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Introduction
The article tries to briefly outline the present structure of the
Domain Name System, the problem relating to Cybersquatting in the
cyberspace and the Domain Name Dispute Resolution Policy and
mechanism reflecting of ICANN and the Indian scenario.
What is in a name! That which you call rose by any other name
would smell as sweet!
-William Shakespeare
Domain Name System
The Domain Name System (DNS)
serves the central function of facilitating users’ ability to
navigate the Internet. It does so with the aid of two components:
the domain name and its corresponding Internet Protocol (IP)
number. A domain name is the human-friendly address of a computer
that is usually in a form that is easy to remember or to identify,
such as www.wipo.int. An IP number is the unique underlying
numeric address, such as 192.91.247.53. Distributed databases
contain the list of domain names and their corresponding address
and perform the function of mapping the domain names to their IP
numeric addresses for the purpose of directing requests to connect
computers on the Internet. The DNS is structured in a hierarchical
manner which allows for the decentralized administration of
name-to-address mapping
In the case of
American Civil Liberties Union v. Reno
, Judge Mokenna has explained the Internet address system, as
follows; each host computer providing Internet services (site)
has a unique Internet address. Users seeking to exchange digital
information with a particular internet host require the host’s
address in order to establish a connection. Hosts actually posses
two fungible addresses a numeric
IP
address and alphanumeric
Domain name,
with greater mnemonic potential
Internet Domain names are similar to telephone number mnemonics,
but they are of greater importance, since there is no satisfactory
Internet equivalent to a telephone company white pages or director
assistance, and Domain names may be a valuable corporate asset, as
it facilitates communication with a customer base
Domain name today serves as an on-line trademark, source
identifier, indicates quality and repositories of goodwill
When an internet user enters a domain name into a software
application, such as a browser program or an FTP client, the
software sends that name to a number of domain name server
computers. The DNS searches in its database for an IP address
which matches the domain name, and then returns the IP address to
the requesting software application. Once the software has
received the IP address, it can be used to communicate with the
server to which the domain name refers
Domain names must not be confused with property rights in names,
such as trade marks. A domain name is acquired through simple
contract with a registry, and any rights which the holder has in
respect of the name derive from the contract. Fundamentally, a
‘domain name registration’ refers to a process by which a new SLD
is created under an established TLD (such as.com,
.org).
By this process, a person or a firm (the Registrant) contacts a
Domain Name Registrar and requests the use of a particular name as
a domain name in the DNS. Generally, no examination is done
regards the presence of any right of the Registrant in the
proposed domain name . The registrar then contacts the registry
for that top-level domain and asks whether the desired name is
still available. If no one has a previously registered it, then
the registrar may process the request and register the desired
name to the registrant.
However, successful registration of a domain name with an
accredited domain name registrar does not confer any legal rights
to use that domain name beyond those created by the registration
agreement itself .
The DNS has been administered by IANA (Internet Assigned Names and
Numbers), pursuant to principles that were described in Request
for Comments (RFC) 1591 of March 1994 . The DNS operates on the
basis of a hierarchy of names. At the top, are the top-level
domains, which are usually divided into two categories: the
generic top-level domains (gTLDs) and the country code top-level
domains (ccTLDs).
There were, at the onset seven gTLDs which were established by
ICANN (The Internet Corporation of Assigned Names and Numbers).
Three of these are open, as there is no restriction on the persons
or entities that may register names in them. These three gTLDs are
.com, .net
and
.org.
The other four
restrictive
gTLDs are .int,
which can only be registered to use by international organization,
.edu,
which is restricted to use by four-year, degree-granting colleges
and universities, .gov,
which is restricted to use by agencies of the federal government
of Unites States of America and
.mil
which is restricted to use by the military of the Unites States of
America . In addition to gTLDs and ccTLDs, there is one special
TLD, .arpa, which is used for technical infrastructure purposes.
ICANN administers the
.arpa
TLD in cooperation with the Internet technical community under the
guidance of the Internet Architecture Board
In 2001 , ICANN introduced seven new domain name extensions, which
include,
.aero, .museum, .coop, .biz, .info, .pro”and
.name.
Among the seven new domain name extensions, the only unrestrictive
extension is
.info.
However, in order to combat cybersquatting in
.info
a system of
Sunrise Period
was created. Thus, for the first month (sunrise
period),
only trademark holders were permitted to register domain names
under this extension and it is only after this one month that the
extension was opened to general public.
Further.
.biz,
meant for the business community, came with a unique system that
enabled the filing of an intellectual property claim. At the
initial stages of
.biz
registrations, any trademark owner could file an IP claim for
his/her trademark, listing the various registration particulars
such as the registration number, registration date, date of first
use of the trademark, description of goods, in respect of which
the mark is registered, the international class under which the
goods fall etc
A view subsists that the emergence of new TLDs will only
jeopardize corporate trademark as it would give more opportunity
for competing firms and individuals to obtain domain names based
on such trademarks. This is because, in order to protect their
trademarks, businesses often buy up all available domain names
associated with a particular word or words. It is estimated that a
corporation in America spends on an average $ 70,000 a year to
maintain a domain name strategy to protect their trademarks
Cybersquatting
Cybersquatting is the act of registering a domain name that is
same as, or confusingly similar to, the trademark of another with
the intention of selling (at a profit) the domain name to the
trademark owner
As long as a cyber squatter owns the domain name, the trademark
owner cannot register his own trademark as a domain name. Thereby,
a cyber squatter breaches the right of the trademark owner to
utilize his own trademark. It is relevant to note that there is
nothing wrong with the practice of reserving a domain name. Often,
cyber squatters register words or phrases they hope will some day
be sought after by new companies or new businesses. Such
‘speculative domain name registration’, (read, speculative
cybersquatting) is very much legitimate.
The problem spawned by cybersquatting is augmented as
entrepreneurs try to take advantage of the reputation of others by
registering domain names which attract members of the public. Of
particular concern is the growing practice of registering the
names of celebrities, particularly where domain name is used for a
pornography site
The nuisance of cyber squatting is also evident from the fact that
cyber squatting disputes filed with the World Intellectual Property
Organization (WIPO) in 2006 increased by 25% as compared to 2005
The evolution of the domain name registration system is causing
growing concern for trademark owners, in particular some of the
effects of the use of computer software to automatically register
expired domain names and the free-of-charge for a five-day 'tasting'
period, the proliferation of new registrars, and the establishment
of new generic Top Level Domains (gTLDs). The combined result of
these developments is to create greater opportunities for the
mass, often anonymous, registration of domain names without
specific consideration of third-party intellectual property
rights. While electronic commerce has flourished with the
expansion of the Internet, recent developments in the domain name
registration system have fostered practices which threaten the
interests of trademark owners and cause consumer confusion.
Practices such as 'domain
name tasting'
risk turning the domain name system into a mostly speculative
market
The US legislature has already dealt with this issue by enacting
the Anti cyber squatting Consumer Protection Act, 1999 (ACPA). The
Act creates civil liability for bad-faith registration with the
intent to profit of domain names that are identical or confusingly
similar to distinctive trademark . Personal names are also
protected . Remedies under the Act include injunction, forfeiture
or cancellation of domain name , actual damages or profits, or
elective statutory damages of between $ 1,000 and $ 100,000 per
domain name
Under ASPA, an additional right is created by the Act in favor of
the trade mark owner. By this right, the trade mark owner can file
an
in rem
action against the domain name itself (as opposed to the
registrant of the domain) . An in rem action can be brought only
if
in personam
(i.e. personal) jurisdiction cannot be obtained or if the
appropriate defendant cannot be found after notice is sent and
published by means directed by the court. Remedies in an in rem
action are limited to forfeiture, cancellation or transfer of the
domain name
One of the earlier cases pertaining to cybersquatting was
Card Service International Inc. v. McGee
. Therein the American Court held that the domain name serves the
same function as a trademark and is not merely to be construed as
an address, as it identifies an Internet site to those who reach
it, much like a persons name identifies a particular person.
In
Marks & Spencer v. One-in-a Million
, the UK Court observed that when a person deliberately registers
a domain name on account of its similarity to the name, brand name
or trademark of an unconnected commercial organization, he must
expect to find himself at the receiving end of an injunction to
restrain the threat of passing-off.
Further, in
Jews for Jesus v. Brodsky
, the US Court held that merely placing a disclaimer, in the
Website would not be an adequate remedy against the appropriation
of plaintiff’s trademark by the defendant.
The greatest perplexity in cybersquatting was the fact, that in
most cases cyber squatters never activated their Web site. ‘Use’,
was a necessary requisite which had to be shown by the plaintiff
against the defendant to claim relief under common law of
passing-off. Legal ingenuity was shown by the Court in Marks &
Spencer case, while interpreting ‘use’, to include such obvious
non-use.
The Court of Appeal affirmed that the mere act of registration of
the domain name and an offer to sell the same constituted ‘use’.
Indian judiciary too adopted this approach in
Tata Sons Ltd v. Kirti Sharma
One of the most significant cases in the Indian context of
cybersquatting remains
Yahoo! Inc. v. Akash Arora & Anr.
, wherein Court held that trademark law applies with equal force
on the Internet as it does in the physical world.
The Indian Courts has followed this decision in several other
subsequent cases such as
tanishq.com case,
Rediff Communication Ltd. v. Cyberbooth & Anr.
, wherein the Bombay High Court has upheld the value and
importance of a domain name as an corporate asset.
However, incases where domain names involves a descriptive term
such as mutualfundsindia.com, Courts, has refused to grant an
injunction holding that
in absence of secondary meaning, the term
MUTUALFUNDSINDIA
is descriptive and the plaintiff cannot be said to have any
trademark rights over it
.
In India, since there exists no direct law to wrestle the threat
of cybersquatting; hence courts have largely used the principle of
passing-off. This approach is significant in the sense that such
an approach seems necessary in a country where trademark
application take years to process
Indian businesses had to face such threat before WIPO also in a
large no. of cases as Complainant. In most cases, Indian firms and
corporations have successfully defended their trademark. The
domain name involved in such cases include,
Mahindra.com, Tridenthotels.com , Theeconomictimes.com ,
Timesofindia.com, Tata.org
Classic instances of cybersquatting are generally easier to
establish and countered as can be determined from cases such as
worldwrestlingfedreation.com, dodialfayed.com, Talk-City.com,
jimihendrix.com.
ICANN & UDRP
In 1993, pursuant to a grant from the National Science Foundation,
a central registry for domain names was created in United States.
Initially, Network Solutions Inc.(NSI) acted as the sole
administrator over the domain name registry with dominion over
Second-Level Domains with respect to Top-Level Domains (TLDs),
i.e.
.com, .net and .org.
This monopoly of NSI pertaining to domain name registration was
ended pursuant to a ‘White Paper ’ written by the National Tele
Communications and Information Agency, US Department of Commerce
in June, 1998 which called for the formation of a new non-profit
corporation by private sector Internet stakeholders to administer
the policy of domain names system, Consequently ICANN was born
Uniform Domain Name Dispute Resolution policy (UDRP) was adopted
on 24th October, 1999 by ICANN realizing the potential threat
presented by Cybersquatting. The policy offers an expedited
administrative proceeding for trademark holders to contest
abusive registrations of domain names,
which may result in the cancellation, suspension or transfer of a
domain name by the registrar.
Under the UDRP, a complainant is required to file a
complaint
with a “Dispute resolution Service Provider” approved by ICANN.
Currently, the World Intellectual Property Organization (WIPO),
the National Arbitration Forum (NAF), the CPR Institute for
Dispute Resolution, Asian Domain Name Dispute resolution Center (ADNDRC)
and eResolution Consortium are the only authorized providers. Each
of these providers in turn has their own set of supplemental rules
which have to be adhered to by a complainant who opts for that
particular provider.
The policy applies to registrations in the
.com, .net and .org
categories and is incorporated by reference into the registration
agreement that the registrant had with the registrar at the time
of registering its domain name. By virtue of the incorporation of
the UDRP into the registration agreement, the registrants submits
itself to the jurisdiction of the approved dispute settlement
resolution provides and binds itself to the UDRP
The foremost advantage of the ICANN dispute resolution policy
rests in its speed and relative low costs. A respondent must reply
within 20 days of complaint, and once the submissions are complete
the panel has 45 days to issue its decision. It remains open to
the parties to either have a panel of one or three arbitrators
from the list of the ICANN approved experts in the intellectual
property matter. In general, no personal appearance is required
except in exceptional circumstances since the panel has to decide
on filing alone.
The policy also provides for the conduct of the proceedings to be
done via electronic filing . It is noteworthy that as on 16th
April 2007, a total of 10,788 UDRP cases had been filed with WIPO.
Of these, 10,294 cases cumulatively have been decided and resulted
either in transfer, denial of complaint, cancellation or
termination of the domain name
Under UDRP a complainant has to demonstrate under Paragraph 4(a)
of the policy, three elements to obtain relief. These elements
are:
1. Respondents domain name is identical or confusingly similar to
a trademark or service mark in which the complainant has rights;
2. Respondent has no right or legitimate interest in respect of
the domain name; and
3. Respondent’s domain name has been registered and is being used
in bad faith.
It is pertinent to note that the primary prerequisite of Para 4(a)
is that the domain name of the complainant
should have been registered
and
is being used in bad faith
In order to determine the existence of
bad faith registration and use
policy provides certain inclusive factors, which are:
1. Registering the domain name with the primary purpose of
subsequently selling it at a profit.
2. Registering the domain name primarily for the purpose of
disrupting the business of the competitor.
3. Registering the domain name in order to prevent the owner of
the trademark from reflecting the mark in a corresponding domain
name.
4. Using the domain name to attract Internet users to one’s Web
site by creating a likelihood of confusion with the complainant’s
trademark.
However, these are merely inclusive factors and the arbitration
panel may rely upon other germane reasons to determine
bad faith
Post
Jeanettewinterson.com case,
it has been established that the UDRP’s reference to trademark
encompasses both registered and unregistered trademark . The panel
decided that the term ‘trademark’ in clause 4(a) extended to
unregistered as well as to registered trade marks, referring to a
number of English law cases on passing off and concluded:
In the Panel’s view, trademarks, used in Para. 4(a) of the Policy
is not to be construed by reference to the criteria of
registrability under English law (see Elvis Presley case ) but
more broadly in the terms of the distinctive features of a
person’s activities. In other words, akin to the common law right
to prevent unauthorized use of a name. Thus applying English law
the Complainant clearly would have a cause of action to prevent
unauthorized use of the Mark JEANETTE WINTERSON in passing-off.
Similar decisions were arrived at by the Panel in
Julia Fiona Roberts v. Russell Boyd and Mick Jagger v. Denny
Hammerton
Further, the Panel has consistently ignored the suffix (.com, .org
etc) and resorted to apply the test whether an Internet user would
consider that the domain name suggested a connection with the
trade mark proprietor, while ascertaining the requirement of
‘identical or confusingly similar’ requirement in clause 4(a) (i).
Thus intentionally misspelling the trade mark will still result in
a finding of confusing similarity . Same will be the result in
most cases where a prefix or suffix is added to the trade mark
Inconsistency is apparent in the field of ‘suck-site’ decisions. A
suck-site is a basically a protest site where the domain name
appears in the form of ‘trademark sucks’ or adds similar
distinguishing words to the trade mark and is purportedly used to
convey dissatisfaction with the activities of the trade marks
holder. Whereas some decisions have held that adding
‘sucks’
to the trade mark must always lead to a finding that there is no
confusing similarity with the trade mark because ‘-sucks’
is well known as denoting complaint or protest sites . Others are
of the view that an Internet user may not be aware of the usage of
the term
‘-sucks’,
particularly if they are nor native English Speakers, and thus
held that there is confusing similarity
Though the general trend now shown by the Panel is
sucks
domain names as confusing , yet if they are genuinely used to
protest against the trade mark holder, they are not held to
indicate bad faith registration and use. However, where sites were
registered with multiple names , used for commercial purposes
rather than protests or attempt was made to sell the domain name
at a profit , the Panel took it as an indication of bad faith.
India And
Domain Name Dispute Resolution
The ccTLD’s category is specific and distinct from the gTLD’s and
correlate to the names of specific countries and territories.
Various corporations today not only register their trade name and
their core brands as gTLD’s, but also as ccTLD’s in select
countries where they see future business potential. Functionally,
there is no dissimilarity between the gTLD and the ccTLD. A domain
name registered in a ccTLD provides exactly the same connectivity
as a domain name registered in a gTLD. There are at present more
than 200 ccTLD’s. Each of these domains bears a two letter country
code derived from Standard 3166 of the International
Standardization Organization
An example would be: Yahoo.com is a gTLD. However, Yahoo.co.in
would be a ccTLD registered in India. Similarly, Yahoo.co.au would
be a ccTLD registered in Australia.
The administration of a ccTLD is left to the specific country
concerned and thus each ccTLD policy is distinct from the other.
For example, the administration of domain names within the
.in
(Indian) category is overseen by NIXI (National Internet eXchange
of India). Similarly, registrations in the UK are overseen by a
body known as Nominet.
Under NIXI, the INRegistry, functions as an autonomous body with
primary responsibility for maintaining the .IN ccTLD and ensuring
its operational stability, reliability, and security, implementing
the various new policies set out by the Government of India and
its Ministry of Communications and Information Technology,
Department of Information Technology.
IN Registry has assumed responsibility for the registry from the
previous registry authority, The National Centre for Software
Technology (NCST) after the Government decided to revamp the
administration of the .IN registry in late 2004.This change was
announced via an executive order through a gazette notification
issued by the Department of Information Technology (DIT),
Government of India, according a legal status to the IN Registry
IN Registry does not carry out registrations itself. Instead, it
accredits registrars through a process of selection on the basis
certain eligibility criteria.
Usually a domain names may be registered for a minimum of one (1)
year, and a maximum of five (5) years. Domains automatically renew
at the end of their term. .IN domain names may be between 3 and 63
characters in length. Only letters, digits, and hyphens are
accepted in a domain name. It is proscribed to begin or end domain
names with hyphens. For names in the unrestricted zones
registrants are allowed to transfer their domains to the registrar
of their choice. The registry holds the authority to deny or
suspend a registration if it conflicts with the sovereign national
interest or public order .
Owners of registered Indian trademarks or service marks were also
allowed a Sunrise Period to protect their marks online. The
sunrise period gave preference to Indian citizens and companies
over entities from abroad.
".In"
Dispute Resolution Process
The IN Registry has published the .IN Dispute Resolution Policy (INDRP)
which is a mandatory dispute resolution procedure. India does not
subscribe to UDRP. However, INDRP has been formulated in lines of
UDRP, internationally accepted guidelines, and with the relevant
provisions of the Indian IT Act 2000.
INDRP sets out the terms and conditions to resolve a dispute
between the Registrant and the Complainant, arising out of the
registration and use of the .in Internet Domain Name. Para 4,
INDRP is strikingly similar to Para 4 (a) of the UDRP and
constitutes the same essential premises for filing a complaint.
INDRP makes it obligatory on the Registrant to submit to
arbitration proceeding in an event a complaint is brought against
the same with .IN Registry.
Upon receipt of complaint the .IN Registry shall appoint an
Arbitrator out of the list of arbitrators maintained by the
Registry. Within 3 days from the receipt of the complaint the
Arbitrator shall issue a notice to the Respondent. The Arbitrator
shall then conduct the Arbitration Proceedings in accordance with
the Arbitration & Conciliation Act 1996 and also in accordance
with this Policy and rules provided there under
Once the arbitrator is appointed the .IN Registry shall notify the
parties of the Arbitrator appointed. The Arbitrator shall pass a
reasoned award and shall put forward a copy of it immediately to
the Complainant, Respondent and the .IN Registry. The award shall
be passed within 60 days from the date of commencement of
arbitration proceeding. In exceptional circumstances this period
may be extended by the Arbitrator maximum for 30 days. However,
the Arbitrator shall give the reasons in writing for such
extension.
Evidence of registration and use of domain name in Bad Faith has
to be ascertained by the Arbitrator taking in to consideration
Para 6, INDRP; but without any limitation. These considerations
are analogous to those provided under Para 4(b), UDRP.
The Arbitrator shall ensure that copies of all documents, replies,
rejoinders, applications, orders passed from time to time be
forwarded to .IN Registry immediately for its records and for
maintaining the transparency in the proceedings .
The policy provides that no in-person hearings is take place
(including hearings by teleconference, videoconference, and web
conference), unless the Arbitrator determines, in his sole
discretion and as an exceptional matter, that such a hearing is
necessary for deciding the Complaint .
The remedies available to a Complainant pursuant to any proceeding
before an Arbitrator is limited to cancellation of the
Registrant's domain name or the transfer of the Registrant's
domain name registration to the Complainant. Costs may also be
awarded by the Arbitrator .
The INDRP prohibits a Registrant from transferring a disputed
domain name registration to another holder in case an Arbitration
proceeding is initiated pursuant to this policy, for a period of
15 working days ("working day" means any day other than a
Saturday, Sunday or public holiday) after such proceeding is
concluded, or, while the dispute is pending, unless the party to
whom the domain name registration is being transferred agrees, in
writing, to be bound by the decision of the court or arbitrator.
Conclusion
The explosion of new gTLDs and ccTLDs will help not only
streamline the contents available to a consumer on the Internet
but will enable a user to access data faster and more
resourcefully. This jubilation is marred by the conviction that
such growth will also lead to larger number of cases involving
cybersquatting, leading not only to confusion but also economic
suffering.
The need for better and more efficient means to fight this peril
is necessary as e-commerce take another step forward with time.
Policies such as UDRP and INDRP may be viable concepts now, but
the ingenuity of a rogue cybersquatter should not be undervalued.
Thus, it is imperative that judiciary must be proactive to balance
both trade-interest and right of free-speech.
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The
author can be reached at: Joyshine@legalserviceindia.com /
