CYBER SQUATTING INDIA – Genesis & Legal Scenario

By

Nishi Shabana nishi@singhania.in

Domain Name

A domain name is a unique name that identifies a website.

Domain name

• Each website on the Internet has an IP

address behind the name.

• IP address is a string of numbers

• The domain name is made of characters that are easier to remember

• Example: Singhania.in is easier to remember than its corresponding IP address

Domain Name System

• DNS provides a mapping service which links the domain name and the corresponding IP addresses

• Every Web server requires a Domain Name System (DNS) server to translate domain names into IP addresses.

Levels of domain name

• A domain name can be categorically divided into two levels:

Top- level domains (TLD)

Second- level domains (SLD)

• For example:

www.singhania.in

Top-level domain

Second-level domain

TOP LEVEL DOMAINS

• Three letter generic Top-Level Domains (gTLDs)

• Examples: .com, .net, .org, .edu, .gov, .int, .coop

• Two letter Country-Code Top-Level Domains (ccTLDs)

• Examples: .au for Australia, .mx for Mexico, .in for India

• additional tiers within the ccTLDs .com.au; .edu.au; .nic.in

• Internationalized Domain Names (IDNs)

• Different scripts and enabled Internet users to access domain names in their own language

• Examples: 香港 (Hong Kong), рф (Russian Federation),

Example of Greek IDN with country code top-level domain in non-Latin alphabet

Second Level Domain (SLD)

• Second level domain are chosen by applicant

• These are the names on the left of the TLD like msn, yahoo, delhihighcourt etc

• SLD are the important part of the discussion as most of the disputes arises for SLD only.

• SLD must be unique term not previously used by any one and must be registered

1993 - Network Solution Inc. (NSI)

• Sole administrator over the domain name registry

• Dominated Second-Level Domains with respect to Top-Level Domains (TLDs), i.e. .com, .net and .org

• 1998 - National Tele Communications and Information Agency, US Department of Commerce initiated for formation of non-profit organization corporation by private sector Internet stakeholders to administer the policy of domain names system

Internet Corporation for Assigned Names and Number (ICANN)

• ICANN - created 1999 • Responsible for managing the domain name

system.

• Facilitating the technical, managerial and policy decisions on the Internet.

• Registration of domain names is delegated to various accredited Registrars.

• Individual countries control their respective ccTLDs and establish their own policies for registration and use.

DOMAIN SQUATTING

CYBERSQUATTING

Squatting is the act of registering a popular Internet address--usually a company name--with the intent of selling it to its rightful owner at an inflated price or put the domain names up for auction

First Cyber squatter

• Dennis Toepen, an US Citizen

• In 1998 registered over one hundred domain names of various well-known trademarks, including "panavision.com", "panaflex.com“

• Various marks belonging Delta Airlines, Neiman-Marcus, Eddie Bauer and Lufthansa

• Offered to sell domain to Panavision for $13000

First Cyber squatter.....

• Panavision brought an action under the Federal Trademark Dilution Act (FTDA).

• Dennis Toeppen failed in defending his rights.

• Panavision International Vs Toeppen and Intermatic Inc. Vs Toeppen pivotal cases and have profound impact on the development and drafting of Anticybersquatting Consumer Protection Act, 1999.

TYPOSQUATTING

This is type of cyber squatting which relies on typographical errors internet users make while entering website address into a web browser.

For e.g.

www.dellll.com instead of www.dell.com

Typosquatting......

• Typosuatters takes benefit of misspellings

• Diverts the traffic of the target site to their site

• In course of an electronic transaction, the potential customer might end up making an alternative purchase from competitors company.

• Tarnish the image of company

• e.g. PETA used by cybersquatter “People Eating Tasty Animal”

• Twtter.com and Twitter.com • capture typo traffic destined for Twitter.com • Site’s entire function is to get your contact information • Very appealing offer is presented to answer the survey question • Your personal information goes into wrong hands • Can be used to send SMS to you cellphone that you get charged • Can be used for simply selling your email address

Uniform Dispute Resolution Policy (UDRP)

• In 2001, ICANN devised the Uniform Domain-Name Dispute-Resolution Policy (UDRP).

• The UDRP is an international arbitration process for the resolution of domain name disputes.

• The UDRP is designed to solve disputes between a trademark owner and a domain name registrant

UDRP....

• Applicable to all ICANN-Accredited Registrars for gTLDs: .com, .info, .net, .org, .pro, etc and some ccTLDs, such as .au (Australia)

• Incorporated by reference into the registration agreement that the Registrant had with the Registrar at the time of registering its domain name.

• Registrants submits itself to the jurisdiction of the approved dispute settlement resolution provider and binds itself to the UDRP

UDRP....

• The UDRP proceedings are conducted by ICANN approved service providers.

• Factors while selecting service provider location

• cost

• language skills

• the type of domain at issue

• availability of each provider

UDRP service provider

• World Intellectual Property Organization (WIPO), Geneva

• National Arbitration Forum (NAF), Minneapolis, USA

• Asian Domain Name Dispute Resolution Centre

• The Czech Arbitration Court Arbitration Center for Internet Disputes, Prague

UDRP Complaint

Criteria for initiating UDRP procedure:

Same or confusingly similar trademarks

No legitimate interest in the domain name

Bad faith registration and use of the domain name

UDRP Remedies

• Cancellation of the domain name

• Transfer of the domain name to the trademark owner

• If the complainant wins, the domain name is transferred within 10 days of judgment unless the panel is informed by the defendant that they are initiating court proceedings on the matter

UDRP – First case

• World Wrestling Federation Entertainment Inc.(WWF) V. Michael Bosman (December 09, 1999)

• WWF initiated suit against Michael Bosmon who registered worldwrestlingfederation.com

• Offered to sell it to WWF at huge amount

UDRP – First Case

Held by court that

• Domain name registered by the respondent was ‘identical or confusingly similar’ to the trademark of WWF

• Respondent had no legitimate rights or interests in the domain name

• Domain name in question was registered in bad faith by the registrant in violation of WWF’s trademark

Other countries approach

• Many countries have their own policies and procedures

Examples:

• Mexico —Domain Name Dispute Resolution Policy for .mx (LDRP)

• Israel—Procedures for Alternative Dispute Resolution under the .il ccTLD by Dispute Resolution Panels (IL-DRP)

US Approach

• US have specific laws against cyber squatting beyond the normal rules of trademark law.

• U.S. Anti-cyber squatting Consumer Protection Act (ACPA) of 1999

• ACPA is intended to provide protection against cyber squatting for individuals as well as owners of distinctive trademarked names.

Card Service International Inc. v. McGee

In this case the American Court held that the domain name serves the same function as a trademark and is not merely to be construed as an address, as it identifies an Internet site to those who reach it, much like a persons name identifies a particular person.

ACPA...

Therefore a victim of cyber squatting in the United States has two options:

To sue under the provisions of the Anti cyber squatting Consumer Protection Act (ACPA), or

Use an international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN).

INDIAN SCENARIO • No legislation exclusively dealing with domain

squatting disputes.

• No provision in the current Information Technology Act to punish cyber-squatters

• Cases involving cyber squatting is decided under the relevant provision of trademark laws.

• Court decides whether a domain name has the characteristics of a trade or service which is available to potential users of the internet.

• Cyber squatting cases decided through the principle of Passing off/Infringement

Yahoo Inc. V. Aakash Arora & Anr.

www.yahoo.com www.yahooindia.com

•The plaintiff being registered owner of the domain name "yahoo.com" succeeded in obtaining an interim order restraining the defendants from dealing in service or goods on the Internet or otherwise under the domain name "yahooindia.com“. •The court rejected the argument of the defendants that the provision of the Indian trademark Act would not be attracted to the use of a domain trade name or domain name on the internet. It was held that although service marks are not recognized in India, services rendered are to recognized for action of passing off. Therefore, the decision of the court treated the matter as one of “passing off”.

Other Indian Cases

The Indian Courts has followed this decision in several other subsequent cases such as

• Rediff Communications LTD, v Cyber booth and Anr.

• Info Edge (India) Pvt Ltd V Shailesh Gupta

www.rediff.com www.radiff.com

www.naukri.com www.naukari.com

Tata Sons Ltd Vs. Ramadasoft

• Tata Sons had filed a complaint at the World Intellectual Property Organization.

• Tata Group, won a case to evict a cyber-squatter from 10 contested internet domain names.

• Respondent was proceeded ex-parte.

• The Panel concluded

• Domain names are confusingly similar to the Complainant’s trademark TATA,

• Respondent has no rights or legitimate interests in respect of the domain names

• Respondent registered and used the domain names in bad faith.

These facts entitle the Complainant to an order transferring the domain names from the Respondent.

Sbicards.com vs Domain Active Property Ltd.

• Sbicards.com was registered by an Australian entity with the intention of selling it back to State Bank of India for hefty amount

• Ordered by the World Intellectual Property Organization to transfer the domain name to the Indian Company

• The panel accepted SBI Card counsel’s argument that “the Australian company was in the business of buying and selling domain name through its website”.

Satyam Infoway Ltd. v Sifynet Solutions 2004 (6) SCC 145

• The Respondent had registered domain names www.siffynet.com and www.siffynet.net which were similar to the Plaintiff’s 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 “domain names are 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 observed that domain name has all the characteristics of a trademark and an action of Passing off can be found where domain names are involved.

• The decision was in favour of the plaintiff.

Indian Domain Name Dispute Resolution Policy

• “.in” is India,s Top Level Domain(TLD) on internet

• “.in” domain name disputes are resolved in accordance with .IN Dispute Resolution Policy (INDRP) and INDRP Rules of Procedure which is formulated by .IN registry operated under the authority of NIXI, the National Internet Exchange of India.

A complaint can be filed with the .IN Registry on the following grounds:

1. Registrant's domain name is identical or

confusingly similar to a name, trademark or service mark in which the Complainant has rights,

2. Registrant has no rights or legitimate interests in respect of the domain name,

3. Registrant's domain name has been registered or is being used in bad faith.

INDRP – Basic Procedure

• Complainant files the complaint with the .IN Registry along with the relevant fees.

• .IN Registry appoints an Arbitrator out of the list of arbitrators maintained by it

• Complaint and documents are forwarded to the Respondent and the Arbitrator

• Arbitrator conducts arbitration proceedings in accordance with the Arbitration and Conciliation Act 1996, rules thereunder, and the Dispute Resolution Policy & rules

Basic procedure.....

• Arbitrator must pass a reasoned award within 60 days

• Forward a copy of it immediately to the complainant, respondent and the .IN Registry

CONCLUSION

• An Indian domain name squatted by Indian

• An Indian domain name squatted outside India

• International domain squatted by an Indian

For gTLD like .com – UDRP

For ccTLD like .in – INDRP