Cybersquatting And Domain Name Disputes

Introduction

Ever since the internet has been created as a communication network, it is only expanding. With its evolution from being just a means of communication to a significant mode of carrying commercial activities; the problem of 'domain name allocation' has become its primary concern. The expansion of the internet has led to an explosion in the number of registered domain names. The businesses, organizations and individuals are now naming their domains after their brand names and trademarks. With the '.com' burst, there has been a rise in the domain name disputes leading to a turmoil in this section of Intellectual Property. This has now become a global issue; how to foster the development of intellectual property on the internet meanwhile prohibiting its unlawful usage.

In today's digital era, domain names have become a significant aspect of online identity. Just like we have our homes and office addresses, similarly domain names are form of addresses which enables the users to locate the websites in simpler way. Domain names align with several IP addresses that link different devices and allow a direct routing mechanism to send data requests to the appropriate recipient. However, both people and corporations now face a complicated environment due to cybersquatting and domain name disputes.

What is Cybersquatting: Understanding the Concept

As per US Federal law; Anti-Cybersquatting Consumer Protection Act, 1999, cybersquatting (also termed as domain name squatting) is defined as – "The act of registering;trafficking in; oruse of, a domain name that is identical to, confusingly similar to a trademark or service mark of another that is distinctive at the time of registration of the domain name, without regard to the goods or services of the parties. It is done with the bad- faith intent of profiting from the goodwill of someone else's mark."

Impact - This practice results in consumer fraud and confusion amongst public as to the original source of goods and services. Also, puts irrational and inadequate burden on the trademark owners to prevent their trademarks.

Forms - The various forms of cybersquatting are described under:

1. Typo squatting- here, domains are created with typological errors within the well-known brands domain. Examples are yajoo.com, facebok.com etc. The motive is to misguide the target audience whenever they made a mistake in typing a domain.
2. Reverse Cybersquatting- here, a person, by claiming the trademark as theirs, accuse the domain owner for cybersquatting.
3. Identity theft- already existing website is used with the malafide intention to confuse the target consumer.
4. Classic cybersquatting- simple registration of a domain with the ill intention of selling it to the legitimate owner for profit.

Domain Name

Domain name is the identification or identity of a website. It is a combined by typographic characters that are used to describe the location of a specific location online. It is called as URL. No two foundations can have same domain names.

Laws and Regulations governing Cybersquatting

In India, there are no particular laws condemning, prohibiting, or penalizing cybersquatting. However, domain names are protected as trademarks under the Trademark Act of 1999. As a result, anyone who begins using an identical/similar domain name will be held accountable for trademark infringement, as outlined in Section 29 of the Trademark Act 1999.

The United States passed the Anti-Cybersquatting Consumer Protection Act. The Anti-Cybersquatting Consumer Protection Actallows the owner of a trademark that is registered to bring a suit in federal court for accused cybersquatting, resultingin the domain name to be shifted to the registered owner's name.

The victim may initiate arbitration proceedings under the Internet Corporation for Assigned Names and Numbers (ICANN).

The victim has two main options against cyber squatters:

• Filing a lawsuit against India's various courts, or
• Issue a cease-and-desist legalnoticeto the cyber-squatterand canget a passing-off order againstthe cyber-squatter.

Uniform Dispute Resolution Policy [UDRP]

ICANN introduced the Uniform Domain Name Dispute Resolution Policy (UDRP), which forms part of the electronic registration agreement accepted when acquiring a domain name through registrars such as GoDaddy or similar platforms. To initiate a UDRP proceeding, the trademark holder must choose an approved dispute resolution provider, such as the Asian Domain Name Dispute Resolution Centre (ADNDRC), the Canadian International Internet Dispute Resolution Centre (CIIDRC), or the World Intellectual Property Organization (WIPO).

As per Para 4(a) of the UDRP, the complainant must furnish all three factors stated herein-

1. The violatorhas no genuine rights to the domain name.
2. The domain name was registered and has been utilized in bad faith.
3. The domain name is similar or comparableto a trademark or business mark owned by the complainant.

Relation between Domain name and Trademark

In today's digital landscape, domain names function as virtual trademarks, symbolizing quality and embodying an organization's goodwill. They were designed as alphabetical identifiers to make online addresses easier to remember and access. These names often consist of recognizable words or popular brand and individual names, such as "Nike.com" or "Apple.com."

The way a trademark serves in the offline business transaction, a domain name also serves in the same way online. It assists users indetermining the source of the products or services provided by the owner.

As a result, domain names are extremely important in online business. They are crucial for the following reasons:

• Establishing thereliability of the website and business on the internet.
• Business promotion and customer acquisition online and offline using web advertising.
• Customers and potential consumers can easily reach out.

Cases ofdomain name and trademarkconflict primarily involve challenges associated with the use of a trademark's goodwill in the domain name by a violator to divert potential customers of the trademark owner to a web page unrelated to that trademark.

The unauthorized registration of a trademark as a domain name is often done to demand payment or block the rightful owner's use. Cybersquatters quickly resell such domains to unrelated parties, leading to passing off and dilution of renowned trademarks or trade names.

Indian Case laws

One of the earliest domain name lawsuits in India is Yahoo v. Akash Arora, in which the defendant purchased the domain name "YahooIndia.com." According to the plaintiff, the defendant purchased the domain name in bad faith in order to offer comparable services to the plaintiffs. The court concluded that there is a definite case of consumer confusion because the names are similar. Therefore, the defendant was refused from using the above-mentioned domain.

In M/s Kalyan Jewellers India Ltd. v. Antony Adams & Ors., M/s Kalyan Jewelers India Ltd. filed a complaint against Antony Adams & Others at the WIPO regarding the use of the domain name "kalyanjewlers.com." However, the WIPO recommended that the plaintiff seek the proper forums to demonstrate bad faith. Consequently, the plaintiff initiated a lawsuit in the Madras High Court, where trademark infringement was confirmed, leading to a ruling that prevented the defendant from using the name "Kalyan" or "Kalyan Jewelers."

Similarly, in Bundl Technologies Pvt. Ltd. v. Aanit Awattam alias Aanit Gupta & Ors., Bundl Technologies Private Limited sued Aanit Awattam for allegedly infringing their trademark, Swiggy. The Bombay High Court instructed Godaddy LLC (one of the defendants in the case) not to register any domains that include the term SWIGGY. Dissatisfied with the ruling, Godaddy submitted a request to partially overturn the judgment which barred them from registering a domain name containing "SWIGGY." Following this request, the Bombay High Court revised the ruling, indicating that whenever a domain featuring the word "SWIGGY" is registered, Godaddy must notify the plaintiff.

Process for Dispute Resolution in India

The National Domain Name Dispute Resolution Policy (NDRP) governs conflicts between a Registrant and a Complainant concerning the registration or use of a .IN domain name. Paragraph 4 of the NDRP closely parallels Paragraph 4(a) of the UDRP, setting out comparable core principles for filing a complaint. If a complaint is lodged against the Registrant through the INDRP, the Registrant must pursue arbitration with the .IN Registry.

Upon receiving a complaint, the .IN Registry will appoint an Arbitrator from its list of available arbitrators. The Arbitrator is required to inform the Respondent within three days of receiving the complaint. Subsequently, the Arbitrator will conduct the Arbitration Proceedings in accordance with the Arbitration and Conciliation Act of 1996, as well as this Policy and the associated rules. The Arbitrator must issue an award within 60 days from the commencement of the arbitration proceedings, which may be extended by a maximum of 30 days, along with a copy of this award furnished to the Complainant, Respondent, and the .IN Registry. Along with the award, copies of all submissions, responses, and rejoinders must also be sent to the .IN Registry for their records and transparency.

According to the policy's paragraph 11, no in-person hearings will take place unless the arbitrator certifies, upon request from one or both parties, that a hearing is required to decide the complaint. Additionally, it specifies that there cannot be more than two hearings.

If the arbitration proceedings have commenced as per this policy; the one, who registered, is not allowed to transfer a disputed domain name registration to another holder for 15 working days following the conclusion of the arbitration proceeding or while the matter is still pending, unless the party to whom the domain name reverted is the one to whom the domain name reverted.

Conclusion

In the digital age, where online identity is directly linked to consumer trust and brand recognition, cybersquatting and domain name disputes have emerged as urgent issues. Despite the absence of specific anti-cybersquatting laws in India, the Trademark Act's legal remedies and procedures like the INDRP and UDRP provide viable solutions. The growing abuse of domain names for dishonest or commercial purposes emphasizes how urgently stronger legal protections and public education are needed. Businesses must actively safeguard their domain assets and push for stronger and more specialized legal frameworks to prevent cybersquatting, as they continue to depend on the internet for expansion.

References

1. Jain & Partners, Domain name and cybersquatting. https://www.jainandpartners.com/blog/details/domain-name-and-cyber-squatting/36.
2. S. Senate. (1999), Anti-cybersquatting Consumer Protection Act: Report of the Committee on the Judiciary, United States Senate, on S. 1255 (Report No. 106–140). U.S. Government Publishing Office. https://www.govinfo.gov/content/pkg/CRPT-106srpt140/html/CRPT-106srpt140.htm .
3. Bar & Bench (2021, March 7). Cybersquatting. https://www.barandbench.com/view-point/cybersquatting.
4. Internet Corp. for Assigned Names & Numbers (ICANN), Uniform Domain Name Dispute Resolution Policy (Oct. 24, 1999), https://www.icann.org/resources/pages/policy-2012-02-25-en.
5. National Internet Exchange of India (NIXI), .IN Domain Name Dispute Resolution Policy (June 28, 2005), https://www.registry.in/system/files/IN_Domain_Name_Dispute_Resolution_Policy.pdf.
6. Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (2018).
7. Pratibha Ahirwar, Domain name disputes and cybersquatting in India – Part I. (2019, February 22) Mondaq https://www.mondaq.com/india/trademark/783958/domain-name-disputes-and-cybersquatting-in-india-part-i.
8. Trade Marks Act, 1999, No. 47 of 1999, § 29 (India).
9. Yahoo!, Inc. v. Akash Arora & Anr., 78 (1999) DLT 285.
10. M/s Kalyan Jewellers India Ltd. v. Antony Adams & Ors., C.S. No. 335 of 2020.
11. Bundl Technologies Pvt. Ltd. v. Aanit Awattam alias Aanit Gupta & Ors., C.S. (Comm.) No. 26549 of 2022.
12. GHOSH, P., Domain Name Disputes: An Economic Analysis of Some Court Cases in India. Economic and Political Weekly, (2012) 47(51), 52–58. http://www.jstor.org/stable/23391159.
13. Ghosh, S., Domain name disputes and evaluation of the ICANN's Uniform Domain Name Dispute Resolution Policy. Journal of Intellectual Property Rights, (2004) 9, 424–439.
14. https://www.khuranaandkhurana.com/cybersquatting-and-domain-name-disputes

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.