Domain names play an important role in the representation of a business with respect to its goods or services, and often also help in locating the country of business. As observed in Satyam Infoway Ltd. v. Sifynet Solutions Ltd. (2004), domain names are not simply internet websites but are business identifiers. Due to this requirement, they must be unique in nature and follow the tests for distinctiveness under the Trade Marks Act, 1999.
With the growth of e-commerce, however, proprietors of trademarks often face the notorious practice of cybersquatting of domain names. The difficulty with domain name disputes involving cybersquatting is that there is no mechanism in place to prevent it. Unlike trademarks which can be registered, domain names do not require proof of ownership, and only need to be purchased. The current regime therefore makes it convenient for cyber squatters to simply purchase a domain name and wait for the proprietor to take action against it. The intention of cybersquatting is to earn money through the sale of such domain name to the owner who might have genuine or bona fide interest in the mark.
An important case which shaped the course of cybersquatting disputes was Arun Jaitley v. Network Solutions Private Limited and Ors. (2011). Here, Mr. Arun Jaitley wished to register "www.arunjaitley.com" as his domain; however, he found it to have been already registered at the time. The respondents' website also stated an exorbitant price in the range of $11,725 – $14,475 to procure the domain name. The plaintiff contended monetary gain of defendants to be the sole purpose behind the domain, and that the registrars of the domain names were acting in collusion with each other to deliberately defeat the rights of bona fide rightsholders in a domain name. The court observed that the name Arun Jaitley to be a popular and distinctive enough name to fulfil the requirements of a mark. Considering the elements of passing off namely, reputation, misrepresentation, and damage to goodwill, the court held that the law of passing off applies to domain names including those with personal names.
However, a major issue with respect to domain names is the absence of a preventative or blocking mechanism. Unlike conventional trademarks which involve antecedent rights, protection against violation of domain names is a remedial right i.e., arising only after its violation and compensated by way of relief. Along the same lines, the Bombay High Court in Hindustan Unilever Limited v. Endurance Domains Technology (2020) noted that the domain name Registrar cannot blacklist or block a registered domain name. One of the reasons given was that a domain name is not owned by anyone, but are in use upon registration and payment of fees for stipulated period of time. There is no human element involved in assessing their legitimacy. The court did note that a domain name can have its registration suspended, but continued suspension cannot be imposed. Therefore, the only remedy available to the bona fide rightsholder is to approach the court.
In a recent case, A WIPO panel's investigation of marks (Tata vs TAATAS) indicated that merely because a mark is well-known and that there is a possibility of bad faith is not conclusive evidence of cybersquatting. This becomes especially relevant where the dispute, as in this case, is between marks being used it two separate countries. The Panel however did note that in case of domain names, usage in different countries it itself would not preclude the proprietor from claiming trademark protection in another country as the internet is a global medium, which makes it sufficient for a proprietor to demonstrate rights in a different jurisdiction.
The judicial stance on cybersquatting is fairly new, and there are several problems to tackle. For example, unlike conventional trademarks, domain names may be difficult to distinguish in in case of different goods or services even belonging to separate trademark classes. The judgement of the Bombay High Court in HUL leaves the scope of protection far too narrow for a trademark. Currently, the regulation of domain names is done through the World Intellectual Property Organization (WIPO) and the Internet Corporation for Assigned Names and Numbers (ICANN), which has also adopted WIPO's Uniform Domain Name Disputes Resolution Policy (UDNDR). As seen in the Arun Jaitley case, the Court can enforce the ICANN rules to transfer a domain name from the mala fide to bona fide rightsholder. Nonetheless, the law on cybersquatting in India still fails to address registration of domain names that are prima facie non-distinctive, and decides matters on the basis of bad faith registration.
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