Cybersquatting and Domain Name Disputes Under the Trademark Law

Bhavna Singh, LL.M. (IPR), II Year NALSAR University of Law, Hyderabad

Table of Contents Pg Table of Cases Introduction Chapter 1 Fundamentals of Domain Name Chapter 2 - What is Cybersquatting? Chapter 3 Cybersquatting and Domain Names under the Trademark Law Chapter 4 - ICANN dispute resolution policy Chapter 5 Conclusion Bibliography ii iii 1 8 13 22 30 v

Table of Cases AT&T Knowledge Venture v. Rnetworld Bennett Coleman & Co Ltd. v. Long Distance Telephone Company Bennett Coleman & Co Ltd. v. Steven S Lalwani Brookfield Communications, Inc. v. West Coast Entertainment Corp Card service International Inc. v. McGee Dr. Reddys Laboratories Limited v. Manu Kosuri Harrods Ltd. v. UK Network Services Ltd Hasbro, Inc. v. Clue Computing Inc Intel Corporation v. Anil Handa Intermatic v. Toeppen Manish Vij v. Indra Chugh Marks & Spencer v. One-in-a-Million Maruti Udyog v. Maruti InfoTech Panavision v. Toeppen Prince Plc v. Prince Sportswear Group Inc Rediff Communication v. Cyberbooth Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd Satyam Infoway v. Sifynet Solutions Satyam Infoway v. Sifynet Solutions, AIR 2004 SC 3540 SBI Cards and Payment Services Private Ltd v. Domain Active Pty Ltd Shell Oil Co. v. Commercial Petroleum Inc., 928 F.2d. 104, 107 (4th Cir. 1991) Sportys Farm, LLC v. Sportsmans Market, Inc Tata Sons Ltd v. Manu Kosuri Titan Industries Ltd. v. Prashanth Koorapati Virtual Works, Inc. v. Volkswagen of America, Inc Yahoo Inc. v. Akash Arora

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Introduction Research Objective: The theme of the paper is Cybersquatting and Domain Name Disputes under the Trademark Law. Cyber squatting cases have increased tremendously in the past few years after the advent of the internet. 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. The purpose of the paper is to analyze the issues of cybersquatting and domain name disputes and the legal position under the trademark law for protection of trademarks in the cyberspace. Research Methodology: Style of Writing: The research paper is analytical in nature. The research paper deals with the crucial aspects of the cybersquatting and domain name disputes. The legal position of protection of trademarks from abusive domain name registration and infringement in various jurisdictions and dispute resolution mechanism are discussed by way of case laws in the paper. Sources Primary and Secondary sources of information have been utilized in the writing of this research paper.

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Mode of Citation:A uniform mode of citation has been followed throughout the paper. Articles: - [Author], [Article], [Journal], [Volume number], [Year of publication], [Page number]. Books: - [Author], [Book], [Edition and Year of publication], [Publisher], [Place of publication], [Page number]. Cases: - As per the citation method followed in the books reporting cases. Websites: - [Title of the webpage], [Website address], [Date on which webpage was accessed]. Research Scheme: The research paper has been written in the form of chapters starting with introduction part and summary of the conclusion will follow after entire discussion.

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Chapter 1 Fundamentals of Domain Name Trade marks are signs, distinguishing the products of one marketer from similar products of other marketers. They are badges indicating the origin of the marked products and symbols of the goodwill that trade mark owners possess. Society needs trade marks because they function as communicators. They enable consumers to distinguish between products and allow marketers to offer products of diverse qualities at diverse prices. Without trade marks the market economy based on choice would break down into a number of single product markets. For each type of product there would be only one the lowest marketable quality, at one the lowest possible-price. For the market to work efficiently, though, the information carried by trade marks must be trustworthy. George Akerlof has examined the collapse of markets where consumers do not trust the information conveyed by marketers.1 Trade marks also need to be distinctive in order to function as communicators. The closer they are to the marked product the less distinctive they are and, as a result, less appropriate to function as distinguishing signs for that product. A trade mark, like any other sign, has to signify something else rather than itself in order to function as a trade mark.2 The use of a trademark benefits the merchant or manufacturer of a product as well as consuming public. For the merchant or manufacturer, a trademark serves as an advertising tool, facilitating repeat sales, and the successful marketing of new products. 3 Individual consumers rely on trademarks to distinguish among competing products and to represent a certain level of quality that they have come to expect when purchasing products or services with which a particular mark is used.4 As with other forms of intellectual property, trademark constitutes property rights conferring upon the proprietor, the exclusive right to certain forms of use of the mark. 5
1

G. Akerlof, The Market for Lemons: Quality Uncertainty and the Market Mechanism, (1970) 84/3 Quarterly Journal of Economics, p. 488 2 Spyros M. Maniatis, Trade Mark Law and Domain Names: Back to Basics, EIPR 2002, 24(8), 397-408 3 Shell Oil Co. v. Commercial Petroleum Inc., 928 F.2d. 104, 107 (4th Cir. 1991) 4 Michael E. Epstein, Intellectual Property, 5th ed., 1st Indian Rep. 2008, 7.01[C] 5 Ian J.Llyod, Information Technology Law, 5th ed., 2008, p. 427

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The traditional aim of trademark law is was to protect against consumer deception in the market place through the protection of the trade marks and badges of origin. Gradually, property rights on the goodwill conveyed by the trade marks and, more recently on trademarks as such have been recognized.6 With the developments in information technology, the business and trade have also become technology oriented and have expanded their market by promoting themselves through new technical advancement. The significance of the internet has augmented with the online business transactions in trade and therefore, the trademarks are playing a vital role in cyberspace for the business. Therefore, it is required for a business to protect its trademarks and goodwill so as to retain customers and increase marketability online. What are domain names? An Internet domain name is a string of typographic characters used to describe the location of a specific location online. Formally known as the Uniform Resource Locator or URL, it is often considered to be the address of a certain Web site. Obtaining an Internet domain name is a vital step for small businesses hoping to establish a presence on the Internet.7 A domain name is, simply, the alphanumeric equivalent of an Internet Protocol ("IP") number. The primary function of the DNS is to link or map these difficult-to-remember IP numbers to their equivalent domain names, thus making the internet more user-friendly; for example, www.soton.ac.uk/~library 8 is easier to remember than 152.78.128.149. The IP number and the equivalent mapped domain name both identify each computer site connected to the internet; no two organisations can have exactly the same domain name.10

6 7

S. M. Maniatis, Trade Mark Rights: A Justification Based on Property, [2002] I.P.Q. 123 http://definitions.uslegal.com/i/internet-domain-names/, accessed on August 28, 2009. 8 location of the University of Southampton Library website 9 The IP number for the University of Southampton Library website. 10 Caroline Wilson, Internationalized Domain Name Problems and Opportunities C.T.L.R. 2004, 10(7), 174-181

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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.11 Internationalized Domain Names, or IDNs, are web addresses in your own language. Many efforts are underway in the Internet community to make domain names available in character sets other than ASCII. These internationalized domain name (IDN) efforts were the subject of a 25 September 2000 resolution by the ICANN Board of Directors, in which it recognized that it is important that the Internet evolve to be more accessible to those who do not use the ASCII character set, but stressed that the internationalization of the Internet's domain name system must be accomplished through standards that are open, non-proprietary, and fully compatible with the Internets existing end-to-end model and that preserve globally unique naming in a universally resolvable public name space.12 A typical domain name consists of several parts. As an example, consider an auto parts business with the domain www.spareparts.com. The letters www. before the domain name mean that what follows describes the location of a site on the World Wide Web. The last two or three letters of a domain name or URL are known as its top-level domain. The top-level domain for the sample used earlier, www.spareparts.com is .com. Some of the most common top-level domains include .com, which usually indicates a business or commercial site; .org, which generally describes a nonprofit, charity, or cultural organization site; .gov, which indicates a governmental site; and .net, which is most often used by network-related businesses. Other common top-level domains are country codes, like .us for United States and .au for Australia, etc. Small businesses can put as many sub-domains as needed in front of their domain names. For example, the customer service
11 12

http://www.icann.org/en/general/glossary.htm, accessed on August 19, 2009. Ibid.

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department of the aforementioned auto parts business might be designated as www.service.spareparts.com13. Top Level Domains (TLDs) are the names at the top of the DNS naming hierarchy. They appear in domain names as the string of letters following the last (rightmost) ., such as net in www.example.net. The administrator for a TLD controls what second-level names are recognized in that TLD. The administrators of the root domain or root zone control what TLDs are recognized by the DNS. Commonly used TLDs include .com, .net, .edu, .jp, .de, etc. 14 There are mainly two types of TLDs: a) Generic Top Level Domain gTLD Most TLDs with three or more characters are referred to as generic TLDs, or gTLDs. They can be subdivided into two types, sponsored TLDs (sTLDs) and unsponsored TLDs (uTLDs). 15 In the 1980s, seven gTLDs (.com, .edu, .gov, .int, .mil, .net, and .org) were created. Domain names may be registered in three of these (.com, .net, and .org) without restriction; the other four have limited purposes. Over the next twelve years, various discussions occurred concerning additional gTLDs, leading to the selection in November 2000 of seven new TLDs for introduction. These were introduced in 2001 and 2002. Four of the new TLDs (.biz, .info, .name, and .pro) are unsponsored. The other three new TLDs (.aero, .coop, and .museum) are sponsored.16

Generally speaking, an unsponsored TLD operates under policies established by the global Internet community directly through the ICANN process, while a sponsored TLD
13 14

http://definitions.uslegal.com/i/internet-domain-names/, Supra n. 4 http://www.icann.org/en/general/glossary.htm, accessed on September 15, 2009. 15 Ibid. 16 Ibid.

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is a specialized TLD that has a sponsor representing the narrower community that is most affected by the TLD. The sponsor thus carries out delegated policy-formulation responsibilities over many matters concerning the TLD.17 A Sponsor is an organization to which is delegated some defined ongoing policyformulation authority regarding the manner in which a particular sponsored TLD is operated. The sponsored TLD has a Charter, which defines the purpose for which the sponsored TLD has been created and will be operated. The Sponsor is responsible for developing policies on the delegated topics so that the TLD is operated for the benefit of a defined group of stakeholders, known as the Sponsored TLD Community, that are most directly interested in the operation of the TLD. The Sponsor also is responsible for selecting the registry operator and to varying degrees for establishing the roles played by registrars and their relationship with the registry operator. The Sponsor must exercise its delegated authority according to fairness standards and in a manner that is representative of the Sponsored TLD Community.18 b) Country Code Top Level Domain - CCTLD Two letter domains, such as .uk (United Kingdom), .de (Germany) and .jp (Japan) (for example), are called country code top level domains (ccTLDs) and correspond to a country, territory, or other geographic location. The rules and policies for registering domain names in the ccTLDs vary significantly and ccTLD registries limit use of the ccTLD to citizens of the corresponding country. 19 Some ICANN-accredited registrars provide registration services in the ccTLDs in addition to registering names in .biz, .com, .info, .name, .net and .org, however, ICANN does not specifically accredit registrars to provide ccTLD registration services. 20 Therefore, we can say that domain names are like addresses of websites on the internet. Net surfers and users find their desired website by way of domain names on the internet. These domain names are based on nature and purpose of the website or organization in
17 18

Supra n. 16. Ibid. 19 Ibid. 20 Ibid.

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whose name the domain name is created, e.g. a commercial business, non-profit organization, educational institution etc. or, they are based on geographical location of such the domain name user. Disputes over rights to domain names, which serve a source- identifying function in cyberspace, arise at the heart of this intersection between international trademark law and the Internet. In an effort to reconcile the unique complexities presented by domain name disputes, a host of vehicles have developed by which aggrieved parties may assert their rights. With a few notable exceptions, these remedies may be obtained in one of two forums-traditional litigation or private arbitration under the Uniform Domain Name Dispute Resolution Policy (UDRP) promulgated by the Internet Corporation for Assigned Names and Numbers (ICANN), the nonprofit organization that manages the DNS.21 Now the question comes to mind as to why domain names are of so much importance in business and trade. The Honble Supreme Court referred to this issue of importance of domain names in Sataym Infoway v. Siffynet Solutions22 as follows: The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet has developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site. In the commercial field, each domain name owner provides information/services which are associated with such domain name. Thus a domain name may pertain to provision of services within the meaning of Section 2(z). A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online Internet location. Consequently a domain name as an address must, of necessity, be
21

Lisa M. Sharrock, The Future of Domain Name Dispute Resolution: Crafting Practical International Legal Solutions from within the UDRP Framework, Duke Law Journal, Vol. 51, No. 2 (Nov., 2001), pp. 817-849 22 AIR 2004 SC 3540

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peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical. 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: 1. Promotion of business and building up of customer base online and offline by way of advertising on the web. 2. Establishment of the credibility of the website and the business on the internet. 3. Easy access to customers and prospective customers. Despite the financial value of domain names, registration of a sign as a domain name does not imply that the holder of the domain name is granted an official right to use the sign. Contrary to popular, non-legal, folklore because entities that reserve domain names are registrars, not adjudicatory bodies by reserving a domain name a user does not get any official right to use that domain name free from legal claims.23 Nevertheless, use of the term registration for domain names often leads to confusion with the concept of registration, as in trade mark registration, which does confer exclusive rights to use the protected sign as a trade mark.24

Chapter 2 - Cybersquatting and Domain Name Disputes Registration of domain name is an easy and inexpensive process based on first come, first served basis. Because of such policy of domain name registration, there are always a large number of domain names which are actually or potentially associated with some
23 24

J. T. McCarthy, McCarthy on Trademarks and Unfair Competition. 4th ed. 2001, 25:73.3 Spyros M. Maniatis, Trade Mark Law and Domain Names: Back to Basics, EIPR 2002, 24(8), 397-408

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or the other trademarks. Cybersquatting The system of assigning the domain name was on first-come-first registered basis. It lead to the reserving of many well known trade names, brand names, company names, etc. by individuals/corporations other than the ones with a genuine interest in the domain name, with a view to trafficking/doing business on the said domain name or offering the domain name to the genuine buyer. Obtaining fraudulent registration with intent to sell the domain name to the lawful owner of the name at premium is called Cybersquatting. The Cyber squatters quickly sell the domain names to other non-related entities, thereby enabling passing off25 and diluting of famous trademark or trade names.26 Cybersquatting can be defined as registration, use or trafficking in a domain name with mala fide intent to make profit from the goodwill of the trademark belonging to the owner of such trademark. The cyber squatter then offers to sell the domain name to the owner of the trademark in name of which domain name is so registered for the purpose of getting a price higher than the usual price of registration of such domain name. This practice of abusive registration originated with growth of internet and e-commerce and when the business entities were not so much aware of making online presence for business and trade. Many companies had their trademarks as domain names registered in name of third parties when they realized that they are required to register their trademarks as domain names for their business.

Often, cyber squatters take such names and offer them for sale to the person or company who should rightfully have the domain under trademark laws. They usually ask for a high price, much greater than the actual cost of the domain when it was available. Some cybersquatters put derogatory remarks on the registered domain about the person or
25

Passing off: A form of unfair trade practices in which one party seeks to profit from other partys reputation. 26 Manish Vij v. Indra Chugh, AIR 2002 Delhi 243

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company it is meant to represent in an effort to encourage the subject in question to buy the domain.27 As the commercial function of the Internet has grown, more legal disputes have arisen because many private citizens and companies have rushed to get a spot in the cyber world in order to exploit the potential of on-line commerce.28 The existence of domains without specific requirements for the registration brought a policy of first come, first served. This has created many disputes with trade mark owners because, since the 1990s, many speculators have started to register domain names in order to resell them for a much higher price to trade mark owners and new businesses. Problems arose with trade mark owners because of their entitlements to IP rights make them feel ripped off by this new practice called cybersquatting29. Thus, to date, anyone who wishes to register a domain for the first time which is trade marked can do so; whatever problems may arise will have to be faced later.30 The reason as to why there is such increase in such incidences is the growing importance of domain names in this e-commerce trend. Domain names hold an elevated level of importance for the reason that there can be only one user of a domain name unlike two or more users of a same or similar trademark under the trademark law, for various classes of goods/services or under honest concurrent use. 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. Under the trademark law a trademark can be used by one or more persons for various
27 28

http://knowledgerush.com/kr/encyclopedia/Cybersquatting/, accesses on August 28, 2009 James Marcovitz, Ronald@McDonalds.com -Owning a Bitchin Corporate Trademark as an Internet Address-Infringement?, 17 (1995) Cardozo L. Rev. 85, p. 85 29 G. Kaufmann-Kohler and T. Schultz, Online Dispute Resolution: Challenges for Contemporary Justice, 2004 ed., p.36 30 Juan Pablo Cortes Dieguez, The UDRP Reviewed: The Need For A Uniform Policy, C.T.L.R. 2008, 14(6), 133-139

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classes or goods or services, if such use does not amount to infringement or causing confusion or dilution. But such kind of provision is not applicable in case of domain names. Only one user is allowed to use a particular domain name and any other application for the same domain name is 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 use of the goodwill of a trademark by an infringer in the domain name to divert the customers or 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.

Chapter 3 Cybersquatting and Domain Names under the Law of Trademarks Cybersquatting in the United States

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In USA, cybersquatting has turned into a nuisance over all these years. The first case on came to picture in 1994. The first cybersquatting case arose in 1994 in the United States and cases have increased in number since then. One of the leading cases in USA is of Dennis Toeppen, who registered most of the well known trademarks in USA as domain names. Dennis Toeppen registered most of the well known trademarks and was sued by the trademark owners. The two leading cases involving Dennis Toeppen are Intermatic v. Toeppen31 and Panavision v Toeppen32. In case of Intermatic v. Toeppen33, plaintiff owned the trademark Intermatic and had sued Dennis Toeppen for trademark dilution. The court held Dennis Toeppen liable for trademark dilution for the reason that registration of domain name intermatic.com by the defendant had lessened the capacity of the plaintiff to indentify and distinguish its goods and services on the internet. In case of Panavision v Toeppen34, the court gave the judgment in favour of the plaintiff. In this case Panavision had sued Toeppen against the registration of the domain names panavision.com and panaflex.com. In this case, court was held that offer to sell a domain name similar to a trademark to the owner of such trademark, amounted to commercial use. In Virtual Works, Inc. v. Volkswagen of America, Inc.35 (on dispute over the domain name www.vw.net:), the Fourth Circuit Court of Appeals stated that mere resemblance of a domain name to a famous trademark does not prove bad faith. There must be circumstantial and direct evidence establishing the bad faith intent of the cybersquatter.

31 32

947 F. Supp.1227, 1230 (N.D. Ill. 1996) 141 F.3d 1316 (1998) 33 Supra n. 31 34 Supra n. 31 35 238 F.3d 262

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In case of Card service International Inc. v. McGee 36, the Court was of the opinion that a domain name is more than a mere internet address. It also identifies the internet site to those who reach it, much like a persons name identifies a particular person, or, more relevant to trademark disputes, a company's name identifies a specific company. 37 Accordingly, the Court was of the opinion that use of cardservice.com and Card Service on the Caprock by McGee amounted to trademark infringement under the Lanham Act and granted permanent injunction in favor of Card Service International. In case of Brookfield Communications, Inc. v. West Coast Entertainment Corp .38, the Court of Appeals for 9th Circuit granted a preliminary injunction in favor of the plaintiff against the defendant for use of domain namemoviebuff.com. The plaintiff claimed that domain name of the defendant infringed their trademark MovieBuff. The defendant argued that they had used the slogan The Movie Buff's Movie Store as a service mark since 1986, and had registered the moviebuff.com domain name in 1996, and claimed seniority in using the domain name. Court held that the mere registration of the domain name, which was not ready for actual launching until November 1998, did not establish West Coast's seniority. The Court held that defendant would create a likelihood of consumer confusion by using the domain name as well as the term moviebuff as a metatag, and they can be permitted to use the term with a space inserted ("movie buff).39 With increase in instances of cybersquatting, it was required to provide some legal remedy against cybersquatting. This led to the enactment of the Anti-Cybersquatting Consumer Protection Act 1999 in USA.

The Anti-Cybersquatting Consumer Protection Act (ACPA), enacted on November 29, 1999, amends the Lanham Act by adding a new Section 43(d). The new section provides
36 37

50 F. Supp. 737 (E.D. Va. 1997) Ibid. 38 174 F.3d 1036 (9th Cir. 1999) 39 Ibid.

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trademark owners with a civil remedy against cybersquatting - the registering of others trademarks as domain names and profiting from the sale of those domain names or traffic through the site.40 The ACPA renders one liable to the owner of a trademark who, with a bad faith intent to profit from that mark, registers, traffics in or uses a domain name that is either identical or confusingly similar to a distinctive mark or is identical, confusingly similar or dilutive of a famous mark.41 In case of Sportys Farm, LLC vs. Sportsmans Market, Inc .,42 decided under the Anti-Cybersquatting Consumer Protection Act (ACPA), Sportsman's Market, a catalog company used the logo and trademark Sportys to identify its catalogs. Omega Engineering, also a catalog company which was selling scientific instruments, registered the domain name sportys.com. Omegas owner was a pilot and was familiar with Sportsmans catalogs and the Sportys trademark. After nine months from the registration of the domain name, Omega transferred the domain name to a subsidiary named Sportys Farm. The subsidiary was created by Omega for the purpose of growing and selling Christmas trees. The court observed that Omega intended to enter into direct competition with Sportsmans in the aviation consumer market and their primary aim was to prevent Sportsman's from using the domain name sportys.com. The court found that Omega had created the subsidiary for the purpose of finding use of the domain name so registered for commercial purpose and to prevent the plaintiff from using the domain name. But for the reason that the domain name was registered prior to ACPA, the court refused to grant damages to the plaintiff. U.S. courts have not been willing to invent a new type of dilution based on use of a trade mark as a domain name. The general rule is that the holder of a famous mark is not automatically entitled to use that mark as its domain name because trade mark law does not support such a monopoly. Therefore an internet user who is the first to register a sign as a domain name and has a bona fide legitimate reason for using the sign should be able to make use of it as a domain name, irrespective of whether the same sign constitutes a
40 41

http://legal.web.aol.com/resources/legislation/cybersquat.html, accessed on October 6, 2009 http://www.internetlibrary.com/publications/anticybsquattSamson9-05_art.cfm, accessed on October 6, 2009 42 202 F.3d 489 (2d Cir. 2000)

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trade mark, provided that such use lies outside the boundaries of the trade mark right. The request for a per se dilution finding has been rejected. A case involving Hasbro's famous Clue trade mark is a good example of this approach emphasizing that the sweeping consequences of a finding of per se dilution would disregard rigorous trade mark enforcement requirements.43 Similarly, in Playboy Enterprises Inc. v. Netscape Communications Corp.,44 a case involving non-Playboy sponsored adult banner advertisement appearing whenever an internet user entered playboy or playmate as a search term, Playboy failed to show a likelihood of success on the merits of its trade mark action and to establish that it would suffer irreparable harm in the absence of an interlocutory injunction.45 Mahindra & Mahindra (M&M) has recently won a cybersquatting case at the World Intellectual Property Organization (WIPO) against a US-based person named Zach Segal, who was using the name Mahindra in an Internet domain. The domain name Segal was using was mahindraforum.com. But the Indian conglomerate contended that the name is confusingly similar to its Mahindra trade mark and the person had no rights or legitimate interests46. Cybersquatting in India There has been lot of instances of cybersquatting in the past few years in India. The courts always deal with matters related to domain name dispute and cybersquatting. In India one of the earliest judgments on cybersquatting was from the Bombay High Court in case of Rediff Communication v. Cyberbooth47. In this case the court was of the opinion that the value and importance of a domain name is like a corporate asset of a company. In this case the defendant had registered the domain name radiff.com which was similar to rediff.com. The Court was of the opinion that internet domain names are of importance and can be a valuable corporate asset and such domain name is more than an
43 44

Hasbro, Inc. v. Clue Computing Inc. 52 U.S.P.Q. 2d 1402 (D. Mass. 1999) 52 U.S.P.Q. 2d 1162 (C.D. Cal. 1999) 45 Spyros M. Maniatis, Trade Mark Law and Domain Names: Back to Basics, EIPR 2002, 24(8), 397-408 46 http://news.ciol.com/News/News-Reports/Mahindra-amp-Mahindra-wins-cybersquatting-case-inUS/19809123809/0/, accessed on October 6, 2009. 47 AIR 2000 Bom 27

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Internet address and is entitled to protection equal to a trade mark. 48 The court gave the decision in favor of the plaintiff. Another one of the earliest cases on cybersquatting was Yahoo Inc. v. Akash Arora.49 In this case, the plaintiff filed a suit against the defendants seeking for a decree of permanent injunction restraining the defendants from operating any business and/or selling, offering for sale, advertising and in any manner dealing in any services or goods on the Internet or otherwise under the trademark/domain name Yahooindia.Com or any other mark/domain name which is identical with or deceptively similar to the plaintiff's trademark Yahoo! The defendant argued that the trademark/domain name Yahoo! of the plaintiff is not registered in India and therefore, there cannot be an action for infringement of the registered mark. It was further argued that there could not be any action of passing off as the services rendered both by the plaintiff and the defendants cannot be said to be goods within the meaning of the Indian Trade Marks, 1958. The defendant also contended that the word Yahoo! is a general dictionary word and is not vented and, therefore, it could not have acquired any distinctiveness and since the defendants have been using disclaimer, there could be no chance of any deception and thus, no action of passing of is maintainable against the defendants.50 The court granted the injunction and it was held that the service rendered on internet has also come to be recognized and accepted globally and the provider of the same could be protected from passing off.

In India the issues of cybersquatting are mainly governed by principles of passing off. In India there are no laws or statutes for prevention of cybersquatting. For this reason principle of passing off is mainly applied by the courts in deciding cases of cybersquatting.
48 49

Ibid 78 (1999) DLT 285 50 Ibid.

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Titan Industries Ltd. v. Prashanth Koorapati, the Delhi High Court granted an exparte ad-interim injunction restraining the defendants for using the name Tanishq on the Internet or otherwise and from committing any other act as is likely to lead to passing off of the business and goods of the defendants as the business and goods of the plaintiff. In case of Tata Sons Ltd v. Manu Kosuri,51 the defendant misappropriated the plaintiff's trademark TATA. The defendant registered it as a part of a series of domain names by incorporating the well-known and famous trademark TATA. The Court after referring to Rediff Communication v. Cyberbooth52 and Yahoo Inc. v. Akash Arora,53 held that internet domain names were important and was valuable corporate asset and it was not an internet address hence was entitled for protection equivalent to a trade mark.54 In case of Dr. Reddys Laboratories Limited v. Manu Kosuri 55, the plaintiff Dr. Reddys Laboratories filed an application for restraining the defendants who were in business of registering domain names and offering them for sale to the owners, from using the trade mark/domain name drreddyslab.com. the defendant had registered the domain namedrreddyslab.com. The court took the view that domain names hold an important position in e-commerce and held that the defendants were liable under passing off. The court granted permanent injunction in favour of the plaintiff, preventing the defendant from using the trade mark/domain name drreddyslab.com or any other mark/domain name which is identical with or deceptively similar to the plaintiffs trade mark.

The Honble Supreme Court in Satyam Infoway v. Sifynet Solutions56 was of the opinion that as far as India is concerned, there is no legislation which explicitly refers to
51 52

90(2001)DLT659; 2001 PTC 432 AIR 2000 Bom 27 53 78 (1999) DLT 285 54 Supra n. 47 55 2001(58)DRJ241 56 AIR 2004 SC 3540

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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 are not to be legally protected to the extent possible under the laws relating to passing off.57 In SBI Cards and Payment Services Private Ltd v Domain Active Pty Ltd, 58 SBI Card and Payment Services Private Limited, the credit card firm of the State Bank of India (SBI), won the case of cybersquatting against Domain Active Pty Limited, an Australian company. The judgment was delivered by the administrative tribunal constituted by the World Intellectual Property Organization (WIPO), Geneva. In this case the plaintiff was a joint venture between GE Capital Services and the State Bank of India. The plaintiff offered a range of credit cards and also had a number of city affinity cards. The defendant registered a website called www.sbicards.com. The plaintiff filed a complaint at the World Intellectual Property Organization, Geneva. The WIPO Administrative Panel found that the defendants website could have attracted attention from the public because of its affiliation with plaintiffs products and services. There was also the intent of creating confusion with the product and services and the trademark of the plaintiff as to the source and affiliation of the website of the defendant. Therefore, the panel held that the defendant was liable registration of the domain name in bad faith. In case of Maruti Udyog v. Maruti InfoTech ,59 complaint was filed with WIPO arbitration and mediation centre over a dispute relating to the domain name www.maruti.org. Maruti Udyog, the well known car manufacturer, owner of the trade mark Maruti proved that the trademark was associated with its products and a person of average intelligence and imperfect recollection would be led to believe that the domain name was associated with them. The respondent intended to sell the domain name to the
57 58

Ibid. 2005 (31) PTC 455 59 Case No. D2000-0520

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complainant for monetary consideration. The panel therefore held that respondent intended to make profit from the registration of the trademark of the complainant as a domain name and was ordered to transfer the same to the complainant. . In case of Intel Corporation v. Anil Handa 60, Intel Corporation filed an application seeking an interim injunction against the defendants to prevent them from using the word Intel as a part of their corporate name. The defendants are not using the word Intel as their trademark or trade name. Intel Engineering Pvt. Limited and Intel Travels Pvt. Limited were using the word Intel as a part of its corporate name. The defendant argued that they were carrying on their business for a long time in India and the plaintiff even after becoming aware of their existence, never complained to their corporate name before. Further the business of the defendants was entirely different than that of the plaintiff and therefore, there is no likelihood of confusion. Injunction was refused to the plaintiff Intel Corporation on the ground that the defendants were using the trademark Intel for over 15 years. The court observed when existence of a prima facie case is established, the court has to consider other relevant factors, namely, balance of convenience and irreparable injury. While considering the latter, conduct of the parties becomes relevant. If a party has been acting in a particular manner for a long time and has allowed the other to do likewise, the same would have to be weighed.61 Cybersquatting in Common Law In Harrods Ltd. v UK Network Services Ltd.,62 the defendants registered the domain name harrods.com with the intent to sell the same to the plaintiff Harrods. The plaintiff sued the defendants for passing off, trade mark infringement and conspiracy. The Court observed that the defendants made an attempt to make an illegitimate use of the trademarks of the original owners by referring to various other trademarks which were registered by the defendants as domain names and granted injunction in favour of the plaintiff.
60 61

2006 (33) PTC 553 Ibid. 62 Unreported 1996 (Ch D)

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In Marks & Spencer vs. One-in-a-Million 63, the defendant had registered domain names of the following companies i) British Telecommunications plc, ii) Virgin Enterprises Plc, iii) J Sainsbury Plc, iv) Marks and Spencer Plc, and v) Ladbroke Group Plc. There were five cases for passing off and trademark infringement which was heard by the court collectively in this matter. The court was of the opinion that defendants activities showed a deliberate practice of registering domain names which are resemble the name well known trademarks and there was also intention to deceive the public by choosing such domain name. The history of the Defendants activities shows a deliberate practice followed over a substantial period of time of registering domain names which are chosen to resemble the names and marks of other people and are plainly intended to deceive. The threat of passing off and trade mark infringement, and the likelihood of confusion arising from the infringement of the mark are made out beyond argument in this case64 The High Court granted injunction for all the five cases. The defendants appealed against the order but the Court of Appeals affirmed the original summary order of the High Court and dismissed the appeal.

On issue of passing off, the lordship was of the opinion that courts have the jurisdiction to grant relief by way of injunction in three types of cases. First, where there is passing off established or it is threatened. Secondly, where the defendant is a joint tortfeasor with another in passing off either actual or threatened and thirdly, where the defendant has

63 64

1998 FSR 265 Ibid.

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equipped himself with or intends to equip another with an instrument of fraud. This third type is probably mere quia timet action.65 Similarity in the name used will intrinsically lead to passing off. In case of names, which do not inherently lead to passing off, a lot of factors are required to be considered, which include similarity between the names at issue, nature of trade, intent of the defendant and the circumstances of the case. Injunction is granted by the courts when the name is adopted with intent to cause passing off, with the intent to use under a fraudulent circumstances.66 In case of Prince Plc v. Prince Sportswear Group Inc.,67 both the parties had legitimate interest in use the domain name in issue. The plaintiff, a computer services firm, based in U.K. had registered the domain name prince.com in 1995. When the defendant tried to register the same domain name in 1997, they found that it was registered by the plaintiff. In 1995 the plaintiff registered the domain name prince.com with Network Solutions Inc (InterNIC). The defendant sent a letter to the plaintiff, through their attorneys asking the plaintiff to assign the domain name to the plaintiff and that use and registration of PRINCE as a domain name by the plaintiff constituted infringement and dilution of defendants rights in the trademark as well as unfair competition under the Lanham Act. They asked the plaintiff to assign domain name in favour of the defendant to avoid litigation. Plaintiff filed a writ application seeking declarations that the registration and use of the domain name prince.com by the plaintiff does not infringe the defendants UK trademark and that the threat to initiate proceedings for infringement of the trademark were unjustifiable, seeking an injunction against the defendant from further threats. But the plaintiff did not succeed completely in their action. An inquiry as to damages was refused to be granted by the judge in the absence of evidence of damage. Secondly, the
65 66

[1998] FSR 265. Ibid. 67 [1998] FSR 21

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lordship refused the declaration that the plaintiffs registration and use of its domain name does not infringe the defendants UK trademark. The burden of proof was on the plaintiff for a declaration of non-infringement. But an injunction was issued against the defendants, preventing them from continuing with the threats of infringement proceedings against the plaintiff.

Chapter 4 - ICANN dispute resolution policy and WIPO There is a distinction between a trademark and a domain name which is not relevant to the nature of the right of an owner in connection with the domain name, but is material to the scope of the protection available to the right. The distinction lies in the manner in 21 | P a g e

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 world wide exclusivity but also that national laws might be inadequate to effectively protect a domain name. The lacuna necessitated international regulation of the domain name system (DNS). This international regulation was effected through WIPO and ICANN. India is one of the 171 states of the world which are members of WIPO. WIPO was established as a vehicle for promoting the protection, dissemination and use of intellectual property throughout the world. Services provided by WIPO to its member states include the provision of a forum for the development and implementation of intellectual property policies internationally through treaties and other policy instruments.68 One of the most remarkable events in the past, particularly for solving international legal problems originating through the nature of the borderless internet on the one hand and intellectual property rights of some users on the other hand, was the foundation of the ICANN (Internet Corporation for Assigned Names and Numbers) in 1998 as a worldwide internet administration and the introduction of UDRP (Uniform Domain Name Dispute Resolution Policy) in 1999 for effective and cost saving international domain name disputes. The statistical data from ICANN show that UDRP is commonly used and has been a success story in regard to the numbers of disputes which have been submitted for decision by UDRP panels.69 On December 1, 1999 ICANN implemented UDRP (Uniform Domain Name Dispute Resolution Policy) on the recommendation of WIPO. UDRP was designed to provide a fast and inexpensive procedure used by trade mark holders around the world against those who register internet domain names in bad faith and without rights or other rightful interests. As trade mark litigation is an expensive, slow and, ultimately, a process with
68

Satyam Infoway v. Sifynet Solutions, AIR 2004 SC 3540 Anri Engel, International Domain Name Disputes: Rules and Practice of the UDRP, E.I.P.R. 2003, 25(8), 351-365
69

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rigorous standards of proof in regard to local jurisdiction, the UDRP provides a benefit to trade mark owners and domain holders particularly in foreign countries who wish to push their rights to domain names registered in the United States or through accredited registrars in other countries. UDRP is described as an expedited administrative proceeding whereby the holder of trade mark rights initiates a complaint by filing one with an approved dispute resolution provider. The policy has been adopted by all accredited domain name registrars for gTLD and is incorporated into all registration agreements set forth by ICANN. The scope of UDRP is limited and applies only to Cybersquatting and similar abusive forms of domain name registration and also only to domain names registered in the generic top-level domains (.com, .org, .info etc.), which constitute the bulk of the domain names registered worldwide. For so-called country-code top-level domain names (.uk, nl, .de etc.) the UDPR only applies if a country administrator has voluntarily adopted it.70 ICANN has adopted the Uniform Domain Name Dispute Resolution Policy (UDNDRP or UDRP), the policy for resolution of domain name disputes. This policy provides for arbitration of the dispute instead of litigation in respect of domain name disputes. As per this policy, any person (complainant) can bring an action on the grounds that: (a) A domain name is identical or confusingly similar to a trademark or service mark in respect of which the complainant has rights. (b) The domain name owner has no rights or legitimate interests in the domain name, and (c) The domain name has been registered and is being used in bad faith. But the complaint is required to prove all these elements if he wants his action to succeed. If the abusive registration is proved, the domain name registration is cancelled or transferred to the complainant but there are no financial remedies provided to him. Uniform Domain Name Dispute Resolution Policy (UDRP) UDRP is an online system for resolving complaints made by trademark owners about
70

Ibid.

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domain names conflicting with their trademarks. It isn't a court nor is it an arbitration, but the authority that established it in 1999 (ICANN) has the power to order the deletion or transfer of domain names. ICANN requires the domain registrars in .biz, .com, .info, .org, and .net to abide by the results of UDRP proceedings. They must cancel or transfer a domain registration as a UDRP Panel directs. Domain holders agree to this procedure in their domain registration contracts. The UDRP Rules outline the process for filing a complaint (if you are a trademark owner) and for responding to a complaint (if you are the domain name holder). The Policy and the Rules also explain some of the basics of the proceedings, such as how to choose a Provider, how Panels make their decisions, how the parties are notified of the outcome, language to be used in the proceeding, the availability and effect of court proceedings, and the types of remedies available. The dispute resolution Panel is does not apply laws of any particular country, but it is a body of rules which are developed for the purpose of dispute settlement in respect of domain names. The validity of UDRP is not easy to define, because UDRP is not an arbitration policy and it does not have any binding effect except on the register of the domain names. It is incorporated by reference in the agreement of the registrant with ICANN. It is required to include the terms of UDRP in the agreements with the registrants for the purpose of receiving ICANN accreditations. This means that UDRP is a legally qualified specific contract term.

UDRP procedure is a faster, cheaper, and easy alternative to challenging the domain name registration in courts of law as it takes a long time and the complex procedures grant relief to the plaintiff with delay which can result in damage to the business and goodwill of the plaintiff. UDRP does not prohibit any trademark owner or a domain name holder from going to court before or during or after the UDRP proceedings. 24 | P a g e

Complainant/Respondent is required to inform the Panel if they have taken any court action so the Panel can decide as to whether to continue with the proceedings or to postpone it. WIPO Arbitration and Mediation Center Decisions on Domain Names World Intellectual Property Organization is the principal domain name dispute resolution service provider under the UDRP and is accredited by ICANN. WIPO provided qualified panelist, thorough and expeditious administrative procedures, and overall impartiality and credibility. A domain name case filed with WIPO is normally concluded within two months, using on-line procedures, and a minimal fee is charged. Only extra-ordinary cases are heard in person.71 In Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd. 72, the domain names at issue were relojesrolex.com and erolexwatches.com. Complainant was the respondent registered the domain namesrelojesrolex.com and erolexwatches.com. The complainant when came to know this, sent a letter to the respondent on November 1, 1999, demanding it to cease and desist all infringing uses of the Rolex trademark, and consent to the deletion or transfer of the Domain Names to Rolex.73 But the respondent did not respond letter. Instead, shortly thereafter, they registered another domain name incorporating the Rolex trademark, on November 11, 1999. In March 2000, Complainant sent a second letter to respondent, again demanding that it cease and desist all infringing uses of the Rolex trademark, and to consent to the deletion or transfer of the domain names. Complainant filed a complaint and contended that they had the registrations of the trademark Rolex, that trademark registrations were valid and subsisting, and that they served as prima facie evidence of its ownership and the validity of the Rolex mark.

71 72

http://www.wipo.int/amc/en/center/faq/domains.html#7, accessed on October 18, 2009 Case No. D2001-0398 73 Ibid.

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Complainant argued that the respondents domain names were confusingly similar to the complainant's trademark and that the respondents had no rights or legitimate interests in the domain names. Complainant further submitted that respondent registered and was using the domain names in bad faith . The Respondent contended that the domain names were not identical or confusingly similar to the trademark of the complainant and that they had rights to or legitimate interests in the domain names because they were conducting a legitimate, consumer advocacy enterprise of benefit to the general public, and they never demonstrated any ill will or were engaged in unfair competition with complainant. Respondent further argued that any use of the domain names that did not compete with or disparaged the business interests of Complainant was legitimate. But the Panel held that respondents domain names were confusingly similar to Complainants registered trademark; and that respondent had no rights or legitimate interest in the domain names; and held respondent responsible for registering and using the domain names in bad faith. The Panel was of the opinion that the owner of the registered trademark does not have to show likelihood of confusion, as that term is used in trademark infringement jurisprudence, to establish that a domain name incorporating a trademark in its entirety is identical or confusingly similar. The question of identity and confusing similarity is evaluated solely based on a comparison between the complainants trademark and the alphanumeric string constituting the domain name at issue74 In Bennett Coleman & Co Ltd. v. Steven S Lalwani and Bennett Coleman & Co Ltd. v. Long Distance Telephone Company75 (combined), the arbitration panel of WIPO gave the decision in favour of the plaintiff, asking the respondent to transfer the domain name to the plaintiff. In this case, the respondent had registered domain names www.theeconomictimes.com and www.thetimesofindia.com in the United States, which are the trademarks of the plaintiff. These two domain names were similar to the
74 75

Ibid. Case No. D2000-0014 and 2000-0015

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names of the Plaintiffs websites www.economictimes.com and www.timesofindia.com and the respondents websites using the domain names similar to the plaintiff, redirected the users to a different website www.indiaheadlines.com which provided India related news. The WIPO judgment recognized the fact that the complainant had a very substantial reputation in their newspaper titles arising from their daily use in hard copy and electronic publication. In India itself, wrongfully adopting the titles so as to mislead the public as to the source of publications or information services would in all likelihood amount to the tort of passing off. The reputation was the result of actual use and was the crux of the complaint. The panel held that the respondent had no rights or legitimate interest in the domain names and the registration was done in bad faith, in an intentional attempt for commercial gain and to attract internet users 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 them76. In case of AT&T Knowledge Venture v. Rnetworld77, AT&T Corp filed a complaint against Rnetworld for registration of domain name atnt-sbc.com. AT&T Corp. is a leading provider of telecommunication products and services under the brand name AT&T and many of the AT&T marks have also been registered as trademarks and service marks in the United States and other countries around the world.

AT&T Corp. merged with SBC in 2005. Following the merger, AT&T Corp. transferred its trademark rights to the Complainant, AT&T Knowledge Venture II, L.P. (a subsidiary of AT&T) after the merger. After the merger, the following domain names att-sbc.com, attsbc.com and sbc.com were registered by AT&T. The domain name in dispute atnt-sbc.com was registered by respondent. AT&T Corp. sent a letter to Respondent asking them to cease and desist from using the domain name
76

77

Ibid. Case No. D2007-0035

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in future. But the respondent refused to reply, failing which AT&T filed this case against them. Complainant stated that the respondent registered the domain name in bad faith, in an attempt to take advantage of AT&Ts famous trademarks and to profit from the merger of two companies AT&T Corp. and SBC Communications Inc. It was further contended that the domain name atnt-sbc.com was virtually identical and confusingly similar to the domain names used by AT&T to offer products and services to its customers and the respondent had no rights or legitimate interest in the domain name registered by the respondent. The complainant submitted that the registration of the domain name in dispute was an example of merger cybersquatting. The respondent did not reply to the contentions of the complainant. The WIPO Panel found that the domain name in dispute was virtually identical and confusingly similar to Complainants official, legal and world-famous marks and domain names and that Internet users attempting to locate information regarding AT&T would likely be confused into believing that the web page associated with the domain name in dispute, as well those pages that link from the web page are sponsored by or connected with AT&T.78 The Panel further observed that the Respondent was not AT&Ts licensee in any respect, nor was the Respondent authorized to use AT&Ts marks. AT&T had not endorsed, sanctioned, or sponsored Respondents use of its marks. Respondent did not own any registered or common law marks containing the terms AT&T, ATT, ATNT, SBC, or any similar derivation. Respondent had not been commonly known by the contested domain name, nor did Respondent run any enterprise commonly and legitimately known by the contested domain name.79 Therefore, the Panel held that the registration of the domain name atnt-sbc.com by the Respondent was mala fide, with intent to unfairly and illegally exploit that domain name
78 79

Case No. D2007-0035 Ibid.

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to his advantage at the expense of AT&T. The respondent was ordered to transfer the same to the complainant. Recently, Balenciaga is a fashion house founded by Cristobel Balenciaga, a Spanish designer. Christian Dior himself referred to Balenciaga as "the master of us all. Being the complainant in this case, the fashion house submitted a complaint with the WIPO Arbitration and Mediation Center requesting the domain name balenciagahandbags.com to be transferred to them. The company owns many trademark registrations all around the world for "Balenciaga". Therefore it is more than obvious that the disputed domain name is confusingly similar to their company. What makes you wonder about the intentions the respondent had when registering the domain name is the fact that he was involved in other UDRP decisions in which he has been found to have acted in bad faith. Moreover the Panel thought the respondent registered the domain name to divert users seeking information about Balenciaga's products. Therefore, the WIPO Panel concluded that the respondent registered the disputed domain name in bad faith and ordered it to transfer the usage rights to Balenciaga.80

Chapter 5 - Conclusion Cybersquatting is increasingly being viewed as an important issue in the legal setup. Courts have responded by recognizing the rights of trademark owners in cyberspace. The requirement of consumers to get information about the origin and quality of goods and services is fulfilled by a trademark whereas in cyberspace, domain names serve the same purpose. Domain names are similar to trademarks in the cyberspace. Now, when the trademark owner owns the domain name as well, there is no
80

http://www.domainnews.com/en/balenciaga-wins-domain-name-dispute.html, accessed on October 18, 2009

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confusion about the goods/services, but chaos arises when the trademark owner and the domain name registrant are two different parties. The reason behind such an occurrence could be either (a) When one party is misusing the domain name, or (b) When both parties are concurrent users. The trademark law has broadened its scope to encompass domain name issues including cybersquatting. However, the open question is whether the law will eventually give property rights to trademark owners in domain names or the ability to exclude others from using their domain name. If the trademark law is broadened to give extensive rights to trademark owners this can opens a can of worms by assigning them rights which they might not be entitled to. There can be issues of threat of legal proceedings for infringement or reverse domain name hijacking by a trademark owner to other honest concurrent users of a similar trademarks and the domain name associated with such trademarks. In extending the coverage of trademark laws to domain name and cybersquatting areas, there are two major points to consider: a. Domain names are unique globally and were allotted in a first come first serve basis by domain registrars. Traditional economic validation for trademark law rests on the premise that there are indefinite numbers of marks available and there can be more than one owner of a trademark or marks similar to such trademark. However, there are only a limited number of domain names available; and b. Trademark laws are territorial in nature while domain name issues are to be addressed with global impact in mind. This approach to the domain names may seem to promote protection of rights large companies or big businesses who want more rights in every possible variation in their name. The requirement to prove the valid ownership of trademark or connection with domain name or the legitimate interest in the domain name at times can be easily exploited by the big market players. The interests of small business and entrepreneurs can be greatly affected if they are honest users of such domain names and similar trademarks. 30 | P a g e

It is understood that goodwill and reputation of a trademark is required to be protected online and so as the need to protect the consumers from falling in the trap of misrepresentations and frauds on the world web. But at the same time, consideration is to be given to the fact that there can be an honest owner of a domain name related to ones trade and he might not be financially capable of sustaining a trademark infringement battle with a multinational over the domain rights. So, the requirement of the criteria of legitimate interest or right in the domain names is required to be applied carefully so as to ensure that an honest owner is not deprived of his domain name and the right to use the same putting his goodwill and reputation at threat for the convenience of another.

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Bibliography Books: G. Kaufmann-Kohler and T. Schultz, Online Dispute Resolution: Challenges for Contemporary Justice, 2004 ed., The Hague: Kluwer Law International Ian J. Llyod, Information Technology Law 5th ed. 2008, Oxford University Press J. T. McCarthy, McCarthy on Trademarks and Unfair Competition, 4th ed. 2001, West Publishing Michael A. Epstein, Intellectual Property, 5th ed., 1st Indian Rep. 2008, Aspen Publishers Articles: Anri Engel, International Domain Name Disputes: Rules and Practice of the UDRP, E.I.P.R. 2003, 25(8), 351-365 Caroline Wilson, Internationalized Domain Name Problems and Opportunities C.T.L.R. 2004, 10(7), 174-181 G. Akerlof, The Market for Lemons: Quality Uncertainty and the Market Mechanism, (1970) 84/3 Quarterly Journal of Economics James Marcovitz, Ronald@McDonalds.com -Owning a Bitchin Corporate Trademark as an Internet Address--Infringement?, 17 (1995) Cardozo L. Rev. 85 Juan Pablo Cortes Dieguez, The UDRP Reviewed: The Need For A Uniform Policy, C.T.L.R. 2008, 14(6), 133-139 Lisa M. Sharrock, The Future of Domain Name Dispute Resolution: Crafting Practical International Legal Solutions from within the UDRP Framework, Duke Law Journal, Vol. 51, No. 2 (Nov., 2001), pp. 817-849 S. M. Maniatis, Trade Mark Rights: A Justification Based on Property, [2002] I.P.Q. 123 Spyros M. Maniatis, Trade Mark Law and Domain Names: Back to Basics, E.I.P.R. 2002, 24(8), 397-408

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Websites: http://definitions.uslegal.com/i/internet-domain-names/ http://www.domainnews.com/en/balenciaga-wins-domain-name-dispute.html http://www.icann.org/en/general/glossary.htm http://indlaw.com http://www.internetlibrary.com/publications/anticybsquattSamson9-05_art.cfm http://knowledgerush.com/kr/encyclopedia/cybersquatting/ http://legal.web.aol.com/resources/legislation/cybersquat.html http://manupatra.com http://news.ciol.com/News/News-Reports/Mahindra-amp-Mahindra-wins-cybersquattingcase-in-US/19809123809/0/ http://westlaw.com http://www.wipo.int/amc/en/center/faq/domains.html#7 http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0271.html

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