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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 SystemThe 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 18.104.22.168. 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.
CybersquattingCybersquatting 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
ICANN and UDRPIn 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 ResolutionThe 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 ProcessThe 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.
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.
The author can be reached at: Joyshine@legalserviceindia.com / Print This Article
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ISBN No: 978-81-928510-0-6