PROTECTION OF DOMAIN NAME

Viz-Viz

TRADEMARK LAW

Harjot Singh Gill

UILS

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ACKNOWLEGDEMENT

I am grateful to our Lecturer Dr. Jasmeet Gulati for inculcating the concepts of the subject Cyber Law.

I am grateful to staff of Library for rendering cooperation.

And I am highly grateful to my parents for their constant support towards my studies.

Harjot Singh Gill

Roll No. 30.

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List of Authorities

Case Laws

MTV Networks, Inc v. Curry 867 F.Supp, 202 SDNY 1994.

Rediff Comm. Ltd. V. Cyberbooth & anthr AIR 2000 Bom 27.

Princeton Review management Corp v. Stanley H.Kaplan Educational Centre Ltd. 94

Civ. 1604(SNDY 1994)

Comp Examiner Agency, Inc v. Juris ,Inc, 1996.

Yahooinc v. Akash Arora (1999) PTC 201.

NIIT Ltd v. Parthasarathy Venkatram Case No. D2000-0497.

Microsoft Corporation v. Amit Mehrotra Case No. D2000-0053, Adm. Panel Decision,

Wipo Arb. And Med. Centre.

Castrol Limited v. Shrinivas Ganediwal Case No. D2002-0881.

IIT Bombay, Powai v. Indsoft Case NO. D2002-0078.

Commentaries, Journals & Books

Nandan Kamath, “ Law relating to Computers Internet & E-Commerce”.

Karnika Seth, “ Cyber Laws in the Information Technology Age”.

Amita Verma, ‘Cyber Crimes and Law”.

P.Narayanan, “ Intellectual Property Law”, 3rd ed.

Rodney Rider, “Guide to Cyber Laws”.

Mr. Vakul Sharma, “Handbook of Cyber Laws”.

Justice Yatinder Singh, “Cyber Laws”.

Internet Websites

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www.indiainfo.com

www.wto.org

www.icann.org

www.wipo.org

www.google.com

Agreements, Conventions & Statutes

Trips Agreement

Paris Convention

Trademarks Act, 1999( India)

Anti-Cyber Squatting Consumer Protection Act, 1999

The Federal Anti-Dilution Act.

European Union Trademark Directive, 1989

Trademark Law Treaty (TLT).

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TABLE OF CONTENTS

Introduction -------------------------------------------------------------------- Pg No. 6

What is Domain Name? ----------------------------------------------------- 6

Importance of Domain Name------------------------------------- 7

Cyber-Squatting------------------------------------------------------ 8

Domain Name Registration---------------------------------------- 8

Infringement of Trademark as Domain Name-------------------------- 9

Diversion of Traffic-------------------------------------------------- 10

String Conflicts-------------------------------------------------------11

Protection under Trademark Law ---------------------------------------- 11

Remedy of Passing off ----------------------------------- 12

Remedy under Section 103 & 104--------------------- 14

Trademark Protection Under International Law----------------------- 15

Paris Convention-----------------------------------------------------16

TRIPSAgreement----------------------------------------------------- 17

Trademark Law Treaty---------------------------------------------- 19

Uniform Dispute Resolution Policy (UDRP) ----------------------------- 19

Indian Cases Reaching UDRP ------------------------------------- 21

Provision Under United States of America ------------------------------ 22

Conclusion ----------------------------------------------------------------------- 23

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A. INTRODUCTION

In the current age, the internet has become a part and parcel of the life of almost every

individual in the developed nations and is on the way of assuming a similar position in

respect of developing nations. The modern communication techniques that are available

through the internet and the large number of people who access it throughout the world as

a market. In this scenario, an entity’s trademark assumes immense importance. It helps an

entity build up its identity over the World Wide Web. With the advent of the internet, the

world today is witnessing a revolutionary change in the field of communications. Out of

nowhere, the internet seems to have exploded on the forefront of several commercial

establishments, organizations, governments and institutions. Everybody, who is somebody,

seems to have something to do with the internet. Flashing an internet address has become a

sine qua non for almost every organization. It goes without saying that as the awareness of

the internet grows, the number of websites grow correspondingly. Such growth of web sites,

has also given rise to a new era of disputes- i.e. domain disputes.1

B. WHAT IS DOMAIN NAME?

In the new e-economy, it is vital that prior to entering into any sort of business activity a

company, must be traceable relatively easily on the Internet, i.e. it must have an address in

cyberspace. This would require its registration under a particular domain name.2 A domain

name is a hierarchically structured character string that serves as an Internet address. The

real Internet Protocol (IP) address is a string of numbers that is difficult to use and remember

(e.g., 128.82.75.52). Internet users rely on domain names, which take the form of

memorable and sometimes catchy words, to stand in their place.3 The domain name at the

1 Sanjay Bhatta,“ Domain names, cyber squatting and trademarks in India- A legal perspective”. at http:// www.indiainfo.com 2 Nandan Kamath, “ Law relating to Computers Internet & E-Commerce” at p. 167.3 Karnika Seth, “ Cyber Laws in the Information Technology Age” at p. 372.

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extreme right is called the Top Level Domain (TLD) and any domain to the left of the TLD and

separated by a dot is the Second Level Domain (SLD). A domain to the left of the SLD is

known as the Sub-domain (SD). The sub-domain, Second Level Domain and the Top Level

Domain put together comprise a ‘Domain Name’. Thus, suppose in the domain name

‘law.microworld.com’, ‘.com’ is the TLD, ‘microworld’ is the SLD and ‘law’ is the SD.4 There

are two types of Top Level Domain Names, Generic and Geographic. Generic domain names

are unique to the entire world. Generic Domain Names are for

example .com5, .edu6, .org7, .net8, .gov9, etc. Geographical Top Level Domains are for

example, .in10, .fr11, .aus12, .uk13, etc.

B.1- IMPORTANCE OF DOMAIN NAME

The dominant purpose of the domain name is simply to provide an easy method for

remembering another’s electronic address. Domain names are an important commodity,

especially since users interested in communicating with a particular organization or

retrieving information about its products must do so without recourse to any centralized,

complete directory. This makes short, easy to remember names of paramount value in

choosing an address.14 Moreover domain names are valuable corporate assets, as they

facilitate communication with a customer base as in case MTV Networks,15 and Rediff

4 Amita Verma, ‘Cyber Crimes and Law” at p. 266-267.5 For commercial use6 For educational institutions7 For non-profit organisation8 For network Providers9 For Government organizations.10 For India11 For France12 For Australia13 For United Kingdom14 Andre Brunel, “ Billions Registered, But No Rules: The Scope of Trademark Protection for Domain Names”, J. Proprietary Rts., Mar 1995, at p.2.15 MTV Networks, Inc v. Curry 867 F.Supp, 202 SDNY 1994.

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Communications,16 and once a company has registered a domain name, it amounts to

reserving a significant part of cyber space for that company.

B.2- Cyber- Squatting

Cyber-squatting is a form of speculation where a domain name is registered with the

intention of selling off the same. Cyber-squatting is the practice by means of which a person

or legal entity books up the trade mark, business name or service mark of another as his own

domain name for the purpose of holding on to it and thereafter selling the same domain

name for the purpose of holding on to it and thereafter selling the same domain name to the

other person for valuable premium and consideration.17 Cyber squatters book up domain

names of important brands in the hope of earning quick millions.18

B.3- Domain Registration

Domain administration is done by the National Centre for software Technology,19 Mumbai

which runs the Indian Domain Registration Service. Domain Name registration requests are

entertained by NCST only if the organization has a valid IP address or has applied for one.20

The domain may be registered electronically.21 The application form, on receipt, is circulated

within a review group and the applicant will be contacted for clarifications/ name clashes, if

any. If there are none, then the applicant will be allocated the desired domain name and

intimated. Upon registration, the registrant is required to run a DNS server.22 Registration is

very important to check the problem of cyber squatting. It can be dealt by means of

16 Rediff Comm. Ltd. V. Cyberbooth & anthr AIR 2000 Bom 27.17 Amita Verma, ‘Cyber Crimes and Law” at p.27018 Ibid at p.271.19 Hereinafter called as NCST.20 Nandan Kamath, “ Law relating to Computers Internet & E-Commerce” at p. 172.21 To register a domain one may obtain the form electronically from URLs http:// soochak.ncst.ernet.in. This Form is to be filled up and mailed to domain-reg@sangam.ncst.ernet.in 22 At least a 64 Kbps leased data circuit.

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regulations to ensure that in particular country only the owner of a trademark can register it

as a domain name. For example, if ‘Nick-Bakers’ is registered as a trademark in India, only

the owners of that trademark should be allowed to register the domain name

‘NickBakers.co.in’. As regards the ‘.com’ TLD, any prospective registrant must show that he

possesses a trademark in that name, or has some sort of a justifiable connection, entitling

him to that name.23

C- INFRINGEMENT OF TRADEMARK AS A DOMAIN NAME

A domain name is not itself a trademark. A trademark is a right, granted under law, to use a

mark in commerce to represent a product (or a business, in the case of a trade name). A

domain name is a word or phrase registered in the domain name registration system. A

domain name may be a company’s expression of its trademark. The use of a trademark in a

domain name, for instance, is the equivalent of using the trademark on a billboard, or in

advertising. Infringememt refers to a dispute where the original registrant intentionally

trades off the resemblance between the domain name and another famous trademark. A

registered trademark will be infringed if a person in the course of trade, in relation to the

same goods for which the mark is registered, uses without authority the same mark or a

deceptively similar mark.24 Section 29 lays down the various cases in which a person will be

said to have infringed another person’s trademark. The ingredient that is common to all the

cases is the use of the trademark in the course of trade and in relation to goods or services.

Thereafter, the registrant tries to encash on the reputation of the trademark holder by

running a business similar to that of the trademark holder. In such cases, the use of the

domain name (mark) would be illegal under the existing trademark law, regardless of

whether the infringement occurred as an internet domain or in other context. Section 135,25 23 Nandan Kamath, “ Law relating to Computers Internet & E-Commerce” at p. 18824 Section 29, Trademarks Act, 1999.25 Trademarks Act, 1999.

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prescribes reliefs such as injunction & damages in case of infringement of trademark. The

standard factors, which determine infringement under the traditional trademarks law are:

The strength of the trademark

The deceptive similarity between the plaintiff’s and the defendant’s mark,

The likelihood of confusion in the minds of the public, etc.,

Would apply in cases of infringement of domain names also

C.1- Diversion of Traffic- These sort of conflicts involve cases where the claimant is the owner

of a trademark which a competitor is using as a domain name, without such competitor

having any inherent right to the name.26 In such cases, as a general rule, traditional

trademark law would apply, since one of the parties is effectively infringing on the use of the

mark by the other. A typical example of such a dispute would be a case where a person

registers a domain name ‘reebuk.com’ in order to divert domain name traffic from

‘reebok.com’.27

C.2 – String Conflicts- String Conflicts or twins are the most complex aspect of domain name

disputes. String Conflicts involve cases where both parties have trademark, either relating to

the same product in different countries, or to different products in the same country. If both

parties now want to register the trademark as a domain name, then a conflict arises which is

almost irresolvable. The conflict arises because there can be only one domain name of a

particular word. And to grant preference to one party over the other would also be unfair.

The common law principle of passing off also does not have any relevance in such cases.

D- PROTECTION UNDER TRADEMARK LAW

26 Princeton Review management Corp v. Stanley H.Kaplan Educational Centre Ltd. 94 Civ. 1604(SNDY 1994)27 Nandan Kamath, “ Law relating to Computers Internet & E-Commerce” at p. 188

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Trademarks have had a prominent place in history, emerging with the development of

international trade and evolving into one of the principal arms of intellectual property. 28 In

India the Law governing protection of trademarks is Trade Marks Act 1999. It defines

trademark as a mark which includes a device, brand, heading, label, ticket, name, signature,

word, letter, numerical, shape of goods etc.29 Trademarks are marks which businesses use to

identify the products to consumers. Conventionally, this involves things such as logos, key

sounds, symbols and words. Recently, however, trademarks have become a topic of specific

attention in the context of today’s online environment. Areas such as Internet domain

names, hyperlinks and keywords searches have forced us to rethink what trademark is and

how it should be enforced.30 Domain name disputes are relatively unheard of in the Indian

Courts. There have been hardly a handful of reported decisions regarding domain name

disputes and the case law has still not developed in India. However, with the use of the

internet catching up at an amazing pace in the country, the Indian courts would surely be

faced with domain name disputes in times to come.

D.1- Remedy Of Passing Off- Passing off is a form of tort. No man is entitled to represent his

goods as being the goods of another man, and no man is permitted to use any mark, sign or

symbol, device, or other means, whereby, without making a direct false representation

himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to

make a false representation to somebody else who is the ultimate customer.31 It is asn

actionable wrong for any person to pass off his goods or business as and for the goods or

business of another person by whatever means that result may be achieved.32 Fraudulent

intention is not necessary to constitute passing off. In fact today it is applied to many forms

28 Introduction to Trademark Law and Practice: the basic concepts, WIPO, Geneva, 1993, p.5.29 Section 2(1)(m), Trademarks Act 1999.30 Karnika Seth, “ Cyber Laws in the Information Technology Age” at p. 372.31 Singer v. Loog (1881) 18 Ch D 395.32 P.Narayanan, “ Intellectual Property Law”, 3rd ed, p. 212.

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of unfair competition where the activities of one person cause damage or injury to the

goodwill associated with the activities of another person or group of persons. The essential

characteristics which must be present in order to create a valid cause of action for passing

off are:33

Misrepresentation,

Made by a person in the course of trade,

To prospective customers of his or ultimate customers of goods or services supplied

by him,

Which is calculated to injure the business or goodwill of another trader, and

Which causes damage to a business or goodwill of the trader by whom the action is

brought or goodwill of the trader by whom the action is brought or will probably do

so.

Section 135 deals with reliefs which are available in an action for passing off or

infringement. It includes-

An injunction subject to terms,

Either damages or an account of profits at the option of the plaintiffs, and

An order for delivery-up of the offending labels and marks for destruction or

erasure.

One of the famous cases based on this remedy is the One in a million case. 34 In this case the

UK based, One in a Million Ltd, and its sister company, Junic, registered domain names with

NSI35 and Nominet.36 Registered domain names included those of well-known commercial

33 Erven Warnick v. Towend [1980] RPC 31 at 93 (HL)34 Marks & Spencer plc v. One in a Million case 1998 FSR 26535 USA administrator of Generic TLD’s36 Administrator of the ‘.uk’ geographical top level domain names.

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companies, trademarks or other famous names, like marksandspencer.com, cellnet.net etc.

One in a Million then negotiated resale of the domain names with the owners of the

trademarks or tradenames. The court in United Kingdom held that it was an act of passing off

and granted an injunction to prevent the cyber squatting of domain names involving well-

known brands such as Salisbury, Mark & Spencer.

Another case of Juris inc,37 where Juris, Inc, owner of a federal trademark registration of

JURIS for its legal time and billing software products, had been forced to choose the domain

‘jurisinc.com’ after leaving its first choice ‘juris.com’, which had already been assigned to The

Comp Examiner Agency. When Juris, Inc. accused Comp Examiner, which used the domain

for a legal information website, went to court seeking cancellation of Jurisinc’s JURIS

trademark registration on grounds of genericness; Juris,Inc then counterclaimed for

trademark infringement and dilution. The court granted Juris, Inc a preliminary injunction

which not only precluded Comp Examiner from using the domain ‘juris.com’, but also from

using ‘juris’ in its domain name or any confusingly similar variation. Juris,Inc. now owns both

domains, and operates under the domain ‘juris.com’.

Another most important case in this regard has been the yahoo case,38 wherein the Internet

search engine, yahoo Inc sued and internet pirate who had copied the domain name

yahooindia.com and also used ‘yahooindia’ as a trademark with similar literary work on its

website and offered directory services with information specific to India and was passing

itself as the extension of yahoo. The High Court of Delhi granted an injunction restraining

him from using yahoo either as a part of his domain name or as trademark or from copying

any of the contents of the Plaintiff’s website that infringe yahoo’s copyrights. The court

categorically ruled that trademark applies with equal force on internet as it does in a physical

37 Comp Examiner Agency, Inc v. Juris ,Inc, 1996.38 Yahooinc v. Akash Arora (1999) PTC 201.

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world. The potential of harm is far greater on the Internet because of his wide access and

reach and therefore trademark protection principles equally apply to online world.

D.2- Remedy under Section 103 & 104- Under section 103,39 a person is liable for falsification

of trademark. A person is said to falsify a trademark if he makes a trademark without the

assent of the proprietor. To constitute falsification it is sufficient if the offender makes a

mark deceptively similar to the genuine trade mark, or if he carries out alterations, additions

or effacement in the genuine trademark. A trademark so falsified is called a false

trademark.40 In a case of falsification of trademark it is therefore necessary to prove the

existence of a genuine trademark, whether registered or unregistered, belonging to some

person. Any person who falsifies a trademark is punishable with imprisonment which may

extend from six months to three years fine which may vary from fifty thousand to two lacs.

And if any person sells or lets for hires any services to which any false trademark or false

trade description is applied shall be punishable with imprisonment of six months which may

extend to three years and fine of rupees fifty thousand which may extend to two lac

rupees.41 For every subsequent offence the term of imprisonment will vary from one year to

three years and the amount of fine may vary from one lac to three lacs rupees.42

E. TRADEMARK PROTECTION UNDER INTERNATIONAL LAW

The international intellectual property system has traditionally provided for the protection of

rights across different languages and different character scripts, most particularly in the field

of trademark law, as part of the wider concept of protection against unfair competition. The

principal international agreements and instruments that address the protection of

trademarks are the Paris Convention for the Protection of Industrial Property, the

39 Trademarks Act 1999.40 P.Narayanan, “ Intellectual Property Law”, 3rd ed, p. 238.41 Section 104, Trademarks Act 1999.42 Section 105, Trademarks Act 1999.

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Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement),

the Trademark Law Treaty (TLT) and the Madrid Agreement Concerning the International

Registration of Marks and related Protocol, as described below. In addition, the WIPO Joint

Recommendation Concerning Well-Known Marks provides guidelines for the protection of

well-known marks at an international level. Their provisions are designed to avoid conflicts

between trade and service marks across different languages, and to provide specifically for

registration and protection of marks, their translations and transliterations.43

E.1- PARIS CONVENTION

The Paris Convention for the Protection of Industrial Property (1883),44to which 162 States

are party,16 applies to the protection of industrial property, including marks and the

repression of unfair competition, and deals with national treatment, right of priority and

common rules. The Paris Convention does not regulate the conditions for the filing and

registration of marks, which are to be determined by each contracting State in accordance

with its domestic law. Where a mark has been duly registered in its country of origin, it must,

on request, be accepted for filing and protected in its original form in the other contracting

States. Nevertheless, registration may be refused in defined cases; such as when the mark

would infringe acquired rights of third parties, when it lacks distinctive character, is contrary

to morality or public order, or is of such a nature to deceive the public. Most broadly, the

Paris Convention, requires contracting States to provide effective protection against acts of

unfair competition, including to prohibit:

“all acts of such a nature to create confusion by any means whatever, with the

43 See generally, Stephen P. Ladas, ‘Patents, Trademarks and Related Rights: National and International Protection’, (Harvard University Press, 1975).

44 Paris Convention for the Protection of Industrial Property of March 20, 1883. See

Professor J.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the

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establishment, the goods, or the industrial or commercial activity of a competitor.”45

In particular, each contracting State must refuse registration and prohibit the use of well-

known marks, in accordance with the Paris Convention,46 which provides, inter alia:

“The countries of the Union undertake, ex officio if their legislation so permits, or at the

request of an interested party, to refuse or to cancel the registration, and to prohibit the

use of a trademark which constitutes a reproduction, an imitation, or a translation, liable to

create confusion, of a mark considered by the competent authority of the country of

registration or use to be well known in that country as being already the mark of a person

entitled to the benefits of this Convention and used for identical or similar goods. These

provisions shall also apply when the essential part of the mark constitutes a reproduction of

any such well-known mark or an imitation liable to create confusion therewith.”47

E.2- TRIPS Agreement

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement),

was concluded in the 1986-94 Uruguay Round of the World Trade Organization (WTO). The

TRIPS Agreement seeks to establish common international rules for the protection of

intellectual property, and facilitates settlement of trade disputes between Members over

intellectual property rights using the WTO’s dispute settlement system. As described by the

WTO, the TRIPS Agreement covers five broad issues: (i) how basic principles of the trading

system and other international intellectual property agreements should be applied, (ii) how

to give adequate protection to intellectual property rights, (iii) how countries should enforce

45 Article 10, Paris Convention46 Article 6, Paris Convention.47 For further discussion of the Paris Convention and protection of well -known marks, see Professor J.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property, (BIRPI, 1969). See also Christopher Heath and Kung-Chung Liu, eds., The Protection of Well-Known Marks in Asia, (Kluwer Law International, 2000), at Chapter 1, pages 3 -8. For discussion of protection of famous and well-known marks generally, see Frederick W. Mostert, Famous and Well-Known Marks: An International Analysis, (Butterworths, 1997).

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those rights adequately in their own territories, (iv) how to settle disputes on intellectual

property between Members of the WTO , and (v) special transitional arrangements during

the period when the new system is being introduced.48

Section 2 of the TRIPS Agreement deals with trademarks, of which Article 15 specifies the

subject matter protectable as a trademark and provides, inter alia:

“1. Any sign, or any combination of signs, capable of distinguishing the goods or services

of one undertaking from those of other undertakings, shall be capable of constituting a

trademark.”

The TRIPS Agreement, Article 16, specifies the rights conferred by such protection, and

incorporates and extends the protection granted to trademarks under Article 6 of the Paris

Convention to service marks.49 Further, Article 16(2) makes special provision for the

protection of well-known marks, providing guidance to Members in determining what

constitutes a well-known mark, inter alia:

“2. In determining whether a trademark is well-known, Members shall take account of the

knowledge in the Member concerned which has been obtained as a result of the

promotion of the trademark.”50 Finally, Article 16(3) extends the special protection granted

to well-known marks against use in relation to goods and services which are not similar to

those in respect of which the trademark is registered, provided that the use of the

trademark in that context would indicate a connection with the registered trademark

owner and provided that the trademark owner’s interests would be likely to be damaged

by such use. This provision may be described as the ‘dilution protection principle’, because

it follows the lines of the recognized principle of dilution, in certain legal systems. Under

48 See the WTO’s web site on the TRIPS Agreement at http://www.wto.org/english/thewto_e/whatis_e/tif_e/agrm6_e.htm49 The TRIPS Agreement, Article 2(1), provides that “In respect of Parts II, III and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19 of the Paris Convention (1967).”50 TRIPS Agreement, Article 16(2).

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United States law, dilution protection is recognized in the Federal Trademark Dilution Act

of 1995, codified as Section 43(c) of the Lanham Act.

E.3- Trademark Law Treaty

The Trademark Law Treaty (TLT) aims to simplify and harmonize procedures of national and

regional trademark registration systems. The TLT is mainly concerned with three phases of

procedure before a trademark office: application for registration, changes after registration

and renewal. In each phase, the TLT specifies what the trademark office can and cannot

require from the applicant or owner. The TLT also goes toward harmonizing trademark office

practice in dealing with multilingual trademark applications. The Trademark Law Treaty,

Article 3(1)(a) provides, inter alia:

“Any Contracting Party may require that an application contain some or all of the

following indications or elements:

(xiii) a transliteration of the mark or of certain parts of the mark;

(xiv) a translation of the mark or of certain parts of the mark.”

G. THE UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (UDRP)

The Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation

for Assigned Names and Numbers (ICANN) on August 26, 1999,51 followed the publication of

the Report of the first WIPO Internet Domain Name Process.52 The UDRP, which entered into

force for the gTLDs (.com, .net and .org) from December 1, 1999, was implemented to

address conflicts between all Internet domain names registered in those gTLDs and

trademarks or service marks. It operates as a mandatory procedure to which each applicant

for a domain name registration in .com, .org and .net is required to submit, in the event that

51 See http://www.icann.org/udrp/udrp-policy-24oct99.htm.52 The Report of the first WIPO Internet Domain Name Process, The Management of Internet Names and Addresses: Intellectual Property Issues, is available at http://wipo2.wipo.int/process1/.

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a complaint is lodged in respect of the applicant’s registration. The UDRP establishes a

dispute-resolution procedure under which a complainant can seek the transfer or

cancellation of a domain name registration in .com, .net or .org on the basis that, in

accordance with paragraph 4(a):

i. the domain name is identical or confusingly similar to a trademark in which the

complainant has rights; and

ii. the domain name holder has no rights or legitimate interests in respect of the

domain name; and

iii. the domain name has been registered and is being used in bad faith.”53

The UDRP, paragraph 4(b) then describes circumstances which the complainant may

describe to provide evidence of the registration and use of the domain name in bad faith.

The respondent, on its part, may counter the complaint by asserting its rights to and

legitimate interests in the domain name, in accordance with paragraph 4(c). ICANN has

accredited four dispute-resolution service providers to administer disputes brought under

the UDRP: the WIPO Arbitration and Mediation Center, the National Arbitration Forum, e-

Resolution and the CPR Institute for Dispute Resolution.54 Registrars accredited by ICANN to

accept domain name registrations in .com, .net or .org are obliged to implement the results

of panel decisions pursuant to the UDRP. Since its inception, a total of 8262 domain names

have been subject of cases filed under the UDRP,55of which more than 3260 gTLD cases

53 See UDRP, paragraph 4(a) at http://www.icann.org/udrp/udrp-policy-24oct99.htm.

54For a list of ICANN accredited dispute resolution

serviceproviders, see http://www.icann.org/udrp/approved-

providers.htm.

55 See ICANN’s ‘Statistical Summary of Proceedings Under Uniform Domain Name Dispute Resolution Policy’ (as at November 29, 2001) at http://www.icann.org/udrp/proceedings-stat.htm.

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(covering more than 6,000 separate domain names) were filed with the WIPO Arbitration

and Mediation Center. Of the total cases filed with the WIPO Center, approximately 87%

refer to domain names in the .com gTLD, 18% in the .net TLD and 10% in the .org TLD. Of

these cases, 90% have been resolved to date, in an average of 50 days and at a filing cost of

US$1,500. The geographical spread of these cases covers parties from 91 countries.

G.1- Indian Cases Reaching UDRP

In Castrol limited case,56 the complainant (involved in production and distribution of

automatic lubricants) who held rights in the registered trade-mark CASTROL in India and

around the world and operated the web site www.castrol.com alleged that the respindent’s

domain name <castrolindia.com>, which included the term “Castrol” was confusingly

similar to its trade-mark. The panel concluded that the respondent had no legitimate

interest in the confusingly similar disputed domain name which had been registered in bad

faith and ordered that the domain be transferred to complainant.

In IIT Bombay case,57 the Domain name in dispute was <iitpowai.com> registered with the

respondent which was confusingly identical to the complainant’s distinctive service mark IIT

which had gained immense goodwill and reputation for its superb academic education. The

Panel decided that the Respondent should transfer the domain name as he had no rights or

legitimate interests in respect of the said domain and because it had been registered and

was being used in bad faith.

In NIIT case,58 the Complainant was engaged in the business of imparting education in

Information Technology under the trademark “NIIT” which was a coined mark and had no

obvious meaning and had developed computer software with names such as NIITePortal,

NIITeMart and NIITeService, etc. The Panel found that the respondent’s inactive domain

56 Castrol Limited v. Shrinivas Ganediwal Case No. D2002-0881.57 IIT Bombay, Powai v. Indsoft Case NO. D2002-0078.58 NIIT Ltd v. Parthasarathy Venkatram Case No. D2000-0497.

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name “myniit.com” was confusingly similar to that of Complainant’s and that the

respondent’s domain name had been registered in bad faith. Accordingly the Panel

required that the registration of the domain name “myniit.com” be transferred to the

Complainant.

In Microsoft Corporation case,59 the WIPO panel found that the domain name

‘microsoft.org’ registered by respondent was identical and confusingly similar to the

trademark “MICROSOFT” in which the complainant had rights and respondent had no

legitimate interest and that the respondent’s domain name had been registered and was

being used in bad faith.

G. PROVISION UNDER LAWS OF UNITED STATES OF AMERICA

USA has been a pioneer in the field of preventing cyber squatting. At present there are Anti-

dilution laws and Anti-Cyber squatting laws to tackle such problem. Doctrine of dilution is

well known and for this The Federal Anti-Dilution Act which is incorporated in the form of

Lanham Act defines the term dilution. It means the lessening of the capacity of a famous

mark to identify and distinguish goods or services, regardless of the presence or absence of,

competition between the owner of the famous mark and other parties or likelihood of

confusion, mistake, or deception.60 Further the US Congress, in 1999 enacted the Anti-Cyber

Squatting Consumer Protection Act, to outlaw cyber squatting. It amends Section 43 of

Lanham Act and the section has been named as Prevention of Cyber-piracy. Under section

43, a person shall be liable in a civil action by the owner of a mark, if he has a bad faith intent

to profit from that mark or registers, traffics in, or uses a domain name which at the time of

registration of the domain name, is identical or confusingly similar to that work. In order to

succeed in a dilution action, a plaintiff must establish that its mark is ‘famous’ as defined by

59 Microsoft Corporation v. Amit Mehrotra Case No. D2000-0053, Adm. Panel Decision, Wipo Arb. And Med. Centre.60 Section1127, The Federal Anti-Dilution Act.

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s.43(c).61 The principle of dilution also has broader application, for example, under European

Community law, the principle of dilution is recognized in the European Community

Trademark Directive (1989) and the European Community Trademark Regulation

(1993).62Thus in USA both the laws have come forward to rescue aggrieved trademark

owners. But in India there is no parallel law to USA in Preventing Cyber Squatting.

H. Conclusion

Protection of Intellectual property is crucial for the success of e-commerce. The traditional

laws for protecting intellectual property have been applied also in cyberspace. However, due

to inherent nature of the internet, several pertinent issues have emerged such as the

principles to determine jurisdiction, recognizing the hybrid varieties of online infringements,

resolving conflict of laws issues which apply equally in cyberspace. Scholars have advocated

a combined approach of sociological, technological and legal initiatives and measures to

protect the infringement of Intellectual property in cyberspace. The legal enforcement of

infringement of Intellectual property rights in cyberspace is a very challenging area.

Nevertheless, it is a challenge of the digital era, which we need to take in the interest of and

61 The Court, in the United States case of Panavision International v. Toeppen, (141 F.3d

1316, 1324 (9th Cir. 1998)), interpreted the FTDA as it applies to the Internet. The Court

states (at page 23) that:“In order to prove a violation of the Federal Trademark Dilution Act,

a plaintiff must show that (1) the mark is famous; (2) the defendant is making a commercial

use of the mark in commerce;(3) the defendant’s use began after the mark became famous;

and (4) the defendant’s use of the mark dilutes the quality of the mark by diminishing the

capacity of the mark to identify and distinguish goods and services

62 Article 5(1)(b) of the European Community Trademark Directive provides that the

trademark owner has a right to object to the use of identical or similar marks for identical or

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furtherance of the emerging e-information society. The future of protection of e-IPR is

indeed promising as cyber laws are evolving to further the interests of our emerging e-

information society.

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