Cyber Squatting Demo

8/11/2019 Cyber Squatting Demo

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CYBERSQUATTING:MODERNDAYEXTORTION1

TABLE OF CONTENTS

Table of Cases....ii

Table of Abbreviations............ii

1. INTRODUCTION............................................................................................................... 1

1.1 Aims and Objectives ........................................................................................................... 2

1.2 Research Methodology:- ...................................................Error! Bookmark not defined.

1.3 Research Scheme:-...........................................................Error! Bookmark not defined.

2. DOMAIN NAME BASICS................................................................................................... 3

3. CYBER SQUATTING: MEANING AND ISSUES............................................................... 5

4. U.S. APPROACH TO THE PROBLEM OF CYBERSQUATTING..................................... 7

4.1 Significant Case laws.......................................................................................................... 8

4.1.1 Pre ACPA ............................................................................................................... 8

4.1.2 Post ACPA ............................................................................................................. 9

5. THE UNIFORM DISPUTE RESOLUTION POLICY (UDRP) Approach........................ 11

5.1 First Cybersquatting Case (Word Wrestling Federation case):...................................... 12

5.2 Indian Case Laws under UDRP....................................................................................... 13

6. INDIAN APPROACH....................................................................................................... 14

1Labanyendu Das, Roll no. 200834, 9thSemester


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Cyber Squatting: Modern Day Extortion

6.1 Indian Laws: Ground for Action...................................................................................... 14

6.2 Significant Case laws........................................................................................................ 15

7. INDIAN DOMAIN NAME DISPUTE RESOLUTION POLICY....................................... 17

8. CONCLUSION AND SUGGESTION............................................................................... 19

8.1 New legislation ................................................................................................................. 19

8.2 Independent Adjudicatory Body....................................................................................... 20

8.3 Revamping INDRP........................................................................................................... 20

8.4 Arbitration ........................................................................................................................ 20

9. BIBLIOGRAPHY.............................................................................................................. 22

9.1 Articles, Books & Reports Referred: ................................................................................ 22

9.2 Websites Referred: ............................................................................................................ 23

9.3 Statutes Referred: ............................................................................................................. 23

TABLE OF CASES

American Civil Liberties Union v. Reno .................................................................................... 5Aqua Minerals Ltd. v. Cyberworld .......................................................................................... 18

Bennett Coleman & Co Ltd. v. Steven S Lalwani .................................................................... 17

Google Inc.v.Herit Shah .......................................................................................................... 18

Hero Honda Motors v. Rao Tella ............................................................................................ 15

Intermatic v. Toeppen .............................................................................................................. 10

Interstellar Starship Services Ltd. v. Epix Inc ......................................................................... 12

Jack In The Box Inc. v. Jackinthebox.Org ............................................................................... 11

Manish Vij v. Indra Chugh......................................................................................................... 7

Maruti Udyog v. Maruti Infotech ............................................................................................. 14

Morrison & Foerster v. Wick ................................................................................................... 11

N. R. Dongre v. Whirlpool ....................................................................................................... 17

Panavision v Toeppen .............................................................................................................. 10

Rediff Communication v. Cyberbooth & Anr ........................................................................... 17

Satyam Infoway Ltd v. Sifynet Solutions (P) Ltd...................................................................... 16

Tata Sons Ltd v. Monu Kasuri & others .................................................................................. 17


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Tata Sons v. The Advanced Information Technology Association ........................................... 15

Yahoo Inc. v. Aakash Arora & Anr....17

ABBREVIATIONS

www World Wide Web

v. Versus

ed. Edition

(ed.) Editor


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1

1. INTRODUCTION

What is in a name! That which you call rose by any other name would smell as sweet!

-William Shakespeare

Shakespeare said, whats in a name? Plenty, if it is an Internet domain name. Domain names

can be registered for fun, profit or to be used as an intermediate to help the surfers to obtain

information that they seek on the World Wide Web. Internet domain names have a huge

market of their own. The world witnessing a new change in the field of communications has

created endless new opportunities for the citizens of cyberspace. The growing importance

that the internet has played in the consumers lives and the worldwide change in

consumption habits has turned it into a powerful tool for businesses to promote, advertise,

and sell products and services2. Unfortunately, as with most of the tools, use of internet is

also subject to dishonest and unlawful conduct. Hence resultantly, it is this potential of

domain names to facilitate in business growth that has skewed the way that the legal system

has come to accommodate them in recent years. Initially scholars worldwide debated how to

characterize domain names especially in the context of their relationship with the trademark

law.3 However with the advent of a few specific domain name dispute resolution system

worldwide, this debate has been put to rest at least in the global context. However the

situation in India is still archaic as a proper formula for dispute resolution, though prescribed

in the INDRP, is still not prevalent. The INDRP and its problem will be discussed during the

course of this paper, but for now it would suffice to say that it is just a policy and not an

applicable law per se.

Having said that, there are still various problems which plague the current international

dispute resolution mechanisms. The current dispute resolution mechanisms are focused on the

protection of commercial trademark interests, often to the detriment of other socially

important interests that may be present in a given domain name. If the global information

2Zohar Efroni, The Anticybersquatting Consumer Protection Act and the Uniform Dispute Resolution Policy:

New Opportunities for International Forum Shopping? 26 The Colum. Jour. of Law & the Arts335 (2003).

3See Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117, 121-22, 124-33 (D. Mass. 1999), aff'd, 232 F.3d

1 (1st Cir. 2000);Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d 1430, 1432-34, 1436-41(S.D.N.Y. 1997), aff'd, 152 F.3d 920 (2dCir. 1998); Panavision Int'l, L.P. v. Toeppen, 938 F. Supp 616, 618-19,621-22 (C.D. Cal. 1996), aff'd 141 F.3d 1316 (9th Cir. 1998)[hereinafter Panavision I]; Jacqueline Lipton,

What's in a (Domain) Name? Web Addresses as Loan Collateral, 2 J. Info. L. & Tech(1999), athttp://www2.warwick.ac.uk/fac/soc/law/elj/jilt/1999_2/lipton


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society continues down the current road of protecting these interests at all costs, other

important social norms relating to Internet use will not have a chance to develop, and the

Internet will become permanently skewed in favor of commercial trademark. It is also to be

noted that even in the realm of purely commercial interests, the current domain name dispute

resolution mechanisms are somewhat lacking. The ACPA and the UDRP (discussed in detail

(infra)) are extremely limited in their ability to deal with disputes between two legitimate

holders of similar trademarks with respect to a corresponding Internet domain name interests.

Thus, society will miss out on the potential to develop the Internet in general and the domain

name system in particular, in new and useful ways.

The malice of cyber squatting has affected many businesses worldwide. Businesses have

fallen prey to so called cyber squatters, individuals who register Internet domain names

containing trademarks of others4.The classic cyber squatting scam works as follows: The

cyber squatter registers an Internet address (known as a domain name) 5 that includes

another person's trademark. For example, the cyber squatter might register the domain name

logitech.com containing the trademark Logitech held by the Logitech Company (a

famous computer peripherals company).6 Thereafter, the cyber squatter tries to sell the

logitech.comdomain name to the Logitech Company. A company in Logitech's position is

often willing to pay a ransom to the cyber squatter because of the importance of a domainname in the increasingly Internet-focused business world. This is so because the domain

name directs an Internet user to a particular web site. As a business matter, Logitech simply

has to ensure that someone using the Internet address logitech.comwould reach Logitech.7

1.1Aims and Objectives

This study aims to provide an overview of the malice of CYBERSQUATTING. This study

seeks to look at the problem of cyber squatting as a modern form of extortion. The paper goes

onto look into other jurisdictions chiefly United States as that is the harbinger of all major

4 Michael P.Allen, In Rem Jurisdiction from Pennoyer to Shaffer to the Anticybersquatting ConsumerProtection Act,11 George Mason L. Rev.243 (2000).

5 Domain names are the familiar and easy-to-remember names for Internet locations. It is easier to reach acompany's web site if its domain name corresponds to the company's name or leading product. For example,Ford Motor Company's web site may be accessed at "ford.com."

6

S. Ahmed, Cybersquatting: Pits and Stops, [2010] ILI Law Review 797Supra note3at 244.


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internet related legislations. The ACPA, 1999 and the UDRP have been looked into. The

Indian perspectives combined with the current legal framework have been highlighted and the

lacuna therein has been pointed out. The researcher finally has submitted his suggestions

which are basically four pronged to tackle this menace in the Indian context

2. DOMAIN NAME BASICS

Before examining cyber squatting, it is essential to understand the technical background

against which the issues discussed in the paper have arisen. An Internet domain name is an

alpha-numeric mnemonic device that can be mapped onto an Internet Protocol (IP) address

to enable users to surf the Web more easily than if they had to remember the details of each

IP address they wanted to visit.8Numeric IP addresses direct a computer to open a particular

page on the World Wide Web, but are relatively meaningless to a human Internet user. On the

other hand Internet domain names, can be easily remembered because their forms are usually

chosen in a manner which relates to the entity whose Web site the person might want to

access: for example, xerox.com for the Xerox Corporation.

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 has a

unique Internet address. Users seeking to exchange digital information with a particular

internet host require the hosts 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.9

The Domain Name System (DNS) uses two components: the domain name and its

corresponding Internet Protocol (IP) number. A domain name is the human-friendly address

of a computer whereas 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

8H.L. Capron & J.A. Johnson, Computers: Tools for an Information Age, 543 (8th ed. 2004).

9 Shine Joy, Domain Name, Cybersquatting and Domain Dispute Resolution, accessed online atwww.legalservices.com on 3 November 2012.
http://www.legalservices.com/http://www.legalservices.com/


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Internet10. The DNS is structured in a hierarchical manner which allows for the decentralized

administration of name-to-address mapping.11

The DNS 1st cum 1st served policy is a breeding ground for opportunists with neither

trademark registration, nor any inherent rights to pirate or squat over domain names.12.

Domain name today serves as an on-line trademark, source identifier, indicates quality and a

repository of goodwill13. Since numbers are more difficult to remember, alphabetical domain

names were developed to make the addresses easier for humans to remember and use when

communicating on the Internet. Such names are often catchy words or well-known names of

individuals or companies, for example, nokia.com or samsung.com. Thus, a domain

name is a popular substitute for the all-numeric IP address of a particular server14.

It is pertinent to note that the domain name system is administered by the InternetCorporation for Assigned Names and Numbers (ICANN).15 ICANN is a private

organization thatmanages and coordinates the domain name system by overseeing the

distribution of unique IP addresses and domain names.16 However, actual domain name

registration is handled by numerous domain name registries situated in various countries

around the world.

Amongst the various domain name disputes that have come up for consideration of courts

around the world, Cyber squatting, Competitor Disputes17, Parody Disputes18 have been

10The Management of Internet Names and Addresses: Intellectual Property Issues, Interim Report of the WIPOInternet Domain Process (WIPO, December 23, 1998), pp2-3.

11 William Black, The Domain Name System in Edwards and Waelde (eds.), Law and the Internet: AFramework for Electronic Commerce 125 (Hart Publishing Co., Oxford, 2000).

12 Stacy B. Sterling, New Age Bandits in Cyberspace: Domain Names Held Hostage on the Internet, 17Loyola of Los Angeles Entertainment L. Rev. 733 (1997).

13

Bagby and McCarthy, The Legal and Regulatory Environment of e-Business- Laws for Converging Economy,Thompson South Western West (2003).

14 Nandan Kamath, Law Relating to Computers, Internet and E-Commerce A Guide to Cyberlaws 167

(Universal Law Publishing Co., Delhi, 4th edn., 2009).

15According to the organization's own Web site:

The Internet Corporation for Assigned Names and Numbers (ICANN) is an internationally organized, non-profitcorporation that hasresponsibility for Internet Protocol (IP) address space allocation, protocol identifierassignment, generic (gTLD) and countrycode(ccTLD) Top-Level Domain name system management,androotserver system management functions. These services were originally performed under U.S. Governmentcontract by the Internet Assigned Numbers Authority (IANA) and other entities. ICANN now performs theIANA function.ICANN, Welcome to ICANN!, at http://www.icann.org/new.html

16

Ibid.17Registration of domain names that contain company name or trademarks of ones competitors.


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predominantly the underlying issue. In this paper the researcher shall be focusing chiefly on

the menace of cyber squatting.

3. CYBER SQUATTING: MEANING AND ISSUES

Cyber squatting 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 owner19. The Indian Courts have relied on the definition given by the Delhi High

Court in Manish Vi j v. Indra Chugh20wherein Cyber squatting has been defined as an act

of obtaining fraudulent registration with an intent to sell the domain name to the lawful

owner of the name at a premium.

The term squatting refers to the act of occupying an abandoned or unoccupied space or

building, usually residential, that the squatter does not own, rent or otherwise have

permission to use. Thus drawing from this definition, Cyber-squatting refers to the bad faith

registration of a domain name containing another persons brand or trademark in a domain

name. The cyber squatter then extorts the company and offers to sell the domain to the person

or company who owns a trademark contained within the name at an inflated price which may

be accredited as a sort of ransom. With the domain prices falling and more top level domains

(.biz, .cn, .mob and lately .in) getting accredited, cyber squatters are making a lot of

illegitimate profits.

The problem arises because, the trademark owner cannot register his own trademark as a

domain name as long as a cyber squatter owns the domain name. Thereby, a cyber squatter

breaches the right of the trademark owner to utilize his own trademark. In this sense, the

cyber squatter breaches the fundamental rights of the trademark owner to use its trademark

21

.

18Registration of a domain name that resembles a companys name or trademark and then using it in connectionwith a website that includes commentary or makes a political or satirical statement about it

19 Roger Leroy Miller, Frank B. Cross, The Legal and E-Commerce Environment Today, South-WesternCollege Publishing (2002)

20AIR 2002 Del 243

21John D. Mercer, "Cybersquatting: Blackmail on the Information Superhighway", 6 Boston University Journalof Science and Technology Law 11 (2000).


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However, it is important to note that there is nothing wrong with the practice of reserving a

domain name.

The problem spawned by cyber squatting 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 site22. Popular brand names are

deliberately misspelled for the sole purpose of website traffic diversion through initial interest

confusion. Rival companies indulge in unfair competition thereby providing gaping holes in

the system for Cyber squatters to blackmail and harass trademark owners into buying back

what is rightfully their own. 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 2005.23

22

See, How the Net Pirates Almost Stole My Good Name, Mail on Sunday, 19th March 200023Supra n. 13.


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4. U.S. APPROACH TO THE PROBLEM OF CYBERSQUATTING

The US legislature has put in place the Anti Cybersquatting Consumer Protection Act, 1999

(ACPA). The Act creates civil liability for bad-faith registration with the intent to profit from

domain names that are identical or confusingly similar to someones distinctive trademark24.

The Act also provides for protection of personal names25along with remedies which include

injunction, forfeiture or cancellation of domain name26, actual damages or profits, or elective

statutory damages of between $ 1,000 and $ 100,000 per domain name27.

Under ASPA, a unique additional right is created by the Act in favor of the trade mark owner.

By virtue of 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)28. However thesine qua non for such

an 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 meansdirected by the court29. The remedies available in an in rem actionare limited to forfeiture,

cancellation or transfer of the domain name30.

There are two requirements to prove the validity of a claim under the ACPA, the onus of

which lies on the plaintiff. The first element appreciates whether the defendant possessed bad

faith intent to profit from the use of a protected name and the second element considers

2415 USC 1125 (a)(d)(1)(A)(1) of ACPA.

2515 USC 1129 (b) of ACPA.

2615 USC 1116 of ACPA.

2715 USC 1117 of ACPA.

2815 USC 1125 (d) (2) of ACPA.

2915 USC 1125 (d) (2) (A) of ACPA.

3015 USC 1125 (d) (2) (D) (i) of ACPA. See also, Graham JH Smith, Internet Law and Regulation, Sweet &Maxwell ( 3rded., 2002).


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whether the defendant registered or used a domain name that (i) is identical or confusingly

similar to a distinctive mark or famous mark or (ii) is a trademarked word or name.

4.1Significant Case laws

Now the case laws under this section can be categorized into two sections. The first section

deals with cases which led to the formulation of the ACPA and the second after the

incorporation of the Act.

4.1.1 Pre ACPA

The two landmark cases which were pivotal in the development of cyber squatting case law

decisions in the US are Intermatic v. Toeppen31and Panavision v Toeppen32. In Intermatic

v. Toeppen, the court gave a decision in the favour of the plaintiff which owned a federal

trademark registration for Intermatic. The Court observed that the respondent, Mr Toeppens

conduct caused trademark dilution since the registration of the domain name www.

intermatic.com lessened the capacity of Intermatic to identify and distinguish its goods and

services on the internet. Furthermore the court added that the use of Intermaticsname on the

respondents web page diluted the value of the mark.

The second case was Panavision v Toeppen33, wherein the court ruled in favour of the

plaintiff again. In this case it was Panavision which had filed a case against Toeppen. Therespondent Toeppen had registered domain names with names www.panavision.com and

panaflex.com. The defendant had put up pictures of Pana valley which infringed on the

plaintiffs right as the plaintiff thrived on the business of tourism sourcing its customers from

the internet.

These two cases give an insight into the vulnerability of Domain names and urges the

trademark holders to be careful from these modern day cyber extortionists. These two

judgments have played a vital role in the drafting of the Anti Cybersquatting Consumer

Protection Act. It was enacted to specifically target trademark infringements in cyberspace. In

the year 2000 another well known cybersquatter John Zuccarini lost two suits under the

31947 F. Supp. 1227 (N.D. Ill. 1996)

32

141F.3d 1316 (1998)33Ibid.


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newly enacted Anti Cybersquatting Consumer Protection Act (ACPA).34 The two federal

courts ordered him to pay huge amount of statutory damages amounting to US $ $500,000

plus attorneys fees.35

4.1.2 Post ACPA

In Morrison & Foerster v. Wick36, the plaintiff was the owner of the registered trade mark

Morrison & Foerster, which was used for legal services. The defendant registered the

domain names morrisonfoerster.com and morrissonandfoester.com. The web pages

carried a few slogans as well as hyperlinks to other anti-Semitic and racist domain names

such as letsdosomeillegalsteroids.com and noirishneedapply.com. The plaintiff alleged

that the defendant was guilty of trade mark infringement and dilution and also violated the

Act. Although the court only dealt with the provisions of the Act, the courts conclusions

equally apply to trade mark infringement and dilution proceedings.

The court held that as ampersands (&) cannot be used in domain names, the defendant s

disputed domain names were virtually identical to the plaintiffs trade mark name and also

remarked that prejudice was present in that the defendant harmed the plaintiffs goodwill by

tarnishment. The court was further of the opinion that the defendants use of the disputed

domain names constituted commercial use.In the case of Jack In The Box Inc. v. Jackinthebox.Org37, the court held that the act of

registration by the defendant was in connection with the sale of the right to use the domain

name, either as a good or service. This sale (from the domain name registrar to the unknown

registrants) constituted use in commerce and there was no need to actually develop a

working website for the illegal use of the mark to constitute commercial use. The act of

registering a domain name itself comprised a commercial act because it involved a sale

between the registrant and the registrar. The court thus concluded that it met the definition of

34Ashwin Madhavan, Domain Names and Cybersquatting, accessed online at http://www.123oye.com/job-articles/cyber-law/cybersquatting.htm on 8 November 2012.

35Ibid.

36 94 F. Supp. 2d 1125 (D. Colo. 2000), available at:

cyber.law.harvard.edu/ilaw/DomainNames/MorrisonFoerster.htm on November 3, 2012.

37 143 F Supp. 3d 590 (E.D. Va. 2001), available at:http://www.finnegan.com/JackInTheBoxIncvjackintheboxorg on November 3, 2012
http://www.123oye.com/job-articles/cyber-law/cybersquatting.htmhttp://www.123oye.com/job-articles/cyber-law/cybersquatting.htmhttp://www.123oye.com/job-articles/cyber-law/cybersquatting.htmhttp://www.123oye.com/job-articles/cyber-law/cybersquatting.htm


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use in commerceas per the law.38The facts were that the plaintiff was the owner of the

registered trade mark Jack in the Box. The defendant registered the domain name

jackinthebox.organd jackinthebox.net, but created no web sites for these domain names.

The question arose whether the defendant was using these domain names in commerce, for

the purpose of trade mark infringement.

However, it is pertinent to note that an Internet domain name resembling a famous trademark

does not in itself, establish bad faith for purposes of the Act. This was seen in the case of

Interstellar Starship Services Ltd. v. Epix Inc.,39 wherein a computer enthusiast did not

have bad faith intent to profit from Epix trademark when he obtained epix.com domain

name, for purpose of claim under ACPA, even though enthusiast offered to sell domain name

to trademark holder. The offer was in context of settlement negotiations and offer was in

context of investment that enthusiast had already invested in websites non -infringing

content, offer was made by enthusiasts attorney, enthusiast performed web search on Epix

before registering epix.com anddid not find any such site, and enthusiast adopted domain

name as descriptive term to connote electronic pictures.

38Ibid

39 304 F. 3d 936 (9th Cir. 2002), available at: cyber.law.harvard.edu/property00/domain/Interstellar.html onNovember 3, 2012.


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5. THE UNIFORM DISPUTE RESOLUTION POLICY (UDRP) APPROACH

ICANN implemented the Uniform Domain Name Dispute Policy (UDRP) in 1999, which has

been used to resolve more than 20,000 disputes over the rights to domain names. The UDRP

is designed to be efficient and cost effective. In 2010 alone around 2696 cyber squatting cases

were filed with the WIPO Arbitration and Mediation Centre under this Policy involving 4370

domain names across 57 countries, according to WIPOs official website.40 The UDRP is

designed to solve disputes which usually arise when registrant has registered a domain name

identical or confusingly similar to the trademark with no rights or legitimate interests in the

name and has registered and used the domain name in bad faith.41

Conflicts between two trademark holders or between a trademark holder and a registrant with

rights or legitimate interests are not the concern for UDRP. Particularly, the UDRP does not

apply if the registrant has been known by the name, has used it in connection with a bona fide

offering of goods or services, or has used it for a legitimate noncommercial purpose42.

The UDRP proceedings are conducted by the ICANN approved service providers. There are

presently four approved dispute resolution service providers that are accepting

complaints43.Each provider follows the UDRP as well as its own supplemental rules. These

are World Intellectual Property Organization (WIPO),44National Arbitration Forum (NAF),45

40http://www.wipo.int/multimedia/en/DG/press_releases/press_conf_2011_03_31.swf

41Para. 4(a) of UDRP.

42Para. 4(c) of UDRP.

43The list of present and former approved providers for UDRP is available at

http://www.icann.org/en/dndr/udrp/approved-providers.htm on November 3, 2012.

44Approved on Dec. 01, 1999.45Approved on Dec. 23, 1999.
http://www.wipo.int/multimedia/en/DG/press_releases/press_conf_2011_03_31.swfhttp://www.wipo.int/multimedia/en/DG/press_releases/press_conf_2011_03_31.swf


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Asian Domain Name Dispute Resolution Centre (ADNCRC)46and Czech Arbitration Court

(CAC).47

Under this procedure, neutral persons selected from panels established for that purpose would

decide the dispute. The procedure takes approximately 45 days, costing about $1000 in fees

to be paid to the entities providing the neutral persons and is handled mostly online.

Rule 4 (a) mentions applicable disputes in the events wherein:

1. The domain name is identical or confusingly similar to a trademark or service mark in

which the complainant has rights; and

2. There are no rights or legitimate interests in respect of the domain name; and

3. The domain name has been registered and is being used in bad faith.

Rule 4 (b) explains the evidence of registration and Bad Faith use.

This is also known as the ' cyber squatting test. Although the policy requires proof of all

these three elements, in practice, the complainant will establish trademark or common law

rights in the domain name, and generally, that the registrant operated in bad faith48.

5.1 First Cyber squatting Case (Word Wrestling Federation case)49

:

This was the first case decided under the UDRP by WIPO. The proceedings were initiated on

Dec 9, 1999.The US based World Wrestling Federation (WWF) brought a suit against a

California resident who registered the domain name worldwrestlingfederation.com and

offered to sell it to WWF at a huge dividend a few days later. The WWF alleged that the

domain name in question was registered in bad faith by the registrant in violation of WWFs

trademark. It was held that the domain name registered by the responden t was identical or

confusingly similar to the trademark of WWF and the respondent had no legitimate rights or

interests in the domain name. Therefore the respondent was ordered to transfer the

registration of the domain name to the complainant, WWF.

Overall, the UDRP, as operated by WIPO and other Approved Providers, is very popular. The

procedure is quicker and cheaper than normal litigation. The jurisdiction is international in

nature50.

46Approved on Feb. 28, 2002.

47Approved on Jan. 23, 2008.

48Leah Phillips Falzone, Playing the Hollywood Name Game in Cyber Court: The Battle Over Domain Names

in the Age of Celebrity-Squatting, 21 Loyola of Los Angeles Entertainment Law Review 289, 304 (2001).

49Regulating Intellectual Property Rights on the Internet- Aashit Shah, Government Law College Law Review,1999-2000.


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5.2 Indian Case Laws under UDRP

Since the UDRP is an efficient and cost-effective means of resolving disputes relating to

wrongful registration of domain names in the gTLDs, a growing number of Indian companies

have chosen to settle their domain name disputes through the UDRP.

In Maruti Udyog v. Maruti Infotech51, a complaint was filed with WIPO over a dispute

relating to the domain name maruti.org.Maruti Udyog, a well known car manufacturer,

proved that the trade mark Maruti was associated with its products and that a person of

average intelligence and imperfect recollection would be led to believe that the domain name

was associated with them Moreover, the respondent sought to sell the domain name to the

complainant for valuable consideration The WIPO panelists, therefore, held that there was a

clear intent on the part of the respondent to make unmerited profit from the registration of the

domain name and transferred the name to Maruti Udyog.

Non-activation of the disputed mark is also an indication of the mala fides of the respondent.

In Tata Sons v. The Advanced Information Technology Association (AITA)52, Tata

Sons filed a complaint against AITA with WIPO for the illegal registration of the domain

name tata.org.. The WIPO panelists held that Tata was a well known name, linked to

high quality products The name Tata was a family name and had no dictionary meaning.

Further, both AITA and Tata were based in the same city and AITA was bound to know of

Tatas reputation Further, AITA had not activated the disputed domain name which indicated

that AITA was merely hoarding the domain name. In this case the WIPO panelists held that

even if the web-site were activated, the facts would lead them to believe that the registration

was in bad faith The domain name was, therefore, transferred by ICANN to Tata Sons based

on the award granted by WIPO in favour of Tata Sons.

Another dispute where passive holding of a domain name indicated that its registration was in

bad faith occurred in the case of Hero Honda Motors v. Rao Tella53, in relation to the

domain name herohonda.com. The complaint was filed with the WIPO by Hero Honda

Motors, Hondas joint venture company in India against Rao Tella , a person based in the

United States of America, who had registered the domain name for a website dedicated to

50David Kitchen, David Llewelyn, et. al. (eds.), Kerlys Law of Trade Marks and Trade Names 733 (Sweet &

Maxwell, London, 14th edn., 2005).

51 Accessed athttp://arbiter.wipo.int/domain/decisions/2000-0520.html on 4 November 2012.

52

Accessed athttp://arbiter.wipo.int/domain/decisions/2000-0049.html on 4 November 2012.53 Accessed athttp://arbiter.wipo.int/domains/decisions/html/d2000-0365.html on 4 November 2012.
http://arbiter.wipo.int/domain/decisions/2000-0520.htmlhttp://arbiter.wipo.int/domain/decisions/2000-0049.htmlhttp://arbiter.wipo.int/domains/decisions/html/d2000-0365.htmlhttp://arbiter.wipo.int/domains/decisions/html/d2000-0365.htmlhttp://arbiter.wipo.int/domain/decisions/2000-0049.htmlhttp://arbiter.wipo.int/domain/decisions/2000-0520.html


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fans of Honda However, Mr. Tella had not activated the website The WIPO panelists held

that the domain name was identical to the trade mark of the complainant, and the domain

name was transferred to Hero Honda Motors.

6. INDIAN APPROACH

In India, there is no legislation which explicitly refers to dispute resolution in connection with

cyber squatting or other domain name disputes54.The Trade Marks Act, 1999 used for

protecting use of trademarks in domain names is not extra-territorial, therefore, it does not

allow for adequate protection of domain names. The Supreme Court has taken the view that

domain names are to be legally protected to the extent possible under the laws relating

passing off. In India, this law was evolved by judges and all the High Courts were of

unanimous opinion, which has been picked out and approved by the Supreme Court.

6.1Indian Laws: Ground for Action

The Satyam Infoway Ltd v. Sifynet Solutions (P) Ltd 55 case nailed the Indian domain

name scenario way back in 2004 stating that-

As far as India is concerned, there is no legislation which explicitly refers to dispute

resolution in connection with domain names. But although the operation of the Trade Marks

Act, 1999 itself is not extraterritorial and may not allow for adequate protection of domain

names, this does not mean that domain names are not protected within India.

In absence of the proper cyber laws the remedy that prevails is an action for passing off and

the infringement of trademarks. Even then the Indian Courts have very active in providing

relief in the case of Cyber squatting. Although it is another fact that the due to the increasing

number of cases people have started resorting to alternate methods of dispute resolution in

54Ashwani K. Bansal, Law of Trademarks in India 642 (Centre for Law, Intellectual Property & Trade, New

Delhi, 2nd edn., 2006).55AIR 2004 SC 3540


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this field specially Uniform Domain Name Dispute Resolution Process (UDNDRP) devised

by the International Corporation for Assigned Number and Names (ICANN) and World

Intellectual Property Organization (WIPO) Arbitration and Mediation Council, instead of

relying on the formal legal procedure.

It must be noted that the Trade and Merchandise Marks Act, 1958 (the TM Act) and the

Information Technology Act, 2000 of India do not deal with domain name disputes. Indian

Courts, therefore, apply the rules of passing off with respect to such disputes.The action

against passing off is based on the principle enunciated in N. R. Dongre v. Whirlpool 56

wherein the courts said that a man may not sell his own goods under the pretence that they

are the goods of another man. Passing off is a species ofunfair trade competition by which

one person seeks to profit from the reputation of another in a particular trade or business. A

passing off action is a direct subject matter of the law of tort or common law of right, i.e. case

law. The Act does not define passing off, but only provides the rules of procedure and the

remedies available. However the Trademark Act is devoid of any provision within purview of

which the offence of Cyber squatting could be brought. Therefore in the absence of any such

provision the Indian Courts have been following the principle of passing off and the

guidelines and the policies of the WIPO and the UDRP.

6.2

Significant Case lawsThe first case in India with regard to cyber squatting was Yahoo Inc. v. Aakash Arora &

Anr.,57 .In this case the defendant launched a website nearly identical to the plaintiffs

renowned website and also provided similar services. Here the court ruled in favor of

trademark rights of U.S. based Yahoo. Inc (the Plaintiff) and against the defendant, that had

registered itself as YahooIndia.com. The Court observed that it was an effort to trade on the

fame of yahoos trademark. The court further added that a domain name registrant does not

obtain any legal right to use that particular domain name simply because he has registered the

domain name, he could still be liable for trademark infringement.

The Bombay High Court in Rediff Communication v. Cyberbooth & Anr58 held that a

domain name is like a corporate asset of a company. In this case the defendant had registered

56 (1996) 5 SCC 714)

57

1999 PTC(19) 20158AIR 2000 Bom. 27; 2000(1) RAJ 562(Bom.)


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a domain name radiff.com which was similar to rediff.com. The court gave a decision in

favor of the plaintiff.

In Tata Sons Ltd v. Monu Kasuri & others , the defendant registered a number of domain

names bearing the name Tata. It was held by the court that domain names are not only

addresses but trademarks of companies and that they are equally important. 59

The arbitration panel of the WIPO in BennettColeman & Co Ltd. v. Steven S Lalwaniand

Bennett Coleman & Co Ltd. v. LongDistance Telephone Company60, gave a decision in

favor of the plaintiff. In this to the respondent had registered domain names

www.theeconomictimes.com and the www.timesofindia.com with network solutions of the

United States. These two names are similar to the names of the Plaintiffs websites

www.economictimes.com and www.timesoftimes.com. Another important fact was that the

respondents websites using the domain names in contention redirect the users to a different

website www.indiaheadlines.com which provided India related news.

In Satyam Infoway Ltd. v Sifynet Solutions61, the decision was again in favour of the

plaintiff, wherein the Respondent had registered domain names www.siffynet.com and

www.siffynet.net which were similar to the Plaintiffs domain name www.sifynet.com. Satyam

(Plaintiff) had an image in the market and had registered the name Sifynet and various other

names with ICANN and WIPO. The word Sify was first coined by the plaintiff using

elements from its corporate name Satyam Infoway and had a very wide reputation and

goodwill in the market. The Supreme Court held that the domain names were business

identifiers, serving to identify and distinguish the business itself or its goods and services and

to specify its corresponding online location. The court also remarked that domain name had

all the characteristics of a trademark and an action of Passing off can be found where domain

names are involved.

In Google Inc.v.Herit Shah62, on May 15, 2009, the World Intellectual Property

Organization (WIPO) ordered an Indian teenager, Herit Shah (Shah), who had been using the

domain name 'googblog.com', to transfer the rights of the domain to Google Inc. (Google).

592001 PTC 432

60Cases No D2000-0014 and 2000-0015, WIPO

612004 (6) SCC 145

62Case No. D2009-0405


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In Aqua Minerals Ltd. v. Cyberworld63, the Delhi High Court passed a verdict in favour of

the Aqua Minerals Ltd which owned the trade mark Bisleri and restrained Cyberworld

from using the domain name, bisleri.com.

In India, due to the absence of relevant cyber laws cases are decided within the ambit of

trademark laws by interpreting the principle of Passing off with regard to domain names.

7. INDIAN DOMAIN NAME DISPUTE RESOLUTION POLICY I.E. .IN

DISPUTE RESOLUTION PROCESS

.in is Indias Top Level Domain (TLD) on internet.64The 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

2000.65 INDRP sets out the mechanism 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 under66.

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

632001 21 PTC 619 (Del)Domain Name Dispute Resolution in India, a note by Majumdar and Co. accessedonline atwww.majumdar.com/domainipcase/notecaselaws on 6th November 2012.

64S. Ahmed, Cybersquatting: Pits and Stops, [2010] ILI Law Review 79

65Ibid.

66 Para 5 (iii), INDRP Rules of Procedure, available at:http://www.inregistry.in/policies/dispute_resolution/indrp on November 3, 2012.
http://www.majumdar.com/domainipcase/notecaselawshttp://www.inregistry.in/policies/dispute_resolution/indrphttp://www.inregistry.in/policies/dispute_resolution/indrphttp://www.majumdar.com/domainipcase/notecaselaws


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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 extension67.

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.68

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 proceedings69.

The policy provides that no in-person hearing is to 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 Arbitrator70.

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.71

The most important case of the INDRP Arbitration Panel is that of the 2009 case of

Bloomberg F inance L .P., (BF ) vs. Mr. Kanhan Vij ay. In this case, the domain name in

question was www.bloomberg.net.in which was registered by Bloomberg Finance L.P. which

was also the registered proprietor of the services mark BLOOMBERG in India and abroad,

with rights from 1986 as a trade mark, trade name and corporate identity establishing

67 Para 5 (c), INDRP Rules of Procedure, available at:

http://www.inregistry.in/policies/dispute_resolution/indrp_rules on November 3, 2012.

68Para 5 (d), INDRP Rules of Procedure

69Para 10, INDRP Rules of Procedure

70

Para 10, INDRP Rules of Procedure71Para 12, INDRP Rules of Procedure
http://www.inregistry.in/policies/dispute_resolution/indrp_ruleshttp://www.inregistry.in/policies/dispute_resolution/indrp_rules


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widespread reputation and goodwill. The complainant had registered various domain names

incorporating "Bloomberg" as the name and therefore was the prior adopter, user and

registrant, although it had no reason to adopt or register www.bloomberg.net.in as domain

name. The respondentsbad faith intent was established by the Panel stating that there was a

lack of due diligence or evidence on the part of the respondent towards their claims and that

the domain was to be transferred to the complainant accordingly.

8. CONCLUSION AND SUGGESTION

On account of the problems highlighted and the various jurisdictions looked into, the

researcher would like to submit a few suggestions which according to him are the need of the

hour with regard to combating this menace. The researcher has devised a three pronged

approach which would go a long way in squatting away these squatters.

8.1 New legislation

There is an urgent need to draft a new legislation in India which would expressly deal with

domain names. The courts have already pushed the envelope by giving a wide interpretation

to the provisions under Trademark law to account for domain name disputes. There is no

adequate protection provided against cyber squatters, this is clear from the wide ranging

prevalence of this menace still. The miscreants devise new methods to dupe and extort money

from the big corporations . the lack of a direct law furthers their cause as they can easily find

loopholes in the law which would exonerate them from any trial. The trademarks law and the

IT Act which are relied upon by the courts both have their shortcomings and fall short in

affording protection.72

The Trademarks law has not been able to deal with the range of disputes constantly emerging

in the cyberspace. Furthermore, resorting to this archaic law would mean a lot of time being

wasted in the trial courts and in the virtual world where time is of utmost essence, this is very

harmful leading to the extinguishment of the right claimed.73The Information Technology Act

regulates mostly cyber crimes and electronic signatures and it does not say much about

Intellectual Property Rights, specifically in respect of internet related activities. The act is

also silent about cyber squatting which is growing in prevalence by the day as has been

72

Supra n.6373ibid


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discussed (supra). 74Inmany situation the Indian courts have to seek guidance from English

and American laws and decision. It is thus imperative for India to legislate a law like ACPA

of US and which is in sync with the standards laid down in the UDRP.

8.2

Independent Adjudicatory Body

The US national arbitration forum and the Czech arbitration court should be taken as

examples and a parallel body needs to be set up in India. This body shall only decide cases

relating to domain name disputes especially cyber squatting within the domains of India.

Such an institution shall prove less time consuming more expedient and more effective as the

parties will not have to wait to get onto a docket, and then keep on waiting for the final

decree and other paraphernalia associated with due process of law to take place. 75

8.3Revamping INDRP

The INDRP needs to be given the effect of law, rather than just being a guiding policy. The

problem with it being a policy is that it is not mandatory to follow, hence the regime is lax.

The INDRP which is drafted on the lines of the UDRP, still has many dissimilarities which

impede its application and effectiveness. Thus the inconsistencies viz., arbitration procedure

under INDRP is fraught with unnecessary procedural norms, they both differ on the domain

names in many places. Thus the need of the hour is to make it more compliant with UDRP

and give it the shape of law.

8.4Arbitration

The researcher would also like to suggest that all arbitration decisions of the WIPO

Arbitration and Mediation Centre should be made binding in India under the Arbitration and

Conciliation Act 1996. An amendment can be made in the Information Technology Act 2000

stating that WIPO decisions can go to appeal before the High Court just like other arbitration

decision considered as decrees under the Arbitration Act and execution petitions can be filed

to enforce them accordingly. This way ICAAN and WIPO decisions will ease the

overburdened Indian court system.

Thus looking at the current situation prevailing in the world, it can be safely assumed that

cyber squatting is a menace, a menace which has no boundaries. The researcher has equated

74

Ibid75Ibid.


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this ransom collecting method as a method of terrorizing/extortion, in the researchers

opinion, it is similar to terrorism. The only difference being that in the latter human life is

affected. Cyber squatters have robbed businesses of their fortune. The courts in India have

decided many cases related to cyber squatting. Cyber squatting has opened the eyes of

governments across the world and has prompted them to look into this phenomenon in a

serious manner. The United States by enacting the ACPA, has taken a monumental step in

protecting domain names in its cyberspace. It is the imperative for the parliament to enact a

law which would deal with this menace moving along from the current position where there

is no law which prohibits cyber squatting like that of the United States.

Finally, in the light of still ever-increasing rate of cyber squatting in India and other

countries, it is important to make a concerted effort by registrars to address and curb it at the

registration level itself by looking into the claim of the person and doing some back ground

checking on it rather than just blindly allocating domain names. This should go a long way in

controlling cyber squatting.


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9. BIBLIOGRAPHY

9.1Articles, Books & Reports Referred:

How the Net Pirates Almost Stole My Good Name, Mail on Sunday, 19th March

2000 Ashwani K. Bansal, Law of Trademarks in India 642 (Centre for Law, Intellectual

Property & Trade, New Delhi, 2nd edn., 2006).

Bagby and McCarthy, The Legal and Regulatory Environment of e-Business- Laws

for Converging Economy, Thompson South Western West (2003).

David Kitchen, David Llewelyn, et. al. (eds.), Kerlys Law of Trade Marks and Trade

Names 733 (Sweet & Maxwell, London, 14th edn., 2005).

Graham JH Smith, Internet Law and Regulation, Sweet & Maxwell ( 3

rd

ed., 2002). John D. Mercer, "Cybersquatting: Blackmail on the Information Superhighway", 6

Boston University Journal of Science and Technology Law 11 (2000).

Leah Phillips Falzone, Playing the Hollywood Name Game in Cyber Court: The

Battle Over Domain Names in the Age of Celebrity-Squatting, 21 Loyola of Los

Angeles Entertainment Law Review 289, 304 (2001).

Michael P.Allen, In Rem Jurisdiction from Pennoyer to Shaffer to the

Anticybersquatting Consumer Protection Act,11 George Mason L. Rev.243 (2000).

Nandan Kamath,Law Relating to Computers, Internet and E-CommerceA Guide to

Cyberlaws 167 (Universal Law Publishing Co., Delhi, 4th edn., 2009).

Nicholas Smith and Erik Wilbers, The UDRP: Design Elements of an Effective ADR

Mechanism, 15 The American Review of International Arbitration 215 (2004).

Roger Leroy Miller, Frank B. Cross, The Legal and E-Commerce Environment

Today, South-Western College Publishing (2002)

Stacy B. Sterling, New Age Bandits in Cyberspace: Domain Names Held Hostage on

the Internet, 17Loyola of Los Angeles Entertainment L. Rev. 733 (1997).


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The Management of Internet Names and Addresses: Intellectual Property Issues,

Interim Report of the WIPO Internet Domain Process (WIPO, December 23, 1998),

pp2-3.

William Black, The Domain Name System in Edwards and Waelde (eds.), Law and

the Internet: A Framework for Electronic Commerce 125 (Hart Publishing Co.,

Oxford, 2000).

Zohar Efroni, The Anticybersquatting Consumer Protection Act and the Uniform

Dispute Resolution Policy: New Opportunities for International Forum Shopping? 26

The Colum. Jour. of Law & the Arts335 (2003).

9.2 Websites Referred:

cyber.law.harvard.edu/ilaw/DomainNames/MorrisonFoerster.htm

cyber.law.harvard.edu/property00/domain/Interstellar.html

en.wikipedia.org/wiki/Cybersquatting

http://www.finnegan.com/JackInTheBoxIncvjackintheboxorg

http://www.icann.org/en/dndr/udrp/approved-providers.htm

http://www.icann.org/en/dndr/udrp/policy.htm

http://www.inregistry.in/policies/dispute_resolution/indrp

www2.bc.edu/~herbeck/cyberlaw.gallo.htm

9.3Statutes Referred:

Anti Cyber squatting Consumer Protection Act, 1999 (ACPA)

Indian Dispute Resolution Policy,2005 (INDRP)

Indian Dispute Resolution Policy, Rules of Procedure, 2005

Uniform Dispute Resolution Policy,1999 (UDRP)
http://www.finnegan.com/JackInTheBoxIncvjackintheboxorghttp://www.icann.org/en/dndr/udrp/approved-providers.htmhttp://www.icann.org/en/dndr/udrp/policy.htmhttp://www.inregistry.in/policies/dispute_resolution/indrphttp://www.inregistry.in/policies/dispute_resolution/indrphttp://www.icann.org/en/dndr/udrp/policy.htmhttp://www.icann.org/en/dndr/udrp/approved-providers.htmhttp://www.finnegan.com/JackInTheBoxIncvjackintheboxorg


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Documents

Cyber Squatting Demo