DOMAIN musical, literary, artistic works, ideas, discoveries, inventions,

DOMAIN
NAME DISPUTES

V.SANTHOSH*

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ABSTRACT

The intellectual property right is a
legal property right given to the creations of the mind, both artistic and
commercial. Owners are granted certain exclusive rights to intangible assets,
such as musical, literary, artistic works, ideas, discoveries, inventions,
words, phrases, symbols and designs under intellectual property law. The
creators of original works are provided with economic incentive to grow and
share ideas through a form of temporary monopoly. The domain names help users
identify people easily. They are business identifiers and fall under the
category of intellectual property rights. It consists of two parts namely Top
Level Domain (TLD) and Second Level Domain (SLD). The disputes regarding domain
names is largely comprised of cyber squatting, which means registration of
someone’s trademark or business name by third parties as their domain names. The domain names are
entitled to a strong, continuous and instantaneous protection under all the legal
systems of the world, including our country. The domain name system is at
present administered by Internet Corporation for Assigned Names and Numbers
(ICANN). There is no legislation or provision relating domain names disputes or
cyber squatting. The Trademarks Act, 1999 plays a very important role in decision
of the courts in India.

KEY
WORDS: Domain
names, trademark, cyber squatting, original, internet, websites.

INTRODUCTION

In this modern era, internet is
being significantly used for business, banking, research, education and
entertainment. A domain name is used to provide an address for computers on the
internet and also as a business identifier. The use of internet and rampant
growth of websites has given rise to many domain name disputes. Companies which
have invested significant amount of money in their trademark and domain name
are facing many issues like domain hijacking, cyber squatting, domain kitting,
DNS hijacking and domain tasting. There is a need to legally protect the domain
names from cyber crimes and other internet related offences.

A person who is registering a
domain name is called the registrant or the owner of that domain name. The
agency which registers the said domain name is called registrar. All the domain
names are registered with domain name registrars. There are number of Agencies
called Domain Name Registrars which are authorized by the governing bodies to
register a domain name and keep a track of all information like renewal,
transfer and address details of the registrant in respect of Domain name.
All
such data about relating to registration of a domain name is available in the
WHOIS record of the domain. The Internet Corporation for
Assigned Names and Numbers (ICANN) on 26th August, 1999 adopted the
Uniform Domain Name Dispute Resolution Policy (UDRP) based on recommendations
made by World Intellectual Property Organization (WIPO). Under UDRP, a trademark
holder can give a complaint against a domain name registrant, if he considers
that a registration of a particular domain name infringes his/her trademark. The
arbitration Panel appointed by WIPO Arbitration and Mediation Center appoints.
The panelist decides on the complaint. The decision of UDRP is implemented in
ten days. The aggrieved party can go to court within said period of ten days.
The Panelist appointed by WIPO Arbitration and Mediation Center, under UDRP has
no right to pass injunctive reliefs or cost damages. “.in”
is the India’s country code Top Level Domain (ccTLD). The disputes regarding it
are resolved in accordance with .IN Dispute Resolution Policy (INDRP)
formulated by .IN registry and INDRP rules of procedure. The Ministry of
Information Technology, Government of India, liberalized the policies for
registration of country code Top Level Domains from 1st January,
2005 and enabled general public at large to register a domain name in respect
of their trade or service mark with .IN and .CO.IN extensions. This is applies
to brands that has registered trade/service mark in India. The entities which are
not present in India can also register these domains.1

DOMAIN NAME SYSTEM (DNS)

Domain names are forms of an Internet
Protocol addresses that are commonly used to find web sites. It is the online
identity of a particular person, establishment or organization. It is the
online address of an establishment and leads to the page which the registrant
of the domain name wants to be viewed by general public when they visit their domain.
Generally traders and companies use their business or trade name as their
online identity or domain name. It is a permanent address that can be accessed
from anywhere in the world irrespective of the location of the registrant. The
domain name system or DNS is a system by which the domain names are allocated
an Internet Protocol (IP) addresses which is unique and has actual physical
location on internet. The domain name is the alias name of a numeric IP
address. Domain names have two parts, Top Level Domain (TLD) and Second Level
Domain (SLD). For example, in domainname.com, “.com” is the Top Level
Domain and “domainname” is the Second Level Domain. The gTLD (generic
Top Level Domains) includes .Com, .Net, .Org, .aero (for the entire aviation
community), .biz (for business purposes), .coop (for cooperatives), .info
(unrestricted), .jobs (for human resources), .museum (for museums), .name (for
personal names), .pro (for professionals), .travel (for the global travel
community). The rTLD (restricted Top Level Domains) includes .Biz and .US. The
ccTLD (country code Top Level Domain) is .in (for India). 2

UNIFORM DOMAIN NAME
DISPUTE RESOLUTION POLICY

The Internet Corporation for
Assigned Names and Numbers (ICANN) on 26th August, 1999 adopted the
Uniform Domain Name Dispute Resolution Policy (UDRP) based on recommendations
made by World Intellectual Property Organization (WIPO). Rule 2 of the UDRP requires
the applicant to make sure that the domain name for which registration is sought
for, does not infringes or violates someone else’s rights. If the domain name
proposed to be registered infringes another person’s “trademark rights”, it
will violate Rule 2 of the UDRP. In such a case, the Registrar is can refuse to
register that domain name. This shows that a domain name, though properly
registered as per the requirements of ICANN, still it is subject to the Trademarks
Act, 1999 if a person proves that he has “rights” flowing out of the Trademarks
Act, 1999. According to the UDRP, the registration of a domain name shall be
considered to be abusive when all the following conditions are met:

1)      The
domain name is identical or misleadingly similar to a trade or service mark in
which the complainant has rights.

2)      The
holder of the domain name has no rights or legitimate interests in respect of
the domain name

3)      The
domain name has been registered in bad faith.

The term ‘bad faith’ does not simply
mean bad judgment but it implies the intentional doing of a wrong with a
dishonest purpose. Bad faith can be proved if there is an offer to sell, rent
or transfer the domain name to the original owner of the trademark or service
mark, or to a competitor of the complainant for money or any other valuable
consideration. And also in the cases where the respondent registers the domain
name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name. And in cases where a party
has intentionally attempted to attract, for commercial gain, internet users to
its website or other online location by confusing people with the trade or
service mark of the complainant.3

RELATIONSHIP BETWEEN
TRADEMARK AND DOMAIN NAMES

Selecting an appropriate domain
name is a complicated task. Numerous factors need to be taken into
consideration in the selection of domain names. One of the major factors is to
include the trademark within the domain name.4
This would foster the establishment of identity of the said enterprise over the
Internet. The general public, who are unaware of specific domain name of an
enterprise, can easily find the enterprise by typing its well known trademark. The
trademark performs the function of recognition of enterprises in the real
world, also can perform similar function in the virtual world in the form of
domain names.  Trademark is registered for
protecting the mark from being used by others in the course of trade whereas domain
name registration is for commercial or non-commercial use over the internet. There
cannot be more than one registrant of same domain name, since they are global
in operation.5

DOMAIN NAMES RELATED
ISSUES

CYBER SQUATTING

Cyber squatting means the act of registering
a domain name, which genuinely belongs to someone else. It is the registration
of a well-known trademark as domain name by a third person intentionally to
sell it back to the original owner of trademark, or to prevent him from using
his trademark as domain name, or to obtain some other unlawful benefits or to
cause harm to the trademark owner.6

DOMAIN HIJACKING

Domain Hijacking is a type of theft
where the attacker takes access of a domain name without the permission of the
original registrant. It can take place due to security flaws on your end or the
end of your domain/hosting company.7

 

 

DNS HIJACKING

It is a process by which a
person redirects queries to a domain name server (DNS). It can be
done using malicious software or unauthorized modification of a server.
Once the person has control of the DNS, they can direct other persons who
access it to a web page that looks similar, but contains additional
content such as advertisement. They also direct users to pages that contain malware or
a third-party search engine.8

DOMAIN NAME KITTING

It is the process of registering a
domain name to check its financial outcomes and then, if it doesn’t make adequate
advertising revenue, canceling it within the 5 days grace period for a full
refund.9
Many
persons register a domain name for and cancel it within 5 days and re register
it for another five days. This process is repeated so that their domain name is
registered but they need not pay for it.

CASE LAWS

Info Edge (India) Pvt.
Ltd. vs Shailesh Gupta And Anr. 98 (2002) DLT 499

The plaintiff in this case
registered the name ‘NAUKRI.COM’ in 1997 and was carrying on the business. In
1999, defendant registered two domain names ‘JOBSOURCEINDIA.COM’ &
‘NAUKARI.COM’ and carried on a business similar to that of the Plaintiff. So
Plaintiff filed a suit for passing off against the defendant and claimed an
ad-interim relief. Plaintiff said that Defendant did this in bad faith. Court
held that, a name used to identify an internet service is called a domain name.
The domain name serves the same function as the trademark and is not a mere
address. Though the word ‘Naukri’ is generic as it denotes and describes the
nature of work and business offered by the plaintiff, plaintiff has got
goodwill and reputation over that name. The defendant has adopted a
similar word as one of his two marks to induce and confuse innocent internet
users to come to the website of the Defendant, which shows his  dishonest intention and bad faith. Injunction
was granted in favor of the plaintiff and the defendant was restrained from
using the domain name ‘NAUKARI.COM’.10

Rediff Communication Ltd
v. Cyberbooth & Anr. AIR 2000 Bombay 27

Plaintiff registered the domain
name ‘REDIFF.COM’ on 8th Feb 1997. Defendants have obtained registered the
domain name ‘RADIFF.COM’ in 1999. Plaintiff filed a suit for permanent
injunction restraining the defendants from using the mark/domain name ‘RADIFF’
or any other similar name. Court held that when both domain names are
considered it is clearly seen that two names being almost similar in nature
there is every possibility of internet user being confused and deceived in
believing that both domain names belong to one common source and connection
although two belong to different persons. A domain name is more than an
Internet address and is entitled to the equal protection as trade mark. Court
granted permanent injunction restraining the defendants from using the
mark/domain name ‘RADIFF’ or any other similar name.11

Yahoo! Inc. v. Akash
Arora & Anr. 1999 PTC (19) 201 (Delhi)

Plaintiff owned the trademark
‘Yahoo!’ and domain name ‘Yahoo.Com’. The defendants adopted the name ‘Yahooindia’
for similar services. Plaintiff filed a suit against the defendants seeking a
permanent injunction for passing off and asked for an ad interim temporary
injunction restraining the Defendants from operating any business on internet
or otherwise under the domain name ‘Yahooindia.Com’ or any name which is
identical or similar to the Plaintiff’s trademark. By adopting a deceivingly similar
trademark ‘Yahooindia’ defendants are passing off their services as that of the
plaintiff. Trademark/domain name ‘Yahoo!’ of the Plaintiff is not registered in
India. The defendants have been using disclaimer to avoid any chances of
deception. Court held that the principle underlying the action for passing off
is that no man is entitled to carry on his business in such a way as to lead to
the belief that he is carrying on the business of another man or to lead to
believe that he is carrying on or has any connection with the business carried
on by another man. Injunction was granted in favor of the Plaintiff.12

CONCLUSION

The growth of Internet has altered
the lifestyle of humans. Using this highly developed technology for many
purposes has made it a salient feature in different aspects of human life. The
domain names are the most important elements in the cyberspace. With the
radical change and development in the concept of property, there is an unending
debate over the issue of virtual property status of domain names. Stretching
the concept of property to such an extent so as to include domain names seems
to be impracticable and not viable. The similarities between the domain names
and the trademarks have brought them together in the virtual world. The
conflicts between domain name and trademark have compelled the law makers to modify
traditional trademark laws and create new cyber laws. India doesn’t have a
specific legislation for domain names. Cases are being decided using precedents
and the Trade Mark Act, 1999. Steps are being taken both in the national and
international levels to find legal solution to the conflict between trade mark
and domain names.

*15BLB1035, 3rd year, BBA.LLB
(Hons), VIT Chennai Campus

1Chadha & Chadha IP, India:
Domain Name Laws, Mondaq,
(Jan. 26, 2018, 4:30 PM) http://www.mondaq.com/article.asp?articleid=519662.

2 Id

3 Priyanka Sharma, Domain Name
Protection In India, Cyber laws in
India, (Jan. 27, 2018, 10:10 AM) http://cyberlawsinindia.blogspot.in/2010/02/domain-name-protection-in-india.html.

4 Rodney
D. Ryder, Guide to Cyber Laws 241 (New Delhi: Wadhwa and Company  2007).

5 Graham
J. H. Smith, Internet Law and Regulation 160 (London: Sweet &
Maxwell 2007)

6 Hector
MacQueen, et al., Contemporary
Intellectual Property Law & Policy 675 (New York: Oxford University
Press 2008).

7 Anand Khanse, What is domain
hijacking and how to recover a stolen domain name, The Windows Club, (Jan. 28, 2018, 10:30 AM) http://www.thewindowsclub.com/domain-hijacking.

8 Computer Hope, DNS Hijacking,
Computer Hope, (Jan 28, 2018,
10:38 AM) https://www.computerhope.com/jargon/d/dnshijac.htm

9 GoDaddy, What is domain name
kiting?, GoDaddy, (Jan. 28,
2018, 10:59 AM) https://in.godaddy.com/help/what-is-domain-name-kiting-3676

10 Info Edge (India) Pvt. Ltd. vs
Shailesh Gupta,  (2002) 98 DLT 499
(India)

11 Rediff Communication Ltd v.
Cyberbooth & Anr, A.I.R. 2000 Bombay 27(India)

12 Yahoo! Inc. v. Akash Arora &
Anr. (1999) 78 D.L.T. 285 (India)

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