THE “VIRTUAL” VANDALISM: CYBERSQUATTING AS A THREAT TO BRAND SYNERGIES

Introduction

“The internet is becoming the Town Square for the global village of tomorrow”, a highly poignant phrase by Bill Gates is capable of encapsulating the significance of virtual ownership in today’s era. At a time when “cyber markets” have replaced conventional consumer fulcrums, brands leave no stone unturned to ensure effective presence on the digital space. Brands in today’s era are recognized by their expression and the said condition remains the same even on the internet. Thus, in order to maximise consumer reach, brands reflect upon online platforms as an effective tool of communication. However, with the evolution of the augmented reality, offences associated with the same have also witnessed an unprecedented surge. One of the major threats to protecting brands today is cybersquatting which takes place when squatters register domain names of companies in countries where such parent company has no registration and gains money out of the original owner. On the internet a trademark has assumed several forms including a domain name, which means, a name of a website used to donate an internet protocol address and is an easy way to remember a complex numeric value. Domain names are therefore easily remembered and often coined to reflect the trade mark of an organization.[1] The trademark squatters not only hamper the valuable brand image created over years of hard work, but also demand a ransom amount from the brand owners to resell their own brand image. Till the time the squatters remain illicit ownership of the domain name, the lawful owner of trade mark cannot register its own trademark as a domain name.

The Indian Courts have based their analysis of squatting on the definition given by the Delhi High Court in Manish Vij v. Indra Chugh[2] wherein Cybersquatting has been defined 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”.

Cybersquatting can be demarcated into different categories, which are essentially as follows: [3]

Domain Name squatting: It refers to the practice of registering an already registered trademark as a domain name, with the purpose of extorting money from the original owner of the trademark.

Identity Theft: Identity theft is committed by monitoring the expiry dates of famous domain names by online applications and then registering them in name of the monitors as soon as the previous registration expires. This is done to deceit the visitors of previous website who visit them under the impression that it still belongs to the previous owner.

Typosquatting: It involves registration of a domain name similar to a popular trademark, though intentionally misspelling the original trademark. These cybersquatters rely on the probabilities that users will misspell the original trademark and will be directed to their webpage.

Name-jacking: This is the act of registering a name having goodwill of its own or which is reflective of endorsement by the person whose name is included in the domain name. These cybersquatters take advantage of the diversion of traffic from the target person (whose name is used) to themselves.

With the constant advancement of the cyberspace, the forms as well as the modus operandi of squatting are also transforming rapidly. Therefore, it often leads to newer challenges for courts as well as the adjudicating authorities to dynamize existing laws in order to keep pace with the changing digital scenarios.

The Internet Corporation for Assigned Names and Numbers (ICANN) Policy

The WIPO established the online domain name dispute resolution system for domain name dispute commonly referred to as the ICANN Policy. This process is not only quicker but is more cost effective. The WIPO’s Uniform Domain Name Disputes Resolution Policy (UDRP) was adopted by ICANN on October 24, 1999. This policy provides an effective administration process to resolve disputes concerning abusive and bad faith registration of domain names. The Registrar may cancel, suspend, or transfer a domain name. The plaintiff is required to file a complaint with an Approved Dispute Resolution Service Provider as on date. WIPO’s National Arbitration Forum and Asian Domain Name Dispute Resolution Centre are few amongst the authorized providers.[4] The authorized providers have the freedom to establish supplemented rules that are also applicable for domain name dispute resolution along with UDRP Policy.

The ICANN’s authorized service provider conducts a mandatory administrative proceeding when it receives a complaint for domain name infringement where a domain is identical or deceptively similar to the complainant’s trade mark and the defendant has no legitimate right and the domain name is registered in bad faith. The panelists decide the dispute through online means and the procedure takes approximately 45 days and provides cost effective and speedy remedy to resolve the dispute. The Registrar who registers the domain name in question does not transfer or cancel or suspend any domain name as long as he does not receive an order from the court, an Arbitrator or other entities deciding the disputes, or receives instructions from the domain name holder.

In Tata.org case,[5]the case was decided by a panel of WIPO in favor of Tata Sons Limited which gained rights over the domain name ‘Tata.org’ from the Network Solution Inc. that was ordered to transfer the domain name to the complainant. The panelists observed that the trade mark ‘Tata’ was protected in India and many decisions were cited by the complainant wherein the Indian Courts enforced the rights of the complainant in the trade mark. It was also observed that the respondents who registered the domain name had to put it to use which indicated a ‘bad faith registration’.

In NIIT Ltd v. Vanguard Design[6], the complainant was a reputed company rendering training in computers having 2000 franchise centres who was registered trade mark holder of ‘NIIT’ in India and other parts of the world. Defendant’s domain name ‘niitcrcs.com’ was held to be deceptively similar and likely to confuse customers as to likelihood of association with plaintiff’s mark. WIPO held the registration of domain name dispute was in bad faith and no legitimate use was being made as disputed domain name was being used to link to a pornographic site. WIPO directed that the domain name be transferred to the complainant.

The Indian Scenario

Indian Domain Name Dispute Resolution Policy I.E. “.IN” Dispute Resolution Process

In light of the internationally accepted guidelines, India has its own domestic policy to deal with disputes revolving around the cyberspace. These guidelines have been formulated in accordance with the relevant provisions of the Indian Information Technology Act, 2000. There are two documents that all parties in a dispute should rely upon:

1. The .IN Domain Name Dispute Resolution Policy (INDRP): This INDRP policy deals with the types and nature of disputes which are covered under its realm, as well as the criteria that will be considered by the arbitrators.

2. INDRP Rules of Procedure: These Rules describe how to file a complaint, how to respond to a complaint, the fees, communications, and the other procedures that will be used.

A complaint can be filed to the National Internet Exchange of India(NIXI) based on the INDRP Rules of Procedure. Once the National Internet Exchange of India (NIXI) receives a request, along with the filing fee, it will assign an arbitrator for effective adjudication of the dispute. All disputes shall be subject to the jurisdiction of Delhi courts only.[7]

The Trademarks Act, 1999 and the Trademarks Rules, 2017

The trademark protection laws would be equally applicable in the cyber world as well. Such as Section 11(9) safeguards the reputation of trademarks by laying down that “a mark can be considered well known in India even if it has not been used in India or has been neither applied for nor registered in India”.[8]

Further, section 11(10) requires the Registrar of Trademarks “(i) to protect a well-known mark against identical or similar trademarks in the process of registration and (ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.”.[9]

In another affirmative change, the Indian Trademark Rules were amended in 2017 to prescribe a formal statutory regime to make an application to the Registrar of Trademarks for recognition of a trademark as well-known in India.[10] While the said amendment eliminates the cumbersome erstwhile requirement to have a trademark declared as well-known only through legal proceedings, it in any case increases the onus on the Registrar of Trademarks to exercise its discretionary powers in arriving at such a determination.

Judicial Precedents

In the famous Yahoo! Case,[11]the US based Yahoo Inc. sued the defendant in India who registered a deceptively similar domain name YahooIndia.com and used ‘Yahoo India’ as its trade mark. The getup and content of the website Yahoo India.com was similar to the Yahoo Inc website which constituted passing off as if it had an association with Yahoo Inc. The defendant also copied the html code of Yahoo Inc.’s web pages. The High Court of Delhi passed an injunction order restraining the defendant from using ‘Yahoo’ as a trade mark or domain name and using the code contents that infringed Yahoo Inc’s copyrights in the literary content on its website. In this matter, the Indian Courts held that a domain name is entitled to the same protection as a trade mark and observed that the trade mark law applies to the virtual world as well.

In the case of Acqua Minerals Ltd. v. Pramod Borse and others,[12]the defendant deliberately registered ‘Bisleri.com’ as its domain name. When the plaintiffs who were registered owner of the marks ‘Bisleri’ moved an action, the court passed an injunction order holding that a domain name serves the same function as a trade mark and thus requires the same level of protection as granted to a trade mark. A domain name also identifies a website as a source of origin of goods or services in the same manner as a brand name.

In Dr. Reddy’s Laboratories Ltd. v. Monu Kosuri and others,[13]the court held that the defendant’s domain name ‘Dr. Reddy’s Lab.com’ was deceptively similar to the plaintiff’s trade mark ‘Dr. Reddy’s’.

In the famous case of Satyam Infoway v. Sifynet Solutions[14], the appellate used ‘SIFY’ as a main component of its domain name as www.sifymall.com, www.sifyrealestate.com and the respondent infringed its domain name using deceptively similar domain name such as www.sifynett.com. The Supreme Court held that appellate was entitled to an injunction order restraining respondent from using the domain names in dispute and held the respondent guilty of passing off. The Supreme Court concluded that “the respondent was seeking to cash in on the appellant’s reputation as a provider of service on the internet. In view of our findings albeit prima facie on the dishonest adoption of the appellant’s trade name by the respondent, the investments made by the appellant in connection with the trade name, and the public association of the trade name Sify with the appellant, the appellant is entitled to the relief it claims”.

In Info Edge (India) v. Shailash Gupta,[15]the Delhi High Court considered a case where respondent’s domain name www.naukari.com (Which was used as hyperlink to lead to www.jobsourceindia.com) was held to be deceptively similar to plaintiff’s www.naukri.com. The court reiterated the principle that a domain name is more than an internet address and is entitled to equal protection as a trade mark.[16]

In Redbull Gmbh v. Bayer Shipping & Trading Ltd.,[17] complainant filed a complaint with WIPO that its mark “Redbull” was being infringed by the respondent who registered myredbull.com. The respondent was taking unfair advantage of reputation of the complainant and the court held it was bad faith registration directing the respondent to transfer the domain name to the complainant.

In the case of Pfizer Products Inc v Altamash Khan,[18]the domain name ‘viagra.in’ being inactive, it was stated by the Hon’ble Court that “Altamash Khan was cyber squatting, over an address over which the rights and interests of Pfizer outweighed those of Altamash Khan. On these accounts, the domain name was ordered to be transferred back to Pfizer during the pendency of the suit, since no damages as such would be caused to Altamash khan. On the other hand, Pfizer in the event of the transfer being denied would have suffered serious injury in the shape of lost opportunity of commerce, development of the product, and interaction with Internet users, which might not be quantified in monetary terms.”

Further, in the case of Mr. Arun Jaitely v. Network Solutions Private Ltd.,[19] the Delhi High court ordered the defendant No. 3, to permanently restrain from using, promoting, advertising or retaining or parting with the domain name namely ‘arunjaitely.com/ and restrained from using the mark in any of the extensions of the domain name on internet. The defendant No.3 was directed to transfer the said domain name to the plaintiff with immediate effect. The concerned governing body under the ICAANN Rules was directed to block the said domain name and immediately transfer the same to the plaintiff.

The said precedents enable legitimate proprietors of domain names to carry out smooth functioning of their business by creating effective deterrence amongst potential squatters.

Conclusion

A brand name is a significant intangible asset for any business and should be protected against any action that may discredit it. In order to deal with the massive threat of trademark squatting at the worldwide level, conformity of international laws concerning Intellectual Property is needed in order for the brand owners to effectively assert and defend their valuable rights. The courts in India have decided many cases related to cybersquatting. As of today, there is no such law which deals with the menace of cybersquatting directly. Strengthening of domain and brand protection laws shall result in greater confidence amongst foreign investors and would go a long way in affording greater development for the business development in India.

[1] Internationalized Domain Names, Internet Corporation for assigned names and numbers, available at https://www.icann.org/en/system/files/files/factsheet-idn-fast-track-oct09-en.pdf ,

[2] AIR 2002 Del 243.

[3] The Web of Cybersquatting: Do we need a Law to clean it?” July 06, 2019, Acclaims, available at http://www.penacclaims.com/wp-content/uploads/2019/07/Rupal-Jaiswal.pdf

[4] List of approved Dispute Resolution Service Providers, ICANN, available at http://www.icann.org/dndr/udrp/approved-providers.html

[5] Tata Sons Limited v. Advance Information Technology Association, Decision in Case No. D2000-0049, available at www.arbiter.wipo.in.

[6] 2004 PTC (28) 98 (WIPO).

[7] Dispute Resolution Process, I Registry, available at https://www.registry.in/policies/dispute-resolution

[8] Section 11(9), the Indian Trademarks Act, 1999.

[9] Section 11(10), the Indian Trademarks Act, 1999.

[10] Rule 124, Trademark Rules, 2017.

[11] Yahoo Inc. v. Akash Arora, (1999) PTC 201.

[12] 2001 PTC 619.

[13] 2001 PTC 859.

[14] 2004 PTC (28) 566 (SC).

[15] 2002 (24) PTC 335 (Del); see also, Eicher Limited & Anr. V. Web Link India & Anr., 2002 (25) PTC 322 (Del); The Federal Bank Ltd. v. Matt Hiller and Anr., MIPR 2007 (3) 380.

[16] Card Service International Inc. v. Mc Gee, 42 USPQ 2d 1850;

[17] 2003 (27) PTC 164 (WIPO).

[18] 127 (2006) DLT 738, 2006 (32) PTC 208 Del.

[19] Decided by Delhi High Court on: 4th July, 2011 CS(OS) 1745/2009 & I.A. No. 11943/2009 & 17485/2010.

The article was originally posted on www.lexology.com on June 25, 2020 and can be accessed here.