Today we are living in a digital world so we can't avoid the use of internet
from our day today life especially in this covid pandemic situation. Earlier
Internet was used for governmental purpose only but as a result of the growth of
science and technology now its part of our daily life communication,
health-care and also platform for banking activities and dispute resolution.
Cyberspace is a virtual computer world that works on TCP/IP protocol.
cyber space was first chased by William Gibson in his book " Necromancer"..
Cyber space does not have any physical foundation but the virtual effect in
cyberspace makes a tremendous effect in this real world. Day by day cyber crimes
also increasing cybersquatting is one of such offence against intangible
property like domain name.
The internet is a unique platform it makes communication world widely. It is
the network of computers. Every computer connected to this network have a unique
electronic address called internet protocol(IP) address. IP address are
numerical in nature and it becomes veritably delicate to remember.
convenience a word ABC grounded system called a Domain name system(DNS) was
introduced. It is akin to trademark which helps to identify the particular goods
and services. Most of the businessers use their trademark as domain name. Some
people recognized the profitable prospect of such domain name and they started
to registering famous trademarks as domain names for profit making. The original
trademark owners have to pay huge amount of money to buy the domain name back
from the squatters. Its known as the cybersquatting. Its a big hindrance to
e-commerce and force the companies to protect their company's good will.
Cyber law is fast evolving into its realm. In India there is no specific
legislation to punish cybersquatters. The cybersquatters creates confusion in
the mind of customers and there by makes profit from it.
The paper deals with the following:
- Domain name and significance
- Functional equivalence of domain name and trademark
- Existing laws in regulating cybersquatting
- International response towards cybersquatting
Today internet is similar to oxygen for this tech world. Business entities
started to flourishing their activities on internet. Those domain name get more
significance. Domain names are similar to trademarks and it serves the same
function of trademark in online medium. Domain names are identical to telephone
numbers it needn't be unique only within that area code. Domain names are easy
to remember there by it makes internet user friendly and its hierarchical level
allows the internet to operate efficiently.
The domain name does not change even when a person moves from one place to
another. One can access a website with the same name from any part of the globe.
Domain name consist of two parts a name and extension. Registration and quick
yearly renewal is essential because there is a chance to getting it registred by
cybersquatters. In Card service v M. C. Gee
the court held that domain names are
more than just address, if the customers are unsure about the company's domain
name will often guess the company's name as domain name.
Registration of domain name
Earlier the Internet Assigned Numbers Authority (INA) allocates IP address. Its
followed by Network Solution Ink (NSI). In 1998 Internet Corporation for
Assigned Names and Numbers(ICANN) established and it superseded IANA. It
maintains high standards and procedure for allocation of domain name and they
follows the first come first serve policy.
Usually domain names consist of two parts with the separation of dot and it is
to be read from left to right. Domain name at the extreme right side of the dot
is called Top Level Domain (TLD) and the other one is called Second Level
Domain (SLD). If there is anything left to this SLD then its known as Sub
Domain(SD). All these three parts comprise together to form a domain name.
example the domain name law .micro world .com, here .com is the TLD, micro
world is the SLD and law is the SD. The Top Level domain names are also two
types, Generic and Geographic. The generic domain names are international in
nature and it describes the type of organizations which it use. The .com, .edu,
.org, .net, .gov, .int, and .mil are some them used to denote the commercial
use, educational institutions, miscellaneous and non profit making
organizations, network providers, governmental organizations international
treaty organizations and defense respectively. Generic TLDs are of two types,
Open Generic TLDs and Restricted Generic TLDs.
Open generic TLDs is available to
any person and can be registered at any of ICANN's accredited registrars. .com,
.org, .net etc are some of them. Restricted Generic TLD is like .mill, .int,
gov etc are not available to the public its exclusively for the governmental
bodies. Generic domain names are unique to the entire world and it is issued by
the Network solutions Inc as part of the InterNIC.
If anyone wants to register
the domain name they have to fill the forms available in the official website
of InterNIC and full fill the formalities. Geographical Top Level domain names
with two letter code like .in (India), .fr (France),
.aus (Australia), .uk (United Kingdom) are assigned to various countries Each
country has an agency called Network Information Centres for the registration of
geographical domain names and it have its own registration policy. Usually
persons working in such nations will get such geographical TLD's.
In 2001, ICANN introduced seven following new domain name extensions:
- .aero stands for air - transport industry,
- .museum for museums,
- .coop for cooperatives,
- .biz for business,
- .info for unrestricted use,
- .pro for all professionals, and
- .name for registration by individuals.
ICANN also introduced a policy of Internationalized Domain Name in local
language and scripts like Arabic, Devanagri etc. which are encoded by the
Unicode standard.In the recent past there have been developments to allow the
registration off domain name written in non ASCII characters.
The domain name can be registered for a minimum period of one yer or upto ten
years. Anyway at the time of expiry they have to renew it otherwise he will lose
his right over it and it will be available again for another to register.
Domain name and trademark sounds similar but there are number of differences.
There is functional equivalence, they almost perform the same function but it is
in two different environments one in the virtual world like cyberspace without
definite boundaries and the other is in the real world with boundaries.
Generally registration of trademark is at national level and for commercial use.
So that persons in different nations can have same trademark for different goods
Most of the time the trademark denotes any particular products of
that company. Domain name registration is at global level and no two companies
have the same domain name. Domain name stands for the entire company and not for
any particular product. Domain name need not for commercial use and it cannot be
differentiated by using different font styles or capitalisation of letters.
Rights of Registered Trademark Owner
The registered owners of trademark enjoys certain rights. As per section per
section 28 of the Trademark Act, the registered proprietor enjoys the exclusive
right to use the mark in relation to the goods and to obtain relief under the
Act. If a trade mark which is continuously used by a person prior to the
registration of a mark which is similar or identical to the registered
trademark then the registered trademark owner cannot restrain the use of such
mark by the prior user.
If two or more persons register the same or identical
trademarks, then in such a situation no one can claim exclusive use of the mark
against other. This exception is applicable to those particular registered goods
and not for all goods. The trademark owner can assign the right of claim in
trademark by execution of assignment deed writing.In Ramappa V Monappa the court
held that the mere permission to use trademark will not amount to assignment of
The registered owner can make corrections with the leave of the
registrar. The ragistrar have to advertise the application in the proper
manner , if anyone raise objections then he has to decide it in fair manner. The
holder of trademark has the right to obtain legal relief like damages or
injunctions and also prevent unauthorized use through passing off
action. These rights are subjected to limitations. The right to seek legal
remedy against infringement is subject to limitations prescribed in section 30
of the Trademark Act, 1999.
Trademark Rights Applicability In Domain Name
Sometimes the well-known trademarks are used as domain name. Like trademark,
domain names owner can enjoy all the rights available to a registered domain
name owner and it include the right to sue for infringement and passing off. But
the judicial proceedings are time consuming one so they can use the ADR
mechanism like Arbitration and mediation, if there is any agreement in this
The trademark infringement laws and treaties are also applicable to the
domain name disputes. The unauthorized use of such trademarks or domain name can
result in loss of revenue for the owners, as well as loss of expected quality
and dependability by the consumer. In spite of that it will question the
credibility of that particular owner.
The domain name registration system follows the first come fiGrabserved policy.
So once a person registers a domain name similar to trademark, no other person
can register it later. In cybersquatting the squatters register a domain name
of important brands with the intention of selling off the same to the real
owner for monetary consideration and it also known as domain name squatting.
Cyber squatters also known as Cyber Pirates and Domain Name Grabbers.
In Manish Vij v Indra Chugh Case
the court held that "...an act of obtaining fraudulent
registration with intent to sell the domain name to the lawful owner of the name
at a premium..." Many multinational companies like Tata, Bennett & Coleman,
Fry's Electronics, Hertz, MC Donald's Coke, Nasdaq, Viacom, MTV, Levi's,
B.Dalton, Readers Digest and Avon etc. were considered to be thet victims of
India has almost 699 million of internet users. According to its latest report,
the World Intellectual Property Office (WIPO) handled 4,204 cybersquatting cases
in 2020 a nearly 14% increase over 2019.The major sectors affected were banking
& finance, biotechnology & pharmaceuticals and internet & IT.One of the earliest
judicial reference to cyber squatting is , Avery Dennison Corporation v Jerry
The case decided before the arrival of Uniform Domain Name Dispute
Resolution Policy (UDRP). Intermatic v Toeppen and Panavision V Toeppenwere
focal cybersquatting cases and were the lead to the development of
cybersquatting case law and leading to the drafting of the Anti-cybersquatting
consumer protection Act in 1999.
Elements of Cyber Squatting
While analyzing the ACPA and UDRP, the plaintiff have to prove that the defendant
with bad faith and intent to make profit registered, trafficked in, or used a
domain name and it is identical to trademark which is entitled to protection.
High profile cybersquatting cases involving celebrities
Tome Cruise case-tom cruise went to the WIPO in 2006 with his case against Jeff
Burgar who had owned the domain TomCruise.com for over 10 years. The domain
redirected users to his site celebrity 1000.com which earns money with third
party advertisements. Jeff Burgar was a known notorious cyber squatter. In this
case Tom cruise was successful in having the domain name transferred to him.
Donald Trump case- the TRUMP trademark is distinct trademark owned by Donald
Trump. He claimed that trademark laws were broken when the company 'Web-adviso
' registered TrumpIndia, TrumpBeijing, TrumpAbudabi and TrumpMumbai. Trumps
lawyer were able to prove their case and court ordered Webadviso to pay $3200 in
compensation . in addition ordered to transfer the four domains to TrumpJennifer
Lopez succeeded in a law suit filed against a website posted indecent photos,
videos and fake news about her on Jennifer Lopez.biz, with intend to profit from
Paris Hilton registered parishilton.com,soon she found that there was lots of
website using her name. Such as paris.org, parishiltonsunglasses.com etc. it is
an instance of cybersquatting.
The following are some of Indian cyber squatters who messed with Face book,
Google and other biggest names.
The guy who owned Google .com for a minute:- Sanmay Ved,former Google employee
owned Google .com for a minute in September 2015. He purchased the domain name
for $12 when it was available for sale. But iorder to repurchase it from him
Google has to pay huge amount.
Face book CEO Mark Zuckerberg paid $700 to Kochi's engineering student: - Amal
Augustine, a final year engineering student registered the domain
name maxchanzuckerg.org which was bought by Facebook's CEO for $700.
Categories of Cyber Squatting
Classic cybersquatting. It is the simple registration of a domain name
established on a trademark with the intention to sell it to the real trademark
owner and there by make profits.
It's one of the most common type of squatting also known as URL
hijacking. It depends upon the chance of occurring typographical errors while
entering domain names into their web browsers. So the squatter register domain
names containing variant of popular trademarks and they also add advertisements
to collect money. Typo squatters use such fake website to compel legitimate
website owners to buy the cyber squatted domain names, generate more web
traffic, and spread malware.
The typo squatting may be following:
- Failing to put "dot" in the domain name: www.example.com;
- A common misspelling of the intended site: exemple .com
- A differently phrased domain name: examples.com
- A different top-level domain: examples.org
The trademark may be registered for a particular tenure and the owners may
forget to re-register the domain name. The squatters may utilities this chance
and snatch the domain name. It's called "renewal snatching" and the squatters
are known as drop capture. If the squatters re-register the name with the link
of a duplicate website and confuse the users that they are using the original
one then its called identity theft.
Sometimes the squatters register the name of famous people and
celebrities as domain name and they make profit from the web traffic related to
the individual. Pop singer Madonna's name was used to create a pornographic
site Madonna.com come under the purview of name hijacking.
The squatter pressurise the domain owner to transfer
the domain name to a third party, who has registered a similar trademark.its a
tort as well as an unfair trade practice.
While examining all these we can say that it is generally criminal cyber
squatting apart from this there are also some other forms of squatting.
Protective domain squatting:
Companies register domain names similar to their
brand names to protect it from cybersquatting and they have to pay for it so its
a legitimate form of squatting. it is also known as psedo cybersquatting. These
are also called "blocking registrations", the target of such registration is to
prohibit the legitimate right proprietors from using the domain names.
Unintentional Domain Squatting:
This is accidental cybersquatting. Sometimes
persons may register a domine name identical to existing trademark and cause
confusion to the customers . So the trademark owners have to initiate
proceedings to buy it from them. Microsoft v Mike Rowe Soft case related to
this aspect. Domain pranking, domain name ransom, affiliate marketing, hit
stealing and scamming are the common ways of profit making methods of the
Identification of victim of cyber squatting
Before registering a domain name we have to check that whether it is already
registered one. For that we have to enter the domain name in the address bar and
press enter key. If it appears that "this domain is for sale , under
construction or can't find the server" or end up on a fully functioning website
with advertisement for products and services then there is a chance of cyber
squatting and inorder to find out the domain name holder we can use whois.net
and using it's "WHO is lookup" feature.
Remedies Available against Cyber Squatting: International Scenario:
There are several options available to the victims, as an initial step they can
take an in expensive approach like sending a cease and desist letter to the
cyber squatter. If this approach failed they can move to further proceedings
- Apply for arbitration procedure under ICANN.
- Initiate suit against the domain name owner under the Anti-cybersquatting
Consumer protection Act or ACPA
- Class Actions against Cyber Squatter
- Concurrent claims
In 1999 ICANN introduced the Uniform Domain Name Dispute Resolution Policy
(UDNDRP) , as per the policy the victims have to prove that the domain name is
confusingly identical to the trademark of the complainant, the domain name owner
has no right to register it and he has been using it with bad faith.
As per Paragraph 4(b) of the UDRP Policy if the dominer registered it for profit
making by selling or with the bad intention to prevent the true owner from using
it and there by disrupt his business or by creating similar mark cause
confusion in the mind of customers and there by make profit are considered to be
the circumstances of bad faith registration.
As per UDRP the victim can set the law in motion by institution of a complaint
to any one of the seven ICANN approved dispute resolution service providers
- Asian Domain Name Dispute Resolution Centre (ADNDRC)
- The World Intellectual Property Organisation (WIPO)
- The National Arbitration Forum (NAF)
- The CPR Institute for Domain Dispute Resolution
- Arab Center for Domain Name Dispute Resolution (ACDR)
- The Czech Arbitration Court Arbitration Centre for Internet Dispute
The advantage of UDRP is that it provides expert panel at very cheaper cost and
resolve the dispute within 60 days. But they can't award any monetary
compensation. The available remedies are the cancellation of the domain name or
the transfer of the disputed domain name to the complainant. Another
disadvantage is that the decisions are not binding and there is no appeal to
correct the erroneous decision.
Multiple remedies are available under ACPA the court may allow the squatter to
keep the domain name if it proves that he had legitimate reasons to register the
domain name and its not for profit making. otherwise the court can order to
retrieve the domain name and allows for damages including court fee. The ACPA
allows a court to grant preliminary injunction and also directs to transfer or
cancel of domain names.
The ACPA offers statutory damages ranging from $1,000 to
$10,000 per domain name. The ability to procure in rem jurisdiction, a plaintiff
no longer has to establish personal jurisdiction so long as he can prove the
property can be properly included. Like others methods it also have some
demerits like not competent to establish jurisdiction, proceedings are time
consuming and costly one.
ACPA And UDRP: A Comparison
While comparing the ACPA and UDRP the ACPA was mainly creaed to provide remedies
to the trademark owners against trademark infringement. For that the plaintiffs
have to prove the bad faith intent of the defendant. But UDRP does not require
that the domain name at issue be distinctive or famous at the time of
registration. The ACPA's applicability is confined to the United States only but
the UDRP's have world wide application.
UDRP claims are normally filed before the national Arbitration forum or the
World Intellectual Property Organisation and in contrast ACPA claims are filed
in federal court. UDRP requires that the domain name registration is to be done
as per the rules to avoid and weed out the cyber squatters. UDRP also
established an effective speedy and low cost administrative procedure to this
specific category of disputes.
Uniform Domain Name Dispute Resolution Policy
include only limited remedies, either transfer the domain name to the
complainant or cancel the domain name. The ACPA allows the monetary damages and
statutory damages additionally it can allow the attorney fees. While comparing
all this its better to opt arbitration under ICANN because there is far less
procedural and evidentiary requirements so its quite inexpensive and faster as
compared to federal law suit under ACPA.
Legal Scenario in India
In India trademarks laws are used to address domain name disputes. The domain
name concept is quite new to the indian scenario. Domain name is nothing its
the address of a website which helps user to easily identify the site and
enable consumers to connect to the internet. There is an international
registration authority called Internet Corporation for Assigned Names and
Numbers (ICANN), with limited dispute resolution power.
Registration of Domain Name in India
India has established its own registry called .IN Registry under the authority
of NIXI (National Internet eXchange of India). The 1st January 2005 to
21st January 2005 were considered to be the sun rises period of India's top
level domain".in". The controversies relating to ".IN "domain "names are
settled in accordance with the .IN Dispute Resolution Policy (INDRP) and the
INDPR Rules of procedure. It is a mandatory dispute resolution procedure.
Remedies for Domain name Disputes:
In India the victims can fight against cybersquatters by:
- Addressing cease-and-desist letters to the cyber squatter,
- Initiating arbitration proceedings under ICANN's rules,
- Filing a lawsuit in federal or state courts.
Apart from this remedy of infringement and passing off are available under the
Trademarks Act, 1999. To claim remedies of infringement under the trademark Act
the trademark must be a registered one but for passing off remedies it's not
required to be registered.
In US there is Federal Trademark Dilution Act, 1995.In India the doctrine of
dilution have applied in some cases. Caterpiller Inc V Mehtab Ahmed
among them. The Act of dilution provides protection to those marks which is well
recognized one at the same time helps to preserve uniqueness and
distinctiveness of their trademarks. In order to avail protection the plaintiff
must shows that their trademark is famous and the defendants acts have a chance
to reduce or weaken the strength and identification value of the mark.
Indian courts have not applied this doctrine in resolving the disputes relating
to cybersquatting, because as per the doctrine the mark in dispute is to be
famous. The action against cyber squatters in such cases could prevail only if
the mark were famous. Thus the Indian courts preferred the United Kingdom's
approach and have applied the doctrine of passing off to resolve cases of
Yahoo Inc. v/s Aakash Arora &Anr
. is considered to be the first case related to
cybersquatting, the defendant in India who register a domain name
yahooindia.com and used Yahoo India as trademark which is similar to US
based yahoo Inc. Not only the domain name but also the contents of the
website Yahooindia .com was almost near to yahoo Inc. The High Court of Delhi
passed a restraining order and also observed that the domain names requires the
same protection available to the trademarks and for that trademark laws can be
made applicable in this virtual world.
Indian Legislative Response Towards Cyber Squatting
There is no specific law related to cybersquatting but india use some provisions
of the existing laws to address it. Section 66 ,66A of IT Act, section
405,406, 420, 468, 469 of f IPC, and section 73 of the Indian contract Act,
1872 are some of them. Apart from these sections the consumer protection Act,
2019, Trademark Act 1999 and the Limitation Act, 1963 are also applicable. As
per the Limitation Act the period of limitation for filling of a suit in terms
of section 134 of the Trade Marks Act is three years from the date of impugned
act of infringement or passing off.
International Treaties On Cyber Squatting
The Paris Convention, Madrid protocol, Trips agreement, European community's
first council directive and trademark law treaty are examples of international
treaties on cyber squatting.
The paris convention of 1883 is one of oldest and prime international treaty
for the protection of intellectual property. Article 6 and 10 are applicable to
As per Article 6 members are prohibited from the use of,
refuse to register, or cancel the registration of any symbol where use is liable
to confusion with a mark that is well known in that country for use on identical
or similar goods. Article 10 provides effective protection against unfair
completion. The Act defines an unfair competition as" any act of competition
contrary to honest practice in industrial or commercial matters". As per this
definition cybersquatting is unfair competition.
Madrid protocol is based on trademark and administered by the World
intellectual Property Organisation (WIPO) and it provides international
registration and protection. One of the advantages is that trademark owners can
protect their trademark by filing a single application in single language along
with the prescribed fee according to this protocol an owner of a trademark can
protect the trademark in 118 countries along with the European Union by filling
a single application, in single language, with a common set of fees, in only one
If an applicant wishes to use the Madrid system, then he must apply for
the trademark first in the national or regional trademark office before thinking
of obtaining an international protection. International registration made by
utilizing the Madrid system produces the same benefits as in each contracting
parties designated by the applicant. WIPO settle the cybersquatting issues
through arbitration. The Madrid protocol helps to register domain name
internationally and ensure international protection to the domain name and helps
to prevent cybersquatting internationally.
The World Trade Organisation (WTO) introduced TRIPS agreement on first January
1995 , provides minimum standards of protections to the intellectual properties
like trademarks and domain names. It is enforceable at civil and criminal
courts. It defines the type of marks which are eligible for protection.and what
are the various rights available to the trademark owners. The rights include
copyright and related rights, trademarks, geographical indications, designs,
patents, layout designs of integrated circuits and many more.
Apart from this
added certain obligation on maters were the existing agreements are silent. The
domain name performs the trademarks function in the cyber space. So these rights
and protections are also available to the registered owners of domain name. The
registered owners have the exclusive right to the domain name it helps to
prevent cybersquatting. Even though the TRIPS was negotiated before the e-
commerce to an extent it can be used address these cybersquatting like issues.
The European Community's first Council Directive denies bad faith registrations.
The Directive requires that registration be denied only when both "bad faith"
and a "likelihood of confusion" exists. If the disputed mark is not well known
in the European Union, there is little chance of confusion.
Trademark Law Treaty was adopted in 1994 at a WIPO conference in Geneva, with
the goal of harmonizing administrative procedures for trademark applications,
powers of attorney, assignments, changes of name and address, changes in
ownership, and renewals, including liberalizing requirements for legalization
and certification of signatures.The TLT applies to trademarks consisting of
The major provisions of the treaty include the acceptance of multiclass applications and the issuance of a single certificate of registration
for the classes of goods and services under the Nice Classification. The TLT
provides rules that are flexible enough for individual nations to adapt
provisions to the demand of local issues while affording the maximum possible
protection for trademarks.
Cybersquatting is a malicious act that damaging the good will of the reputed
domain name and spoil the interest of the consumers who purchase goods and
services via the internet. There are different rules and regulations to control
the cybersquatting but these laws are not much effective, ACPA is comparatively
good one but it also have defects.
So in order to control the cybersquatting
issues the states have to develop a proper legislation by amending the existing
laws according to the changed circumstances of the society. The registrar must
give power to scrutinize the object of domain name registration. It is better to
prevent it at the registration level. The main reason for this controversy is
the first come, first served policy, so it has to be changed..
is a technical issue. So it cannot be controlled by using these laws and
policies alone. To control these technical issues there must have some technical
assistance. Whois.net helps to find out whether the domain name is already
registered. The ICANN like agencies must try to develop new applications or
software's which helps to the intended domain name registrar to find out whether
such intended domain or similar to such name is already registered in the
concerned state or at the international level, because the cyber space is a
So such techniques must have universal application and it
must be very simple to use. There is need for a one cyber legislation which is
coordinated to look after cybercrimes in all respects. If the parliament enact
any new legislation, they have to avoid the confusion in society that we are
applying various legislation and treaties to resolve it.
So have to make a
consolidated one with clear definition of cybersquatting, there must be
provisions for statutory damages and the increasing cases shows that they have
not much fear on this existing punishment so have to provide much more rigorous
punishment and also address the repeating offenders.
Award Winning Article Is Written By: Ms.Sreelekshmi.K.K
Authentication No: MA214567462629-25-0522
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