Handling Domain-name Squatters

“What’s in a name? A Rose by any other name would smell as sweet”. So said Shakespeare little realizing that names could acquire an unprecedented significance for people and businesses, especially in the cyber world. The advent of new domain extensions like .biz, .info, .aero, .shop, .inc, .ltd, club, .tech and .travel, has rekindled the debate over domain names, particularly in the context of cyber squatting. 

Every computer or a website on the Internet has a particular IP (Internet Protocol) address used for inter-computer communication. Each IP is distinctive and comprises a set of numerals. However, alphanumeric identities (domain names), which are easy to remember, are used to reach an IP address. Thus domain names like hotmail.com, yahoo.com or rnclegal.com may refer to a particular IP address. 

Domain names carry with them the potential of being commercially exploited. Since, the Internet is fast becoming a platform for transaction of business, domain names have come to acquire the same value as a trademark or the business name of a company. However, due to its easy accessibility, this medium is susceptible to attack from domain infringement and cyber squatting. Therefore, a corporate entity needs to protect its trademark and other intellectual property from illegal exploitation on the Net. Here’s an overview of the issues involved with cyber squatting and how you can protect your company’s domain name.

Grounds for action 



Unfortunately, our only cyber law resource–Information Technology Act, 2000–does not tackle the issue of domain squatting. Bereft of any statutory protection, common legal principles of equity decide the fate of domain infringement. 

If your domain name is being infringed you can take action on two grounds. One, you can take action on the grounds that your trademark and intellectual property has been violated. The other course of action can be on the grounds of passing off. In the latter case you have to prove that the squatter is passing off his goods or services as yours. In such cases, the court applies “likelihood of confusion” test. If it can be established that a domain name used by a person is likely to cause confusion in the mind of common public or the end users that the domain or the products and services projected on the website belong to another person, the courts would readily grant an injunction against the use of the domain name for such purposes and also evict the cyber squatter.

Recently Delhi High Court granted a permanent injunction against the offender from using domain name

drreddyslab.com and ordered Network Solutions, the domain-registering entity, to transfer the domain name to Dr Reddy’s Laboratories. Mumbai High Court has evicted Cyberbooth from the domain

radiff.com on an action brought by Rediff on the ground that radiff.com was a deceptively similar mark, especially where there is a common field of activity and Rediff being the rightful owner of its domain was entitled to seek eviction of Radiff. These cases assume significance as they have been finally decided by the Courts and serve as a precedent in the absence of express legal mandate while many other cases of domain infringement and cyber squatting have been either settled out of court or decided by arbitrators. Some other instances of eviction of domain squatters have been

citibankindia.com, jrdtata.com,

mahindra.com, yahooindia.com,

microsoft.org, enike.com,

juliaroberts.com and airnewzealand.com. 

Preventive action



A common remedy followed by companies is defensive registration under many domain extensions. This may be very expensive and yet not an efficacious way out. Also, this does not protect against domains using misspellings or deceptively similar marks. 

The most effective mode of securing interest in a particular mark or domain is to obtain a registration of trademark. A registered trademark is a prima facie proof of ownership of the mark or trade name and affords good evidence in an action for infringement or for eviction brought by the owner. In a recent case, Delhi High Court granted relief to proprietors of Tanishq even where the trademark application was pending. Therefore, you must register your brand to protect your intellectual property.

A remarkable step towards redressal of domain name related disputes has been the policy of ICANN (Internet Corporation for Assigned Names and Numbers). ICANN is a non-profit organization responsible for IP address space allocation, protocol assignment and DNS management. ICANN policy contemplates dispute resolution using on-line arbitration by National Arbitration Forum or WIPO (World Intellectual Property Organisation) Arbitration and Mediation Centre. The whole process takes about 45 days and is conducted on-line. The expenses involved are about US $1000, which is a fraction of what litigation in regular courts may cost. WIPO has been instrumental in securing Benette Coleman the eviction of domain squatters from thetimesofindia.com and theeconomictimes.com, which were deceptively similar to their brands of newspapers. 

The US has a comprehensive anti-cybersquatting law of 1999, which deals with the issue strictly. Among other grounds mentioned above, a remedy is also available on the ground of dilution of famous marks, which makes it easier for the big corporates to obtain eviction of deceptively similar domains. However, since its enactment, our Information Technology Act has made little progress in enforcement or addressing critical issues such as intellectual-property protection on the Net. India needs drastic measures for reframing its intellectual property laws to bring into account the Internet reality. Strengthening of domain and brand protection laws would result in greater confidence amongst foreign investors and would go a long way in affording greater development for India. 

Jasmeet Singh Wadehra