Cyber Squatting And Related Laws

This article gives an insight into what exactly Cyber Squatting is, how it amounts to trademark infringement, provision for punishment, remedies available for the victim This article also contains some important landmark cases related to Cyber Squatting in Indian.

Introduction

In today’s era, the Internet has become more popular than ever. It has brought people together. It has made our lives easier as we can literally get anything at our doorsteps. It is a source of information and entertainment. However, it also exposes us to malwares, vires, hate, harassment, money related frauds. Most importantly, it causes threat to our privacy. There have been increasing cases of Cybercrimes around the world. Cybersquatting is one such crime which is committed over the internet is Cybersquatting. It started emerging in the middle of 1990s. It is basically a fraudulent act wherein a person buys a domain name like that of an existing brand/ company with an aim to earn money. The saddest part is that there is no law or provision to punish such cyber squatters which acts as an encouraging factor for infringers.

What Is Cybersquatting?

The term Cybersquatting was defined by the Delhi High Court in Manish Vij v. Indira Chug as According to United States Federal Law, Cyber Squatting which is also known as domain squatting‘ cybersquatting’ as “an act of obtaining fraudulent registration with an intent to sell the domain name to the lawful owner of the name at a premium. It involves buying or using domain names that use names of an existing business with the intention to sell the name for a profit or to earn money from the traffic generated on the website.

Oftentimes, the cyber squatters offer to sell back the domain name to the person or company who owns that trademark at an unreasonably high value.

They usually earn profits by traffic generated on the website. The Biggest concern is that it gives rise to the offence of Trademark Infringement and Indian Trademark Act, 1999 does not incorporate any provisions for punishment for wrongdoer or remedy for victims.

The current situation calls for an urgent need of implementing a strict law to have the cybersquatters punished and to avoid crimes like these in the future.

What Is Domain Name And Why It Is Important To Register Domain Name

Domain Name is the name of an individual’s website. It is like an address as it makes internet users locate an individual’s website. Today, every big company has a domain name. It provides a unique identity to the company. When a person fraudulently acquires or uses a domain name which is similar or identical to another person’s domain name, it amounts to Trademark infringement.

According to recent judgements of the court, a person’s domain name is an asset as it has all features of a trademark and has the possibility to create confusion in the mind of people.

Companies buy domain names because it gives it a professional feel. It is also important for the companies to register their Domain Names to avoid any copyrights and trademarks issues.

Having one’s domain name registered makes it easier to take actions against the defendant and to claim remedies in case of trademark infringement.

Cybersquatting And Trademark Infringement In India

As of now, India does not have any law that deals with Cyber Squatting Crimes in India. We need strict laws that incorporate punishments for Cybersquatters and to avoid these crimes in future.

However, the victims can take the following steps to recover from damages caused by Cyber Squatters:

  1. The victim can bring arbitration proceedings under the Internet Corporation for Assigned Names and Numbers (ICANN).
  • The victim can file a lawsuit against the Cybersquatter under various courts in India.
  • The victim can send cease and desist letter to the cybersquatter.
  • The victim can apply for passing off order against the Cyber squatter.

There are no specific provisions for Domain Names under any enactments in India. The courts in India usually apply Trademark Act, 1999 to cases involving domain name disputes. Under Trademark Act,1999, two kinds of remedies are available for the victims against cybersquatters. They are as follows:

  1. Remedy of Infringement

When a trademark is infringed, the victim can take both civil and criminal action against the infringer.

Civil Remedies

  • Injunction / stay against the use of trademark
  • Appropriate Damages
  • The infringer will be entitled to hand over the profits earned to the victim
  • Appointment of a local commissioner by the court for custody or sealing infringing materials
  • Application can file under Order 39 rule 1 & 2 of CPC for grant of temporary or ad interim ex- parte injunction

Criminal Remedies

  • Section 103 and 104 of the Trademark Act,1999 provides for imprisonment for a term not less than six months but which can extend to three year and fine which will not be less than INR 50000/- which may extend to INR 200000/
  • Criminal Punishment for infringement of unregistered trademark is provided in Indian Penal Code, 1860.
  • Section 105 of the Trademark Act, 1999 provides for excessive punishment for trademark infringement.
  • Police have the authority to seize the power of the infringer.

Remedy Of Passing Off

Passing Off is a law of tort which is used to enforce unregistered trademark rights. It prevents one person from misrepresenting his goods or services as that of another.

To claim remedies under Passing Off, following conditions must be satisfied:

  • The Trademark or Victim’s business should have a reputation.
    • There must be misrepresentation by the Infringer.
    • It must cause the victim injury or loss to the victim’s business.

Cybersquatting Cases In India

Yahoo Inc. v. Akash Arora & Another 19 February, 19991

Yahoo Incorporation (plaintiff) is the owner of Yahoo.com which provides various services on the Internet. Akash Arora (defendant) adopted a similar domain name YahooIndia.com. Yahoo contended that the act of Akash Arora amounted to ‘’passing of.’’ The Court held Yahoo Inc. can restrain Akash Arora from using YahooIndia.com because it was a deceptively similar name which had high possibility to confuse the public. In this case, it was decided that domain name is like trademark, so it should be protected as a trademark.

Rediff Communication Ltd v. Cyberbooth 22 April, 19992

The plaintiff Rediff Communication Ltd is an online media company which provides services through the Internet. Rediff Communication registered a domain name Rediff.com. The defendant registered a similar domain name Radiff.com. The plaintiff filed a suit for permanent injunction restraining the defendant from using the domain name Radiff.com. The court held that high importance and value is attached to domain name, so it is entitled to equal protection as trademark.

Dr Reddy’s Laboratories Ltd v. Manu Kosuri 20013

In this case, the defendant registered a domain name ‘’drreddyslab.com’’, which was identical to plaintiff’s trade name. The court held that domain names hold an important position in e-commerce and held the defendant liable under passing off. A permanent injunction was granted in favor of the plaintiff. The defendant was restricted from using the trademark/domain name ‘’drreddyslab.com’’ or any other domain name identical to the plaintiff’s domain name.

Tata Sons Ltd v. Manu Kosuri & Ors. 20014

In this case, the defendant registered a series of domain names incorporating the trademark ‘’TATA’’. The Court held that internet domain names are not merely internet addresses but are in fact corporate assets that are very important and valuable and are entitled for protection as registered trademark.

Manish Vij v. Indra Chugh, AIR 2002 Del 2435

In this case, the court provided definition of cybersquatting and held that “an act of obtaining fraudulent registration with an intent to sell the domain name to the lawful owner of the name at a premium”.

Satyam Infoway Ltd v. Sifynet Solutions Pvt. Ltd. 2004 (6) SCC 1456

This is the first case decided by the Supreme Court of India regarding domain name protection. In this case, the respondent Sifynet Solutions Pvt. Ltd. had registered domain names

 www.siffynet.com and www.siffynet.net which were similar to the plaintiff’s domain name. The plaintiff had a reputation in the market and had registered the name sifynet with ICANN and WIPO. Also, the word Sify was first coined by the plaintiff. The appellant filed a suit against the respondent and filed an application for temporary injunction. The Supreme Court held that Indian Trademark Act, 1999 is applicable in regulation of domain names. The judgment was given in favor of Satyam Infoway. The court was of the view that domain names have all features of trademarks and considered the confusion that can result from the use of identical domain names. Thus, the court declared that domain names are protected under the law relating to passing off as delineated in the Trademarks Act.

SBIcards.com v. Domain Active Property Ltd7

In this case, World Intellectual Property Organization ordered (Defendant) the Australian entity to transfer the Sbicards.com to the Indian Company as it was found that the Defendant has hijacked the domain name with bad intentions of selling it later for a huge amount to the State Bank of India.

Titan Industries Ltd v. Prashanth Koorapati & Others 19988

In this case, the plaintiff registered ‘Tanishq’ as a trademark for manufacturing and marketing of jewelry and watches in various countries. The defendant registered ‘Tanishq.com’ as its domain name. The court held that delivered judgement in favor of plaintiff and granted an ex-parte-ad-interim injunction restraining the defendant from using that domain name or any name like it as it would lead to passing off.

Maruti Udyog Ltd v. Maruti Software Private Ltd9

In this case, a suit was filed against the respondent Maruti Software Pvt Ltd as it registered the domain name ‘marutionline.com’. It was held that the domain name was registered in bad faith. The court further held that mere registration of a company under Company’s Act does not give rights to the holder of the certification of incorporation to succeed in an action for passing off.

FAQs

What Is Cybersquatting?

Ans:  Cybersquatting  is  a fraudulent act involving buying or using domain names                                                                                                        that use names of an existing business with the intention to sell the name for a profit or to earn money from the traffic generated on the website.

Why Is It Important To Get A Domain Name Registered?

Ans: Domain Name is the name of an individual’s website. It is like an address as it makes internet users locate an individual’s website. It is important to register a domain

name because a person’s domain name is an asset as it has all features of a trademark. It is like a trademark. When a domain name is registered, it is easier to take actions against the defendant and to claim remedies in case of trademark (domain name) infringement.

What Are The Remedies Available In Case Of Domain Name Infringement Under Indian Trademark Act,1999? 

Ans: Under Trademark Act,1999, two kinds of remedies are available for the victims against cybersquatters. They are as follows:

  1. Remedy of Infringement
    1. Civil Remedy
    1. Criminal Remedy
    1. Remedy of Passing off

What Is Passing Off?

Ans: Passing Off is a law of tort which is used to enforce unregistered trademark rights. It prevents one person from misrepresenting his goods or services as that of another. To claim remedies under Passing Off, following conditions must be satisfied:

  • The Trademark or Victim’s business should have a reputation.
  • There must be misrepresentation by the Infringer.
  • It must cause the victim injury or loss to the victim’s business.

References

  1. https://www.lawteacher.net/free-law-essays/business-law/business-law-law-ess ays.php
  2. https://www.lawteacher.net/free-law-essays/business-law/business-law-law-ess ays.php
  3. https://www.mondaq.com/india/trademark/208840/cyber-squatting-laws-in-indi a#:~:text=Unlike%20many%20developed%20countries%2C%20in,under%20Tr ade%20Mark%20Act%2C%201999.&text=%22As%20far%20as%20India%20is, in%20connection%20with%20domain%20name
  4. https://blog.ipleaders.in/cybersquatting-position-india/

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