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Alliance Center for
Intellectual Property Rights


ANALYSIS OF CYBERSQUATTING AND TRADEMARK CHALLENGE IN INDIA’S LEGAL LANDSCAPE

August 15, 2024

*Ms. Shaik Ishrath Sadiqua

INTRODUCTION:

In this era of revolutionary communication, there has been a significant increase in the need for, dependance on, and usage of the internet. It serves as a platform for the companies and individual to showcase their profiles, promote, advertise, sell goods and provide services. However, amidst the many positives, there are also some drawbacks, such as the insidious practice of cybersquatting.

The act of cybersquatting involves the registration of domain names, trademarks, trade names, company names and other similar spelled terms to benefit from the reputation, prestige of established entities by misleading consumers. Although cybersquatting is recognised as illegal in India, but there is no specific law addressing it. Instead, issues or cases associated with it fall under the Trade Mark Act of 1999. Cybersquatting introduces several issues that could pose significant problems in the future, to address this there must be increased awareness and acknowledgment of the issues, coupled with bringing of specific laws to combat them effectively.

DOMAIN NAME AND TRADE MARK

A domain name is a string of characters, includes letters, numbers, and dashes, that is part of URL (uniform resource locator) to access web pages. Each website has a unique domain name which serves as its internet address and a means of communication for conducting commercial business. Whereas a trademark is an exclusive identity of the goods or services of the owner. According Trade Marks Act, 1999 trademark is defined as "a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors."

CYBERSQUATTING AND IT’S COMMON TYPES

Cybersquatting or domain squatting is the act of registering, selling or using a domain name with the intent to profit from the goodwill of someone else’s trademark. The person who practices cybersquatting are known as cybersquatters they are third party who do not own trademark in question, they register the third-party trademarks, trade-names relying on their reputation and exploit it. This further creates confusion to the customers also may demand for selling domain name to the rightful owner with a high fee.

Example: misspelling the name of the site like typing “lulumelon.com” instead of “lululemon.com”.

The act of cybersquatting includes purchasing domain names that consists the names of existing businesses and reselling the names to other businesses for profit, with the intent to mislead the customers. The most common types of cybersquatting include typosquatting, identity theft, name jacking, reverse cybersquatting.

  • Typosquatting also known as URL hijacking, here the hackers register the domains which are misspelled deliberately mostly of a well-known website.Example: Adidas.com is one such alternative to addidas.com
  • Under Identity theft involves unlawfully or illegally obtaining someone else’s information without their consent to get financial profit. By using this information fake websites are created which look similar to that of real ones.
  • Reverse-cybersquatting often referred as ‘reverse domain name hijacking’ occurs when a specific trademark owner attempts to get a domain name by making false claims that the domain name holder is a cybersquatter
  • Under Name jacking cybersqatters create or register the domain name utilizing the names of famous person, public figure or celebrity. The squatters through impersonation will benefit from their reputation thereby creating web traffic

CYBERSQUATTING IN INDIA: LEGAL REMEDIES AND NOTABLE CASES

There isn’t any specific legislation in India which protects or explicitly refers to dispute resolution relating to domain names. However, the cybersquatting cases are decided and delt under the Trade Marks Act, 1999, here it provides two kinds of reliefs that is remedy of infringement and remedy of passing off. The remedies to recover the losses caused by the cyber squatters includes bringing arbitration proceedings and bring lawsuit against the registrant of domain name under the ICANN (Internet Corporation for Assigned Names and Numbers), UDRP (Uniform Dispute Resolution Policy) and INDRP (.In Domain Name Dispute Resolution Policy).

The lack of specific provisions or legislation is one of the major drawbacks as it could lead to issues like not being able to fully cover all aspects of cybersquatting which will create inconsistencies and gaps, it can also limit the effectiveness of handling cross-border disputes. The existing legal remedies and process to resolve these issues are complex and time consuming. Also, there is lack of awareness about cybersquatting which can also result in underreporting and so on. These gaps could often provide opportunities for cybersquatters to exploit.

Yahoo Inc. v. Akash Arora 1999 PTC (19) 201 Delhi, is the first domain squatting case in India, US bases Yahoo Inc., filed injunction sit against defendant Akash Arora who registered similar trademark as ‘Yahoo.com’. The Delhi High Court issued injunction in favor of plaintiff as defendant infringed on Yahoo Inc’s trademark and confused consumers easily despite defendant gave disclaimer or additional word “India” in its domain name.

Satyam Infoway Ltd. v Sifynet Solutions 2004 (6) SCC 145,the Supreme Court ruled in favor of the plaintiff, Satyam Infoway, who had registered the domain name ‘sifynet.com’. The respondent had registered similar domain names, ‘siffynet.com’and ‘siffynet.net’. The court affirmed that domain names serve as business identifiers, akin to trademarks, and that actions for passing off can apply to domain name disputes.

In the Amul case someone purchased domains like Amuldistributor.com, Amulboard.com, Amuldistributorindia.com and created phishing sites for company. They also created bogus bank accounts, sent fake forms via mails, asked to pay fee to become Amul distributor and franchisee. This activity was executed from 2018 to 2020, later.

Adobe Inc v. Namase Patel (2022/DHC/005253), the Intellectual Property Division of the Delhi High Court heard a case of cybersquatting where the squatter had registered and was using the domains www.addobe.com and www.adobee.com. These were deceptively similar to the plaintiff's official domain, www.adobe.com.

CONCLUSION

In the prevailing world of internet and social media, it is certain that cybersquatting is a menace with no boundaries. The courts of India have decided many cases associated with cybersquatting. The issue of cybersquatting isn’t limited to misleading consumers it also includes reputation or brand image damage and monetary damages. There are several key takeaways in the US Anti-Cybersquatting Consumer Protection Act (ACPA), here it offers clear and precise definitions, strong protection for trademark holders enabling the trademark holders seek damages. It also has specific criteria to determine bad faith intent, the legal remedies include statutory and actual damages as well as transfer of domain names, includes international cooperation, all these serve as key takeaways for India. Considering all the above aspects and drawbacks, it shows that there is a need to address the issue of cybersquatting. The protection of trademarks and intellectual property in India could be enhanced by implementing similar measures as mentioned in the takeaways above, we can curb the detrimental impact of cybersquatting through strengthening the legal frameworks, raising public awareness, ensuring fair business practices in the digital era.

REFERENCES:

  1. Nikhil Mishra and Damini Sharma, Cybersquatting and Trademark Issues: An analysis with reference to India (2021), Manupatra,( (last visited: July 25th, 2024) https://articles.manupatra.com/article-details/Cybersquatting-and-Trademark-Issues-An-analysis-with-reference-to-India.
  2. Anshuman Singh, What is Cybersquatting? (2024), shisksha Online, (last visited: July 25th, 2024) https://www.shiksha.com/online-courses/articles/cybersquatting/#:~:text=The%20act%20of%20registering%2C%20selling,also%20known%20as%20domain%20squatting)
  3. Nitesh Chouhan, Cybersquatting Involving Trademarks and Service Marks (2023), Wissen Research, (last visited: July 25th, 2024) https://www.wissenresearch.com/blog/cybersquatting-involving-trademarks-and-service-marks/
  4. Raunaq Bali, A primer on Cyber Squatting (2022), IPTSE, (last visited: July 25th, 2024)
  5. Ashwin Madhavan, Cybersquatting is a menace which has no boundaries and is similar to terrorism, Indian Law Journal, (last visited: July 25th, 2024) https://www.indialawjournal.org/archives/volume1/issue_2/article_by_ashwin.html.

Authors:
*Ms. Shaik Ishrath Sadiqua
3rd year, BALLB (Hons.)
Student, Alliance University, Bengaluru

Disclaimer: The opinions expressed in the article are the personal opinions of the author. The facts and opinions appearing in the article do not reflect the views of the Alliance Centre for Intellectual Property Rights(ACIPR) and the Centre does not assume any responsibility or liability for the same.