As the scope of Internet is expanding day by day and more and more businesses are moving on the internet. sites like www.ebay.com, www.facebook.com, www.gmail.cometc. Have earned lot of reputation and are identifiable by their domain name then by any other trademark. While trademark is for physical world, domain names are the trademarks in the virtual domain. However Indian trade mark law does not recognizes domain name as trademarks, But still domain name work as a trademark, they are equally vulnerable to get infringed, diluted by the use of any other similar domain name.
Cybersquatting-This is a practice done by those people who are intending to infringe the already used domain names specially those domain names which have a goodwill and reputation, they use the unused space in the domain name space and just register a domain name which is deceptively similar to the reputed domain name and then they resell the deceptively similar domain name to either those persons who want to en cash upon the goodwill and reputation of the well known domain names, or to the reputed sites themselves to protect their good will they buy those domain name at an inflated price.
The World Intellectual Property Organization (WIPO) Arbitration and Mediation Center deals with domain name disputes under the new Uniform Dispute Resolution Policy applicable to generic top-level domain names adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999. The WIPO Center’s Domain Name Dispute Resolution service has been established specifically to administer domain name disputes with the availability of electronic case filing facilities and a well developed case administration system.
Uniform Domain Name Dispute Resolution Policy was formed by the recommendation of (WIPO) and it is thereby formed to facilitate the dispute resolution due to use of domain name in bad faith.
i. If the use of an Impugned Domain is infringing upon the reputation or the goodwill of any other domain name then the impugned domain can be blocked by the body.
ii. If the Impugned domain is made to make profit from reselling because of its infringing nature, the body keeps a check on these practices.
iii. The UDNDRP keeps a check on non bon fide use of trade name.
iv. It keeps a check on those domain names which causes confusion in the people.
The first case of cybersquatting was of WWF where the respondent had allegedly made a site www.worldwrestlingfederation.com and offered it to sell it to WWF at high dividend, WWF filed the suit against the respondent and found out that the alleged domain name is perhaps made in bad faith and hence was infringing upon the reputation and goodwill of the respondent. So the forum ordered to transfer the impugned domain name to WWF.
In India the first case of cyber squatting was of Yahoo Inc. V. Aakash Arora & Anr. Whereby the registered a deceptively similar domain name yahooindia.com, it was found banking upon the reputation and goodwill of yahoo.com
The Bombay High Court in Rediff Communication v. Cyberbooth & Anr AIR 2000 Bom. observed that the value and importance of a domain name is like a corporate asset of a company. In this case the defendant had registered a domain name radiff.com which was similar to rediff.com. The court gave a decision in favor of the plaintiff.
In another case the defendant registered a number of domain names bearing the name Tata. It was held by the court that domain names are not only addresses but trademarks of companies and that they are equally important. (Tata Sons Ltd v. Monu Kasuri & others 2001 PTC 432)
In Satyam Infoway Ltd. v Sifynet Solutions 2004 (6) SCC 145domain names www.siffynet.com and www.siffynet.net was found to be deceptively similar and Infringing upon the reputation of satyam, In this case The Supreme Court held that “domain names are business identifiers, serving to identify and distinguish the business itself or its goods and services and to specify its corresponding online location.” The court also observed that domain name has all the characteristics of a trademark and an action of Passing off can be found where domain names are involved. The decision was in favor of the plaintiff.
With the initiative of the WIPO and Indian laws now with synchronization with the WIPO, it is now a clear law that cybersquatting is now being treated at par with the trademark infringement, because merits on which the cybersquatting cases are decided are at par with that of trademark infringement .However still as the arena of cyber space is increasing day by day and with innovative features like cloud computing and businesses largely operating online, Even various business transactions are being handled from domain addresses than from physical addresses. There is a need to setup a specialized forum in the country to handle domain name related disputes. There must also be a specialized mechanism to dispose off these domain related disputes in the lines of UDNDRP.
By-:Nitish Banka(Legal Consultant based in New Delhi)
Practice: Civil and Criminal Litigation along with corporate legal consultation
Professional Memberships | Member of Bar Council of India;
Education | B.E (HONS) +LL.B. Faculty of Law, University of Delhi;
Nationality | Indian
Area of Expertise | Civil , Criminal Litigation along with corporate legal support
Nitish Banka, a Member of Bar Council of India is practicing in the field of Civil and Criminal law as well as corporate legal consultant to various firms. He is a techno legal professional with an immense experience with corporate IT firms like HCL technologies as well in corporate law firms like Anand & Anand, He has also worked with international NGO’s like World Wildlife Fund for Nature(WWF-INDIA) and United Nations Development Programme(UNDP) with their short term project, before starting his own law firm venture as LEXSPEAK LEGAL based in New Delhi with an objective is to ensure justice to the clients-Individuals and Corporates through legal process.
Nitish Banka founder of the firm Lexspeak Legal has successfully represented clients before various District Courts and Consumer Forums within Delhi, Karnal, Alwar & Goa in the matters pertaining to property & builder disputes, mutations, cheque bounce, recovery of loan default, eviction suits, specific /general performance of the contract, criminal trials including breach of trust, forgery, cheating and conspiracy, cross examination, drafting petitions, written submissions, notices, financial & tax investigation, fraud prevention, procedural coordination. He has also actively got relief in various consumer forums and courts for his clients. Nitish Banka also actively involved in startups with consultations and work related to Agreements, dealing with government departments, due diligence, along with guiding his corporate clients with preventive litigation support.
He also has creditable exposure before High Court of Delhi and Hon’ble Supreme Court of India in various Writ petitions and Special Leave to Petition and successfully got relief for his clients. He has also an expert in consumer forums all across India with online consumer case support. In his zeal to excel academically and reach new frontiers in jurisprudence he has written articles on the evidentiary value of the oral evidence & documents produced in the court, wills and Probate. He is also running a very successful blog www.lexspeak.in since last 5 years.