Domain Name Disputes And Cybersquatting In India – Part I

INTRODUCTION

The internet has brought a massive revolution in the 19th century which can be equated with the industrial revolution. The internet was launched for the purpose of communication between the masses but within the few years only, it became one of the most important tools for the communication for business transactions, governmental policies and social interaction. It has provided the opportunities for the millions of people and brought liabilities in the field of intellectual property, data privacy, etc.

The challenges that the law has faced in recent years is, how to foster the development of intellectual property on the Internet while preventing its unauthorized use. We have addresses for our homes and offices. In the same way, domain names are nothing but simple forms of addresses on the internet. These addresses enable the users to locate websites on the net in an easy manner. Domain name corresponds to various IP (Internet Protocol) numbers which connect various computers and enable direct network routing system to direct data requests to the correct addressee.

Cybersquatting and Domain Name Disputes, both are covered under Trademark Law. There are so many instances of abusive domain name registration and infringement of trademarks on the internet that law of trademark has extended its purview to domain names as well. Most of the domain name disputes and cybersquatting cases are dealt under the passing off when there are no specific provisions on the issue.

CYBERSQUATTING 

Cybersquatting is a type of domain name dispute which is prevalent in the world. It is a practice where individuals buy domain names reflecting the names of a existing companies, with a sole intention to sell the names back to that company to attain profit when they want to set up their own website.

There are various types of cybersquatting. Most commonly used is  the typo squatting where a cyber-squatter registers domain names containing variant of popular trademarks. Typo squatters believe that the internet user will make the typographical errors while entering the domain names into their web browsers.

Some common examples of typo squatting includes:

  • The omission of the “.” in the domain name: wwwexample.com;
  • A common misspelling of the intended site: exemple.com
  • A differently phrased domain name: examples.com
  • A different top level domain:example.org

DOMAIN NAME

Internet domain name is a combination of typographic characters used to describe the location of a specific location online. It is known as the Uniform Resource Locator or URL. It is considered the identity of a Web site. The Internet domain name is very important for the small businesses who want to establish their name on internet. The two organizations cannot have same domain names.[1] Example – www.google.com ; www.yahoo.com, etc.

  • ‘WWW’ means that site is linked to World Wide Web.
  • ‘google’ is the name you choose to your site, and ideally is readily identifiable with your organization name or core business.
  • ‘.com’ is known as top-level domain name and it indicates that your organization name or core business.
  • Sometimes ‘.in’ is being used in place of ‘.com’ that means that company is registered in

India (For eg – ebay.in, olx.in, airtel.in, etc.)

In the above example only google.com is being used shows search results from Global servers, Google.co.in is more targeted to local Indian Market. You will always see difference in search results for both cases on Google.co.in you will get results of more India related sites, who primary operate in or for India specific.

The last two or three letters of a domain nameor URL (e.g.- .com, .in, .org ) are known as its top-level domain. The top-level domain which are used earlier are for Example ‘.org’ generally describes a nonprofit, charity, or cultural organization site; ‘.gov’ indicates a governmental site; and .net, which is most often used by network-related businesses. Some other common top-level domains are country codes, like .us for United States and .au for Australia, etc.

Domain name registration system[2] started on the basis of the “First come First serve” basis. The registrant authority which was initially the “Internic” did not take the responsibility for checking the ownership of the name. Later when the internet became popular, large popular companies wanted to enter the internet with their own websites and often found that the domain name they were seeking had already been booked. So companies which wanted the same domain name had to pay a price, which were sometimes unimaginable. This increasing cost of buying back of domains resulted in ‘Meta society’ trade mark owners coming together and claiming that their intellectual property rights on a registered trade mark should be extended to “domain name”. This has resulted in considering “Registration of Domain Names without the intention of using them” as cybersquatting.

TYPES OF DOMAIN NAME

  1. Top-Level Domains(TLDs) – They appear in domain names as the string of letters following the last (rightmost) “.”, such as “net” in “www.example.net”.Most commonly used TLDs are .com, .net, .edu, .jp, .de, etc. Further, TLDs are classified into two broad categories: generic top-level domains (gTLDs) and country-code top-level domains (ccTLDs).
  2. Generic Top-Level Domain (gTLDs)– It is a generic top-level domain name that identifies the domain class it is associated with (.com, .org, .edu, etc).
  3. Country Code Top-Level Domain (ccTLD)– It is a two-letter domain extension, such as .uk or .fr, assigned to a country, geographic location or territory.
  4. nTLDs– It refers to new top-level domain names that are geared towards brands organizations and services, as they’re more customized, flexible and relevant. Some of the Examples of nTLDs include “.voyage”, “.app”, “.ninja”, “.cool”, etc.

RELATION BETWEEN DOMAIN NAME AND TRADEMARK

In today’s world Domain name serves as an on-line trademark. It also indicates quality and a repository of the goodwill of an organization. Alphabetical domain names were developed to make the addresses easier for humans to remember and use when communicating on the Internet. Such names are catchy words or well-known names of individuals or companies, for example, “nokia.com” or “samsung.com”.

A Domain name serves the same purpose online, which a trademark serves in the offline business transactions. It helps the customers identify the source of goods/services provided by the owner of such goods and services. Therefore, Domain names are of utmost importance in online businesses. They are important because of the following reasons:

  • Promotion of business and building up of customer base online and offline by way of advertising on the web.
  • Establishment of the credibility of the website and the business on the internet.
  • Easy access to customers and prospective customers.

The existence of domain names without the requirement of the registration brought the concept of   “first come, first served”. This has created the disputes among the owners of the trademark because many speculators have started to register domain names in order to resell them for a higher price to the trademark owners. The problem arose with the trademark owners because of their entitlement to IP rights make them feel ripped off by this new practice named as “cybersquatting”.[3] Thus, anyone who wishes to register a domain for the first time which is trademarked can do so; whatever problems may arise will have to be faced later.[4]

The reason of the increase in the incidence is the growing importance of domain name in the e-commerce trend. Domain name hold a good importance as there can be only one user of a domain name unlike the trademark law where there can be two or more users of a same or similar trademark for various classes of goods and services under the honest concurrent use if such use does not amount to infringement or causing confusion or dilution. But this kind of provision is not applicable in the case of domain names. Since, the domain registration system follows the “first come, first served” policy. So, once a person registers a domain name similar to a trademark, any other person using a similar mark is denied registration of another domain name similar to that trademark. That means only one user is allowed to use a particular domain name and any other application for the same domain name will be refused. This is the main reason as to why trademark owners prefer to get their trademarks registered as their domain names for business.

The cases of trademarks and domain names conflict mainly involve issues related to the use of goodwill of a trademark by an infringer in the domain name to divert the potential customers of the owner of the trademark to a website not associated with that trademark, or use of meta-tags resulting in dilution of trademark or unauthorized registration of the trademark as domain name with the intent to extort money or to prevent the owner from using the trademark.

The Cyber squatters quickly sell the domain names to other non-related entities, thereby enabling passing off[5] and diluting of famous trademark or trade names.[6]

Author: Pratibha Ahirwar, Intern at IP and Legal Filings  and can be reached at support@ipandlegalfilings.com.


References:

[1] Caroline Wilson, “Internationalized Domain Name Problems and Opportunities” C.T.L.R. 2004, 10(7), 174-181.

[2] http://www.internic.net/faqs/domain-names.html visited on 22/11/1014. The Domain Name System (DNS)helps users to find their way around the Internet. Every computer on the Internet has a unique address – just like a telephone number – which is a rather complicated string of numbers. It is called its “IP address” (IP stands for “Internet Protocol”). IP Addresses are hard to remember. The DNS makes using the Internet easier by allowing a familiar string of letters (the “domain name”) to be used instead of the arcane IP address. So instead of typing

207.151.159.3, you can type www.internic.net. It is a “mnemonic” device that makes addresses easier to remember.

[3] G. Kaufmann-Kohler and T. Schultz, “Online Dispute Resolution: Challenges for Contemporary Justice”, 2004 ed., p.36.

[4] Juan Pablo Cortes Dieguez, “The UDRP Reviewed: The Need For A Uniform Policy”, C.T.L.R. 2008, 14(6), 133-139.

[5] Passing off: A form of unfair trade practices in which one party seeks to profit from other party’s reputation.

[6]Manish Vij v. Indra Chugh, AIR 2002 Delhi 243.

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