When William Shakespeare penned down the famous line "What's in a name?", little did he realise that in modern times, names will be associated with power and impact, more than meaning. This is especially true in a virtual environment, where the lines of geography and jurisdiction have been obliterated. The world today is a global village and trade across borders, is possible merely by a few clicks! But every development also brings along a new set of challenges, that need to be addressed and resolved. In this article, we will discuss about domain names, the inter-relationship between domain names and trademarks, cybersquatting and a few landmark judgments that have contributed to the evolving jurisprudence on the subject of cybersquatting.
WHAT IS A DOMAIN NAME AND WHAT PURPOSE DOES IT SERVE?
A domain name is an identification string, i.e., a combination of letters and numbers and dashes, which are a component of a uniform resource locator (URL) used to access web sites. In simpler terms, it is the alphabetic or alphanumeric expression of a specific online location (URL), which makes such address easier to remember and communicate. Over a period of time, the role of domain names has evolved from merely providing an address on the internet and mode of communication to a means of carrying on commercial activity. The Hon'ble High Court of Bombay, in the recent case of Hindustan Unilever Limited v Endurance Domains Technology LLP & Ors. [(2020) SCC Online Bom 809] observed that:
"A domain name is simply an easy-to-remember or mnemonic for an internet protocol address. The IP address is a string of numbers in four sets separated by a period."
Being the address for internet communication that identifies a specific internet site, a domain name is a sort of 'business identifier', especially in the context of larger chunk of commercial activity taking place online rather than in brick and mortar stores. Domain names are regulated by domain name registrars, from whom one can purchase a particular domain name and obtain an address to their website.
INTER-RELATIONSHIP BETWEEN DOMAIN NAMES & TRADEMARKS
Domain names came into existence as users needed an address while communicating in the virtual world of internet. As businesses started augmenting their online presence, domain names began to be reckoned as unique, easy to remember and a differentiating factor on worldwide web. Since domain names are the first impression for any business in an online environment, they render recognition to businesses and brands and serve as an online trademark. In the landmark case of Satyam Infoway Ltd v. Sifynet Solutions Pvt. Ltd. [(2004) 6 SCC 145], the Hon'ble Supreme Court laid down that,
"A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online Internet location. Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical."
Therefore, it won't be an exaggeration to say that the purpose a trademark serves in a physical environment; domain name serve in a virtual commercial environment – identification, differentiation and creation of a brand identity. Thus the Hon'ble Supreme Court recognized that a domain name is of critical importance to a business enterprise as it is the means of navigating the Internet by potential consumers/customers. Speaking about vital means to identify and distinguish businesses, their products or service offerings, the Hon'ble court also outlined the uniqueness of domain names, when used in connection with businesses:
"With the increase of commercial activity on the internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site, and distinguishes specific businesses or services of different companies. Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical. As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high."
The Satyam Infoway case (supra) recognised how the internet developed from a mere means of communication to a mode of carrying on commercial activity, and also addressed an important question that arose - whether internet domain names are recognisable as other intellectual properties such as trademark? The Hon'ble Supreme Court drew a contrast between trademarks and domain names, observing that a large number of trademarks containing the same name can comfortably co-exist, as they are associated with different products and may belong to businesses in different jurisdictions etc. However, with respect to domain names, their distinctive nature provides global exclusivity, and hence is much more valuable. Consumers looking up for a particular site on the internet are likely to first guess the domain name, which has further enhanced the value of domain names.
The inter-relationship between trademark and domain names was also outlined by the Hon'ble Delhi High Court in the matter Arun Jaitley v. Network Solutions Private Limited and Ors. [2011 SCC Online Del 2660].
"The domain name is usually an address given to the website so that the person intending to visit the same may visit the website of the identified person. This function of giving names to the addresses of the website has undergone magnificent change whereby the companies, firms, eminent individuals have been able to name the web addresses after their own names and/ or trade mark. This performs dual functions, firstly, the domain name does not merely remain as an address but rather performs the function of a trade mark as the prospective customers or other known persons visit the webpage and are able to immediately connect with the source and identify the same with the particular company or the individual."
WHAT IS CYBERSQUATTING?
While trademarks granted protection against unfair use by another party, once a proprietor/owner registered them, domain names could simply be purchased (without the requirement of the registration). This was a sort of 'first come, first served' concept, which also resulted in several disputes relating to the wrongful or fraudulent use of trademarks as domain names. However, not all domain name disputes are cybersquatting. Cybersquatting is a one of the specific kinds of domain name disputes that arises when a party registers domain names without the intention of using them.
Propelled by malafide intentions, cybersquatting is the most rampant kind of domain name dispute whereby a party, usually completely unrelated to a trademark, business name or trade name, obtains registration of a domain name identical or similar to such trademark, business name or trade name. Domain names can be obtained by anyone without any prior approval from any authority with respect to pre-existing intellectual property or proprietary rights over trademark, business name or trade name. Obtaining a domain name doesn't require any proof of ownership of the trademark or trade name. This non-alignment between operational aspects of obtaining a domain name and registration procedure for trademarks becomes the basis of exploitation and cybersquatting. Persons resorting to cybersquatting obtain domain names identical/similar to trademarks, business names, tradenames and sometime names of famous celebrities or personalities and thereafter either deal in sale of said names for exorbitant amounts or resort to unfair online activity to divert the internet traffic from genuine websites to their websites.
In the Arun Jaitley case (supra) mentioned above, the Hon'ble Delhi High Court held the following:
"Cybersquatting is a crime against the laws and regulations of cyber law. The registering, or using a domain name with mala fide intent to make profit belonging to someone else. The cyber squatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price. Cyber squatters ask for prices far more than that at which they purchased it. Some cyber squatters put up derogatory remarks about the person to buy the domain from them to compel the innocent person without any fault."
Recognising the need to ring-fence honest users from those who are slightly better versed with technology, but decide to profiteer from goodwill of others, the Hon'ble Court realised its responsibility to accord protection against cybersquatting. Accordingly, the Hon'ble Court observed:
"Therefore, it becomes incumbent to protect the domain names so that the identified names of companies and individuals which are distinct at the market place may not go at the hands of individuals who are nowhere concerned with those names and have obtained them just because they are better conversant with the computer techniques and usage of the internet. To simplify, in order to prevent the cybersquatting or trafficking or trading in domain names or the marks, the trade mark law has been stretched to the extent that it may cover the field of internet and domain names may be protected just like the trademarks."
NATURE OF RELIEFS AVAILABLE IN CYBERSQUATTING DISPUTES
As the world shrinks to a global village, where businesses transcend boundaries and transact overseas from computers screens and handheld devises, the menace of cybersquatting could definitely put a full stop to the dreams of those who fall prey to cyber squatters. On several occasions, e-commerce companies have been ransomed into paying hefty amounts of money to protect their trademark (and goodwill riding on it!). The subsequent portion of this article discusses reliefs available in cybersquatting cases.
Let's first note the procedural aspects concerning domain names. Domain names are not 'owned', they are registered for a fee and for a specified time. The process of registration is fairly simple and one has to merely look up for availability of a combination of words, which is then matched to a desired top-level or other domain (.in, .com, .net, etc). The process is automated and requires no manual intervention. There is no human element involved in overseeing or assessing the legitimacy of any chosen domain name, which is perhaps the reason for several domain name disputes and cybersquatting.
Therefore, there is no preventive mechanism that stops or blocks a domain name from being registered (unless there is an order of the court or government to that effect). An aggrieved party can only seek resolution of conflict, once the domain name has been registered. This was discussed at length in Hindustan Unilever Limited case (supra), wherein the Hon'ble Bombay High Court discussed the following:
"Any domain name Registrar can always suspend a domain that is registered. But the entire process of registration itself is entirely automated and machine-driven. No domain name registrar can put any domain names on a black list or a block list. The notion that domain name registrar's have a person or a team of persons scanning and checking every domain name application betrays a wholesale lack of understanding of how domain name registration actually works. If a user wanted to register, say, chroniclesofwastedtime.com, there is no individual at any domain name registrar to question, to ask why, what for or anything. If the domain name is free, the applicant can take it to registration. That is all there is to it. That registration will continue until suspension or expiry. A 'continued suspension' is therefore not possible or practicable at least in the current technology."
In Indian context, the trade mark law protects names from its inception. Even in earlier trade mark Act of 1958, the names were given ample protection on the principles of passing off. In the Arun Jaitley case mentioned above, the Hon'ble Delhi High Court discussed the law of passing off applicable to trade names and held that:
"Likewise, the definition of trade mark includes the name being an inclusive definition was also extended to include domain names. This was done so as to give ample protection to domain names as the domain names was not included as a specific subject under the trade mark law regime. Therefore, the recourse was taken by expansive interpretation of the definition of the trade mark which is sought to include domain names so that the law of passing off may sufficiently subsume the same."
Internationally, domain names are regulated through WIPO (World Intellectual Property Organization) and ICANN (The Internet Corporation for Assigned Names and Numbers). WIPO, in its endeavour to promote the protection, dissemination and use of intellectual property throughout the world, developed forums for the development and implementation of intellectual property policies internationally, through treaties among the member states. WIPO has set up a system of registration of domain names with accredited registrars and has also devised the Uniform Domain Name Disputes Resolution Policy (UDNDR Policy). The Internet Corporation for Assigned Names and Numbers (ICANN) adopted UDNDR Policy the based on recommendations made by WIPO. Under this policy, a trademark holder can initiate a proceeding against a domain name registrant, if he considers that the registration of such domain name infringes its trademark. Therefore, while the registrations continue to be provided on a 'first come first served' basis, domain name disputes with respect to gTLDs (Generic top-level domains) are subject to the Uniform Domain Name Dispute Resolution Policy (UDNDR Policy).
Further ccTLD (country code top-level domains) disputes are subject to country specific dispute resolution policy. In India, the disputes with respect to '.in' or '.co.in' extensions are subject to INDRP (.IN Domain Dispute Resolution Policy). In such cases, a complainant can initiate a domain name action with .in registry, which operates under the National Internet Exchange of India (NIXI), an organisation established for regulation of traffic exchange between internet service providers. The .in registry appoints an arbitrator selected from a panel maintained by NIXI for resolving the dispute.
The key essence of cybersquatting is 'bad faith registration' of an owner's rights in a name, trade name or a trademark etc. as a domain name. If the domain name one intends to use appears to be already registered, one may contact the domain name registrant and ascertain if they are interested in selling the domain name at a mutually agreeable price. However, if the same doesn't fructify or the registrant resorts to cybersquatting by quoting exorbitant consideration to sell the domain name, appropriate relief may be sought from the court. If the registration pertains to a generic top-level domain (gTLD) or a country code top-level domains (ccTLD), the aggrieved party may also initiate a proceeding under the UDNDRP or INDRP as the case may be and seek to resolve the dispute by way of arbitration.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.