The Web Of Cybersquatting: Are Laws Needed To Clean Up The Web?

4th February, 2022 - 12:44 pm Categories: Intellectual Property 0 Comments

INTRODUCTION

The internet’s unavoidable presence and use in our daily lives is the pinnacle of modern technological innovation. However, this progress has also served as a breeding environment for a variety of illegal activities. Cybersquatting is one such activity that has gained interntaional and national attention.

CYBERSQUATTING

Cybersquatting is defined as registering, trafficking, or using a domain name in bad faith with an intention to profit from the trademark holder’s goodwill, as defined by the Anti cybersquatting Consumer Protection Act, 1999, it is also known as domain squatting. The word comes from the phrase “squatting,” which refers to inhabiting an abandoned place or land that is not the squatter’s own. Most of the time, the cybersquatter sells the domain name at a premium to the firm or individual who owns the trademark.

DOMAIN NAME

A domain name is the name of a website as well as the address through which it may be accessed. Domain names are typically madeup of characters or phrases that are easier for the general public to remember.

www.trademarkname.in

• WWW – refers to World Wide Web
• Trademark name – The name that a corporation or an individual chooses for their website, which is usually similar to their trademark and often refers to the company’s name
• .in – Indicates the country in which the company is based. For instance,‘.in’ designates a corporation based in India;‘.ca’, on the other hand, alludes to a firm based in Canada.

In India, cases such as Rediff Communications Ltd v Cyberbooth have highlighted the importance of a domain name’s protection, declaring that “a domain name is more than an internet address and is entitled to the same trademark protection as a brand.”

This blog critically examines the many types of cybersquatting, as well as the present legal scenario of cybersquatting in India, with relevant examples, instances, and illustrations. In addition, this blog makes recommendations for how the Indian legislature and judiciary should deal with cybersquatting cases.

HISTORY OF CYBERSQUATTING

“The rising number of alleged cybersquatting cases shows the growing premium placed on domain names by companies and individuals operating in the wired environment” – Francis Gurry

The threat of cybersquatting was raised in the late 1990s when the internet was just becoming a global sensation. Most firms were unconcerned about the commercial and economic potential offered by the internet during this time. Cybersquatters bought the domain names of well-known companies with the intention of selling them to the concerned company. Early victims of cybersquatting included Panasonic, Hertz, Fry’s Electronics, and Avon.

TYPES OF CYBERSQUATTING

1. Domain Name Squatting, This is the practice of buying a well-known company’s domain name to extort money from the parent firm.
   In Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd, the respondent obtained the domain names www.siffynet.net and www.siffynet.com, which were confusingly similar to the plaintiff’s www.sifynet.com. The Supreme Court held that “Domain names are commercial identifiers, serving to identify and distinguish the firm itself or its goods and services, as well as to define its associated online address”.

2. Identity Theft, domain names are acquired for a fixed period, after which they expire if they are not re-registered. When a domain name expires, a cyber squatter can use software tools to register it. Alert angling and extension exaggeration are two methods of Domain Name identity theft.
3. Uniform Resource Locator Hijacking, commonly known as Typosquatting. If any typographical errors are made while typing the web URL into the browser, it is forwarded to a substitute website that is utilized by cybersquatters to make money. For instance, Google’s typosquatting site Goggle.com installed malware on visitors’ computers. The malware displayed pornographic pictures in spam pop-ups and downloaded SpySheriff antivirus, which damaged victims’ machines.
4. Name-Jacking, In this type of squatting, an individual’s name is acquired as a top-level Domain Name.

CURRENT INDIAN LEGAL SCENARIO

The World Wrestling Federation (WWF) sued a Californian individual for registering the domain name “wordwrestlingfederation.com” and offering to sell it to WWF at an inflated price, in the first known case of cybersquatting. The World Intellectual Property Organization (WIPO) decided that the registered domain name was identical to the WWF brand and could cause confusion. The resident was also urged to transfer his or her registration to WWF.

The Anti cybersquatting Consumer Protection Act of 1999 governs incidents of cybersquatting in the United States. There is presently no legislation in effect in India that addresses or addresses the issue of cybersquatting. In Satyam Infoway Ltd v Sifynet Solutions, the court recognized the lack of legislation in India for cybersquatting dispute settlement. The Indian judiciary, on the other hand, has been proactive in providing remedies in domain name infringement cases.

1) In the case of Yahoo! Inc. v Akash Arora and Anr, where the respondents were using the domain name “yahooindia.com,” which was identical to the plaintiff’s trademark “Yahoo,” one of the most significant verdicts on trademark passing off through domain names were handed down. The respondents, on the other hand, claimed that the services offered did not meet the definition of goods under the Indian Trademark Act. Yahoo, on the other hand, was granted an injunction since web services are regarded as goods worldwide.

2) In the case of Reddif Communication Limited v Cyberbooth and Anr, the respondent had registered the domain name “radiff.com,” which was identical to the plaintiff’s domain name “reddif.com.” The court recognized the domain name as a registered trademark. In this case, the court ruled in favor of the petitioner, finding that a domain name is a valuable company asset.

3) Following in the footsteps of WIPO in the Reddif case and SBI Cards v Domain Active Property Ltd, Indian courts have ordered the infringing party to surrender the domain name to the original trademark owners. Tata Sons Ltd. V Mr. Manu Kishori is one of the most notable cases for this, in which the defendant had a domain name registered in the plaintiff’s name and was compelled to surrender the name to the plaintiff.

INDIAN DISPUTE RESOLUTION POLICY IN INDIA

The Internet Corporation for Assigned Names and Numbers (ICANN) established the Uniform Domain Name Dispute Resolution Policy (UDRP) to resolve disputes over the registration of internet domain names. Further,as India is a signatory to the World Intellectual Property Organization (WIPO), it is required to follow the UDRP process. As a result, India has developed an Indian Domain Name Dispute Resolution Policy (INDRP) with UDRP-compliant standards. INDRP has several provisions that are comparable to UDRP. The following are some of the salient qualities of the same:

• Appointment of arbitrator for disputes regarding domain names;
• Conduction of Arbitration proceedings should be according to the provisions of the Arbitration and Conciliation Act, 1996
• The Arbitrator in the caseshould pass a reasonable award within 60 days from commencement of arbitration proceedings
• Arbitrator shall give reasons for the award

The case of YouTube LLC v. Rohit Kohli, in which the respondent registered the domain name “www.youtube.co.in,” was a notable one brought under the INDRP’s purview. The trademark in the domain namebelongs to a corporation called “YouTube.” The Board found that the domain name was phonetically and conceptually similar to the complainant’s trademark and hence granted the domain name transfer to the trademark’s original owner.

In addition, a few clauses of the Information Technology Act of 2000 and the Indian Penal Code of 1860 may apply in the event of cybersquatting in India. The following are some suchprovisions:

1. Forgery under Section 469 of the IPC: A person found forging with the intent to harm the reputation of any party, or knowing that the document forged will be used for that purpose, shall be punished with imprisonment of either description for a term that may extend to three years, as well as a fine.
2. Section 66 of the Information Technology Act of 1999: Under this provision, any person who commits any act referred to in section 43 dishonestly or fraudulently is punishable by imprisonment for a term up to three years, a fine up to five lakh rupees, or both.
3. Section 66A: This clause punishes anyone who uses a computer resource or communication device to convey “grossly offensive” or “menacing” material.

RECOMMENDATIONS AND CONCLUSION

A five-pronged approach to cybersquatting can be used to combat the problem:

1. New Legislation: We are now in the third decade of the twenty-first century, and the internet is widely used. There are no unique laws in India that regulate or oversee cybersquatting. Cybersquatting should be governed by a separate law that regulates and governs the concept of cybersquatting. Furthermore, there are no set remedies or penalties for cybersquatting; until today, incidents of cybersquatting were determined on an individual basis, according to the judge’s view. Some of the following points must be included in the proposed legislation:
   • Recognition of domain name as a registered trademark
   • Remedies for passing off
   • Remedies such astransferring of the domain name including the original trademark to the original trademark holder
2. Independent Adjudicatory Body: At present, cybersquatting cases are handled by the courts, but there is no distinct body to handle cybersquatting cases. The government should establish tribunals to deal with cybersquatting cases, and the judges who are appointed should be experts in the field. This would not only assist in dealing with cybersquatting issues with a high level of skill, but it would also relieve the judiciary of the weight of cases. It will also aid in the quick resolution of cases.
3. Judicial activism in cybersquatting and trademark issues under the Trademark Act of 1999: At present, the courts are taking a proactive approach to cases of cybersquatting and are well aware of the threat that cybersquatting poses. With the rise in internet usage in the coming years, stringent measures from the judiciary would be required to combat cybersquatting, as there are currently no specific laws for cybersquatting in India.

Cybersquatting is a virus for which an effective antidote in the form of effective legislation is urgently needed; otherwise, the infection would encourage cybersquatters to prey on susceptible Domain Name Holders. When considering the current state of affairs around the world, cybersquatting is seen as a threat that has no bounds. Although WIPO’s effective and proactive involvement has played a critical role in resolving domain name disputes and developing clear rules in this field, much more must be done in the Indian legal framework to combat cybersquatting. The judiciary must perform an effective role by interpreting the laws in a way that best reflects the organic nature of the state.

Author: Vaidehi- a student of Symbiosis Law School, Pune, currently an intern  at Khurana & Khurana, Advocates and IP Attorney,  in case of any queries please contact/write back to us via email vidushi@khuranaandkhurana.com.