Cyber Squatting

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Sagar Rahurkar

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Nov 27, 2009, 6:53:45 AM11/27/09
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 Introduction
Idea of “Cybersquating” was originated at a time when most businesses
were not savvy about the commercial opportunities on the Internet.
Some entrepreneurial souls registered the names of well-known
companies as domain names, with the intent of selling the names back
to the companies when they finally woke up. With increasing use of
online business for advertising as well as for promotion of products &
selling them, domain names of company’s have equal value as of
Trademark. Like increase in other Cyber Crimes matters of infringement
of Trademarks & passing off are also increasing. This is called as
“Cybersquatting”. Existing Laws are still learning how to deal with
Cyber Squatters.

 What is Cyber Squatting?

Domain names serves as an identity on the Internet. They can be
closely identified with the company, as customers surfing Internet
believe that domain reflects company’s name, as the courts suggested
in
MTV Networks Inc v/s Curry*(S.D.N.Y. 1994), that,
“A domain name is mirroring a corporate name may be valuable corporate
asset, as it facilitates communication with a customer base.”
A Cyber Squatter identifies popular trade names, brand names,
trademarks, & even names of celebrities [Miss Universe Sushmita Sen
was first Indian Celebrity to sue a Cybersquatter], & registers on
their name with the malicious intention of extorting money from
persons who are associated with that domain name.
In the famous case of “Intermatic Inc v/s Toeppen (USPQ2d1412), the
court expressed its opinion about Cyber squatters as under:
“They are the persons who attempt to profit from the Internet by
reserving & later re-selling or licensing domain names (incorporating
a famous mark) back to the companies that own the mark.” In this sense
Cybersquatters are violating fundamental rights of trademark owner to
use their trademark.


 International Scenario

Internationally, the United Nations agency “World Intellectual
Property Organization” [WIPO] has been working since 1999 to provide
an arbitrational system where a trademark holder can register a claim
against squatted site.
Keeping in view the practical difficulty in traditional litigation,
ICANN (Internet Corporation for Assigned Names & Numbers) approved the
UDRP (Uniform Domain Name Dispute Resolution Policy). However, one of
the shortcomings is that it just focuses on arbitration of dispute,
not litigation. Further decisions of UDRP can be overruled by
traditional courts.
Some countries have specific laws concentrating on
“Cyber squatting” along with the traditional Trademark laws.
First country to have legislation on this is “United States of
America”, they have introduced “Anti-Cybersquatting Consumer
Protection Act, 1999” Under this Act a cybersquatter can be held
liable for actual damages or statutory damages in the amount of a
maximum of $100,000 for each name found to be in violation.
Australia also has a law to prevent Cybersquatting. It entitles the
interested person to register business name with an Australian
Business Number (ABN) issued by the Australian Taxation Office.
However, this has failed to protect Australia from such cybersquatting
acts. Any Australian citizen over the age of 16 can obtain an ABN
(which is free) and use it to register as few or as many domain names
as they like.
Again going back to WIPO if we see Stats. In 2006, there were 1823
complaints filed with WIPO, which was a 25% increase over 2005's rate.
On average, 84% of claims are decided in the complaining party's
favor. (Source WIPO Website)

 Indian Scenario
Indian judiciary, after realizing the importance of domain names woke
up & responded strongly against Cybersquatting. They have formulated
some legal principles regarding this.
On my best knowledge the first reported Indian case on
the topic is
“Yahoo Inc. v/s Akash Arora, 1999” Where defendants domain name
“Yahooindia.com” was identically similar to plaintiff’s business name
“Yahoo”. Court expressed their views that though “Yahoo” is a
dictionary word, it has acquired uniqueness & moreover it is a
business name of plaintiff. Such words have received maximum
protection.
There after many cases have been lodged in Indian courts on
Cybersquating.


Very recent case on this issue is
Satyam Infosys v/s Sifynet solution ltd, 2004 SCC 145.
S.C. held that, “the domain names are entitled to get legal protection
equal to that of a Trademark.”

 Conclusion
There must be some uniform law on this highly increasing crime as it
affects the goodwill of the owner of Trademark as well as will
increase many other crimes like Credit Card fraud, cyber bullying &
even pornography & ordinary people will suffer a lot.
Talking about India currently cases relating to Cybersquating come
under Tort of Passing off & infringement of Trademarks. It is not a
quick process & a speedy trial. To fight with it the current Copyright
Act should be amended to include Cybersquating as an offence.
The Information Technology Act 2000 has also been recommended to book
Cybersquatters.
One of the major problem is about applying punishment:
One view says that tough Cybersquatting frame of blackmailing, it will
be too harsh to apply criminal punishment of blackmailing for the
offence of cybersquatting.
Another view says that though cybersquatting is a crime affecting
society, its basic victim is Trademark owner & he should apply for
‘Permanent Injunction’ restraining its use.
Better solution for this is to make blacklist of cybersquatters. ICANN
can create such a policy that punishes anyone found by court to have
cybersquatted. It may be loosing domain name registrations incl. those
which are legal & take off all other benefits which he would probably
receive from the use of Internet. This would serve as a deterrent on
other “Future” cybersquatters because, infringing the benefits from
the use of Internet is would definitely harm anyone in today’s world.
Moreover, the process of registration of Domain Name is
not as strict as that of Trademark. Anyone can approach a Domain Name
Registrar & register any available domain name.
Delhi High Court in Acqua Minerals Limited v/s Pramod Borse [2001] PTC
619 (Del.) observed that,
” If any person gets the domain name registered with the Registering
Authority, which is actually the trade name of some other person, the
Registering Authority can’t inquire into it to decide whether the
Domain name was registered before as a Trademark & belongs to some
other person.”
Such an inquiry is necessary & most important thing is that, there
must be co-ordination between ‘Registering Authority of Domain Names &
Trademark Registration Authority.’
Many times people find that paying the cybersquatter is the easiest
choice. It may be a lot cheaper and quicker to come to terms with a
squatter than to file a lawsuit or initiate an arbitration hearing,
these court processes cost money & mainly a lot of time. This should
be stopped. All Trademark owners should get unite & decide not to
fulfill Squatters demands.
If we see WIPO’s experience, it shows that UDRP disputes are mainly
concentrating in the .com domain. Attention must be paid to establish
preventive mechanism against illegal registration in new generic top-
level domains [gTLDs]. E.g. in 2005, ICANN approved creation of new
gTLDs like .travel, .jobs etc.
If there is no strict policy for its assignment, Trademark owners have
to compete with cybersquatters for their own Trademark.

Aashish Kunte

unread,
Nov 27, 2009, 11:32:00 AM11/27/09
to sagar.ra...@gmail.com, null-...@googlegroups.com
Nice Information.

It's the fact that process of registration of Domain Name is not as strict as that of Trademark. Anyone can approach a Domain Name Registrar & register any available domain name, and same about co-ordination between "Registering Authority of Domain Names & Trademark Registration Authority"

legal binding over Domain Name Registration, can even be helpful to prevent some of the phishing attacks.

Can you put some more light on the Indian Act to deal with Copyright Infringement and Information on Digital Rights in India ? Its intresting to know about it.

Thanks!

With Best Regards,
Aashish Kunte

On Fri, 27 Nov 2009 17:21:03 +0530 wrote
>
ï ¶Introduction
Idea of “Cybersquating†was originated at a time when most businesses

were not savvy about the commercial opportunities on the Internet.
Some entrepreneurial souls registered the names of well-known
companies as domain names, with the intent of selling the names back
to the companies when they finally woke up. With increasing use of
online business for advertising as well as for promotion of products &
selling them, domain names of company’s have equal value as of

Trademark. Like increase in other Cyber Crimes matters of infringement
of Trademarks & passing off are also increasing. This is called as
“Cybersquatting†. Existing Laws are still learning how to deal with
Cyber Squatters.

ï ¶What is Cyber Squatting?


Domain names serves as an identity on the Internet. They can be
closely identified with the company, as customers surfing Internet
believe that domain reflects company’s name, as the courts suggested

in
MTV Networks Inc v/s Curry*(S.D.N.Y. 1994), that,
“A domain name is mirroring a corporate name may be valuable corporate
asset, as it facilitates communication with a customer base.â€Â
A Cyber Squatter identifies popular trade names, brand names,
trademarks, & even names of celebrities [Miss Universe Sushmita Sen
was first Indian Celebrity to sue a Cybersquatter], & registers on
their name with the malicious intention of extorting money from
persons who are associated with that domain name.
In the famous case of “Intermatic Inc v/s Toeppen (USPQ2d1412), the

court expressed its opinion about Cyber squatters as under:
“They are the persons who attempt to profit from the Internet by

reserving & later re-selling or licensing domain names (incorporating
a famous mark) back to the companies that own the mark.†In this sense

Cybersquatters are violating fundamental rights of trademark owner to
use their trademark.


ï ¶International Scenario

Internationally, the United Nations agency “World Intellectual
Property Organization†[WIPO] has been working since 1999 to provide

an arbitrational system where a trademark holder can register a claim
against squatted site.
Keeping in view the practical difficulty in traditional litigation,
ICANN (Internet Corporation for Assigned Names & Numbers) approved the
UDRP (Uniform Domain Name Dispute Resolution Policy). However, one of
the shortcomings is that it just focuses on arbitration of dispute,
not litigation. Further decisions of UDRP can be overruled by
traditional courts.
Some countries have specific laws concentrating on
“Cyber squatting†along with the traditional Trademark laws.
First country to have legislation on this is “United States of
America†, they have introduced “Anti-Cybersquatting Consumer
Protection Act, 1999†Under this Act a cybersquatter can be held

liable for actual damages or statutory damages in the amount of a
maximum of $100,000 for each name found to be in violation.
Australia also has a law to prevent Cybersquatting. It entitles the
interested person to register business name with an Australian
Business Number (ABN) issued by the Australian Taxation Office.
However, this has failed to protect Australia from such cybersquatting
acts. Any Australian citizen over the age of 16 can obtain an ABN
(which is free) and use it to register as few or as many domain names
as they like.
Again going back to WIPO if we see Stats. In 2006, there were 1823
complaints filed with WIPO, which was a 25% increase over 2005's rate.
On average, 84% of claims are decided in the complaining party's
favor. (Source WIPO Website)

ï ¶Indian Scenario

Indian judiciary, after realizing the importance of domain names woke
up & responded strongly against Cybersquatting. They have formulated
some legal principles regarding this.
On my best knowledge the first reported Indian case on
the topic is
“Yahoo Inc. v/s Akash Arora, 1999†Where defendants domain name
“Yahooindia.com†was identically similar to plaintiff’s business name
“Yahoo†. Court expressed their views that though “Yahoo†is a

dictionary word, it has acquired uniqueness & moreover it is a
business name of plaintiff. Such words have received maximum
protection.
There after many cases have been lodged in Indian courts on
Cybersquating.


Very recent case on this issue is
Satyam Infosys v/s Sifynet solution ltd, 2004 SCC 145.
S.C. held that, “the domain names are entitled to get legal protection
equal to that of a Trademark.â€Â

ï ¶Conclusion

There must be some uniform law on this highly increasing crime as it
affects the goodwill of the owner of Trademark as well as will
increase many other crimes like Credit Card fraud, cyber bullying &
even pornography & ordinary people will suffer a lot.
Talking about India currently cases relating to Cybersquating come
under Tort of Passing off & infringement of Trademarks. It is not a
quick process & a speedy trial. To fight with it the current Copyright
Act should be amended to include Cybersquating as an offence.
The Information Technology Act 2000 has also been recommended to book
Cybersquatters.
One of the major problem is about applying punishment:
One view says that tough Cybersquatting frame of blackmailing, it will
be too harsh to apply criminal punishment of blackmailing for the
offence of cybersquatting.
Another view says that though cybersquatting is a crime affecting
society, its basic victim is Trademark owner & he should apply for
‘Permanent Injunction’ restraining its use.

Better solution for this is to make blacklist of cybersquatters. ICANN
can create such a policy that punishes anyone found by court to have
cybersquatted. It may be loosing domain name registrations incl. those
which are legal & take off all other benefits which he would probably
receive from the use of Internet. This would serve as a deterrent on
other “Future†cybersquatters because, infringing the benefits from
the use of Internet is would definitely harm anyone in today’s world.

Moreover, the process of registration of Domain Name is
not as strict as that of Trademark. Anyone can approach a Domain Name
Registrar & register any available domain name.
Delhi High Court in Acqua Minerals Limited v/s Pramod Borse [2001] PTC
619 (Del.) observed that,
†If any person gets the domain name registered with the Registering

Authority, which is actually the trade name of some other person, the
Registering Authority can’t inquire into it to decide whether the

Domain name was registered before as a Trademark & belongs to some
other person.â€Â
Such an inquiry is necessary & most important thing is that, there
must be co-ordination between ‘Registering Authority of Domain Names &
Trademark Registration Authority.’

Many times people find that paying the cybersquatter is the easiest
choice. It may be a lot cheaper and quicker to come to terms with a
squatter than to file a lawsuit or initiate an arbitration hearing,
these court processes cost money & mainly a lot of time. This should
be stopped. All Trademark owners should get unite & decide not to
fulfill Squatters demands.
If we see WIPO’s experience, it shows that UDRP disputes are mainly

concentrating in the .com domain. Attention must be paid to establish
preventive mechanism against illegal registration in new generic top-
level domains [gTLDs]. E.g. in 2005, ICANN approved creation of new
gTLDs like .travel, .jobs etc.
If there is no strict policy for its assignment, Trademark owners have
to compete with cybersquatters for their own Trademark.


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