Domain Names & Cyber Squatting

in India Recent Cases

Assignment Paper III
Trademarks

Submitted by:

Arpit Jain
Roll No- 10
Post Graduate Diploma in Intellectual Property Rights

Objective of the Assignment

The Objective of this Assignment is to Study recent cases related to

cybersquatting and domain name disputes, the legal scenario and position in
India, role of judicdiary, case laws related to cybersquatting and domain name
disputes.

Methodology followed

Search- Blog, Journal, Acts, web search

Opinion on case studies
Interpretation
Conclusion
Blogs( spicy ip, watchdog, Patent act, rediff business)

Analysis of the following cases

Yahoo! Inc. v. Akash Arora

Tata Sons Ltd Vs. Ramadasoft
Sbicards.com vs Domain Active Property Ltd.
Bennett Coleman & Co Ltd Vs. Steven S Lalwani
Tata Sons Limited and Anr Vs fashion ID Limited
Dr Reddy's Laboratories Limited Vs Manu Kosuri
Satyam Infoway Ltd. v Sifynet Solutions
Tata Sons Ltd v. Monu Kasuri & others
Nestle India Limited Vs Mood Hospitality Pvt Limited
Aqua Minerals Limited Vs Mr Pramod Borse & Anr

DECLARATION

Certified that this Assignment is my original work and that I have clearly
mentioned all the sources from where I have taken any material from others
work and I have not presented this partly or fully to any other Institution/ College
/ University.
I have complied with all the formalities prescribed in this regard.
I would like to thank the Course Co-ordinator Ms. Anna Bhashir for her Support
and Guidance in helping me to complete this Assignment.

Date :

(ARPIT JAIN)
Roll No 10
PGD (IPR)

Introduction
The internet has brought a revolution which can be equalled with the industrial
revolution of the 19th century. The internet was launched as a communication
tool for the masses but, within a few years, it became one of the most important
tools of modern day communication be it for business transactions, governmental
policies, social interaction etc. It has comprehensively extended the reach of
technology and acquisition of data. It has provided opportunities to millions and
also brought liabilities to many especially in the field of intellectual property, data
privacy etc. The Internet has become a very powerful tool, having the ability to
create jobs, shorten product life cycles, circumvent international communications
barriers, and transcend political and social boundaries. The challenge the law has
faced in recent years is, how to foster the development of intellectual property on
the Internet while preventing its unauthorized use.

Domain Names
We have addresses for our homes and offices. The same way domain names are
nothing but simple forms of addresses on the internet. These addresses enable
users to locate websites on the net in an easy manner. Domain names correspond
to various IP (Internet Protocol) numbers which connect various computers and
enable direct network routing system to direct data requests to the correct
addressee. In other words a domain name is a uniform source locator.
Domain names are of two types. The following figure would give a better idea:-

Besides locating sites, domain names also have a function of identifying

businesses and their goods and services on the net, which gives them an edge

over their competitors. The introduction of new generic top-level domains

(GTLDs) to complement those already existing (.com, .org, .net, .edu, .gov, .mil
and .int) has been the subject of intense debate for a number of years. The ICANN
(Internet Corporation for Assigned Names and Numbers) has played a very
important role in getting these new domain names passed. The domain names
can be registered by approaching any ICANN accredited registrar.

Domain Names in India

It is a general practice where companies desire to obtain such domain names
which can be easily identified with their established trademarks. This helps the
public to identify the company as there is no physical contact between the two of
them. Domain names and trademarks are connected with each other. If a
company or an individual register a domain name which is similar to or identical
to someone elses trademark or domain name and then tries to sell the same for a
profit. This is known as Cybersquatting.
Domain names are big business nowadays, for the past several years,
domain names, the real estate of the Internet, have generated substantial
returns for savvy investors, who often refer to themselves as domineers. Today,
a domain name holder can display pay-per-click advertising on a website, and sitback and let the money roll in while Internet users click on those ads. A single
domain name can bring in hundreds of dollars a day, and many domain name
holders have thousands or even millions of domain names.

What is Cyber Squatting?

According to Wikipedia Squatting means occupying an abandoned or unoccupied
space or building, usually residential, that the squatter does not own, rent or
otherwise have permission to use.

So Cyber-squatting refers to the bad faith registration of a domain name

containing another persons brand or trademark in a domain name. It can be
defined as registering, trafficking in, or using a domain name with bad-faith i.e.
mala fide intent to make profit from the goodwill of a trademark belonging to
someone else. The cyber squatter then offers to sell the domain to the person or
company who owns a trademark contained within the name at an inflated price.
With the domain prices falling and more top level domains (.biz, .cn, .mob and
lately .in) getting accredited, cyber squatters are in business fultime.
Categories of Cyber Squatting
Cyber squatting can be of various categories, most commonly seen is typo
squatting, when a cyber squatter registers domain names containing variant of
popular trademarks. Typo squatters rely on the fact that Internet users will make

typographical errors when entering domain names into their web browsers. Some
common examples of typo squatting include:
The omission of the dot 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
# Daniyal Waseem of Quetta in Pakistan was using the domain name
rediffpk.com. To this, the NASDAQ-listed Indian firm had contended that the
disputed Internet site was identical in part and confusingly similar as a whole to
the Rediff trademark, for which it has rights. Finding that Waseem had no rights
to the REDIFF mark the WIPO Panel concluded the proceeding by transferring
Rediff.com.pk to the Indian REDIFF trademark owner Rediff.com India Ltd.
Moreover cyber squatters also rely on the fact that trademark holders often
forget to re-register their domain names, because domain registration is for a
fixed period and if the owner does not re-register the domain name prior to
expiration, then the domain name can be purchased by anybody. Cyber squatters
will snatch up a domain name as it becomes available. This process is often
referred to as renewal snatching.

Legal scenario
Some countries have specific laws against cyber squatting beyond the normal
rules of trademark law. The United States, for example, has the U.S. Anti-cyber
squatting Consumer Protection Act (ACPA) of 1999. This expansion of the
Lanham (Trademark) Act (15 U.S.C.) is intended to provide protection against
cyber squatting for individuals as well as owners of distinctive trademarked
names.
A victim of cyber squatting in the United States has two options:
a. sue under the provisions of the Anti cyber squatting Consumer
Protection Act (ACPA), or
b. use an international arbitration system created by the Internet
Corporation of Assigned Names and Numbers (ICANN).
In court system, 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.
Recognizing the problems raised by clash between domain name system and
trademarks, the World Intellectual Property Organization (WIPO) Arbitration and
Mediation Centre has developed an online Internet based system for
administering commercial disputes involving intellectual property. This Dispute
Resolution Mechanism is unique in that it is designed to be used online both for
document exchange and for filling of evidence. However, the original
documentary evidence will still be needed to be filled in a physical form. The

dispute resolution is simply signed and thus, providing an inexpensive and

efficient service and does not in any way seek to take the place of national
jurisdiction. A successful complainants remedy is limited to requiring the
cancellation of the registrants domain name or the transfer of domain name
registration to the complainant.
The procedure will be handled in large part online and is designed to take less
than 45 days with a provision for the parties to go to courts to resolve their
disputes or contest the outcome of the procedure.
Internationally, the United Nations copyright agency WIPO (World Intellectual
Property Organization) has, since 1999, provided an arbitration system wherein a
trademark holder can attempt to claim a squatted site. In 2006, there were 1823
complaints filed with WIPO, which was a 25% increase over the 2005 rate. In 2007
it was stated that 84% of claims made since 1999 were decided in the complaining
partys favor.
WIPO is the UNs specialized agency for developing a balanced and accessible
international system in the field of intellectual property rights

Legal Position in India

In India victims of cyber squatting have several options to combat cyber
squatting. These options include: sending cease-and-desist letters to the cyber
squatter, bringing an arbitration proceeding under ICANNs rules, or bringing a
lawsuit in state or federal court. Whatever strategy a victim of cyber squatting
elects to use, that person should not dismiss the serious effects that cyber
squatting can have if left unchecked.
A case could be filed with the .in registry handled by National Internet Exchange
of India(NiXI) who brings the matter to fast track dispute resolution process
whereby decisions are transferred within 30 days of filling a complaint.
Like always our legal system is silent on this matter too, there is no provision in
the current or proposed Information Technology Act in India to punish cybersquatters, at best, the domain can be taken back. Though there is no legal
compensation under the IT Act, .in registry has taken proactive steps to grant
compensation to victim companies to deter squatters from further stealing
domains. Most squatters however operate under guise of obscure names.
Under NIXI, the IN Registry functions as an autonomous body with primary
responsibility for maintaining the .IN ccTLD (country code top-level domain) and
ensuring its operational stability, reliability, and security. It will implement the
various elements of the new policy set out by the Government of India and its
Ministry of Communications and Information Technology, Department of
Information Technology.

Laws in India
Unlike many developed countries, in India we have no Domain Name Protection
Law and cyber squatting cases are decided under Trade Mark Act, 1999.
That although the Indian Courts have drawn the distinction between trade mark
and domain name; wherein the Hon'ble Supreme Court in Satyam Infoway Ltd vs
Sifynet Solutions Pvt Ltd; AIR 2004SC3540 has observed that the
"distinction lies in the manner in which the two operate. A trademark is protected
by the laws of a country where such trademark may be registered. Consequently,
a trade mark may have multiple registrations in many countries throughout the
world. On the other hand, since the internet allows for access without any
geographical limitation, a domain name is potentially accessible irrespective of
the geographical location of the consumers. The outcome of this potential for
universal connectivity is not only that a domain name would require worldwide
exclusivity but also that national laws might be inadequate to effectively protect a
domain name".
The Indian Courts though have recognized the lacuna, however, in the absence of
a explicit legislation, courts apply provisions of the Trade Marks Act to such
disputes. The Court in Case (Supra) further observed that
"As far as India is concerned, there is no legislation which explicitly refers to
dispute resolution in connection with domain names. But although the operation
of the Trade Marks Act, 1999 itself is not extra territorial and may not allow for
adequate protection of domain names, this does not mean that domain names

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 the 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 administration dispute resolution service
providers listed by ICANN under Rule 4 (a) that:
(i) A domain name is "identical or confusingly similar to a trade mark or service
mark" in which the complainant has rights; and
(ii) The domain name owner/registrant has no right or legitimate interest in
respect of the domain name; and
(iii) 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 registration and the use of a domain name in bad faith:
(i) 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 trade mark 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
(ii) The domain name owner/registrant has registered the domain name in order
to prevent the owner of the trade mark or service mark from reflecting the mark
in a corresponding domain name, provided that it has engaged in a pattern of
such conduct; or
(iii) The domain name owner/registrant has registered the domain name primarily
for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the domain name owner/registrant has
intentionally attempted to attract, for commercial gain internet users to its web
site 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 National Internet Exchange of India (NIXI), wherein the dispute
related to the domain name are 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
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 kind of reliefs are available:
1. Remedy of infringement
2. Remedy of passing off
Remedy of Infringement: Trade mark Act permits owner of the trade mark to avail
the remedy of infringement only when the trade mark is registered. Remedy of
Passing off: No registration of the trade mark is required in case the owner
inteeds to avail the relief under passing off.

CYBER-SQUATTING CASES
Yahoo! Inc. v. Akash Arora
Probably the first reported Indian case is, wherein the plaintiff, who is the
registered owner of the domain name yahoo.com succeeded in obtaining an
interim order restraining the defendants and agents from dealing in service or
goods on the Internet or otherwise under the domain name yahooindia.com or
any other trademark/ domain name which is deceptively similar to the plaintiffs
trademark Yahoo Although, as on the date of writing, there are very few
reported judgments in our country, newspaper reports and information from
reliable sources indicate that there are at least twenty-five disputes pertaining to
domain names pending before the Delhi High Court itself.

Tata Sons Ltd Vs. Ramadasoft

Tata Sons, the holding company of Indias biggest industrial conglomerate, the
Tata Group, won a case to evict a cyber-squatter from 10 contested internet
domain names. Tata Sons had filed a complaint at the World Intellectual Property
Organisation.
The Respondent was proceeded ex-parte. The Panel concluded that the
Respondent owns the domain names. These domain names are confusingly
similar to the Complainants trademark TATA, and the Respondent has no rights
or legitimate interests in respect of the domain names, and he has 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 ordered by the World Intellectual Property Organisation to be
transferred to the Indian Company from an Australian entity, which hijacked the
domain name hoping to later sell it for a hefty sum to the State Bank of India
subsidiary. The panel accepted SBI Card counsels argument that the Australian
company was in the business of buying and selling domain name through its
website.
#Bennett Coleman & Co Ltd Vs. Steven S Lalwani
Since 1996, the complainant has held the domain names,
www.economictimes.com, using them for the electronic publication of their
respective newspapers. The complainant had registered in India this mark for
literary purposes.
However, in 1998, Steven S. Lalwani, USA registered the same domain name.
The WIPO judgement made it clear that the complainant have a very substantial
reputation in their newspaper titles arising from their daily use in hard copy and
electronic publication. It was also categorically held that the registration and use
of the domain names by the respondents is in bad faith in the sense that their use
amounted to an attempt intentionally to attract, for commercial gain, Internet
users to their web sites by creating a likelihood of confusion with the
complainants marks as to the source, sponsorships, affiliation or endorsement of
those web sites and the services on them.
Other Global brands like MonsterJobs, PepsiCo, SonyEricsson, Siemens, McAfee,
Kingston and search giant Google have of late been at the receiving end of the

squatters. Apart from global brands, celebrities domains are also targeted by the
squatters like Amitabh Bachhan, Sonia Gandhi, Sushmita Sen and Gul Panag.
Cyber-sqatting is a major concern especially for the domains which involve
financial transactions, because usually these squatters may some times fool
people and misuse take their credit card details. So many corporates and banks
have their special dedicated IT teams which keep a check on all these domains.

Tata Sons Limited and Anr Vs fashion ID Limited (2005)

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 ecommerce 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"

Dr Reddy's Laboratories Limited Vs Manu Kosuri and Anr 2001 (58)

DRJ241
The Hon'ble High Court of Delhi Court held that "It is a settled legal position that
when a defendant does business under a name which is sufficiently close to the
name under which the plaintiff is trading and that name has acquired a reputation
the public at large is likely to be misled that the defendant's business is the
business of the plaintiff or is a branch or department of the plaintiff, the
defendant is liable for an action in passing off and it is always not necessary that
there must be in existence goods of the plaintiff with which the defendant seeks
to confuse his own domain name passing off may occur in cases where the
plaintiffs do not in fact deal with the offending goods. When the plaintiffs and
defendants are engaged in common or overlapping fields of activity, the
competition would take place and there is grave and immense possibility for
confusion and deception. The domain name serve same function as the
trademark and is not a mere address or like finding number of the Internet and,
Therefore, plaintiff is entitled to equal protection as trade mark. The domain
name is more than a mere Internet address for it also identifies the Internet site
to those who reach it. In an Internet service, a particular Internet site could be
reached by anyone anywhere in the world who proposes to visit the said Internet
site. In a matter where services rendered through the domain name in the
Internet, a very alert vigil is necessary and a strict view needs to be taken for its
easy access and reach by anyone from any corner of the world.
The trademarks/domain name 'DR. REDDY'S' of the plaintiff and
'drreddyslab.com' of the defendants are almost similar except for use of the suffix

'lab.com' in the defendants domain use. The degree of the similarity of the marks
usually is vitally important and significant in an action for passing off as in such a
case, there is every possibility and likelihood of confusion and deception being
caused. Considering both the domains' name, it is clear that 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
plaintiff although the two domain names belong to two different concerns".

Aqua Minerals Limited Vs Mr Pramod Borse & Anr; AIR2001Delhi 467

the Hon'ble High Court of Dehi 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.

Nestle India Limited Vs Mood Hospitality Pvt Limited; 2010 (42) PTC
514 (Del)
The Hon'ble High Court of Dehi Court has held that in case of interim
relief/injunction test of prima facie case as traditionally understood has been
replaced, at least in trade mark matters, by the test of comparative strengths of
the rival cases. This is also in keeping with the requirements of the said Act

inasmuch as it not only describes what amounts to infringement (see: Section 29)
but it also makes provision for what does not amount to infringement (see:
Section 30)......Thus, apart from examining the case in the context of Section 29 of
the said Act only from the standpoint of the respondent/ plaintiff, it was also
incumbent upon the learned Single Judge to consider the relative or comparative
strength of the appellant's/defendant's case both under Section 29 and Section
30 (2) (a) of the said Act.
In another case the defendant registered a number of domain names bearing the
name Tata. It was held by the court that domain names are not only addresses
but trademarks of companies and that they are equally important. (Tata Sons Ltd
v. Monu Kasuri & others 2001 PTC 432)
In a case which was taken up by the WIPO administrative panel where SBI Card
and Payment Services Private Limited (a joint venture between GE Capital
Services, the largest issuer of private label credit cards in the world, and the State
Bank of India (SBI), the largest Indian bank) filed a case against an Australian
entity on cybersquatting. Domain Active Pty Limited which was incorporated in
Australia had registered a domain name www.sbicards.com. The administrative
panel held that domain name registered by the Australian entity was in bad faith
and it could have attracted attention from the public because of its affiliation to
SBI Cards products and services.

In Bennett Coleman & Co Ltd. v. Steven S Lalwani and Bennett Coleman & Co
Ltd. v. Long Distance Telephone Company (Cases No D2000-0014 and 20000015, WIPO), the arbitration panel gave a decision in favour of the plaintiff. In this
to the respondent had registered domain names www.theeconomictimes.com
and the www.timesofindia.com with network solutions of the United States.
These two names are similar to the names of the Plaintiffs websites
www.economictimes.com and www.timesoftimes.com. Another important fact
was that the respondents websites using the domain names in contention
redirect the users to a different website www.indiaheadlines.com which provided
India related news.

In 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 Plaintiffs 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.
Passing off action is where the defendant is restrained from using the name of the
complainant to pass off the goods or services to the public as that of the

complainant. It is an action to preserve the goodwill of the complainant and also

to safeguard the public. In India cybersquatting cases are decided through the
principle of Passing off. India does not have a law for prohibition of
cybersquatting. Therefore, courts interpret the principle of Passing off with regard
to domain names.

Conclusion
Looking at the current situation prevailing in the world, it is certain that
cybersquatting is a menace. It is a menace which has no boundaries. In my
opinion, it is similar to terrorism. The only difference is that in the latter human
life is affected. Cybersquatters have robbed businesses of their fortune. Looking
from the Indian perspective cybersquatting has been prevalent since internet
came to the subcontinent. The courts in India have decided many cases related to
cybersquatting. It is the imperitive for the parliament to enact a law which would
deal with this menace. As of now there is no such law which prohibits
cybersquatting like that of the United States.
Urgent need for definite laws
There is a urgent need for the strict laws in this field, so that these squatters could
be punished and these crimes could be avoided in future. The new domain name
dispute law should be intended to give trademark and service mark owners legal
remedies against defendants who obtain domain names in bad faith that are
identical or confusingly similar to a trademark. And the plaintiff may elect
statutory damages and has discretion to award in damages for bad faith
registration. It should act as an important weapon for trademark holders in
protecting their intellectual property in the online world.
Cybersquatting has opened the eyes of governments across the world and has
prompted them to look into this phenomenon in a serious manner.

BIBLIOGRAPHY:

Law relating to patent, trademark, copyright, design and geographical

indications- B. L. Wadehra, Universal Law Publishing Co. Pvt. Ltd.
Intellectual Property Law in India- P.S. Narayan, Gogia Law Agency, Hyderabad.
Law of Intellectual Property- S.R. Myneni, Asia Law House, Hyderabad.
Protecting Intellectual Property in the Internet Age- Karnika Seth (Cyber
Lawyer), Seth Associates.
Regulating Intellectual Property Rights on the Internet- Aashit Shah,
Government Law College Law Review, 1999-2000.
Reinventing a sensible view of trademark law in the information age- Melinda
S. Giftos.
Cybersquatting is a big business in India- www.indiaforensic.com
www.iprsonline.org
www.wikipedia.com