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.
As, I have already mentioned that the internet has become an important tool in business transactions and moreover has facilitated in becoming the genesis of many business model patents. This article would be dealing with the Domain Name aspect of the internet. Further, it would also throw a brief insight on the court cases related to domain names in India and the United States.
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.
In the recent past there have been developments to allow the registration of domain names written in non ASCII characters such as Arabic, Chinese etc.
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 else’s trademark or domain name and then tries to sell the same for a profit. This is known as “Cybersquatting”.
Definition of Cybersquatting
Cyber squatting is the most crucial type of domain dispute prevalent around the world. It is a practice where individuals buy domain names reflecting the names of existing companies, with an intention to sell the names back to businesses to attain profit when they want to set up their own websites. The definition of Cybersquatting can be best summarised in Manish Vij v. Indra Chugh, AIR 2002 Del 243, the court held that “an act of obtaining fraudulent registration with an intent to sell the domain name to the lawful owner of the name at a premium”. Many multinational companies like Tata, Bennett & Coleman, Mc Donald’s etc were among the first victims of cybersquatting. Many cases are also decided by the WIPO (World Intellectual Property Organization) and ICANN.
Cybersquatting in the United States
The first cybersquatting case arose in 1994 in the United States and cases have multiplied ever since in almost the whole World. In one of the cases, a US court found that the offer to sell a domain name in the US was “use in commerce” and, therefore, constituted trademark use; thus the court found that such an offer to sell a domain name to the owner of an identical or similar trademark was a trademark infringement. In the US, cybersquatting was practised immensely by one Dennis Toeppen, who registered a host of well-known trademarks as domain names and who has been unsuccessful in defending his rights to them when sued by the trademark owners.
The two important cases which can be considered pivotal in the development of cybersquatting case law decisions in the US are Intermatic v. Toeppen 947 F. Supp. 1227 (N.D. Ill. 1996) where the court gave a decision in the favour of the plaintiff which owned a federal trademark registration for Intermatic. The Court observed that the respondent, Mr Toeppen’s conduct caused trademark dilution since the registration of the domain name intermatic.com lessened the capacity of Intermatic to identify and distinguish its goods and services on the internet. Another reason given by the court was that the use of Intermatic name on the respondent’s web page diluted the value of the mark. The second case was Panavision v Toeppen 141 F.3d 1316 (1998), where again the court ruled in favour of the plaintiff. In this case it was Panavision which had filed a case against Toeppen. The respondent Toeppen had registered domain names with names panavision.com and panaflex.com.
These two cases also give an insight as to how vulnerable Domain names are and how trademark holders need to be careful from these modern day cyber extortionists (cybersquatters). These two judgments have played an important role in the drafting of the Anticybersquatting Consumer Protection Act. It was enacted to specifically target trademark infringements in cyberspace. In the year 2000 another well known cybersquatter John Zuccarini lost two suits under the newly enacted Anti Cybersquatting Consumer Protection Act (ACPA). The two federal courts ordered him to pay huge amount of statutory damages amounting to US $ $500,000 plus attorney’s fees.
Maruti Udyog, India’s largest automaker had filed a case in 2006 (Maruti.com et al. v. Maruti Udyog Ltd. et al., U.S. Dist. Ct. No. L-03-1478) against Rao Tella who was deemed a cybersquatter three times by WIPO. In this case the defendant had registered a domain name www.maruti.com.The US court held that since Maruti does not manufacture or sell cars in the United States, therefore the ACPA would not be applicable. Though the WIPO arbitration panel had given an order in favour of Maruti Udyog , it was not binding on the US district court.
In September 2007 Microsoft filed three suits: - #1: Microsoft Corporation v. Peppler et al, #2: Microsoft Corporation v. Kovyrin et al, #3: Microsoft Corporation v. Cody. All these three cases were related to cybersquatting(decisions of the courts are not yet out). In fact the year 2007 was quite a busy year for Microsoft since four other suits were filed in the earlier part of the year, all related to cybersquatting. Cybersquatting has been a serious issue in the United States over the years. The US has the highest number of cybersquatting suits so far and every year the numbers are rising. Only time will tell as to when this monster on the internet would be routed out completely.
Cybersquatting in India
Companies in India have also faced the brunt of cybersquatting in the recent past. Besides, the courts in India have been extremely vigilant in protecting the trademark interest of the domain owners who have suffered from cybersquatters.
The first case in India with regard to cybersquatting was Yahoo Inc. V. Aakash Arora & Anr., where the defendant launched a website nearly identical to the plaintiff’s renowned website and also provided similar services. Here the court ruled in favour of trademark rights of U.S. based Yahoo. Inc (the Plaintiff) and against the defendant, that had registered itself as YahooIndia.com. The Court observed, “it was an effort to trade on the fame of yahoo’s trademark. A domain name registrant does not obtain any legal right to use that particular domain name simply because he has registered the domain name, he could still be liable for trademark infringement.” The Bombay High Court in Rediff Communication v. Cyberbooth & Anr 2000 PTC 209 observed that the value and importance of a domain name is like a corporate asset of a company. In this case the defendant had registered a domain name radiff.com which was similar to rediff.com. The court gave a decision in favour of the plaintiff.
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 2000-0015, 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 Plaintiff’s websites www.economictimes.com and www.timesoftimes.com. Another important fact was that the respondent’s 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 Plaintiff’s 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.
Cybersquatting has opened the eyes of governments across the world and has prompted them to look into this phenomenon in a serious manner. The United States by enacting the ACPA, has taken a monumental step in protecting domain names in its cyberspace. It is high time India and other countries come out with legislations to protect this virus from spreading.
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ASHWIN MADHAVAN is a 3rd year student pursuing B.A.LL.B (Hons) from Gujarat National Law University, Gandhinagar (Ahmedabad). He is a member of the editorial board of his university law journal. He has been researching on legal process outsourcing since the last two years and has even authored an article on the same which was published in the Indian Journal of International Law. He can be reached at madhavan.ashwin@gmail.com. |
