CYBERSQUATTING W.R.T TRADEMARKS- ISSUES AND REMEDIESadmin
Cybersquatting is a system of getting registration of an Internet domain name that another person, business, or organization requires or wants with the intention of selling them to such person, business or organization for a higher profit. It encompasses the registration of trade names and Trademark Filings in India as domain names by third parties, who do not possess rights in such names. Basically cyber-squatters register trade-marks, business names, trade names and so on, which belong to a third party with the common intention of dealing on the name, popularity, reputation and goodwill of such third parties by one or the other i.e. confusing consumers or possible consumers, and at times, to even sell the domain name to the rightful owner at a profit.
As per the United States Federal Law known as Anti-Cybersquatting Consumer Protection Act, cybersquatting (otherwise called domain name squatting) is the demonstration of enlisting, dealing with, or utilizing a domain name with the dishonest plan of benefitting from the goodwill and reputation of another person’s brand name. Domain names can be registered and protected as a Trade Mark as long as it satisfies every condition which is essential and required in order to be registered as a Trade Mark. So, a domain name which is unique, distinguishing and distinct, the goods and services offered by its owner are different from others, can be registered and protected as a Trade Mark. It must fulfill the criteria like it should not be misleading, confusing or deceiving to customers of other businesses involved in similar corporate businesses.
Cybersquatting through Social Media
An organization’s most important business resource is in many cases its image. Further, a brand’s capacity to discuss straightforwardly with its clients is significant in the present social business environment. Controlling your business’ organization usernames, handles, and domain names is in this manner basic.
Social Media squatting otherwise known as “Username Squatting” – happens when an outsider makes an online entertainment username that is indistinguishable from or confusingly like a brand proprietor’s brand name or trade mark and in this way exploits that online account with bad faith. It might likewise happen where the individual name, especially of a notable or renowned individual, is utilized. Such bad faith intent may range from the complete impersonation of the brand or masquerading as the individual, to the passive holding of an account with hopes to obtain money from the brand owner. Social Media Squatting can make a large number of issues for brand proprietors, including customer disarray, conflicting internet information, and a tarnished reputation, to give some examples.
Laws and Remedies in India
Unlike many developed countries, in India we have no Domain Name Protection Law and cyber- squatting cases are decided under Trade Mark Act, 1999.
Few remedies are available against cyber-squatters in India and one of them is litigation in a court of law. The courts in our country have also issued various restrictions restraining cyber squatters from dishonestly misusing domain names. In the case of Rediff, the Bombay HC passed an injunction restraining the respondent from using the domain name “RADIFF” or any other similar name, as it was sustained that when both domain names are considered, there is every possibility of internet users being confused and deceived into believing that both domain names belong to one common business source and connection. Also in the case of Naukri.com, “Naukari.com” was held to be confusingly similar to that of the plaintiff, “naukri.com”, with only a changed spelling variation instituting a prima facie conclusion of bad faith.
Uniform Domain Name Dispute Resolution Policy (UDRP)
Internet Corporation for Assigned Names and Numbers (ICANN), a domain name regulatory authority has adopted a Uniform Domain Name Dispute Resolution Policy (UDRP) for dealing with cybersquatting. UDRP is incorporated into the domain registration agreement and sets the terms and conditions in connection with a dispute between the registrant and any party other than the registrar over the registration and use of an Internet domain name. The UDRP has guidelines for resolving cybersquatting and while registering a domain name, the registrant agrees to submit to proceedings commenced under Internet Corporation for Assigned Names and Numbers, Uniform Domain Name Dispute Resolution Policy. Under UDRP, any person can file a complaint. One must prove that a domain name is indistinguishable, identical or confusingly similar to a trademark in which you have rights, the domain name owner did not have intellectual property rights or legitimate interest in the domain name, and the domain name was registered and is being used in bad faith. The domain name will be canceled or transferred to you if one can establish these elements.
If a Trade Mark owner believes that the registration of any domain name is infringing his Trade Mark, he, under the UDRP, may bring a complaint and initiate a proceeding. To resolve a dispute, a suit needs to be filed before a service provider of dispute resolution giving all the required details.9 for the gTLDs, dispute resolution service providers (e.g., WIPO) are officially recognized by ICANN, the body which established this policy
INDRP –.In Domain Name Dispute Resolution Policy
The. In Domain Name Dispute Resolution Policy (INDRP), which is significantly similar to the UDRP, would be applicable to ‘.in’ domain names. According to the INDRP Policy, someone who believes a domain name registered by the.IN Registry infringes on their legitimate rights or interests can file a complaint with the.IN Registry and pay the appropriate fees. The complainant must meet the same requirements as those mentioned in the UDRP Policy and paragraph 4 of the INDRP.
JUDGEMENTS ON CYBER-SQUATTING-
- Yahoo! Inc. v. Akash Arora &Anr1999 IIAD Delhi 229
In the case of Yahoo Inc. v. Akash Arora, the complainant looked for a permanent injunction to restrict the respondents from using the trademark or domain name yahooindia.com or any such similar or misleading trademark like “Yahoo” for any business purposes. The respondents contended that as Yahoo was not trademarked in India, there is no infringement, as it didn’t fall under the meaning of goods under the Indian Trade Marks Act, 1958. However, the plaintiff party was allowed the injunction, as services rendered on the Web are universally perceived as goods and Yahoo’s trademark should be protected.
The Hon’ble High Court of Delhi Court held that “The use of the same or similar domain name may lead to a diversion of users which could result from such users mistakenly accessing one domain name instead of another. This may occur in e-commerce with its rapid progress and instant (and erotically limitless) accessibility to users and potential customers and particularly so in areas of specific overlap. Ordinary consumers/users seeking to locate the functions available under one domain name may be confused if they accidentally arrived at a different but similar website that offers no such services. Such users could well conclude that the first domain name owner had misrepresented its goods or services through its promotional activities and the first domain owner would thereby lose its customer. It is apparent therefore that a domain name may have all the characteristics of a trademark and could find an action for passing off”
It is one of the landmark judgments on cybersquatting cases in India. In this case, the Trade Mark ‘BISLERI‘ was registered and owned by the plaintiff, Aqua Minerals Limited and it also had copyright of uniquely written word ‘BISLERI‘. After applying for registration of ‘bisleri.com’ as a domain name, it came to their knowledge that the defendants had already illegally registered the referred domain name.
The Court observed that the defendants had registered the referred domain name in bad faith and held it amounting to an act of cybersquatting. The defendants had replied to the plaintiff that they can cancel the registration of their registered domain name if the plaintiff would pay them the amount which they had spent in developing the website. The Court took it as an attack on the goodwill and reputation of Aqua Minerals Limited. Thus, the plaintiff was permitted to approach the concerned service provider to seek a transfer of the domain name.
Cybersquatting has a cascading impact on society’s social and economic interests, so it should be prosecuted to provide a deterrent effect. Governments all over the world are looking at cybersquatting as a serious problem. To combat cybersquatting, different countries have implemented a variety of initiatives.
For example, The Information Technology Act, 2000 or the Trademarks Act, 1999 or the Arbitration Act, 1996, does not have a definition for cybersquatting. In India, it has been seen that people register domain names containing marks of others’ trademarks since they realize that the repercussions are not exactly serious. Therefore, there is an urgent requirement for 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 proprietors lawful cures against respondents who get domain names “in bad faith” that are matching or confusingly like a trademark.
The Anti-cyber-squatting Consumer Protection Act (ACPA) in the United States, allows a trademark owner to sue the infringer of a domain name for damages. Uniform Domain Name Resolution (UDRP) is a service provided by the World Intellectual Property Organization (WIPO) on an international level. ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) is a tool for settling conflicts over domain names and Trademark Registration in Bangladesh. In countries like India, where there are no cyber laws to prevent domain name disputes, the.INDRP (.In Domain Name Dispute Resolution Policy) process is used to settle such cases.