Practice Area

Understanding Cyber Squatting

Author: Akshat Razdan

Internet is an indispensable platform for all the modern day corporations to reach maximum audience in the shortest span of time; which is not possible through any other conventional platform. The need to get customers “online” rather than “waiting in line” is the neoteric approach followed by companies to increase their business value.

To achieve this objective, every company needs to have a dedicated domain name to be able to market its line-up of goods and services. But what if the domain analogous to the name of a company’s trademark or trade name is not available to be registered or has already been registered by someone else. This is when the problem of Cyber-Squatting arises; which means “ Registering, Selling or using a domain name with the intent of profiting from the goodwill of someone else's trademark.”This is primarily a practice of buying up domain names that use the names of existing businesses with the intent to sell the names for a profit to those businesses. This menace of squatting on domain names is done to monetize at the expense of the true rightful owners of the domain.

Another; popular strategy for cyber squatters to rake in the moolah is through “Brand jacking”; which means opening of an unintended web-address due to typographical errors of misspelling made by people by while inputting a web address on an internet browser. Brandjackers, usually resort to this form of cyber squatting to earn though schemes like- pay-per-click, park the domain and sell later, to transmit malware and adware, to redirect the traffic from the right web address, or to disparage the original website which they have brand jacked.

Who all are the parties to domain name Dispute ?

Generally, it is seen that that there only two parties in a domain name dispute comprising of Domain name owner (defendant) and the trademark or trade name owner (plaintiff). Also, there might be instances when the registration authority might join as a party to a domain name dispute.

Dispute Resolution in such cases

1)             Non Legal Approach

(a)           NSI (Network Solutions Inc.) is a leading technology consulting company based out of the United States. It is one of the major domain name registration authorities. Initially domain name disputes were resolved through NSI Policy. Under this policy, the owner of a trademark or trade name would submit a certificate to NSI to resolve the domain name dispute; with the evidence that he had already sent a written notice to the domain name owner claiming that the use of the domain name violates the trademark owner’s rights.

(b)           In 1998, ICANN (Internet Corporation for Assigned Names and Numbers) was set up which started a process of Uniform Domain Name Dispute Resolution Policy (UDRP) for resolution of disputes regarding domain name disputes. It has brought into existence a basic legal uniformity in the resolution of internet disputes. ICANN has also approved various dispute resolution service providers such as Asian Domain Name Dispute Resolution Centre. CPR Institute for Dispute Resolution, National Arbitration Forum and WIPO for non-judicial resolution of domain name disputes.

Prime Examples of Cyber-squatting:

In the case of World Wrestling Federation Entertainment Inc. v. Michal Bosman, Michael Bosman a resident of California had registered a domain name (Worldwrestlingfederation.com) through an Australian domain-name registrar with an intention to later monetize his efforts by er selling it to WWF Entertainment Incorporated. This was the first case to be resolved by WIPO Administration Panel under UDRP Policy. It was decided that Bosman was to transfer the said domain to WWF Entertainment Inc.

Also, in a case of Asian Paints (India) Ltd. v. Domain Admin, the respondent had registered a domain name (asianpaint.com) identical to the Complainant’s trademark and trade name. The case was decided at WIPO Arbitration and Mediation Center and was ruled in the favor of the plaintiff. It was held that the defendant had no explanation for registering the domain name and has no right or legitimate interests in it. Further, the exclusion of the letter ‘s’ was done deliberately so as to exploit users’ typographical errors when seeking the Complainant’s website (www.asianpaints.com). It was ruled that this was case of registration and use in bad faith and the defendant was ordered to transfer the domain name (asianpaint.com) to the Complainant.

2)             Legal Approach

The Judicial Approach in US for dealing with cases of cyber-squatting is most advanced if compared to other countries. The US Congress has enacted two Sui Generis legislations to combat such issues, namely:

(a)           Federal Trademark Dilution Act, 1995

(b)          Anticybersquatting Consumer Protection Act, 1999

Position in India

In India, there is no specific legislation that explicitly deals with dispute resolution in cases of domain name disputes. The Courts have to decide according to the provisions of the Trade Marks Act, 1999 in such disputes. However, that does not mean that domain names are not adequately protected in India, one can always approach the courts of law and seek remedies like infringement or passing off to defend their trademark or trade name.