds as provided under the ICANN Rules.ⁱ Once these requisites are met and registration proved then domain name registration is either cancelled or transferred to the complainant. This mechanism does not concern itself with awarding pecuniary, but is an accelerated administrative proceeding being cheap and fast, and also an easy alternative in comparison to elongated court procedures and delays.

The WIPO Arbitration and Mediation Centre maintain an online dispute resolution mechanism for managing commercial disputes involving the clash between DNS and Trademarks. It is used for both online document exchange and filing of evidence, although original documentary evidence is to be provided in physical form. Further, this is merely signed, inexpensive and an efficient service not pursuing jurisdictional issues. Remedy available to complainant is cancellation or transfer of domain name registration to themselves. Being completely an online procedure, the matter is settled at less than 45 days with the option given to parties to approach courts for resolving their disputes or further contest consequence of the procedure.

According to WIPO, in 2006, a total of 1,823 complaints alleging cybersquatting were filed with WIPO's Arbitration and Mediation Centre, representing the highest number of cybersquatting cases handled by them since 2000.ⁱⁱ

India

Cybersquatting victims have many routes to tackle cybersquatting including Cease and Desist Letters, Arbitration proceedings under ICANN's rules, or court proceedings against cybersquatters. Despite whatever choice of tackling this menace is employed, any person should not ignore the serious threat cybersquatting can impose if abandoned.

The IN Registry controlled by National Internet Exchange of India (NIXI) an autonomous body with primary responsibility for maintaining the .IN ccTLD (country code top-level domain) brings the matter to a fast track dispute resolution process whereby decisions are transmitted within 30 days of a complaint. The Information Technology Act 2000 (IT Act) addresses numerous cybercrimes and has set up a special cyber-crimes cell, however the Act overlooks cybersquatting and domain name disputes. The only redemption for victims of such offences is that domain names may be reflected as trademarks due to use and brand repute, falling under the Trade Marks Act 1999. Though, all domain names are not trademarks, legal precedents have culled out following guidelines –

1. The defendant should have sold/ offered its goods/ services in a manner that deceives the public into thinking that the goods/ services of the defendant are in fact the plaintiff's.
2. Misrepresentation by the defendant to the public should be established.
3. Loss/ likelihood of it should be established.

Although no legal compensation is provided under the IT Act, IN Registry has taken pre-emptive measures to grant compensation to victim companies to prevent squatters from further stealing domains. But most squatters function under pretence of abstruse names or identities.

Yahoo! Inc. v. Akash Aroraⁱⁱⁱ

One of the first, the plaintiff, being registered owner of the domain name "yahoo.com" succeeded in restraining the defendants and agents from distributing service or goods on the Internet or otherwise under the domain name "yahooindia.com" or any other trademark/domain name which was falsely similar to the plaintiff's trademark "Yahoo".

Tata Sons Ltd v. Ramadasoft^iv

Tata Sons, under the Tata Group, succeeded in evicting a cybersquatter from 10 contested internet domain names. They filed a complaint at WIPO wherein the latter settled that domain names used by Respondent were confusingly similar to the Complainant's trademark TATA, hence having no rights or legitimate interests over the domain names and having registered and used said domain names in bad faith. These specifics entitled the order transferring the domain names from the Respondent to the Complainant.

Arun Jaitley vs Network Solutions Pvt. Ltd.^v

The Hon'ble High Court of Delhi held that in comparison to the personal rights and the right to use trademark, the personal rights always are greater. The person is entitled to use his name as trademark and or domain name is always unconstrained for the same than any other party.

Conclusion

It is vital that strict laws are promulgated in this arena, refraining squatters and thereby eluding such instances in future. Cybersquatting raises an alarm for those companies involved in financial/commercial transactions; as usually squatters may dupe people, exploiting bank details for their profit. Fast track legal remedies against those who acquire domain names in bad faith, identical or confusingly similar to a trademark, should be provided. Stricter punishment by way of imprisonment and/or hefty fines may serve as a deterrent for cybersquatters and provide trademark holders a combat weapon in protecting their intellectual property in cyberspace.

Footnotes

i Article 3 (b) - The complaint including any annexes shall be submitted in electronic form and shall:

(ix) Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular,

ii WIPO, Cybersquatting Remains on the Rise with further Risk to Trademarks from New Registration Practices, WIPO Media Centre, 2007, Available at:

http://www.wipo.int/pressroom/en/articles/2007/article_0014.html., (Last accessed: Sept. 1, 2015).

iii Yahoo Inc. vs Akash Arora [1999 PTC (19) 201].

iv Tata Sons Ltd. vs Ramadasoft [WIPO Case No. D2000-1713].

v Arun Jaitley vs Network solutions Pvt. Ltd. [181 (2011) DLT 716].

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.