Digital Intellectual Property Rights: Domain Names

Introduction

Technological advancement has created a parallel cyber world to the physical world, where the Internet is at the heart of it. The Internet has permeated every single aspect of our life. It connects everyone across the globe. One need only to start typing in the address bar of a web browser and the search engine will give suggestions of what one might be searching for. Hit enter and get instant results of millions of websites. If you are searching for a particular business, say a manufacturer, but don’t know the exact website, you would simply type the name of the manufacturer in the address bar and click the first search result, expecting to be directed to the official website of the manufacturer. This is because businesses are increasingly using their names of the business itself, usually protected as a trademark, as domain names, i.e., names of websites.

Domain Name

1. Meaning

• A domain name is a unique name that identifies a website. For example, the domain name for Google is “google.co.in”. The domain name appears at the near the top of the browser, in the address bar and is part of the address of the website, which is called “Uniform Resource Locator” or “URL”.
• Prefix: Some domain names have the prefix “www”, the acronym for the “World Wide Web”, attached to it. This acronym does not form part of the domain name.
• Suffix: All domain names have a suffix attached to it which denotes different things. For example;
• Type of website: “.com” is usually used for commercial purposes whereas “.org” indicates a non-governmental organization.
• Country code: Helps to identify the location and audience for the website. The “.in” in Google’s domain name indicates the location to be India.
• Computers access websites from its location on an internet server. This internet server is defined by the Internet Protocol (IP) address, which is a combination of numbers and dots. The DNS translates the domain name to its corresponding IP address so that computers can access the website. The DNS does the same for email addresses.

2. Cybersquatting

Cybersquatting is the registration of trademarks and trade names as domain names in bad faith. Cybersquatters register trademarks, trade names, business names etc with the motive of making a profit by selling the domain name to the rightful owner of such trademark, trade name or business name. As long as the cybersquatter owns the domain name, the rightful owner cannot register his own trademark or trade name or business name, etc as the domain name. Thus, the trademark can be held hostage by the cybersquatter unless a ransom is paid. Additionally, the cybersquatter can misuse the domain name to confuse existing or potential customers and to degrade the reputation or goodwill of the business.

Since domain names are unique identifiers for business, they should be short and catchy to attract the attention of customers. Domain names can be purchased and registered on various registers such as GoDaddy, Namecheap, Hover etc. One a domain name is purchased, the owner owns the domain name as long as it is renewed, irrespective of whether a website has been created or not. This increases the issue of cybersquatting as cybersquatters can buy up names and wait to sell them for a large profit, making it difficult for businesses to use words or phrases which would have been uniquely attributed to their business and attract customers.

Cybersquatting can be identified by searching the proposed domain name on the internet. There are 3 results for such search;

1. The search does not direct to a functioning website but goes to a site stating “this domain is for sale” or “under construction” or “can’t find a server”. It is extremely likely that it is a case of cybersquatting as the absence of a real website indicates that the domain name has been bought with the sole purpose of selling it back to a business at a high price.
2. The search directs to a functioning website that is comprised primarily of advertisements of products and services related to the trademark of a business. The cybersquatter is trading off the popularity of a business to sell ads to the competitors.
3. The search directs to a website that appears to be reasonably functional, has a reasonable relation with the domain name but does not compete with the products or services of a business. Then, it is not a case of cybersquatting but may be a case of trademark infringement.

Cybersquatting is of the following types;

• Typosquatting: Also referred to as ‘URL Hijacking’, typosquatters rely on spelling mistakes, i.e., ‘typos’ made by internet users in typing web addresses in a web browser. A fake website may also be created, which looks similar to the legitimate website that the internet user was trying to reach. Such fake websites are used to;
• Compel legitimate business owners to buy such domain names.
• Generate more web traffic.
• Spread malware.
• Identity Theft: Cybersquatters may buy expired domain names, which were unintentionally not renewed by the owners, and link them to duplicates of the websites of the previous owner. Thus, internet users would be misled into believing that they are visiting the websites of the previous domain name owners.
• Name Jacking: Registration of domain names associated with names of individuals, usually celebrities and well-known public figures. Name jackers benefit from the web traffic generated.
• Reverse Domain Name Hijacking – Where a trademark owner attempts to secure a domain name by falsely accusing the holder of the domain name of cybersquatting.

According to WIPO’s news last year, the COVID-19 pandemic has fuelled an increase in cybercrime, including cybersquatting as most of the world is heavily relying on the Internet and related services for running their business or staying informed, shopping and watching online content. Domain name registrars have also reported an increase in the registrations of domain names, some of which are, subsequently, being used to spread misinformation or to engage in illegal and fraudulent activities.

Protection under Trademark Law in India

The word “trademark” has a wide connotation. Any mark used by a business in the trade or business in any form, for distinguishing itself from others, can qualify as a trademark. The Indian judiciary has extended protection of trademark law to domain names.

The case of Yahoo!, Inc. vs Akash Arora & Anr. [78 (1999) DLT 285] was the first case dealing with the question of whether domain names can be protected under trademark law. Yahoo! was the most popular web portal back in the 90’s, before Google. The plaintiff had initiated a suit for a decree of permanent injunction, restraining the defendants, their partners, servants and agents from operating any business and dealing in any services or goods in any manner on the Internet under the trademark/domain name ‘Yahooindia.com’ or any other mark/domain which is identical with or deceptively similar to the plaintiff’s trademark ‘Yahoo!’. This application was made by the plaintiff for a temporary injunction against the defendant, during the pendency of the suit.

It was submitted by the plaintiff that a domain name/trademark adopted by the plaintiff is entitled to equal protection of passing-off. The trademark ‘Yahoo!’ and the domain name ‘Yahoo.com’ were well-known and had acquired distinctive reputation and goodwill. It was argued that the defendants, in adopting the domain name ‘Yahooindia.com’ were passing off the services and goods of the defendants as that of the plaintiff.

The plaintiff further submitted that Internet users were familiar with businesses using domain names which incorporate their name. Hence, users simply type in the name of the business or the product or service in the address bar of an Internet browser and expect to find the genuine website of a business. It would not be unusual for someone looking for an authorised ‘Yahoo!’ website with India-specific content to type ‘Yahooindia.com’. Instead of reaching the plaintiff’s genuine website, the said person would get directed to the defendant’s website and assume it to be the official website of ‘Yahoo!’. The plaintiff, in fact, had accused the defendant of being a cybersquatter.

The main argument of the defendants was that the Trade and Merchandise Mark Act, 1958 was concerned only with goods and not services. Therefore, no action of infringement of trademark, whether registered or unregistered, of services could be brought against the defendants.

The Delhi High Court (“the Court”) observed that the domain name “Yahoo.com” was registered in the plaintiff’s favour since January 18, 1995. Further, the trademark “Yahoo!” and its variations was registered or pending registration in 69 countries. Registration was pending in India. The Court stated that the passing-off remedy is a common law remedy. The underlying principle 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.” Thus, a case of passing-off could be made out for both goods and services. It was obvious that the two parties are competitors as they operate in overlapping or similar fields of businesses and hence, there is immense possibility of deception and confusion among Internet users because of the similar domain names. The word “Yahoo!” had acquired distinctiveness and uniqueness and is associated with the business of the plaintiff.

On the above observations, the Court declared that the plaintiff had made a prima facie case and awarded a temporary injunction against the defendants.

Similar observations were made by the Bombay High Court (“the Court”) in the case of Rediff Communication Limited vs Cyberbooth & Anr. [1999 (4) BomCR 278]. In this case, the Court also held that Internet domain names are of importance and can be a valuable corporate asset and such domain name is more than an Internet address and is entitled to protection as a trademark.

The case of Tata Sons Ltd. v Mr. Manu Kishori & Ors. [90 (2001) DLT 659] also had similar facts and decisions as the above cases. Here, the Delhi High Court, particularly referring to the above cases, stated that the law was well-settled that with the advent of modern technology, domain names or Internet sites are entitled to protection as a trademark because they are more than a mere address. The rendering of services on the Internet are entitled to the same protection as goods and services under the trademark law.

The Trade and Merchandise Marks Act, 1958 was replaced by the Trademark Act, 1999 (“the Act”) which gives protection to both goods and services. Section 2(zb) of the Act defines “trade mark” as a mark which is;

• capable of being represented graphically, and
• capable of distinguishing the goods of services of one person from those of others, and
• may include the shape of goods, their packaging and combination of colours.

Section 2(m) of the Act states that “mark” includes;

• device,
• brand,
• heading,
• label,
• ticket,
• name,
• signature,
• word,
• letter,
• numeral,
• shape of goods,
• packaging, or
• combination of colours, or
• any combination thereof.

Domain names, oddly, do not find a place in the Information Technology Act, 2000. Neither does cybersquatting. Thus, there are no penal provisions for the protection of domain names. In absence of any specific legislation, domain disputes are decided as per provisions of the Trademark Act. The Supreme Court has recognized the lacunae in law in the case of Satyam Infoway Ltd vs Sifynet Solutions Pvt Ltd [AIR 2004 SC3 540] by observing that trademarks and domain names operate differently. While the protection of trademarks is territorial in nature, domain names transcend geographical boundaries. Thus, domain names need worldwide exclusivity and national laws may be inadequate to effectively protect domain names.

International Dispute Resolution System

1. Introduction

The Uniform Domain Name Dispute Resolution Policy (UDRP) sets out the legal framework for disputes relating to domain names. The Internet Corporation for Assigned Names and Numbers’ (ICANN) Board of Directors adopted the UDRP in August, 1999, largely based on the recommendations contained in the Report of the World Intellectual Property Organisation (WIPO) Internet Domain Name Process dated April 30, 1999. All ICANN-authorised registrars (who register domain names) must follow the UDRP for dispute resolution.

Under the UDRP, most types of trademark related domain name disputes must be resolved by agreement, court action or arbitration before a registrar will cancel, suspend or transfer a domain name. To invoke UDRP, the trademark owner must either;

• file a complaint in the proper jurisdiction against the holder of the domain name, or, where appropriate, ad-rem action regarding the domain name, or
• in case of abusive registration, for example cybersquatting, submit a report to an approved dispute resolution service provider.

The WIPO Arbitration and Mediation Centre is one of the dispute resolution service providers approved by ICANN.

2. Abusive Registrations in Domain Names

The complainant must prove each of the following elements are present;

1. The domain name is identical or confusingly similar to a trademark or service mark in which he has rights.
2. The holder of the domain name has no legitimate rights or interests in the domain name.
3. The domain name is registered and being used in bad faith.

[Paragraph 4(a) of the UDRP]

Paragraph 4(b) of the UDPR gives examples of circumstances which would be considered to be registration of domain name in bad faith;

1. Circumstances indicating that the domain name has been purchased or acquired primarily for the purpose of selling, renting or transferring the domain registration in any manner to the trademark or service mark owner or to a competitor of such owner, for valuable consideration in excess of the documented out-of-pocket expenses incurred to purchase or acquire the domain name. In a nutshell, circumstances indicate cybersquatting.
2. The domain name is registered in order to prevent the trademark or service mark owner from using the mark as a domain name, provided that the holder of the domain name has a pattern of such conduct.
3. The domain name has been registered primarily for the purpose of disrupting the business of the competitor.

3. Administrative Panel

Dispute resolution service providers administer disputes by appointing an administrative panel which is composed of 1 or 3 independent and impartial persons, independent of the dispute resolution service provider, ICANN, the concerned registrar(s) and parties, in accordance with the UDRP Policy and Rules.

Rule 10 of the Rules for the UDRP (“the Rules”) provide the general powers of the administrative panel;

1. Shall conduct administrative proceeding in such manner as considered appropriate, in accordance with the UDRP and Rules.
2. Shall ensure parties are treated with equality and each party is given a fair opportunity to present his case.
3. Shall ensure expeditious administrative proceedings. The administrative panel may, on the request of a party or on its own motion, extend the time period fixed by the Rules or the panel in exceptional cases.
4. Shall determine the admissibility, relevance, materiality and weight of the evidence.
5. Shall decide a request by a party to consolidate multiple domain name disputes in accordance with the UDRP and the Rules.

The remedies provided by the UDRP is limited to cancellation of the domain name or transference of the domain name to the complainant [Paragraph 4(i) of the UDRP]. Further, as per Rule 15 of the Rules, if the administrative panel determines that the dispute is not within the scope of Paragraph 4(a) of the UDRP, it will state so in its decision. After considering the submissions, if the administrative panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the holder of the domain name, the administrative panel will declare it so in its decision and also, that the action constitutes an abuse of the administrative proceeding.

Conclusion

Domain names are unique identifiers of businesses online. Since the Internet can be accessed by anyone from anywhere, domain names require a protection which will be globally applicable. Technological advancement is a double-edged sword as cybercriminals are becoming difficult to nab. India does not have any specific legislation for domain names nor is there any provision in the IT Act, 2000 declaring cybersquatting as a cybercrime. The law needs to keep up with technology and safeguard users from cybercrimes.