Author: Divit Arora, V Year of B.B.A.,LL.B from Centre for Legal Studies - GIBS, GGSIPU.
The Internet has created numerous opportunities for companies and brands to connect with their customers and created an opportunity for those who will use brands' intellectual property for their gain.
Domain names are provided based on a first-come, first-serve basis; cybersquatters or bad faith imitators register domain names similar to the trademark registered under some brand. The object of Cybersquatting is to benefit or profit from the goodwill of such a brand that they have imitated the trademark.
As per the High Court of Delhi, 'cybersquatting' is "an act, of obtaining fraudulent registration to sell a domain name to the lawful owner of the name at a premium."
Internet and the presence over the world wide web (WWW) have played a vital role in developing the online market. The brands have equally put in the efforts to make their presence noticeable via SEOs and other tools.
The first come and first serve basis of the domain name of the website sometimes is exploited by the people to register the domain name as something, like say haldiram and make the website of food delivered. The Haldiram website created was not of the original lawful owners of the chain but of a person who noticed that the domain name or website in such name does not exist on the web. So the cybersquatter made the website and started defrauding the customers or started using the brand name of Haldiram for his personal gain.
The cybersquatters also sometimes make the website persuade the brand to buy his website at a very high or premium price. Cybersquatting is not only limited to the early registration, and taking a domain name similar or identical to a famous brand name is also Cybersquatting.
KEYWORDS – Cybersquatting; UNDRP; INDRP; TWNIC; Trademark; Domain Name.
What can be done in such situations?
There are various methods of dispute system, but the most effective policies are – Uniform Domain Name Dispute Resolution Policy drafted by ICANN and WIPO arbitration and mediation strategies.
In countries like the USA, Anticybersquatting consumer protection Act has been enacted to protect consumers, but there is no specific action for this kind of crime; this is dealt with only under Information technology.
The policy drafted by ICANN (Internet Corporation for Assigned Names and Numbers) provides for an arbitral proceeding instead of litigation. The proceeding can be initiated by the complainant only if the three factors are satisfied. These are –
1. Identical or remarkably similar domain name concerning the trademark of the actual owner.
2. The owner of such domain name has no right or legal interest in such domain name.
3. The domain name was registered and continued to be used in bad faith. For example – to benefit from the trademark or goodwill of the legal owner of the trademark.
WIPO (world intellectual property organization) is the principal domain name dispute resolution service provider under the policy drafted by the ICANN.
Suppose the arbitral award comes in favor of the trademark owner. In that case, the domain name may either be transferred to the trademark owner's name without giving any financial aid to the respondent or canceled from the Internet.
In India, ".IN" (.in ) is used as ccTLD in the website address, so the dispute resolution policy of India is known as -.IN Dispute Resolution Policy. (.INDRP). .INDRP is in accordance with the Indian Information Technology Act, 2000. In the absence of appropriate law, the victims can claim a remedy under Trade Marks Act, 1999.
FAMOUS CASES OF TRADEMARK INFRINGEMENT VIA CYBERSQUATTING
One of the very famous World Wrestling Federation Entertainment v. Michael Bosman, 2000, revolved around trademark infringement of WWF ( World wrestling federation). WWF filed a case against a resident of California who made a similar domain name as of the trademark WWF.
In the infamous case of Rediff Communication vs. Cyberbooth, Bombay High Court said internet Domain Names are incredibly high value to a company or a brand and must be protected. The domain name is more than just a website address, and the company's trademark should be weighed. The court decided in favor of Plaintiff.
In Morgan Stanley v. Bharat Jain (Decided on October 28, 2010), the disputed domain name www.morganstanleybank.co.in was registered via respondent on June 20, 2010. The complainant contended that an addition of ccTLD ".co.in." was not sufficient to make the disputed domain name unsimilar to the complainant's mark MORGAN STANLEY. So the disputed domain name was confusingly similar to the above-stated mark
Now we have discussed the Indian Dispute resolution of a domain name, also known as .INDRP. Now one of the very famous dispute resolution policies is made by TWNIC. This dispute resolution policy is of Taiwan, and an attempt has been made to study and point out the difference in the process of both TWNIC and .INDRP.
TWNIC ( Taiwan Network Information Centre ) implemented a policy of TWNIC Domain Name Dispute Resolution Policy (TWDRP) proceeding, which is an equivalent procedure as of - the Uniform Domain Name Dispute Resolution Policy (UDRP) procedure.
The TWNIC designated the Taipei Bar Association and the Science & Technology Law Institute at the Institute for Information Industry (III) - the domain name dispute resolution service providers-to trial the domain name disputes.
Although Courts in India have distinguished between Domain Name and Trademark and cybersquatting cases in India are decided under the Trademark act because of lack of a present statute.
Analysis and Conclusion
Salmond defined law as an instrument of justice, from which we can concur that the purpose of enacting every statute is expeditious and an effective discharge of justice. Cybersquatting created many difficulties for trademark holders for getting their revenues from the ever-expanding Internet or worldwide web.
According to Heydon's rule of interpretation, it has been said that the amendment or enacting a new statute is done to eradicate the mischief which is happening in society. The mischief of Cybersquatting caused the genuine business owners to suffer a loss and infringed their trademarks. Keeping in mind the purpose of enacting intellectual property rights law, policies were made to provide justice to the trademark holder—the Dispute resolution policies drafted by ICANN and our.INDRP policies have been proved of utmost benefit in such cases.
The cases regarding cybersquatting are still resorted under trademark act because of lack of a separate statute. This should be changed as there has been tremendous increase in both the websites and trademarks. A need for particular statute has arisen.
The author analyzed that both the policies of TWNIC and INDRP has been derived from UNDRP. Both of these policies were comprehensive enough to cover all the aspects of Cybersquatting at an international level. However, the author would like to gather readers' attention at the non-fixation of time limit on the trial or arbitral proceedings that make the justice delayed. Justice delayed is justice denied, the legal maxim can be relatable here. If the proceedings take a year or more, it would cause the loss of sales for the trademark holder and drain the revenues of the proprietor to afford the legal remedy at an international level and at a currency rate that might be higher than their own. So it can be said that policies are adequate to get justice. However, they can be expeditious by including a clause that sets a time limit for the passing of an award.