Analysis of Legal Issues Related to Cybersquatting and Trademark in India

10th January, 2025 - 7:00 am Categories: Cybersquatting 0 Comments

ABSTRACT

In this paper, the Author highlights the concept of cybersquatting and its effects on the trademarks. Despite being a relatively recent phenomenon, cybersquatting poses serious risks to registered trademarks, especially in India, where no explicit regulation addresses the problem. The Author draws attention to the possible dangers this practice may pose in the future and emphasizes the pressing necessity for extensive legislative action. The study also compares how other legal systems throughout the globe have dealt with the problem of cybersquatting, offering suggestions for possible frameworks for India.

INTRODUCTION

With the increase of technology in the world, problems related to it are also arising. In the case of protection of Intellectual Property Rights, cybersquatting is a concept that is a great threat to the registered trademark in the digital world.

Cybersquatting is the bad-faith registration or use of domain names identical or similar to trademarks, brand names, or personal names, aiming to profit from their reputation or goodwill. It involves exploiting intellectual property for financial gain or misdirection and is addressed by laws and dispute resolution mechanisms globally.

To capitalize on the prestige and reputation of these third parties, cybersquatters register third-party trademarks, trade names, company names, and other similar spelled terms. They do this by either deceiving current or potential customers or by selling the domain name to the legitimate owner for a hefty fee.

Differences in Domain Name and Trademark

Domain Name and Trademark are both different concepts. In the case of a domain name, it is used to give access to the web page of the company on whose name it is registered, and it is a combination of characters, letters, numbers, etc.

Examples of domain names are “abc.org, ABC.in, etc.”

While in the case of Trade Mark is basically an identity card of any service or product provided by any organization or company, it should be unique in every aspect which distinguish one product from other in the market and to avoid public confusion.

Legal Framework in India to deal with this Issue

In the current condition, there is no existing law to deal with the problem of cybersquatting, unlike in various developed countries with comprehensive frameworks to deal with the Issue[1]. However, the courts, in various judicial pronouncements, extend the domain and applicability of the Trademark Act 1999 to cybersquatting due to a lack of specific law to deal with this. For example, in the case of Satyam Infoway Ltd. vs. Sifynet Solutions[2], the court applied the trademark act to prevent cybersquatting.

Similarly, in the case of Rediff Communication Ltd Vs. Cyberbooth &Anr[3]., the Bombay High Court held that the defendant’s use of the word “Rediff” is an infringement of the plaintiff’s trademark.

Court held that in digital world, a domain name also serves the purpose of distinguished identity which is associated with the particular organization or company making it a similar to concept of trademark[4].

Similarly, in the landmark case of Yahoo Inc. vs Akash Arora & Anr[5]., the court relied upon the concept of passing off in order to deal with the case of cybersquatting and held that the use of a domain name that is deceptively similar to the plaintiff’s trademark is passing off.

Furthermore, section 43 and section 66 of the Information Technology Act, 2000 deals with the concept of unauthorized access to computer and computer data under which the case of cybersquatting can be invoked.

International laws

United States of America

The Anti Cybersquatting Consumer Protection Act (ACPA) was passed in the US. In order to have the domain name transferred into the registered owner’s name, the ACPA allows the owner of a registered trademark to sue for alleged cybersquatting in a federal court.  The ACPA provides remedies such as statutory damages ranging from $1,000 to $100,000 per domain name, transfer or cancellation of the infringing domain, and injunctive relief. Courts examine factors like the registrant’s intent, their use of the domain, and the trademark’s distinctiveness to establish liability.

Uniform Domain Name Dispute Resolution Policy

An internationally accepted framework created by the Internet Corporation for Assigned Names and Numbers (ICANN) is the Uniform Domain-Name Dispute-Resolution Policy (UDRP). It offers an alternate dispute resolution process that allows domain name disputes to be settled out of court. .com,.org, and.net are examples of generic top-level domains (gTLDs) that are subject to the UDRP. In accordance with this guideline, trademark owners can lodge complaints to demonstrate that the domain was registered unjustly and in bad faith.

European Union

Regulation (EU) 2019/517 governs cybersquatting in the European Union that involves the.eu top-level domain. Speculative or abusive domain name registrations that violate trademarks or other rights are prohibited under this law. Affected parties may contest registrations in bad faith using dispute resolution procedures; the victorious claims will be granted control of the contested domain. This procedure is supervised by the European Registry for Internet Domains (EURid), which also makes sure that EU regulations are followed. The rule seeks to encourage equitable use of the.eu domain space while strengthening trademark protections inside the EU’s digital ecosystem.

Recommendation to deal with lacuna

The Indian Judiciary, by their various judicial pronouncement, deals with the Issue of cybersquatting by applying the provisions of passing off and trademarking. But there is still a need of the hour to have some specific law and policy to completely address this problem, especially in this digital age[6].

One of the major problems in domain names is the jurisdictional Issue; a domain name is accessible to every corner of the world, which also leads to cross-border disputes, and there must be proper policies and guidelines to deal with this.

Such as under Article 3 of the Uniform Domain Name Dispute Resolution Policy (UDRP), which has the proper framework and guidelines to deal with this jurisdictional Issue.

There are a few suggestions in order to deal with the Issue of cybersquatting in India-

1. First, there must be specific laws or guidelines dealing with cybersquatting.
2. There must be guidelines that deal with the jurisdictional aspects of domain names and any cross-border disputes associated with them.
3. The proper definition of cybersquatting in the trademark act and domain name should be given equal protection as that of a registered trademark.

Conclusion

Cybersquatting continues to pose a significant challenge in the digital age, creating concerns for both domain and trademark holders[7]. As India progresses in its digital transformation, addressing this Issue becomes essential to promote innovation, uphold fair competition, and protect intellectual property rights. Although the existing legal framework provides some remedies, it is inadequate to address the complexities of the evolving digital environment. To effectively combat cybersquatting, there is a pressing need for a well-rounded legislative framework supported by greater awareness and education.

Author: Priyanka Gehlot, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References

• Case Laws

1. Yahoo Inc. vs Akash Arora & Anr, 1999 IIAD(DELHI)229.
2. Rediff Communication Ltd Vs. Cyberbooth &Anr., 1999(4) BOMCR278.
3. Satyam Infoway Ltd. vs. Sifynet Solutions, 2004 (3) AWC 2366 SC.

• Articles

1. Nikhil Mishra and Damini Sharma, Cybersquatting and Trademark Issues- An Analysis with reference to India, Manupatra, (5 May 2021). https://articles.manupatra.com/article-details/Cybersquatting-and-Trademark-Issues-An-analysis-with-reference-to-India

2. An Analysis of the concept of Cybersquatting & Legal Issues Pertaining to Trademarks in India, Mondaq, (18 Dec. 2023). https://www.mondaq.com/india/trademark/1402068/an-analysis-of-the-concept-of-cybersquatting-legal-issues-pertaining-to-trademarks-in-india

3. Shristi Mittal, Trademark Cyber-squatting laws in India, Manupatra (24^th 2021) https://articles.manupatra.com/article-details/Trademark-Cyber-Squatting-Laws-in-

4. Neeraj Vyas and Shilpa Chaudhary, what is Cybersquatting, Bar and Bench, (23^rd 2024), https://www.barandbench.com/law-firms/view-point/cybersquatting

[1] Nikhil Mishra and Damini Sharma, Cybersquatting and Trademark Issues- An Analysis with reference to India, Manupatra, (5^th May. 2021). https://articles.manupatra.com/article-details/Cybersquatting-and-Trademark-Issues-An-analysis-with-reference-to-India

[2] Satyam Infoway Ltd. vs. Sifynet Solutions, 2004 (3) AWC 2366 SC.

[3] Rediff Communication Ltd Vs. Cyberbooth &Anr., 1999(4) BOMCR278.

[4] Shristi Mittal, Trademark Cybersquatting laws in India, (24^th Feb. 2021). https://articles.manupatra.com/article-details/Trademark-Cyber-Squatting-Laws-in-

[5] Yahoo Inc. vs Akash Arora & Anr., 1999 IIAD(DELHI)229.

[6]An Analysis of the concept of Cybersquatting & Legal Issues Pertaining to Trademark in India, Mondaq, (18^th Dec. 2023). https://www.mondaq.com/india/trademark/1402068/an-analysis-of-the-concept-of-cybersquatting-legal-issues-pertaining-to-trademarks-in-indi