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THE ISSUE OF DOMAIN SQUATTING IN INDIA

Updated: Dec 3, 2020

‘Domain squatting’ is coined by using two terms; Domain Names and Cyber Squatting. ‘Domain’ is one of the major links between the cyber world and Intellectual Property. It helps the business houses to establish their presence online. But, when this link is used in an unauthorized way, it paves the way for a menace called Cybersquatting. This article aims to highlight the issue posed by this danger and discuss the growing legal developments in this area.


INTRODUCTION

With the advent of the age of the internet, an era of the revolution took place. The Internet has helped by acting as a tool for communication and connecting masses. It has also facilitated business transactions by helping to promote, advertise, and sell products and services. It has thus fermented itself into a powerful tool for fostering a country's Intellectual Property. But with the emergence of cybersquatting, the countries across the world are forced to maintain a balance between fostering the IP and preventing its unauthorized use.


WHAT IS A DOMAIN NAME?


A domain plays the same role online that a person’s address plays offline. In other words, a domain name is an address which helps people to locate a website on the internet. Thus it is also known as a Uniform Resource Locator or URL. It also helps in identifying the business of a person online and thus aids in establishing a global presence. No two organizations can have their presence on the internet with the same domain name.

Domain names are generally of two types-

  • Top level domains- such as; .net; .edu; etc. these are further divided into two categories-

  • Generic top level domains- such as; .com; .org; .info; and

  • Country code top level domains- such as; .in (India); .fr (France); .ch (Switzerland) etc.

  • New top-level domains- these are the new domain names that can be customized as per a brand and are more flexible. Such as- .cool; .app; .ninja; etc.

ICANN (Internet Corporation of Assigned Names and Numbers). is the body that regulates the registration of the domains. It coordinates the domain name system and oversees the distribution of unique domain names. However, there are various domain name registries in each country that handles the actual registration. The domain names are registered usually on a first come first serve basis through a cost-effective and quick and procedure. This method of registration has led to a surge in domain disputes.


WHAT IS CYBERSQUATTING?


Cybersquatting is a type of domain name dispute. Here an individual buys a domain name, reflecting the name of an already existing company, with the sole intention to sell it off to the same company later to earn the profit. The definition was elaborated upon by the court in the case of Manish Vij v. Indra Chugh, wherein the court held that cybersquatting is –

“an act of obtaining fraudulent registration with an intent to sell the domain name to the lawful owner of the name at a premium”

Cybersquatting is of various types, but the most common one is typo-squatting. The squatter gets a domain name registered that contains a variant of a popular trade mark or brand. They do this under the belief that internet users will make a typo error while entering the domain name.

To establish themselves online, business entities must register a domain name similar to their brand name so that it is easier for the customers to identify them online. For eg- If you wish to buy a product from Nike, your first instinct will be to search for the official website online, which you are optimistic to find with the same domain name; you will never think that the official website will exist with some other domain name.


DOMAIN NAMES & CYBERSQUATTING LAWS IN INDIA


In India, there is no separate law related to domain names and they are governed under the Trademark Act, 1999. This is because it serves as an online trade mark. It is a unique name by which a company is identified on the internet and serves the same purpose of quality, source, advertising, and goodwill that a trademark serves offline. Various companies thus prefer to register them online with the same domain name as their brand name. Eg- nokia.com; amazon.in. Samsung.com etc.

The Information Technology Act, 2000, and its subsequent, amendments also fail to recognize the issue of cybersquatting and other domain name disputes. Thus in India, the litigation around this issue is governed under either of the two heads-

  • Trademark Infringement – the law is the same as that for other trademarks under the act of 1999; and

  • Passing off- which is essentially an action under tort. In such cases the court applies the “likelihood of confusion” test and is it is established that the domain name owner is trying to deceive the public by using the name of a registered trademark, then the court can grant an injunction against the squatter.

For any further details into the mode of dispute resolution please refer to the Domain Name Dispute Resolution Policy of India.


RELEVANT CASES IN INDIA


Over the years, the courts in India have dealt with a catena of cybersquatting cases, whereby they have attempted to protect the trademark as far as possible. Some of the cases are discussed below for better understanding.


Yahoo Inc. v. Aakash Arora

This was the first case on this issue in India. In this case, the defendant launched a website that was identical to the plaintiff's website and also provided similar services. The court ruled in favor of the plaintiff and held that the services that were being rendered by the plaintiff under the well-known trademark ‘Yahoo.Inc’ and a similar domain name, have been recognized globally and thus the defendants are restrained from operating any business on the internet or otherwise under the trademark or domain name ‘yahooindia.com’, or any other trademark or domain that is deceptively similar. Moreover, the defendant was trying to trade under the name of the plaintiff’s trademark and just because he got a domain name registered; it neither grants him a legal right to use it nor absolves him of his liability for trademark infringement.


Rediff Communication Limited v. Cyberbooth

In this case, the defendant had registered a domain name radiff.com which was similar to the plaintiffs’ domain name rediff.com. while deciding the case in favor of the plaintiff, the court held that the value and importance of a domain name are similar to a corporate asset of a company, and it is much more than mere internet address. Thus it is entitled to similar protection as any other trademark.


Satyam Infoway Ltd. v. Sifynet Solutions

The defendant had registered the domain names siffynet.com and siffynet.net, which were deceptively similar to the plaintiff’s domain sifynet.com. Ruling in favor of the plaintiff the court held that –

“The use of the same or similar domain name may lead to a diversion of users which could result from such users mistakenly accessing one domain name instead of another. Ordinary consumers/users seeking to locate the functions available under one domain name may be confused if they accidentally arrived at a different but similar website that offers no such services. Such users could well conclude that the first domain-name owner had misrepresented its goods or services through its promotional activities and the first domain- the owner would thereby lose its custom. It is apparent, therefore, that a domain name may have all the characteristics of a trade mark and could found an action for passing off.”


HT Medis Ltd. v. Brainlink International & Anr,

This is the latest case on this issue in which was held on 28th April 2020, in this case, the defendants were using the domain name Hindustan.com which was deceptively similar to the plaintiff’s domain hindustantimes.com and livehindustan.com. The plaintiffs, in this case, were registered owners of the trademark ‘Hindustan’ & ‘Hindustan times’ that have been continuously and uninterruptedly used by the Plaintiffs and its Group/Subsidiaries, since the 1920s and 1930s. The court ruled in favor of the plaintiff and held that the Defendants’ sole motive for registering the impugned Domain name was only to profiteer from the same and this is thus a classic case of cybersquatting. The mere passive holding of the Domain name, without any use, evinces bad faith of the Defendants and they are thus liable for infringing the trademark.


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