DOMAIN NAMES - Cybersquatting in India

What Is a Domain Name?

A domain name is the user-friendly form of an Internet Protocol (IP) address that points an Internet user’s computer to the website the user wants to view

Each IP address is a string of numbers

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

Example: www.irfca.org is easier to remember than its corresponding IP address, 87.76.30.221

Domain Name System (DNS)

• Basically, DNS is a global addressing system
• 
  
• DNS allows users to go to a specific website by entering its corresponding domain name
• 
  
• DNS locates and translates domain names into IP addresses

Components of Domain Names

Second-level domain: irfca

Top-level domain: org

Top-Level Domains

Highest level in the DNS hierarchy

• Generic Top-Level Domains (gTLDs)
• Examples: .com, .net, .org
• Also, gTLDs for business or interest groups (e.g., .gov for the government, etc.)
• NEW gTLDs (e.g., .brand, .community, .geographical area)

Country-Code Top-Level Domains (ccTLDs)

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

Internationalized Domain Names (IDNs) 

• Contain local language characters such as accents and may include non-Latin scripts
• Examples: 香港 (Hong Kong), рф (Russian Federation)

Second-level domain names: 

• Follows “www.” and precedes the top-level domain name
• Chosen by registrant
• Must be: 
• unique term not previously used as a second-level domain name, and 
• registered

What is Cybersquatting?

• Cybersquatting is the practice of registering an Internet domain name that is likely to be wanted by another person, business, or organization in the hope that it can be sold to them for a profit. 
• It involves the registration of trademarks and trade names as domain names by third parties, who do not possess rights in such names.
• Simply put, cybersquatters (or bad faith imitators) register trade-marks, trade names, business names and so on, belonging to third parties with the common motive of trading on the reputation and goodwill of such third parties by either confusing customers or potential customers, and at times, to even sell the domain name to the rightful owner at a profit.

Laws in India

Unlike many developed countries, in India, we have no Domain Name Protection Law and cybersquatting cases are decided under Trade Mark Act, 1999.

Dispute Resolution

Dispute involving bad faith registrations are typically resolved using the Uniform Domain Name Dispute Resolution Policy (UDRP) process developed by the ICANN. Under UDRP, WIPO is the leading ICANN accredited domain name dispute resolution service provider and was established as a vehicle for promoting the protection, dissemination, and use of intellectual property throughout the world. India is one of the 171 states of the world which are members of WIPO.

A person may complain before the administrative dispute resolution service providers listed by ICANN under Rule 4 (a) that:

1. A domain name is "identical or confusingly similar to a trademark or service mark" in which the complainant has rights; and
2. The domain name owner/registrant has no right or legitimate interest in respect of the domain name; and
3. A domain name has been registered and is being used in bad faith.

Rule 4 (b) has listed, by way of illustration, the following four circumstances as evidence of the registration and the use of a domain name in bad faith:

1. Circumstances indicating that the domain name owner/registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark; or to a competitor of that complainant for valuable consideration in excess of its documented out of pocket costs, directly related to the domain name; or
2. The domain name owner/registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
3. The domain name owner/registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4. By using the domain name, the domain name owner/registrant has intentionally attempted to attract, for commercial gain Internet users to its website or other online location by creating a likely hood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of the domain name owner/ registrant web site or location or of a product or service on its web site or location.

India has also established its own registry by the name INRegistry under the authority of the National Internet Exchange of India (NIXI), wherein the dispute related to the domain name is resolved under the .IN Dispute Resolution Policy (INDRP). The Policy has been formulated in line with internationally accepted guidelines and with the relevant provisions of the Indian Information Technology Act 2000.

Under InRegistry, disputes are resolved under .IN Domain Name Dispute Resolution Policy (INDRP) and INDRP Rules of Procedure. These rules describe how to file a complaint, fees, communications and the procedure involved.

Role of Judiciary in India

Though domain names are not defined under any Indian law or are covered under any special enactment, the Courts in India has applied Trade Marks Act, 1999 to such cases.

Like in other cases under Trademarks Act, 1999 two kinds of reliefs are available:

1. Remedy of infringement
2. Remedy of passing off

Yahoo! Inc. v. Akash Arora and Another [1999 II AD (Delhi)]

In which an attempt was made to use the domain name <yahooindia.com> for Internet-related services as against domain name i.e. <yahoo.com>, The Court observed that usually the degree of the similarity of the marks is vitally important and significant in an action for passing off for in such a case there is every possibility and likelihood of confusion and deception being caused. 

When both the domain names are considered, it is crystal clear that the two names being almost identical or similar in nature, there is every possibility of an Internet user being confused and deceived in believing that both the domain names belong to one common source and connection, although the two belongs to two different concerns.

Tata Sons Limited and Anr Vs Fashion ID Limited (2005) 140 PLR 12 (tatainfotecheducation.com case)

The Hon'ble High Court of Delhi 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. This may occur in e-commerce with its rapid progress and instant (and the erotically limitless) accessibility to users and potential customers and particularly so in areas of specific overlap. 

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 web site which offers no such services. Such users could well conclude that the first domain name owner had mis-represented its goods or services through its promotional activities and the first domain owner would thereby lose their customer. It is apparent therefore that a domain name may have all the characteristics of a trademark and could found an action for passing off"

Aqua Minerals Limited Vs Mr Pramod Borse & Anr; AIR2001Delhi 467 (Use of the ‘Bisleri’ name)

The Hon'ble High Court of Delhi Court has held that Unless and until a person has a credible explanation as to why did he choose a particular name for registration as a domain name or for that purpose as a trade name which was already in long and prior existence and had established its goodwill and reputation there is no other inference to be drawn than that the said person wanted to trade in the name of the trade name he had picked up for registration or as a domain name because of its being an established name with widespread reputation and goodwill achieved at huge cost and expenses involved in the advertisement.

Summary—UDRP vs. Indian Courts