Written by N.Ilakkiya of School of Excellence in Law (SOEL).
Edited by Annanay Goyal.
Yahooindia.com, Googl.com, Amazn.com, Flipcart.com, snepdeal.com, websites look familiar, but does something seem off? It is known as cyber-squatting. We usually notice peddlers in road-side markets for selling rip-offs or first copies of well-known merchandise brands with slightly misspelt names. When such activity happens in the digital space for domain names, it is called cyber-squatting. So now we have a small idea of what is cyber-squatting.
Stealing off one’s brand name is not a crime? Thus cyber-squatting is one of the offences in the digital world. So how are we going to stop this offence in the digital world, particularly in India? Are we having appropriate laws for these crimes? So what are the remedies available for the affected parties?
These are the above issues in my present article. Thus the author will brief on the points like what is cyber-squatting? What are the laws present in India? Case laws related to cyber-squatting; finally concluding by author’s view and suggestions.
What is meant by cyber-squatting or Domain Name Hijacking?
According to the dictionary, squatting means occupying an unoccupied or abandoned space or a building, where the squatter does not own them or does not have permission to use them.
From the above point, we can get the meaning of cyber-squatting too. So what is meant by cyber-squatting?
The individual or a company registers a domain name, and such domain name is identical or similar to a trademark of any other party and maliciously tries to sell the same for a profit in the digital world is known as Cyber-squatting. In another way, we can rely on the definition given by the Hon’ble Delhi High Court in the case- Manish Vij v. Indra Chugh , Indian courts have defined ‘cybersquatting’ as “an act of obtaining fraudulent registration with an intent to sell the domain name to the lawful owner of the name at a premium”.
Here the squatter tries to make money illegitimately because the squatter sells the domain name to the person or company who owns a trademark that is identical to the domain name which can also be called as a sort of ransom. As that particular domain name has already been registered by someone else, that particular domain name cannot be registered again in the name of the trademark owner.
In this manner, a cyber squatter infringes the fundamental rights of the owner of the trademark to use its trademark.
What are the laws in India against cyber-squatting?
From the above paragraphs, you might have noticed the word ‘trademark’. So from this, we can infer that the cyber-squatting is an offence under the Trademark Act, 1999, but not under the Information Technology Act, 2000. The IT Act doesn’t have any specific provision to punish the squatter. This is the biggest lacuna in the system because we don’t have any specific laws like Domain Name Protection Law like other foreign nations . It is a digital crime, but still, no provision to punish a squatter.
What are the other ways for the victim available against cyber-squatting?
• Sending cease-and-desist letters to the cyber squatter.
• Opting for arbitration under ICANN’s rules,
• Going for a trial to a state or federal court.
• Another option available is filing a case in the registry which is controlled by National Internet Exchange of India (Nixi) and it puts the case to fast-track dispute resolution process from were within 30 days of filing a complaint decision are transferred.
Is there any remedy available for the victim?
Yes, the victims can get some legal compensation as a remedy but not from the IT Act but the registry. Thus the registry has taken steps to provide compensation to companies (i.e. the victims) and to discourage the squatters from further stealing domains. This is just an initial step taken by the registry. Still, proper provision has to be enacted to stop this crime.
• To stop this crime in the digital world, there is a need for enactment of a provision under the IT Act, 2000 or new statutes to be enacted for combating Cyber-squatting and to punish the offenders.
• A new law should contain legal solutions for the trademark owners against the defendants so that it will be easy for the plaintiff to obtain statutory damages and gain compensation for the damages for registering in bad faith.
• There is a need for a law which would act as a weapon for preserving the Intellectual Property of the trademark holders in the virtual world.
In India, presently the Trademark Act plays a powerful role while dealing with domain names or cyber-squatting because we don’t have proper legislations on this concept. It is essential to note that the cyber-squatting cases are chosen through the guideline of passing off/infringement.
The Information Technology Act, 2000 or the Trademarks Act, 1999 or the Arbitration Act, 1996, or The IPC, 1860 does not have a definition for cyber-squatting. In India, it has been seen that people register domain names containing marks of other’s trademark since they realize that the repercussions are not exactly serious. Therefore, there is an urgent requirement for the strict laws in this field, with the goal that these squatters could be penalized and these violations could be avoided in the future. The new domain name dispute law must be proposed to give trademark and service mark proprietor’s lawful cures against respondents who get domain names “in bad faith” that are matching or confusingly like a trademark.
Case laws on Cybersquatting:
- Satyam Infoway Ltd v. Sifynet Solutions Pvt Ltd , the Hon’ble Supreme Court has observed the following:
“As far as India is concerned, there is no legislation which explicitly refers to dispute resolution in connection with domain names. But although the operation of the Trade Marks Act, 1999 itself is not extra-territorial and may not allow for adequate protection of domain names, this does not mean that domain names are not to be legally protected to the extent possible under the laws relating to passing off”
- Yahoo! Inc. v. Akash Arora &Anr
This is one of the earliest and significant cyber-squatting cases in India. In this case, internet search engine Yahoo (plaintiff) filed a case against a cyber-squatter (Akash Arora & Anr.) for using the domain name www.yahooindia.com. The cyber-squatter was pretending to be an extension of Yahoo in India and was offering directory services with information specific to India. The Delhi High Court granted an injunction against the cyber-squatter and held that trademark law applies with equal force on the Internet like the physical world
- Sbicards.com v. Domain Active Property Ltd
Sbicards.com was ordered by the World Intellectual Property Organization to be transferred to the Indian Company from an Australian entity, which steals the domain name planning to later pitch it for a large sum to the State Bank of India subsidiary. The board acknowledged SBI Card counsel’s contention that “the Australian organization was in the business of purchasing and selling domain name through its site.
- Rediff Communication Limited v. Cyber booth and Anr
For this situation, the respondent had registered the domain name “radiff.com” which was like the plaintiff’s party’s domain name “rediff.com”. The rule in favour of the plaintiff party, the Court was of the view that the high significance and value connected to a domain name makes it a noteworthy corporate resource of any organization. The court proceeded to express that a domain name is significantly more than a web address and all things considered, is qualified for protection equivalent to that afforded to a registered trademark.
- Tata Sons Ltd v Manu Kosuri & Ors.
Another high-profile case involves the Tata Group, a multinational conglomerate. In this case, the defendant registered a series of domain names incorporating the well-known trademark “TATA”. The Court held that internet domain names are not merely internet addresses but are corporate assets that are extremely important and valuable and as such, are entitled to protection equivalent to that afforded to registered trademarks.
- Acqua Minerals Ltd. v. Mr. Pramod Borse & Anr.
In this case, the plaintiff (Acqua Minerals Ltd.) was the registered owner of the trademark “Bisleri” in India. The cyber-squatter Mr Pramod Borse & Anr registered the website www.bisleri.com in its name. The Delhi High Court held the cyber-squatter guilty of infringement of trademark and allowed the plaintiff to seek the transfer of website in its name.
- AIR 2002 Del 243.
- UK- The Anti-cyber squatting Consumer Protection Act, 1999; Nigeria’s Cybercrime (Prohibition, Prevention, etc) Act, 2015; Belgian’s The Anti-cyber squatting Act, 2003.
- AIR 2004 SC 3540
- 1999 IIAD Delhi 229
- Case No. D2005 0271
- AIR 2004 SC 3540
- IIIAD Delhi 545, 90 (2001)
- AIR 2001 Delhi 467
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