By – Shashi Shekhar Misra
LL.B. (final year) at Campus Law Centre, Faculty of Law, University of Delhi.
Trade and commerce require new strategies to survive and flourish in the current internet age. Not only is an online presence essential for a commercial enterprise today but protecting itself from fraudulent and malicious elements online is also equally important. The fight for commercial success that began and was until a few years ago being fought in the physical market has now shifted to the online arena and with it has brought several problems and challenges. One such challenge is that of ‘cyber-squatting’, which relates to the protection of trademarks and domain names and their consequent interdependence.
- What is ‘cyber-squatting’?
The Cambridge English Dictionary defines ‘cyber-squatting’ as “a situation in which someone pays to officially take a famous name as an internet address so that they can later sell it for a high price to the person or organization with that name”. In other words, since internet addresses (technically known as a ‘domain name’) are exclusive and a particular domain name can only be held by one person at a given time, a cyber squatter buys a domain name that he expects to become famous or valuable in the future and merely squats on it without using it, in the hope that the when the enterprise with that name decides to go online, he can extract a high amount of money from them for selling them that domain name.
- Domain Name: Structure and Significance
A domain name is a crucial component of the World Wide Web or the Internet. It has played a major role in the rise of the internet’s popularity by providing a friendly and easy method of internet navigation.
Every computer on the internet has a unique address just like a telephone number, which is a complicated string of numbers, between 0 to 255, known as the Internet Protocol Address (IP Address). This number is divided into 4 sets divided by full stops and is also known as Uniform Resource Locator (URL). This address being difficult to remember, a system of Domain Names was developed known as Domain Name System (DNS). The DNS makes using the Internet easier by allowing a familiar string of letters known as a domain name. Instead of remembering and typing an IP Address, the web page can be accessed by typing a domain name. It is a mnemonic device that makes the address easier to remember.
A full domain name consists of three sub-types of domain names: “top-level domain name (TLD)” such as .com or .in; “second-level domain name (SLD)” used before the TLD, such as .gov or .co; and the “third-level domain names (TLD)” which is the name which the enterprise chooses.
Domain Names are relevant because consumers often perceive them as performing in electronic commerce, much the same role as trademarks and trade names have historically played in more traditional modes of business The courts in the US have held that “Domain Names may be a valuable corporate asset as it facilitates communication with a customer base.”
- How Cyber-Squatting Works and the Need to Protect Domain Names as Trade Marks
Since no mechanism reserves domain names for the proprietor of the respective registered trademark, cyber-squatters usually buy a domain name which is a registered trademark of someone else in the hope of selling it to that enterprise for a hefty sum.
There are different types of cyber-squatting:
- Cyber-piracy: buying a deceptively similar domain name (e.g. Tatas, Krocs)
- Typo-squatting: buying a domain name that is a frequent misspelling of a trademark (e.g. Radiff, Yahu)
- Reverse Hijacking: Registering trademark in the name of a well-known online-only merchant who is yet to operate brick-mortar stores.
- Cyber-parasites: fraudulently installing pop-ups on sites to divert traffic.
There is an urgent need to protect domain names in the same way as the law protects trademarks because the internet is a ruthless place with few options of grievance redressal. While trademark regimes operate on a territorial basis, domain names operate on an international level, making them as crucial as trademarks, if not more. Also, though trademark regimes don’t register deceptively and confusingly similar marks, there is no such prohibition for deceptively similar domain names.
- Case Law: Protecting Domain Names as Trademarks
The USA passed the first-ever anti-cyber squatting legislation in 1999 known as ‘The Anti-Cybersquatting Consumer Protection Act’. In India, there is currently no law governing cybersquatting and courts have used the common law doctrine of ‘passing off’ and the doctrine of ‘bad faith/mala fides’ to grant injunctions to genuine victims of cyber-squatting.
In the USA, in People for the Ethical Treatment of Animals v. Doughney, the court ruled in favor of the petitioner and asked the defendant to transfer the domain name “peta.org” to them.
In India, the first known case of protection of domain names as trademarks was Titan Industries Limited v. Prashanth Koorapati & Ors. (Delhi High Court Suit No. 179 of 1998) wherein the defendant was injuncted against using the domain name “tanishq.com”. The court ruled on the same principles as it would have in an infringement or passing-off suit.
In the high-profile case of Yahoo Inc. v Akash Arora & Anr. (1999 IIAD Delhi 229), the Del HC granted an injunction to the plaintiff against the defendant’s use of the domain name “yahooindia.com” using the doctrine of passing-off even though Yahoo! was a service and services were not covered under the Trade and Merchandise Marks Act, 1958 which was in force at the time.
The Bombay HC in Rediff Communication Limited v. Cyberbooth (AIR 2000 Bombay 27) injuncted the defendant from using the domain name ‘radiff.com’, which was similar to the plaintiff’s domain name ‘rediff.com’.
Similarly, in Dr. Reddy’s Laboratories Ltd. v. Manu Kosuri [2001 PTC 859 (Del)], the defendant was restrained from using the domain name ‘drreddyslab.com’, which was identical to the plaintiff’s trade name.
In Satyam Infoway Ltd. v Sifynet Solutions [2004 (3) AWC 2366 SC] the Supreme Court agreed with the hitherto stance of courts on the issue of protecting domain names and stated: “As far as India is concerned, there is no legislation which explicitly refers to dispute resolution in connection with domain names, the operation of the Trade Marks Act 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.”
Thus, after the affirmation by the SC, courts in India now pro-actively protect the interests of the victims of cyber-squatting and ensure that unscrupulous elements don’t harm the commercial interests and goodwill of genuine enterprises.