COMBATING CYBER SQUATTERS

Pratishtha Bhatnagar, Vidhan Maheswari*

Introduction
With the flourishing online business era it is used in a big way by the businessmen for not only advertising and promoting their products, but also for selling them and so the principles of trademark, infringement of trademark and passing off are being applied even in the online environment. But the Law is still learning to deal with cyber squatters.

What is Cybersquatting?
The domain name gained importance over the years as business entities realized that Internet could be a convenient mode for not only imparting information but also using it for gaining access to a world-wide market and selling its products. It serves as an identity on the Internet. With the growing e-commerce and its future potential, domain names today are serving as trademarks, or brands and carry with them the goodwill and reputation of the owner of the web-sites they represent. They can be closely identified with the company itself in the sense that customers believe that a domain name reflects the company’s name, as the courts suggested in Cardservice International v. McGee1, “A customer who is unsure about a company’s domain name will often guess that the domain name is also the company’s name” and in MTV Networks Inc v. Curry2, that“A domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base.”

A cyber squatter identifies popular tradenames, brandnames, trademarks or even names of celebrities, and registers one or more of them in his name with the malicious intent of extorting money from those who are legitimately interested or associated with such domain names.3 In that sense, cyber squatters can be said to be modern-day extortionists. Another motive of cybersquatting includes appropriation of goodwill4, attraction of web traffic, selling the domain names for profit in the market, etc. As long as the cyber squatter owns the domain name, the trademark owner cannot register its own trademark as a domain name. In this sense, the cyber squatter breaches the fundamental rights of the trademark owner to use its trademark.

Practical difficulties with traditional litigation
Court systems can also be used to sort out claims of cybersquatting, but jurisdiction is often a problem, as different courts have ruled that the proper location for a trial is that of the plaintiff, the defendant, or the location of the server through which the name is registered. People often choose the UDRP (Uniform Dispute Resolution Process) created by ICANN because it is usually quicker and cheaper than going to court, but courts can and often do overrule UDRP decisions.

Attempts to face the challenges Internationally
Internationally, the United Nations agency called WIPO (World Intellectual Property Organization) has, since 1999, provided an arbitration system wherein a trademark holder can attempt to claim a squatted site. Realizing the problem of cybersquatting, on October 24, 1999, ICANN (The Internet Corporation for Assigned Names and Numbers) approved its Uniform Domain Name Dispute Resolution Policy (UDRP). This international policy results in an arbitration of the dispute, not litigation. An action can be brought by any person who complains (referred to by ICANN as the “complainant”) that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights and the owner has not. Disputes are decided by independent panelists drawn from the Center’s list of 400 trademark specialists from over 50 countries. The domain name in question is frozen (suspended) during the proceedings. After carefully reviewing each case, panelists submit their decisions within a period of about 14 days.

Some countries have legislated specific laws against cybersquatting beyond the normal rules of trademark law. For example, United States is the first country to have legislation against cybersquatting, the U.S. Anti-cybersquatting Consumer Protection Act (ACPA) of 1999.

The Judicial approach in India
The Courts in India, realizing the importance of domain names, have responded strongly against cybersquatting and legal principles have been formulated in regard thereto.

Probably the first reported Indian case is Yahoo! Inc. v. Akash Arora5 ‘wherein the defendants were restrained from dealing in service or goods on the Internet or otherwise under the domain name “yahooindia.com” as being deceptively similar to the plaintiffs trademark “Yahoo”. It was said that though; ‘Yahoo’ is a dictionary word, yet, it has acquired uniqueness and distinctiveness and are associated with the business of the concerned company and such words have come to receive maximum degree of protection by courts. In another case of Acqua Minerals Ltd. v. Pramod Borse6, Court observed that “The same principles and criteria are applicable for providing protection to the domain name either for action for infringement if such a name is registered under the Trade and Merchandise Marks Act or for a passing off action as are applicable in respect of trademark or name.” It was held in Info Edge (India) (P) Ltd. v. Shailesh Gupta7 that the website using the domain name, similar to that of the plaintiff, for commercial purposes, would lead to an inference that the domain name was chosen intentionally to attract Internet users of the plaintiff.

The very first case in the Apex Court dealing with legal protection of domain names came up as late as 2004 in Satyam Infosys Ltd. v. Sifynet Solutions (P) Ltd.8 This judgment of Supreme Court approved that the domain names are entitled to legal protection equal to that of a trademark. The Supreme Court observed as under:
“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 which offers no such services. Such users could well conclude that the first domain-name owner has misrepresented its goods or services through its promotional activities and the first domain ­owner would thereby lose its custom. It is apparent, therefore, that a domain name may have all the characteristics of a trademark and could found an action for passing off.”

Legislative and Other Innovative Moves Against Cybersquatting
The National Association of Software and Service Companies (NASSCOM) in India has recommended that the Copyright Act should be amended to include cybersquatting as an offence. Currently, cases relating to cybersquatting come under the tort of passing off and infringement of trademarks, which is not exactly conducive to speedy trials and arrests. The Information Technology Act 2000 has also been recommended to be amended to book cyber criminals for such new crimes.

Conclusion
The process of registration of a domain name is not as stringent as that of registration of a trademark. Anyone can approach a Domain Name Registrar and register any available domain name. The Delhi High Court in Acqua Minerals Limited v. Pramod Borse9 observed that “If any person gets the domain name registered with the Registering Authority which happens to be trade name of some other person, the Registering Authority has no mechanism to inquire into it to decide whether the domain name sought to be registered in is in prior existence and belongs to another person.” Such mechanisms to inquire into it are required. All trademark owners as a matter of policy should decide not to accede to cybersquatters’ demand. Unless the economic incentives for cybersquatters can be eliminated, more creative solutions may be necessary, as cybersquatters are likely to remain a throne in the side of intellectual property owners in the future.

While WIPO’s experience shows that UDRP disputes are heavily concentrated in the .com domain, attention must also be paid to the establishment of robust preventive mechanisms against abusive registration in new generic top-level domains gTLDs (for example in 2005, the Internet Corporation for Assigned Names and Numbers approved the creation of new gTLDs, such as .travel and jobs). If domain names are randomly attributed in new domains, intellectual property owners will be forced to compete with cybersquatters for their own trademarks—unless additional preventive safeguards are introduced.

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* National Law Institute University, Bhopal.
1. 950 F Supp 737, 741 (E.D Va 1997).
2. 867 F Supp 202,203-204 (S.D.N.Y. 1994).
3. It was said in the case of Intermatic Inc v. Toeppen, 947 F Supp 1227, 1233,40 USPQ2d 1412 (NO lfl 1996) that “Cybersquatters are individuals who attempt to profit from the Internet by reserving and later re-selling or licensing domain names (incorporating a famous mark) back to the companies that own the mark.”
4. Brookfield Communications v. West Coast Entertainment Corp, 174 F. 3d 1036 (9th Cir., Apr 22, 1999; Interstellar Starship Services Ltd v. Epix, Inc.: Theory of ‘initial interest confusion’ that although web users will realize that they have reached the wrong site, they may be satisfied with the goods or services offered at the competitive site and not continue searching for the original site they had intended to visit.
”5. 1999 PTC (19) 201.
6. 2001 PTC 619 (Del); the court further held that the defendants had blocked user of the trade name EISLER! from getting the registration as a domain name and as such it has affected the trade and name of the plaintiff.
7. (2001) 24 PTC 335 (Del).
8. (2004) 6 SCC 145.
9. 2001 PTC 619 (Del).