In this article, Hemant Bhadana discusses the legal Position of Cybersquatting in India.
Introduction
In this Article, we will discuss the concept of Domain Name, Cybersquatting and it’s legal position in India and at International level. Cybersquatting has increased drastically in the last decade and has devastating effects on the rights of Intellectual Property holders. This article will provide an overview of the problem and factors associated with it along with the cases, types and legal scenario of cybersquatting in India and other countries.
What is a Domain Name?
A domain name refers to the name of a website and the address by using which Internet users can have access to a particular website. A domain name is used for finding and identifying computers on the Internet. A domain name can be any combination of letters and numbers, and it can be used in combination of the various domain name extensions, such as .com, .net and more.
It is essential to register a domain name before one can use it. Every domain name is unique. No two websites can have the same domain name. To illustrate, If someone types in www.abcin.com, it will go to domain name holders website and no one else’s. Domain names need to be renewed on a yearly basis and it is essential to do it swiftly in order to avoid it getting registered by cybersquatters.
A domain name holder earns money by the way of Pay-Per-Click advertising on a website i.e. for each click on the displayed adverts on the website “Domineers” earn money. A single domain name can earn hundreds of dollars a day and many domain name holders have thousands and even millions of domain names.
Domain names are more than just addresses, as the court suggested in
Cardservice Int’l v McGee: “A customer who is unsure about a company’s domain name will often guess that the domain name is also the company’s name”
MTV Networks Inc v Curry: “A domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base”
What is Cybersquatting?
According to Wikipedia ‘Squatting’ means occupying an abandoned or unoccupied space or building, usually residential, that the squatter does not own, rent or otherwise have permission to use.
Thus, Cybersquatting refers to the practice of registering names, especially well-known company or brand names, as Internet domains, in the hope of reselling them at a profit.
Examples of Indian Cybersquatters who messed with Facebook, Google and other Biggest Names:-
The Guy who owned Google.com for a minute
- Former Google Employee named Sanmay Ved owned Google.com for a minute in September 2015. He purchased the domain name for just $12 after he discovered that ‘Google.com’ was available for sale.
- Google paid him $6006 which was doubled later on when Google discovered that he donated the money to ‘Art Of Living’ Foundation.
Why Facebook CEO Mark Zuckerberg paid $700 to a Kochi’s Engineering student
Amal Augustine, a final year engineering student registered the domain name maxchanzuckerberg.org which was bought by Facebook’s CEO for $700.
Cybersquatting on Bollywood stars
- Techies have squatted on domain names like salmankhan.com and amithabhbachan.com.
- Also, Yoga.in was sold for ₹1 crore by a German guy named Mathias Stricker.
- Furthermore, a company named Axsiom made $10000 by selling www.gurunanak.com.
Types of Cybersquatting
Various ultramodern ways have been created to curb potentially lucrative addresses which in turn resulted in creating a cobweb for trademark owners affecting them economically when they plan to deliver their products directly to consumers using the internet. Types are as follows:-
Cybersquatting: Bad-Faith intent registration; a cybersquatter can sell to the highest bidder.
Typosquatting: also called as URL hijacking. Cybersquatting form wherein the internet users make typographical errors while inputting a website address into the web browser. Once the user types the incorrect address, they are lead to a substitute website by the cybersquatter.
Examples of Typosquatting are
- Omitting the “dot” from the domain name: wwwexample.com;
- A normal misspelling of the intended site: exemple.com
- Differently phrased domain name: examples.com
- A different top-level domain: example.org
- Another problem is ‘‘renewal snatching’’ in which the Cybersquatter registers the particular domain name which the real holder forgets to re-register. The domain names are not registered for a fixed period and if the domain name holder fails to re-register it before expiry then it can be purchased by anybody.
Legal Scenario of Cybersquatting in India
Distinct from many developed countries, India has no Domain Name Protection Law and cybersquatting cases are dealt under Trade Mark Act, 1999.
The Hon’ble Supreme Court in Satyam Infoway Ltd vs Sifynet Solutions Pvt Ltd; AIR 2004SC3540 has observed the following.
“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 extraterritorial 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”.
In India, victims are provided with various option to combat Cybersquatting. These are the available options
• By sending cease-and-desist letters to the Cybersquatters.
• Initiation of arbitration proceedings under ICANN’S rules.
• Option for a trial in a state or federal court.
Whatever strategy a victim may choose but he should not undermine the negative effects that cybersquatting can have if left unchecked.
Also, filing a case with the in registry is also another good option as the registry is controlled by National Internet Exchange of India (Nixi) and it puts the case to fast-track dispute resolution process from where within the 30 days of filing a complaint decision are transferred.
Cybersquatting is a primary concern specifically for the domains having financial transaction because of the cyber squatters taking benefit in robbing and fooling individuals by obtaining their Credit Card details. There are several IT teams dedicated to have a timely check on these domains.
As always, Indian legal system is silent on this matter too, the current or proposed Information Technology Act in India has no specific provisions for punishing cyber squatters, at best, the domain name can be taken back. As there is an absence of legal compensation under the IT Act, to prevent squatters from stealing domains further, .in registry had initiated proactive steps to grant compensation to victim companies. However, it is just a beginning and still, there is no effective system or laws to combat Cybersquatting.
Immediate Need for Definite cybersquatting laws in India
• To combat Cybersquatting and to punish the offenders there is an urgent need of bringing a strict law.
• A new law should contain legal solutions for the trademark owners against the defendants so that it will be easy for the plaintiff to obtain statutory damages and gain compensation for the damages for registering in bad faith.
• There is a need for a law which would act as a weapon for preserving the Intellectual Property of the trademark holders in the virtual world.
Cybersquatting Cases in India
Yahoo! Inc. v. Akash Arora and Netlink Internet Services
This was the first cybersquatting case in India. In this case, the plaintiff, who is the registered owner of the domain name “Yahoo.com” successfully obtained an interim order restraining the defendant from using “Yahooindia.com” or any other trademark/ domain name deceptively similar to the plaintiff’s trademark.
Sbicards.com vs Domain Active Property Ltd
In this case, WORLD INTELLECTUAL PROPERTY ORGANISATION ordered the Australian entity (Defendant) to transfer the Sbicards.com to the Indian company, as the Administrative Panel found that the Defendant has hijacked the domain name with mala fide intentions of selling it later for a hefty sum to the State Bank of India subsidiary.
Legal Scenario in International Context
The first instance of cybersquatting in the United States arose in 1994 and is on the uninterrupted rise globally since then. A person named Dennis Toeppen started it, he used various known trademarks to register domain names and eventually became unsuccessful in defending those when trademark owners sued him.
The important cases which led to the development of ACPA (Anti-Cybersquatting Consumer Protection Act) are Intermatic V. Toeppen 947 F. supp 1227 (N.D.Ill. 1996) and Ponavision V Toeppen 141 F.3e 1316 (1998). The court ruled in favour of plaintiffs in both cases.
These cases played a vital role in creating awareness among the trademark holders on the vulnerability of domain names and made them vigilant about these modern day Cyber extortionists or Cybersquatters.
A victim of cybersquatting in the United States has two options:
- Sue under provisions of the Anti-Cybersquatting Consumer Protection Act
- Use an international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN).
Many countries have specific laws against Cybersquatting beyond the normal rules of Trademark law. On the contrary, even celebrities like Rockstar Bruce Springsteen and Actor Kevin Spacey failed to gain control over their domain names on the internet.
Another issue is jurisdiction, as mentioned above, Judge Gary A. Feess of the US District Court of Central District of California, in the case of Kevin Spacey ruled that the complaint needs to be filed in a Canadian court, where the holder of the Kevinspacey.com lives. Kevin later got success to obtain the domain name through the Forum (Alternate Dispute Resolution) F.K.A National Arbitration Forum.
In the case of courts, jurisdiction has always been a major issue. As per 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.
WIPO System for Administration of Disputes:-
World Intellectual Property Organization (WIPO) on tackling cybersquatting
Since 1999, the World Intellectual Property Organization (WIPO) has 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.
The World Intellectual Property Organisation Arbitration and Mediation Centre have developed a system to provide an Internet system for administration of commercial disputes pertaining to Intellectual Property.
This Dispute solving mechanism is one of its own kind, which is introduced for both evidence filing and document exchange purpose. It is an efficient and economical service. In this dispute solving mechanism the arbitration takes place online. However, the physical filing of the original documentary evidence is still required.
Largely, the process will be conducted online and is designed to be completed in less than 45 days along with a setup or provision for parties to approach courts for resolving disputes between them or to contest the procedural outcome.
Conclusion
Cybersquatting is a virus for which there is an urgent need of developing or finding an effective Anti-dote in form of efficient laws otherwise this virus can turn into a plague encouraging the cybersquatters to prey on vulnerable Domain Name Holders.
Envisioning the present conditions existing around the world, cybersquatting is considered to be a menace with no frontiers. Although, the effective and proactive involvement of WIPO has played a crucial role in solving disputes regarding domain names and in evolving concrete principles in this field.
Still, a lot needs to be accomplished either by bringing strict laws to punish squatters or by giving legal remedies to Service Marks and the Trademark owners as it can protect them against defendants who wrongfully acquire domain name with mala fide intention.
Lastly, providing an option of obtaining Statutory Damages to the plaintiff will act as an important tool for trademark holders in protecting their Intellectual Property online.
