UNIVERSITY OF PETROLEUM & ENERGY STUDIES

SCHOOL OF LAW
______________________________________________

B.A. L.L.B (HONS.)- “A”

SEMESTER- IX

ACADEMIC YEAR: 2017-18 SESSION: AUG-DEC

PROJECT
FOR

Information Technology Law

On
Cybersquatting in India

UNDER THE SUPERVISION OF: ASST. PROF. KRISHNA DEV SINGH

SUBMITTED BY:-
DIVYANSHU GUPTA & ASHMIKA AGRAWAL
R450213040 ; R450213030
500028416 ; 500028461
 1. IMPORTANCE OF DOMAIN NAMES

With the rapid globalisation, the importance of Internet has grown fourfold. With it the
significance of web addresses or domain names has also increased. Domain names are
important in the same way as the name of a proprietorship firm or a simple shop. It acts as an
identity of the business, and plays a key role in any online business’s success. A domain
name is the Internet equivalent of a telephone number or a geographical address. They can be
closely identified with the company itself in the sense that customers believe that a domain
name should reflect the company name, as the court suggested in Cardservice Int’l v.
McGee.1

2. DOMAIN NAMES AS TRADEMARKS

They allow companies to distinguish their goods and services from those of their competitors,
to promote them in the marketplace and to cement customer loyalty.2 Hence the domain
names are not merely the addresses but definitely more than that. They have acquired the
status of Trademarks because of their nature of locating the origin of a business.

In the case of Trademarks, a similar name or design or pronunciation as of the existing

Trademark used by another person which deceives the common people in a way that it
identifies any product or service to be connected to the original trademark constitutes the
breach of right of the trademark holder and amounts to infringement. It harms the goodwill of
the Trademark holder, and may cause undue advantage to the business of the infringer.

In the similar way, domain names can also be used to cause deception as to the origin of a
particular business. It would also amount to infringement.

The first come first serve basis on which the domain names are allocated has increased the
possibility of such crimes and opened the doors for other mischiefs such as cybersquatting.

1 950 F Supp 737, 741 (E.D. Va. 1997).

2 “International Registrations of Marks”,Madrid Yearly Review, WIPO Economics & Statistics Series(2013)
 3. WHAT IS CYBERSQUATTING

Squatting literally means occupying an abandoned or unoccupied space or building, usually

residential, that the squatter does not own, rent or otherwise have permission to use. So
Cyber-squatting refers to the bad faith registration of a domain name containing another
person’s brand or trademark in a domain name. It can be defined as registering, trafficking in,
or using a domain name with bad-faith i.e. mala fide intent to make profit from the goodwill
of a trademark belonging to someone else.3 Cyber squatters are such individuals who ‘attempt
to profit from the internet by reserving and later reselling or licensing domain name
(incorporating a famous mark) back to the companies’ that own the mark4.

The DNS (Domain Name System) first come-first served policy is a breeding ground for
opportunists with neither trademark registration, nor any inherent rights to “pirate” or “squat”
over domain names.5

Delhi High Court has defined 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” in the
case of Manish Vij v. IndraChugh6.

As long as the cyber squatter owns the domain name, the trademark owner cannot register its
own trademark as a domain name. Consequently, the cyber squatter then extorts the company
and offers to sell the domain to the person or company who owns a trademark contained
within the name at an inflated price which may be accredited as a sort of ransom. With the
domain prices falling and more top level domains (.biz, .cn, .mob and lately .in) getting
accredited, cyber squatters are making a lot of illegitimate profits.

4. CATEGORIES OF CYBER SQUATTING

Cyber squatting can be done in various ways. Most common way among all the types is the
1) Typo Squatting.

3 https://blog.ipleaders.in/cybersquatting-position-india/
4 http://lawmantra.co.in/infringement-of-intellectual-property-rights-causes-and-consequences/
5 Id.
6 AIR 2002 Del 243.
In Typo squatting, the cyber squatter registers domain names containing variant of popular
trademarks. Typo squatters rely on the fact that Internet users will make typographical errors
when entering domain names into their web browsers. Some common examples of typo
squatting include:

The omission of a letter or dot from the original address, A common misspelling of the
intended site, A differently phrased domain name, same name with a different top level
domain etc.

2) Renewal Snatching

It refers to the process of obtaining a domain name as it becomes available on non-renewal by

the original owner. Such cyber squatters rely on the fact that trademark holders often forget to
re-register their domain names. Since domain registration is for a fixed period and if the
owner does not re-register the domain name prior to expiration, then the domain name can be
purchased by anybody. Cyber squatters will snatch up a domain name as it becomes
available.7
To prevent Renewal Snatching, measures such as Domain Drop Catching8 are adopted. It is
the practice of registering a domain name immediately after the registration is lapsed.

5. LEGAL SCENARIO

In absence of the proper cyber laws the remedy that prevails is an action for passing off and
the infringement of trademarks. Even then the Indian Courts have very active in providing
relief in the case of Cybersquatting. Although it is another fact that the due to the increasing
number of cases people have started resorting to alternate methods of dispute resolution in this
field specially Uniform Domain Name Dispute Resolution Process (UDNDRP) devised by the
International Corporation for Assigned Number and Names (ICANN) and World Intellectual
Property Organization (WIPO) Arbitration and Mediation Council, instead of relying on the
formal legal procedure.

7 http://www.worldtrademarkreview.com/daily/Detail.aspx?g=06ebae3c-e8bc-4532-81a7-
ea21883f5d1a&utm_source=WTR+Weekly+Email&utm_medium=email&utm_campaign=WTR+Weekly+Ema
il&utm_content=WTR+Weekly+Email+2015-02-05
8 https://www.dynadot.com/community/help/question/what-is-backorder
The Trade and Merchandise Marks Act, 1958 (the “TM Act”) and the Information Technology
Act, 2000 of India do not deal with domain name disputes. Indian Courts, therefore, apply the
rules of “passing off” with respect to such disputes. The action against passing off is based on
the principle enunciated in N. R. Dongre v. Whirlpool wherein the courts said that “a man may
not sell his own goods under the pretence that they are the goods of another man.”

Passing off is a species of unfair trade competition by which one person seeks to profit from
the reputation of another in a particular trade or business. A passing off action is a direct subject
matter of the law of tort or common law of right, i.e. case law. The Act does not define passing
off, but only provides the rules of procedure and the remedies available. However the
Trademark Act is devoid of any provision within purview of which the offence of Cyber
squatting could be brought. Therefore in the absence of any such provision the Indian Courts
have been following the principle of passing off and the guidelines and the policies of the
WIPO and the UDRP.

6. POSITION IN INDIA

In India, there is no legislation which explicitly refers to dispute resolution in connection with
cybersquatting or other domain name disputes9. The Trade Marks Act, 1999 used for protecting
use of trademarks in domain names is not extra-territorial, therefore, it does not allow for
adequate protection of domain names. The Supreme Court has taken the view that domain
names are to be legally protected to the extent possible under the laws relating passing off. In
India, this law was evolved by judges and all the High Courts were of unanimous opinion,
which has been picked out and approved by the Supreme Court.

The Satyam Info way Ltd v. Sifynet Solutions (P) Ltd case nailed the Indian domain name
scenario way back in 2004 stating that- “As far as India is concerned, there is no legislation
which explicitly refers to dispute resolution in connection with domain names. But although
the operation of the Trade Marks Act, 1999 itself is not extraterritorial and may not allow for
adequate protection of domain names, this does not mean that domain names are not protected
within India.

9 Ashwani K. Bansal, Law of Trademarks in India 642 (Centre of Law, Intellectual Property & Trade, New
delhi, 2nd edn., 2006)
 7. CASE LAWS

 Remedy under law of passing off

A. Satyam Infoway Ltd v. Sifynet Solutions10 - The Hon’ble Supreme Court in stated
that: “As far as India is concerned, there is no legislation which explicitly refers to
dispute resolution in connection with domain names…although the operation of the
Trade Marks Act…may not allow for adequate protection of domain names, this does
not mean that domain names are not to be legally protected to the extent possible under
the laws relating to passing-off.

B. Yahoo Inc. v. Akash Arora & Anr11. - The plaintiff sought for a permanent injunction
to restrain the defendants from doing any business or dealing in any services on the
internet under the trademark domain name “yahooindia.com” or any other trade mark
that is identical to the plaintiff’s well known trademark “Yahoo!”. It was held that the
service rendered by the plaintiff on the internet had become recognized and accepted
globally. The Court agreed that although “Yahoo!” was a dictionary word, it had
acquired sufficient uniqueness and distinctiveness so as to enable the plaintiffs to be
protected against passing-off.

C. Titan Industries Limited v. Prashanth Koorapati and Ors.12– The first case decided
by an Indian court which accorded trade mark protection to domain names. The Delhi
High Court found in favor of the plaintiff and granted an ex-parte ad-interim injunction
restraining the defendant from using the trade name “Tanishq” or any other name that
is deceptively similar and would likely lead to passing-off of the business and goods of
the plaintiff.

D. Dr. Reddy’s Laboratories Ltd. v. Manu Kosuri and Anr13, the defendants were
restrained from using the domain name in question, “drreddyslab.com” which was
identical to the plaintiff’s trade name. The Court was of the opinion that domain names

10 2004(3)AWC 2366 SC
11 1999 IIAD Delhi 229
12 Delhi High Court Suit No. 179 of 1998, Decision dated 28 Jan 1998
13 2001 PTC 859 (Del)
 hold an important position in e-commerce and held that the defendants were liable
under passing-off.

E. Maruti Udyog Ltd v. Maruti Software Private Ltd- a complaint was brought against
the respondent in this case, who registered the domain name “marutionline.com”. The
court held that the domain name was registered in bad faith as there was no evidence to
suggest that the respondent intended to use the domain name for legitimate purposes.

 Remedy by transfer

A. SBI Cards and Payment Services Private Ltd v. Domain Active Pty Ltd14- The
respondent had registered the domain name “sbicards.com”. It was held that the
registration was made with the intention to create confusion with the product, services
and trademark of the plaintiff. The respondent was ordered to transfer the domain name
to the complainant.

B. Maruti Udyog v. Maruti Infotech15 – The plaintiff files a complaint with WIPO over
a dispute relating to the domain name “maruti.org.” Maruti. Udyog, a wellknown car
manufacturer, proved that the trade mark “Maruti” was associated with its products and
that a person of average intelligence and imperfect recollection would be led to believe
that the domain name was associated with them Moreover, the respondent sought to
sell the domain name to the complainant for valuable consideration. The WIPO
panelists held that there was a clear intent on the part of the respondent to make
unmerited profit from the registration of the domain name and transferred the name to
Maruti Udyog.

C. Tata Sons v. The Advanced Information Technology Association (“AITA”)16, Tata

Sons filed a complaint against AITA with WIPO for the illegal registration of the
domain name “tata.org.”. The WIPO panelists held that “Tata” was a well known name,

14 What is cybersquatting and its Legal Position in India available at http://blog.ipleaders.in/cybersquatting-

position-india/#ixzz4AV8kozUo visited on 4th June 2016
15 Accessed at http://arbiter.wipo.int/domain/decisions/2000-0520.html
16 Accessed at http://arbiter.wipo.int/domain/decisions/2000-0049.html
 linked to high quality products The name “Tata” was a family name and had no
dictionary meaning. The domain name was, therefore, transferred by ICANN to Tata
Sons based on the award granted by WIPO in favor of Tata Sons.

D. Sbicards.com v. Domain Active Property Ltd.17 – Sbicards.com was ordered by the

WIPO to be transferred to the Indian Company from the Australian entity which had
hijacked the domain hoping to sell it at a high price to the State Bank of India.

 Recognition of domain name as registered trademarks

A. Rediff Communication Limited v. Cyberbooth and Anr18 - In this case, the

defendant had registered the domain name “radiff.com” which was similar to the
plaintiff’s domain name “rediff.com”. Deciding in favor of the plaintiff, the Court was
of the opinion that the high importance and value attached to a domain name makes it
a major corporate asset of any company. The court went on to state that a domain name
is much more than an internet address and as such, is entitled to protection equal to that
afforded to a registered trademark.

B. Tata Sons Ltd v Manu Kosuri & Ors.19- the defendant registered a series of domain
names incorporating the well-known trademark “TATA”. The Court, in delivering
judgment, referred to Rediff Communication Limited v. Cyberbooth & Anr and
Yahoo Inc. v Akash Arora & Anr., both mentioned above, and held that internet
domain names are not merely internet addresses but are in fact corporate assets that are
extremely important and valuable and as such, are entitled for protection equivalent to
that afforded to registered trademarks.

17 Sanchit Mehta, “Cyber Squatting And Its Legal Position” available

http://www.manupatrafast.com/articles/PopOpenArticle.aspx?ID=e336a09a-aa11-453a-935d
18 AIR 2000 Bombay 27
19 III AD Delhi 545, 90 (2001)
 8. CONCLUSION

There is an urgent need for the strict laws in this field, so that these squatters could be
punished and these crimes could be avoided in future. The new domain name dispute law
should be intended to give trademark and service mark owners legal remedies against
defendants who obtain domain names “in bad faith” that are identical or confusingly similar
to a trademark. And the plaintiff may elect statutory damages and has discretion to award in
damages for bad faith registration. It should act as an important weapon for trademark
holders in protecting their intellectual property in the online world. It is the imperitive for the
parliament to enact a law which would deal with this menace. As of now there is no such law
which prohibits cybersquatting like that of the United States.

Cybersquatting has opened the eyes of governments across the world and has prompted them
to look into this phenomenon in a serious manner. The United States by enacting the ACPA,
has taken a monumental step in protecting domain names in its cyberspace. It is high time
India and other countries come out with legislations to protect this virus from spreading.20

************

20 Ashwin Madhavan, Domain Names and Cyber Squatting, India Law Journal
Available on: http://www.indialawjournal.org/archives/volume1/issue_2/article_by_ashwin.html