DOMAIN NAME AND TRADE DISPUTE

* To understand importance of domain name*Disputes regarding domain name and its types*cyber squatting

AIMS

Domain NameLevels of Domain Name

ICANNDomain names: Addresses or Trademarks?

Domain Name Disputes Types of Domain Name Disputes

Remedies

INTRODUCTION

o With the advancement of new technology, every person wants to have access cyber world.

o To navigate through this vast global collection of inter connected computer networks (the internet), the domain name system (DNS) was invented.

o Domain names are now highly visible in real space as well- showing up a television commercials, billboards, magazine ads, and even the side of buses.

DOMAIN NAME• Domain names is primarily used to identify one computer

from the millions of others connected to the internet enabling users to send e-mail, to access web pages, to transfer files.

• No two people can have the same telephone number and No two organizations can have the same domain name .

• An IP address consists of multiple levels identified by both, numbers and names. The number consists of four parts separated by periods (dots).

• For e.g. “173.0.133.225”- www.symlaw.ac.in (string number)

Levels of domain name

DOMAIN NAMES

TLD

ccLD gTLD

SLD

ICANN• interNIC -internet network information center (“interNIC”) maintains

and administers the central database of all internet domain names

• NSI (US department of commerce)- first come, first served basis- interNIC granted Network Solutions Inc. (NSI) the exclusive authority to register domain names in the .com, .net and .org TLDs on behalf of the U.S Department of Commerce.

• In November 1998, Internet Corporation for Assigned Names and Numbers (ICANN) was formed to assume responsibility for the IP address allocation, protocol parameter assignment, domain name system management, and root server system management functions and it is located in california.

• Restrictions for registration.

CURRENT STATISTICS REGISTERED DOMAIN NAMES ALL OVER THE WORLD

Top Level Domains Active

.com 122,840,499

.net 15,654,527

.org 10,899,931

.info 5,142,817

.biz 2,316,627

.us 1,675,317

Total 158,511,718

Trademark v. Domain name• As trademark is used to distinguish the goods and

services of one trader and it lets the general public associate the mark with any identity, it is defined as a source identifier.

• In a similar manner, with the increase of commercial activities on the internet, the domain name is also used as a business identifier.

• In the landmark case of Rediff Communication Ltd V Cyberbooth(AIR 2000 Bom 27), the court held that the domain name is a symbol that helps to ascertain the affiliation or association with its owner.

Types of Domain Name Dispute

:

Cybersquatting, Profit Grabbing,

Misspelling and Identical Domain Name,

Concurrent Claims.

CybersquattingCybersquatting is the practice by

means of which a person or legal entity books up the trade mark, business name or service mark of another as his own domain name for the purpose of holding on to it and thereafter selling the same domain name to the other person for valuable premium and consideration.

Registering, trafficking in or using a domain name with bad faith intent to profit from the goodwill of a Trade Mark belonging to someone else.

Registration of a domain name by unaffiliated party

IN USA:• Doctrine of Dilution.• Anti-cybersquatting Consumer Protection

Act (ACPA).

IN INDIA:• cybersquatting has not been brought

within the purview of the IT Act, In case of judicial challenges in Indian courts concerning infringement of trademarks by use of domain names.

Bisleri Case:• In an Indian cybersquatting case also,

popularly known as Bisleri case [Acqua Minerals Ltd. V Pramod Borse, 2001 PTC 619 (del)]:

Mr. Arun Jaitley Vs. Network Solutions Private Limited and Ors. (181(2011) DLT716 :

• Decided On: 04.07.2011, before Delhi High Court.

Cyber squattersCybersquatters frequently own thousands or even

hundreds of thousands or millions of domain names, which are typically misspellings or variations of others’ trademarks.

Cybersquatters do not acquire these domain names out of spite or for amusement. Rather, they acquire these domain names to make money. It’s all about the income stream, and if the income isn’t there, the cybersquatter will drop the domain name.

How Cybersquatting works

• The cybersquatter registers a domain name containing another’s trademark and sets up a website.

• The cybersquatter displays advertisements on the website on behalf of advertisers willing to pay the cybersquatter anywhere from a few pennies to a few dollars each time somebody clicks on one of the advertisements.

Profit Grabbing• In this kind of domain dispute,

the defendant indulges in the registration of a domain name similar to the other’s same or confusingly similar trademark or tradename, in order to gain profits out of such business.

Satyam Infoway Ltd. V Sifynet Solutions Pvt. Ltd: (2004) 6 SCC 145 • www.sifynet.com• www.sifyrealestate.com• www.sifymain.com• www.siffynet.com• www.siffynet.net

MISSPELLING AND IDENTICAL DOMAIN NAMES:

• With the increase in business opportunities on Internet, many people tend to register domain names, which appear to be similar to that of the already registered domain names.

• It leads to confusion and misrepresentation in the minds of the general public with regard to the owner of such domain name.

Yahoo! Inc. Vs Akash Arora [1999 (19) PTC 210 (Delhi)]:• This case is to be considered as the first domain case in India decided by Supreme

Court. • www.yahoo.com• www.yahooindia.com

Rediff Communication Ltd. V Cyberbooth (AIR 2000 Bom 27):

• www.rediff.com• www.radiff.com

Info Edge (India) Pvt. Ltd V Shailesh Gupta 2002 (24) PTC 355 (Del)

• www.naukri.com• www.naukari.com

Concurrent Claims• Concurrent claims arise when two

legitimate parties are involved in a dispute over a domain name, where each party claims that they are the true and legitimate owners of the acquired domain name, without any intention to pass off.

• Nissan Motors Co. Ltd. Vs Nissan Computer Corporation:

• www.nissan .com• www.nissan.net• www.nissan .com• www.nissan.net

Remedies for Domain name Disputes

• URDP- Uniform Domain Name Dispute Resolution Policy is a policy adopted by ICANN that provides a mechanism for trademark owners to obtain domain names from cyber squatters. 

• The first dispute under the ICANN policy was decided on January 14, 2000, and has been published by the WIPO, which provided the single panelist.

Remedies for Cyber Squatting

Victims of cyber squatting have several options to combat cybersquatting. These options include:

a. sending cease-and-desist letters to the cybersquatter,

b. Bringing an Arbitration proceeding under ICANN’s rules (Internet Corporation for Assigned Names and Numbers is the nonprofit organization that oversees the domain name registration system), or

c. Bringing a lawsuit.

• Disputes over web addresses are gaining ground in india over the past few years.

• Along the lines of the Anti Cybersquatting Act of the US and there by send a strong signal to the cybersquatters that we are not going to take intellectual property violations in the cyberspace lightly.

Any Questions

Prepared and Presented byAncy Varghese, 2nd year

NUALS(Intern Biz& Legis)