In this blogpost, Vernita Jain, Student, National Law Institute University, Bhopal writes about what is cybersquatting, categories of cybersquatting, legal scenario of cybersquatting and its position in India

Domain names are the biggest trend in the internet world nowadays. Having a domain name is a general practice that a company undertakes so that their company can be easily identified due to their trademarks. There are a number of companies that a consumer wants to have a connection with, but such is not possible physically. The domain names make it possible for the consumer to identify and contact the company. Trademarks and domain names are interrelated.

A domain name holder gets paid by the way of pay-per-click advertising on a website. The only thing that he has to do is sit back and let the money roll in when any of the Internet users click on those ads. A domain name holder can earn hundreds of rupees in a day.

What is Cyber Squatting?

CYBERSQUATTING: MEANING AND ISSUES

By relying on the definition given in the case of Delhi High Court in Manish Vij v. Indra Chugh[1], the Indian courts have defined ‘cybersquatting’ as  “an act of obtaining fraudulent registration with an intent to sell the domain name to the lawful owner of the name at a premium”.

In cases which an individual or a company registers a domain name, and such domain name is identical or similar to a trademark of any other party and maliciously tries to sell the same for a profit. This is known as “Cybersquatting.”

Due to the fall in the prices of the domain names and increased in many  top level domains (.biz, .cn, .mob and lately .in), it has resulted in the cybersquatters making a lot of illegitimate profits.

In order to make illegitimate money, cyber squatter’s then sell the domain to the person or company who owns a trademark that has been used in the domain name  which may be said as a sort of ransom. As that particular domain name has already been registered by someone else, that particular domain name cannot be registered again in the name of the trademark owner.

In this manner, a cybersquatter infringes the fundamental rights of the owner of the trademark to use its trademark.

Categories of CyberSquatting

Cybersquatting is possible in many ways. However, typosquatting is the most popular form of cybersquatting.

It relies on the fact that, people using the internet are bound to make typographical errors while entering domain names into the browsers. Some common examples are:

If a person omits “dot” while entering the domain name: wwwexample.com;

A misspelled name of the intended site: exemple.com

A differently phrased domain name: examples.com

Any other top-level domain: example.org

The other fact that a cybersquatter relies on is that in the case when the holders of the trademark himself own the domain name he often forgets to re-register his domain names. The registration of the domain name is not for a fixed period, and if this domain name is not re-registered prior to its expiry, then the domain name can be purchased by anybody. In such cases, the cybersquatters register that particular domain name in their name. This process is called as “renewal snatching.”

LEGAL SCENARIO IN CASE OF CYBERSQUATTING:

U.S. Anti-cyber squatting Consumer Protection Act (ACPA) of 1999-

This act was introduced with the intention of providing protection to the trademark owners of distinctive trademark names against cybersquatters. The victim has two options:

1. to sue the cyber squander under the provisions of the Anti-cybersquatting Consumer Protection Act (ACPA), or
2. use of the International system of arbitration by the Internet Corporation of Assigned Names and Numbers (ICANN).

The jurisdiction is always the matter of problem in the case of courts. According to the courts, the seat of the trial should be the place of the plaintiff, the defendant or the place of the service provider through which the name is registered.

The World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre has taken a step to provide an Internet system for administration of commercial disputes involving intellectual property. This is a unique form of dispute solving mechanism that it is introduced to be used both for filling of evidence and for document exchange. It is an efficient and inexpensive service. In such a mechanism the arbitration takes place online.

Internationally, the United Nations copyright agency WIPO (World Intellectual Property Organization) 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 favor. It is an agency which is specialized to form a balanced system that is easily accessible.

POSITION IN INDIA

In India victims of cybersquatting have been provided with a number of ways to deal with it, such as:

• Sending cease-and-desist letters to the cybersquatter.
• Opting for arbitration under ICANN’s rules,
• Going for a trial to a state or federal court.

In order to bring the case on a fast track form of resolution, a case could be filed with the registry handled by National Internet Exchange of India (NiXI).

 In India, the Information Technology Act contains no provisions to punish cyber-squatters. The  IT Act does not provide for any legal compensation but, the registry has taken steps to provide compensation to companies  who are the victims and to discourage the squatters from further stealing domains.

SOME INDIAN CYBER-SQUATTING CASES

#Yahoo! Inc. v. Akash Arora

It is the first case that was reported in India regarding cybersquatting. In this case, plaintiff was a registered owner of the domain name “yahoo.com”. He obtained an interim order which  restrained the defendants  from dealing  the name “yahooindia.com” or any other trademark similar to the trademark of the plaintiff.

#Tata Sons Ltd Vs. Ramadasoft

In this case, the defendant had a domain name registered in the name of Tata. It was held in this case that domain names not only involves addresses but also the trademarks of the companies.

The domain names in this case,  were similar to the plaintiff’s trademark and that the defendant had used the names with mala Fide intention

These facts entitled the defendant to transfer the domain names in the favor of the plaintiff.

#Sbicards.com vs. Domain Active Property Ltd.

The administrative panel,  in this case, said that defendant an Australian entity had a registered domain name which was registered with the mala Fide intention and it could have attracted attention from the public because of its affiliation to SBI Cards products and services.

Conclusion:

Strict laws are required in this field to punish squatters and avoid these crimes in future.  Legal remedies should be given to service mark and  the trademark owners to protect them against Defendants who obtain domain name with mala Fide intentions. The plaintiffs should have an option of obtaining statutory damages this will act as an important tool for the trademark holders in protecting their intellectual property in the online world.

[1] Manish Vij v. Indra Chugh, AIR 2002 Del 243.