Cybersquatting and Domain Name Disputes

Under the Trademark Law

Bhavna Singh, LL.M. (IPR), II Year

NALSAR University of Law, Hyderabad

Table of Contents

Pg

Table of Cases ii

Introduction iii

Chapter 1 – Fundamentals of Domain Name 1

Chapter 2 - What is Cybersquatting? 8

Chapter 3 –Cybersquatting and Domain Names under the Trademark Law 13

Chapter 4 - ICANN dispute resolution policy 22

Chapter 5 – Conclusion 30

Bibliography v

i

Table of Cases

AT&T Knowledge Venture v. Rnetworld

Bennett Coleman & Co Ltd. v. Long Distance Telephone Company

Bennett Coleman & Co Ltd. v. Steven S Lalwani

Brookfield Communications, Inc. v. West Coast Entertainment Corp

Card service International Inc. v. McGee

Dr. Reddy’s Laboratories Limited v. Manu Kosuri

Harrods Ltd. v. UK Network Services Ltd

Hasbro, Inc. v. Clue Computing Inc

Intel Corporation v. Anil Handa

Intermatic v. Toeppen

Manish Vij v. Indra Chugh

Marks & Spencer v. One-in-a-Million

Maruti Udyog v. Maruti InfoTech

Panavision v. Toeppen

Prince Plc v. Prince Sportswear Group Inc

Rediff Communication v. Cyberbooth

Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd

Satyam Infoway v. Sifynet Solutions

Satyam Infoway v. Sifynet Solutions, AIR 2004 SC 3540

SBI Cards and Payment Services Private Ltd v. Domain Active Pty Ltd

Shell Oil Co. v. Commercial Petroleum Inc., 928 F.2d. 104, 107 (4th Cir. 1991)

Sporty’s Farm, LLC v. Sportsman’s Market, Inc

Tata Sons Ltd v. Manu Kosuri

Titan Industries Ltd. v. Prashanth Koorapati

Virtual Works, Inc. v. Volkswagen of America, Inc

Yahoo Inc. v. Akash Arora

ii

Introduction

Research Objective:

The theme of the paper is Cybersquatting and Domain Name Disputes under the

Trademark Law. Cyber squatting cases have increased tremendously in the past few years

after the advent of the internet. There are so many instances of abusive domain name

registration and infringement of trademarks on the internet that law of trademark has

extended its purview to domain names as well. Most of the domain name disputes and

cybersquatting cases are dealt under the passing off when there are no specific provisions

on the issue.

The purpose of the paper is to analyze the issues of cybersquatting and domain

name disputes and the legal position under the trademark law for protection of

trademarks in the cyberspace.

Research Methodology:

Style of Writing:

The research paper is analytical in nature. The research paper deals with the

crucial aspects of the cybersquatting and domain name disputes. The legal position of

protection of trademarks from abusive domain name registration and infringement in

various jurisdictions and dispute resolution mechanism are discussed by way of case laws

in the paper.

Sources

Primary and Secondary sources of information have been utilized in the writing of

this research paper.

iii

Mode of Citation:-

A uniform mode of citation has been followed throughout the paper.

Articles: - [Author], [“Article”], [Journal], [Volume number], [Year of publication],

[Page number].

Books: - [Author], [“Book”], [Edition and Year of publication], [Publisher], [Place of

publication], [Page number].

Cases: - As per the citation method followed in the books reporting cases.

Websites: - [Title of the webpage], [Website address], [Date on which webpage was

accessed].

Research Scheme:

The research paper has been written in the form of chapters starting with

introduction part and summary of the conclusion will follow after entire discussion.

iv

Chapter 1 – Fundamentals of Domain Name

Trade marks are signs, distinguishing the products of one marketer from similar products

of other marketers. They are badges indicating the origin of the marked products and

symbols of the goodwill that trade mark owners possess. Society needs trade marks

because they function as communicators. They enable consumers to distinguish between

products and allow marketers to offer products of diverse qualities at diverse prices.

Without trade marks the market economy based on choice would break down into a

number of single product markets. For each type of product there would be only one the

lowest marketable quality, at one the lowest possible-price. For the market to work

efficiently, though, the information carried by trade marks must be trustworthy. George

Akerlof has examined the collapse of markets where consumers do not trust the

information conveyed by marketers.1 Trade marks also need to be distinctive in order to

function as communicators. The closer they are to the marked product the less distinctive

they are and, as a result, less appropriate to function as distinguishing signs for that

product. A trade mark, like any other sign, has to signify something else rather than itself

in order to function as a trade mark.2

The use of a trademark benefits the merchant or manufacturer of a product as well as

consuming public. For the merchant or manufacturer, a trademark serves as an

advertising tool, facilitating repeat sales, and the successful marketing of new products. 3

Individual consumers rely on trademarks to distinguish among competing products and to

represent a certain level of quality that they have come to expect when purchasing

products or services with which a particular mark is used.4

As with other forms of intellectual property, trademark constitutes ‘property rights’

conferring upon the proprietor, the exclusive right to certain forms of use of the mark. 5

1G. Akerlof, “The Market for ‘Lemons’: Quality Uncertainty and the Market Mechanism”, (1970) 84/3 Quarterly Journal of Economics, p. 488 2 Spyros M. Maniatis, “Trade Mark Law and Domain Names: Back to Basics”, EIPR 2002, 24(8), 397-4083 Shell Oil Co. v. Commercial Petroleum Inc., 928 F.2d. 104, 107 (4th Cir. 1991)4 Michael E. Epstein, “Intellectual Property”, 5th ed., 1st Indian Rep. 2008, § 7.01[C]5 Ian J.Llyod, “Information Technology Law”, 5th ed., 2008, p. 427

1 | P a g e

The traditional aim of trademark law is was to protect against consumer deception in the

market place through the protection of the trade marks and badges of origin. Gradually,

property rights on the goodwill conveyed by the trade marks and, more recently on

trademarks as such have been recognized.6

With the developments in information technology, the business and trade have also

become technology oriented and have expanded their market by promoting themselves

through new technical advancement. The significance of the internet has augmented with

the online business transactions in trade and therefore, the trademarks are playing a vital

role in cyberspace for the business. Therefore, it is required for a business to protect its

trademarks and goodwill so as to retain customers and increase marketability online.

What are domain names?

An Internet domain name is a string of typographic characters used to describe the

location of a specific location online. Formally known as the Uniform Resource Locator

or URL, it is often considered to be the address of a certain Web site. Obtaining an

Internet domain name is a vital step for small businesses hoping to establish a presence

on the Internet.7 A domain name is, simply, the alphanumeric equivalent of an Internet

Protocol ("IP") number. The primary function of the DNS is to link or map these

difficult-to-remember IP numbers to their equivalent domain names, thus making the

internet more user-friendly; for example, www.soton.ac.uk/~library8 is easier to

remember than 152.78.128.149. The IP number and the equivalent mapped domain name

both identify each computer site connected to the internet; no two organisations can have

exactly the same domain name.10

6 S. M. Maniatis, “Trade Mark Rights: A Justification Based on Property”, [2002] I.P.Q. 1237 http://definitions.uslegal.com/i/internet-domain-names/, accessed on August 28, 2009.8 location of the University of Southampton Library website9 The IP number for the University of Southampton Library website.10 Caroline Wilson, “Internationalized Domain Name Problems and Opportunities” C.T.L.R. 2004, 10(7), 174-181

2 | P a g e

The Domain Name System (DNS) helps users to find their way around the Internet.

Every computer on the Internet has a unique address - just like a telephone number -

which is a rather complicated string of numbers. It is called its “IP address” (IP stands for

“Internet Protocol”). IP Addresses are hard to remember. The DNS makes using the

Internet easier by allowing a familiar string of letters (the “domain name”) to be used

instead of the arcane IP address. So instead of typing 207.151.159.3, you can type

www.internic.net. It is a “mnemonic” device that makes addresses easier to remember.11

Internationalized Domain Names, or IDNs, are web addresses in your own language.

Many efforts are underway in the Internet community to make domain names available in

character sets other than ASCII. These “internationalized domain name” (IDN) efforts

were the subject of a 25 September 2000 resolution by the ICANN Board of Directors, in

which it recognized “that it is important that the Internet evolve to be more accessible to

those who do not use the ASCII character set,” but stressed that “the internationalization

of the Internet's domain name system must be accomplished through standards that are

open, non-proprietary, and fully compatible with the Internet’s existing end-to-end model

and that preserve globally unique naming in a universally resolvable public name

space.”12

A typical domain name consists of several parts. As an example, consider an auto parts

business with the domain www.spareparts.com. The letters “www.” before the domain

name mean that what follows describes the location of a site on the World Wide Web.

The last two or three letters of a domain name or URL are known as its top-level domain.

The top-level domain for the sample used earlier, www.spareparts.com is .com. Some of

the most common top-level domains include .com, which usually indicates a business or

commercial site; .org, which generally describes a nonprofit, charity, or cultural

organization site; .gov, which indicates a governmental site; and .net, which is most often

used by network-related businesses. Other common top-level domains are country codes,

like .us for United States and .au for Australia, etc. Small businesses can put as many

sub-domains as needed in front of their domain names. For example, the customer service

11 http://www.icann.org/en/general/glossary.htm, accessed on August 19, 2009.12 Ibid.

3 | P a g e

department of the aforementioned auto parts business might be designated as

www.service.spareparts.com13.

Top Level Domains (TLDs) are the names at the top of the DNS naming hierarchy. They

appear in domain names as the string of letters following the last (rightmost) “.”, such as

“net” in “www.example.net”. The administrator for a TLD controls what second-level

names are recognized in that TLD. The administrators of the “root domain” or “root

zone” control what TLDs are recognized by the DNS. Commonly used TLDs

include .com, .net, .edu, .jp, .de, etc. 14 There are mainly two types of TLDs:

a) Generic Top Level Domain – gTLD

Most TLDs with three or more characters are referred to as “generic” TLDs, or “gTLDs”.

They can be subdivided into two types, “sponsored” TLDs (sTLDs) and “unsponsored

TLDs (uTLDs). 15

In the 1980s, seven gTLDs (.com, .edu, .gov, .int, .mil, .net, and .org) were created.

Domain names may be registered in three of these (.com, .net, and .org) without

restriction; the other four have limited purposes. Over the next twelve years, various

discussions occurred concerning additional gTLDs, leading to the selection in November

2000 of seven new TLDs for introduction. These were introduced in 2001 and 2002. Four

of the new TLDs (.biz, .info, .name, and .pro) are unsponsored. The other three new

TLDs (.aero, .coop, and .museum) are sponsored.16

Generally speaking, an unsponsored TLD operates under policies established by the

global Internet community directly through the ICANN process, while a sponsored TLD 13 http://definitions.uslegal.com/i/internet-domain-names/, Supra n. 414 http://www.icann.org/en/general/glossary.htm, accessed on September 15, 2009.15 Ibid.16 Ibid.

4 | P a g e

is a specialized TLD that has a sponsor representing the narrower community that is most

affected by the TLD. The sponsor thus carries out delegated policy-formulation

responsibilities over many matters concerning the TLD.17

A Sponsor is an organization to which is delegated some defined ongoing policy-

formulation authority regarding the manner in which a particular sponsored TLD is

operated. The sponsored TLD has a Charter, which defines the purpose for which the

sponsored TLD has been created and will be operated. The Sponsor is responsible for

developing policies on the delegated topics so that the TLD is operated for the benefit of

a defined group of stakeholders, known as the Sponsored TLD Community, that are most

directly interested in the operation of the TLD. The Sponsor also is responsible for

selecting the registry operator and to varying degrees for establishing the roles played by

registrars and their relationship with the registry operator. The Sponsor must exercise its

delegated authority according to fairness standards and in a manner that is representative

of the Sponsored TLD Community.18

b) Country Code Top Level Domain - CCTLD

Two letter domains, such as .uk (United Kingdom), .de (Germany) and .jp (Japan) (for

example), are called country code top level domains (ccTLDs) and correspond to a

country, territory, or other geographic location. The rules and policies for registering

domain names in the ccTLDs vary significantly and ccTLD registries limit use of the

ccTLD to citizens of the corresponding country. 19

Some ICANN-accredited registrars provide registration services in the ccTLDs in

addition to registering names in .biz, .com, .info, .name, .net and .org, however, ICANN

does not specifically accredit registrars to provide ccTLD registration services. 20

Therefore, we can say that domain names are like addresses of websites on the internet.

Net surfers and users find their desired website by way of domain names on the internet.

These domain names are based on nature and purpose of the website or organization in 17 Supra n. 16. 18 Ibid.19 Ibid.20 Ibid.

5 | P a g e

whose name the domain name is created, e.g. a commercial business, non-profit

organization, educational institution etc. or, they are based on geographical location of

such the domain name user.

Disputes over rights to domain names, which serve a source- identifying function in

cyberspace, arise at the heart of this intersection between international trademark law and

the Internet. In an effort to reconcile the unique complexities presented by domain name

disputes, a host of vehicles have developed by which aggrieved parties may assert their

rights. With a few notable exceptions, these remedies may be obtained in one of two

forums-traditional litigation or private arbitration under the Uniform Domain Name

Dispute Resolution Policy (UDRP) promulgated by the Internet Corporation for Assigned

Names and Numbers (ICANN), the nonprofit organization that manages the DNS.21

Now the question comes to mind as to why domain names are of so much importance in

business and trade. The Hon’ble Supreme Court referred to this issue of importance of

domain names in Sataym Infoway v. Siffynet Solutions22 as follows:

“The original role of a domain name was no doubt to provide an address for computers

on the internet. But the internet has developed from a mere means of communication to a

mode of carrying on commercial activity. 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. In the commercial field, each domain name owner provides

information/services which are associated with such domain name. Thus a domain name

may pertain to provision of services within the meaning of Section 2(z). 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 21 Lisa M. Sharrock, “The Future of Domain Name Dispute Resolution: Crafting Practical International Legal Solutions from within the UDRP Framework”, Duke Law Journal, Vol. 51, No. 2 (Nov., 2001), pp. 817-84922 AIR 2004 SC 3540

6 | P a g e

peculiar and unique and where a domain name is used in connection with a business, the

value of maintaining an exclusive identity becomes critical.”

A Domain name serves the same purpose online, which a trademark serves in the offline

business transactions. It helps the customers identify the source of goods/services

provided by the owner of such goods and services. Therefore, Domain names are of

utmost importance in online businesses. They are important because of the following

reasons:

1. Promotion of business and building up of customer base online and offline by

way of advertising on the web.

2. Establishment of the credibility of the website and the business on the internet.

3. Easy access to customers and prospective customers.

Despite the financial value of domain names, registration of a sign as a domain name

does not imply that the holder of the domain name is granted an official right to use the

sign. Contrary to “popular, non-legal, folklore” because entities that reserve domain

names are registrars, not adjudicatory bodies by “reserving” a domain name a user does

not get any “official” right to use that domain name free from legal claims.23

Nevertheless, use of the term “registration” for domain names often leads to confusion

with the concept of registration, as in “trade mark registration”, which does confer

exclusive rights to use the protected sign as a trade mark.24

Chapter 2 - Cybersquatting and Domain Name Disputes

Registration of domain name is an easy and inexpensive process based on “first come,

first served basis”. Because of such policy of domain name registration, there are always

a large number of domain names which are actually or potentially associated with some

23 J. T. McCarthy, McCarthy on Trademarks and Unfair Competition. 4th ed. 2001, § 25:73.324 Spyros M. Maniatis, “Trade Mark Law and Domain Names: Back to Basics”, EIPR 2002, 24(8), 397-408

7 | P a g e

or the other trademarks.

Cybersquatting

The system of assigning the domain name was on first-come-first registered basis. It lead

to the reserving of many well known trade names, brand names, company names, etc. by

individuals/corporations other than the ones with a genuine interest in the domain name,

with a view to trafficking/doing business on the said domain name or offering the domain

name to the genuine buyer. Obtaining fraudulent registration with intent to sell the

domain name to the lawful owner of the name at premium is called “Cybersquatting”.

The Cyber squatters quickly sell the domain names to other non-related entities, thereby

enabling passing off25 and diluting of famous trademark or trade names.26

Cybersquatting can be defined as registration, use or trafficking in a domain name with

mala fide intent to make profit from the goodwill of the trademark belonging to the

owner of such trademark. The cyber squatter then offers to sell the domain name to the

owner of the trademark in name of which domain name is so registered for the purpose of

getting a price higher than the usual price of registration of such domain name.

This practice of abusive registration originated with growth of internet and e-commerce

and when the business entities were not so much aware of making online presence for

business and trade. Many companies had their trademarks as domain names registered in

name of third parties when they realized that they are required to register their trademarks

as domain names for their business.

Often, cyber squatters take such names and offer them for sale to the person or company

who should rightfully have the domain under trademark laws. They usually ask for a high

price, much greater than the actual cost of the domain when it was available. Some

cybersquatters put derogatory remarks on the registered domain about the person or

25 Passing off: A form of unfair trade practices in which one party seeks to profit from other party’s reputation.26 Manish Vij v. Indra Chugh, AIR 2002 Delhi 243

8 | P a g e

company it is meant to represent in an effort to encourage the subject in question to buy

the domain.27

As the commercial function of the Internet has grown, more legal disputes have arisen

because many private citizens and companies have rushed to get a spot in the “cyber

world” in order to exploit the potential of on-line commerce.28

The existence of domains without specific requirements for the registration brought a

policy of “first come, first served”. This has created many disputes with trade mark

owners because, since the 1990s, many speculators have started to register domain names

in order to resell them for a much higher price to trade mark owners and new businesses.

Problems arose with trade mark owners because of their entitlements to IP rights make

them feel ripped off by this new practice called “cybersquatting”29. Thus, to date, anyone

who wishes to register a domain for the first time which is trade marked can do so;

whatever problems may arise will have to be faced later.30

The reason as to why there is such increase in such incidences is the growing importance

of domain names in this e-commerce trend. Domain names hold an elevated level of

importance for the reason that there can be only one user of a domain name unlike two or

more users of a same or similar trademark under the trademark law, for various classes of

goods/services or under honest concurrent use. The domain registration system follows

the “first come, first served” policy. So, once a person registers a domain name similar to

a trademark, any other person using a similar mark is denied registration of another

domain name similar to that trademark.

Under the trademark law a trademark can be used by one or more persons for various

27 http://knowledgerush.com/kr/encyclopedia/Cybersquatting/, accesses on August 28, 200928 James Marcovitz, “Ronald@McDonalds.com -“Owning a Bitchin” Corporate Trademark as an Internet Address-Infringement?”, 17 (1995) Cardozo L. Rev. 85, p. 8529 G. Kaufmann-Kohler and T. Schultz, “Online Dispute Resolution: Challenges for Contemporary Justice”, 2004 ed., p.3630 Juan Pablo Cortes Dieguez, “The UDRP Reviewed: The Need For A Uniform Policy”, C.T.L.R. 2008, 14(6), 133-139

9 | P a g e

classes or goods or services, if such use does not amount to infringement or causing

confusion or dilution. But such kind of provision is not applicable in case of domain

names. Only one user is allowed to use a particular domain name and any other

application for the same domain name is refused. This is the main reason as to why

trademark owners prefer to get their trademarks registered as their domain names for

business.

The cases of trademarks and domain names conflict mainly involve issues related to use

of the goodwill of a trademark by an infringer in the domain name to divert the customers

or potential customers of the owner of the trademark to a website not associated with that

trademark, or use of meta-tags resulting in dilution of trademark or unauthorized

registration of the trademark as domain name with the intent to extort money or to

prevent the owner from using the trademark.

Chapter 3 – Cybersquatting and Domain Names under the Law of Trademarks

Cybersquatting in the United States

10 | P a g e

In USA, cybersquatting has turned into a nuisance over all these years. The first case on

came to picture in 1994. The first cybersquatting case arose in 1994 in the United States

and cases have increased in number since then.

One of the leading cases in USA is of Dennis Toeppen, who registered most of the well

known trademarks in USA as domain names. Dennis Toeppen registered most of the well

known trademarks and was sued by the trademark owners. The two leading cases

involving Dennis Toeppen are Intermatic v. Toeppen31 and Panavision v Toeppen32. In

case of Intermatic v. Toeppen33, plaintiff owned the trademark Intermatic and had sued

Dennis Toeppen for trademark dilution. The court held Dennis Toeppen liable for

trademark dilution for the reason that registration of domain name intermatic.com by the

defendant had lessened the capacity of the plaintiff to indentify and distinguish its goods

and services on the internet.

In case of Panavision v Toeppen34, the court gave the judgment in favour of the plaintiff.

In this case Panavision had sued Toeppen against the registration of the domain names

panavision.com and panaflex.com. In this case, court was held that offer to sell a domain

name similar to a trademark to the owner of such trademark, amounted to commercial

use.

In Virtual Works, Inc. v. Volkswagen of America, Inc.35 (on dispute over the domain

name “www.vw.net:”), the Fourth Circuit Court of Appeals stated that mere resemblance

of a domain name to a famous trademark does not prove bad faith. There must be

circumstantial and direct evidence establishing the bad faith intent of the cybersquatter.

31 947 F. Supp.1227, 1230 (N.D. Ill. 1996)32 141 F.3d 1316 (1998)33 Supra n. 3134 Supra n. 3135 238 F.3d 262

11 | P a g e

In case of Card service International Inc. v. McGee36, the Court was of the opinion that “a

domain name is more than a mere internet address. It also identifies the internet site to

those who reach it, much like a person’s name identifies a particular person, or, more

relevant to trademark disputes, a company's name identifies a specific company.”37

Accordingly, the Court was of the opinion that use of “cardservice.com” and “Card

Service on the Caprock” by McGee amounted to trademark infringement under the

Lanham Act and granted permanent injunction in favor of Card Service International.

In case of Brookfield Communications, Inc. v. West Coast Entertainment Corp.38, the

Court of Appeals for 9th Circuit granted a preliminary injunction in favor of the plaintiff

against the defendant for use of domain name”moviebuff.com”.

The plaintiff claimed that domain name of the defendant infringed their trademark

“MovieBuff.” The defendant argued that they had used the slogan “The Movie Buff's

Movie Store” as a service mark since 1986, and had registered the “moviebuff.com”

domain name in 1996, and claimed seniority in using the domain name. Court held that

the mere registration of the domain name, which was not ready for actual “launching”

until November 1998, did not establish West Coast's seniority. The Court held that

defendant would create a likelihood of consumer confusion by using the domain name as

well as the term “moviebuff” as a metatag, and they can be permitted to use the term with

a space inserted ("”movie buff”).39

With increase in instances of cybersquatting, it was required to provide some legal

remedy against cybersquatting. This led to the enactment of the Anti-Cybersquatting

Consumer Protection Act 1999 in USA.

The Anti-Cybersquatting Consumer Protection Act (ACPA), enacted on November 29,

1999, amends the Lanham Act by adding a new Section 43(d). The new section provides 36 50 F. Supp. 737 (E.D. Va. 1997)37 Ibid.38 174 F.3d 1036 (9th Cir. 1999)39 Ibid.

12 | P a g e

trademark owners with a civil remedy against cybersquatting - the registering of others’

trademarks as domain names and profiting from the sale of those domain names or traffic

through the site.40 The ACPA renders one liable to the owner of a trademark who, with “a

bad faith intent to profit from that mark,” “registers, traffics in or uses a domain name”

that is either identical or confusingly similar to a “distinctive” mark or is identical,

confusingly similar or dilutive of a “famous mark.”41

In case of Sporty’s Farm, LLC vs. Sportsman’s Market, Inc.,42 decided under the Anti-

Cybersquatting Consumer Protection Act (ACPA), Sportsman's Market, a catalog

company used the logo and trademark “Sporty’s” to identify its catalogs. Omega

Engineering, also a catalog company which was selling scientific instruments, registered

the domain name “sporty’s.com”. Omega’s owner was a pilot and was familiar with

Sportsman’s catalogs and the Sporty’s trademark. After nine months from the registration

of the domain name, Omega transferred the domain name to a subsidiary named Sporty’s

Farm. The subsidiary was created by Omega for the purpose of growing and selling

Christmas trees. The court observed that Omega intended to enter into direct competition

with Sportsman’s in the aviation consumer market and their primary aim was to prevent

Sportsman's from using the domain name “sporty’s.com”. The court found that Omega

had created the subsidiary for the purpose of finding use of the domain name so

registered for commercial purpose and to prevent the plaintiff from using the domain

name. But for the reason that the domain name was registered prior to ACPA, the court

refused to grant damages to the plaintiff.

U.S. courts have not been willing to invent a new type of dilution based on use of a trade

mark as a domain name. The general rule is that the holder of a famous mark is not

automatically entitled to use that mark as its domain name because trade mark law does

not support such a monopoly. Therefore an internet user who is the first to register a sign

as a domain name and has a bona fide legitimate reason for using the sign should be able

to make use of it as a domain name, irrespective of whether the same sign constitutes a 40 http://legal.web.aol.com/resources/legislation/cybersquat.html, accessed on October 6, 200941 http://www.internetlibrary.com/publications/anticybsquattSamson9-05_art.cfm, accessed on October 6, 200942 202 F.3d 489 (2d Cir. 2000)

13 | P a g e

trade mark, provided that such use lies outside the boundaries of the trade mark right. The

request for a per se dilution finding has been rejected. A case involving Hasbro's famous

Clue trade mark is a good example of this approach emphasizing that the sweeping

consequences of a finding of per se dilution would disregard rigorous trade mark

enforcement requirements.43 Similarly, in Playboy Enterprises Inc. v. Netscape

Communications Corp.,44 a case involving non-Playboy sponsored adult banner

advertisement appearing whenever an internet user entered “playboy” or “playmate” as a

search term, Playboy failed to show a likelihood of success on the merits of its trade mark

action and to establish that it would suffer irreparable harm in the absence of an

interlocutory injunction.45

Mahindra & Mahindra (M&M) has recently won a cybersquatting case at the World

Intellectual Property Organization (WIPO) against a US-based person named Zach Segal,

who was using the name “Mahindra” in an Internet domain. The domain name Segal was

using was “mahindraforum.com”. But the Indian conglomerate contended that the name

is confusingly similar to its “Mahindra” trade mark and the person had no rights or

legitimate interests46.

Cybersquatting in India

There has been lot of instances of cybersquatting in the past few years in India. The

courts always deal with matters related to domain name dispute and cybersquatting. In

India one of the earliest judgments on cybersquatting was from the Bombay High Court

in case of Rediff Communication v. Cyberbooth47. In this case the court was of the

opinion that the value and importance of a domain name is like a corporate asset of a

company. In this case the defendant had registered the domain name radiff.com which

was similar to rediff.com. The Court was of the opinion that internet domain names are of

importance and can be a valuable corporate asset and such domain name is more than an

43 Hasbro, Inc. v. Clue Computing Inc. 52 U.S.P.Q. 2d 1402 (D. Mass. 1999)44 52 U.S.P.Q. 2d 1162 (C.D. Cal. 1999)45 Spyros M. Maniatis, “Trade Mark Law and Domain Names: Back to Basics”, EIPR 2002, 24(8), 397-40846http://news.ciol.com/News/News-Reports/Mahindra-amp-Mahindra-wins-cybersquatting-case-in-US/ 19809123809/0/, accessed on October 6, 2009.47 AIR 2000 Bom 27

14 | P a g e

Internet address and is entitled to protection equal to a trade mark.48 The court gave the

decision in favor of the plaintiff.

Another one of the earliest cases on cybersquatting was Yahoo Inc. v. Akash Arora.49 In

this case, the plaintiff filed a suit against the defendants seeking for a decree of

permanent injunction restraining the defendants from operating any business and/or

selling, offering for sale, advertising and in any manner dealing in any services or goods

on the Internet or otherwise under the trademark/domain name ‘Yahooindia.Com’ or any

other mark/domain name which is identical with or deceptively similar to the plaintiff's

trademark ‘Yahoo!’ The defendant argued that the trademark/domain name ‘Yahoo!’ of

the plaintiff is not registered in India and therefore, there cannot be an action for

infringement of the registered mark. It was further argued that there could not be any

action of passing off as the services rendered both by the plaintiff and the defendants

cannot be said to be goods within the meaning of the Indian Trade Marks, 1958. The

defendant also contended that the word “Yahoo!” is a general dictionary word and is not

vented and, therefore, it could not have acquired any distinctiveness and since the

defendants have been using disclaimer, there could be no chance of any deception and

thus, no action of passing of is maintainable against the defendants.50

The court granted the injunction and it was held that the service rendered on internet has

also come to be recognized and accepted globally and the provider of the same could be

protected from passing off.

In India the issues of cybersquatting are mainly governed by principles of passing off. In

India there are no laws or statutes for prevention of cybersquatting. For this reason

principle of passing off is mainly applied by the courts in deciding cases of

cybersquatting.

48 Ibid49 78 (1999) DLT 28550 Ibid.

15 | P a g e

Titan Industries Ltd. v. Prashanth Koorapati, the Delhi High Court granted an ex-parte

ad-interim injunction restraining the defendants for using the name “Tanishq” on the

Internet or otherwise and from committing any other act as is likely to lead to passing off

of the business and goods of the defendants as the business and goods of the plaintiff.

In case of Tata Sons Ltd v. Manu Kosuri,51 the defendant misappropriated the plaintiff's

trademark TATA. The defendant registered it as a part of a series of domain names by

incorporating the well-known and famous trademark TATA. The Court after referring to

Rediff Communication v. Cyberbooth52 and Yahoo Inc. v. Akash Arora,53 held that

internet domain names were important and was valuable corporate asset and it was not an

internet address hence was entitled for protection equivalent to a trade mark.54

In case of Dr. Reddy’s Laboratories Limited v. Manu Kosuri55, the plaintiff Dr. Reddy’s

Laboratories filed an application for restraining the defendants who were in business of

registering domain names and offering them for sale to the owners, from using the trade

mark/domain name “drreddyslab.com.” the defendant had registered the domain

name“drreddyslab.com.” The court took the view that domain names hold an important

position in e-commerce and held that the defendants were liable under passing off. The

court granted permanent injunction in favour of the plaintiff, preventing the defendant

from using the trade mark/domain name “drreddyslab.com” or any other mark/domain

name which is identical with or deceptively similar to the plaintiffs trade mark.

The Hon’ble Supreme Court in Satyam Infoway v. Sifynet Solutions56 was of the opinion

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

51 90(2001)DLT659; 2001 PTC 43252 AIR 2000 Bom 2753 78 (1999) DLT 28554 Supra n. 4755 2001(58)DRJ24156 AIR 2004 SC 3540

16 | P a g e

Marks Act, 1999 itself is not extra territorial and 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.”57

In SBI Cards and Payment Services Private Ltd v Domain Active Pty Ltd,58 SBI Card and

Payment Services Private Limited, the credit card firm of the State Bank of India (SBI),

won the case of cybersquatting against Domain Active Pty Limited, an Australian

company. The judgment was delivered by the administrative tribunal constituted by the

World Intellectual Property Organization (WIPO), Geneva.

In this case the plaintiff was a joint venture between GE Capital Services and the State

Bank of India. The plaintiff offered a range of credit cards and also had a number of city

affinity cards. The defendant registered a website called “www.sbicards.com”. The

plaintiff filed a complaint at the World Intellectual Property Organization, Geneva.

The WIPO Administrative Panel found that the defendant’s website could have attracted

attention from the public because of its affiliation with plaintiff’s products and services.

There was also the intent of creating confusion with the product and services and the

trademark of the plaintiff as to the source and affiliation of the website of the defendant.

Therefore, the panel held that the defendant was liable registration of the domain name in

bad faith.

In case of Maruti Udyog v. Maruti InfoTech,59 complaint was filed with WIPO arbitration

and mediation centre over a dispute relating to the domain name “www.maruti.org.”

Maruti Udyog, the well known car manufacturer, owner of the trade mark “Maruti”

proved that the trademark was associated with its products and a person of average

intelligence and imperfect recollection would be led to believe that the domain name was

associated with them. The respondent intended to sell the domain name to the

complainant for monetary consideration. The panel therefore held that respondent

57 Ibid.58 2005 (31) PTC 45559 Case No. D2000-0520

17 | P a g e

intended to make profit from the registration of the trademark of the complainant as a

domain name and was ordered to transfer the same to the complainant.

.

In case of Intel Corporation v. Anil Handa60, Intel Corporation filed an application

seeking an interim injunction against the defendants to prevent them from using the word

“Intel” as a part of their corporate name. The defendants are not using the word “Intel” as

their trademark or trade name. Intel Engineering Pvt. Limited and Intel Travels Pvt.

Limited were using the word “Intel” as a part of its corporate name. The defendant

argued that they were carrying on their business for a long time in India and the plaintiff

even after becoming aware of their existence, never complained to their corporate name

before. Further the business of the defendants was entirely different than that of the

plaintiff and therefore, there is no likelihood of confusion.

Injunction was refused to the plaintiff Intel Corporation on the ground that the defendants

were using the trademark Intel for over 15 years. The court observed “when existence of

a prima facie case is established, the court has to consider other relevant factors, namely,

balance of convenience and irreparable injury. While considering the latter, conduct of

the parties becomes relevant. If a party has been acting in a particular manner for a long

time and has allowed the other to do likewise, the same would have to be weighed.”61

Cybersquatting in Common Law

In Harrods Ltd. v UK Network Services Ltd.,62 the defendants registered the domain

name “harrods.com” with the intent to sell the same to the plaintiff Harrods. The plaintiff

sued the defendants for passing off, trade mark infringement and conspiracy. The Court

observed that the defendants made an attempt to make an illegitimate use of the

trademarks of the original owners by referring to various other trademarks which were

registered by the defendants as domain names and granted injunction in favour of the

plaintiff.

60 2006 (33) PTC 55361 Ibid.62 Unreported 1996 (Ch D)

18 | P a g e

In Marks & Spencer vs. One-in-a-Million63, the defendant had registered domain names

of the following companies

i) British Telecommunications plc,

ii) Virgin Enterprises Plc,

iii) J Sainsbury Plc,

iv) Marks and Spencer Plc, and

v) Ladbroke Group Plc.

There were five cases for passing off and trademark infringement which was heard by the

court collectively in this matter. The court was of the opinion that defendants’ activities

showed a deliberate practice of registering domain names which are resemble the name

well known trademarks and there was also intention to deceive the public by choosing

such domain name.

“The history of the Defendants’ activities shows a deliberate practice followed over a

substantial period of time of registering domain names which are chosen to resemble the

names and marks of other people and are plainly intended to deceive. The threat of

passing off and trade mark infringement, and the likelihood of confusion arising from the

infringement of the mark are made out beyond argument in this case…”64

The High Court granted injunction for all the five cases. The defendants’ appealed

against the order but the Court of Appeals affirmed the original summary order of the

High Court and dismissed the appeal.

On issue of passing off, the lordship was of the opinion that courts have the jurisdiction

to grant relief by way of injunction in three types of cases. First, where there is passing

off established or it is threatened. Secondly, where the defendant is a joint tortfeasor with

another in passing off either actual or threatened and thirdly, where the defendant has

63 1998 FSR 26564 Ibid.

19 | P a g e

equipped himself with or intends to equip another with an instrument of fraud. This third

type is probably mere quia timet action.65

Similarity in the name used will intrinsically lead to passing off. In case of names, which

do not inherently lead to passing off, a lot of factors are required to be considered, which

include similarity between the names at issue, nature of trade, intent of the defendant and

the circumstances of the case. Injunction is granted by the courts when the name is

adopted with intent to cause passing off, with the intent to use under a fraudulent

circumstances.66

In case of Prince Plc v. Prince Sportswear Group Inc.,67 both the parties had legitimate

interest in use the domain name in issue. The plaintiff, a computer services firm, based in

U.K. had registered the domain name “prince.com” in 1995. When the defendant tried to

register the same domain name in 1997, they found that it was registered by the plaintiff.

In 1995 the plaintiff registered the domain name “prince.com” with Network Solutions

Inc (“InterNIC”). The defendant sent a letter to the plaintiff, through their attorneys

asking the plaintiff to assign the domain name to the plaintiff and that use and registration

of PRINCE as a domain name by the plaintiff constituted infringement and dilution of

defendant’s rights in the trademark as well as unfair competition under the Lanham Act.

They asked the plaintiff to assign domain name in favour of the defendant to avoid

litigation.

Plaintiff filed a writ application seeking declarations that the registration and use of the

domain name “prince.com” by the plaintiff does not infringe the defendant’s UK

trademark and that the threat to initiate proceedings for infringement of the trademark

were unjustifiable, seeking an injunction against the defendant from further threats.

But the plaintiff did not succeed completely in their action. An inquiry as to damages was

refused to be granted by the judge in the absence of evidence of damage. Secondly, the

65 [1998] FSR 265.66 Ibid.67 [1998] FSR 21

20 | P a g e

lordship refused the declaration that the plaintiff’s registration and use of its domain

name does not infringe the defendant’s UK trademark. The burden of proof was on the

plaintiff for a declaration of non-infringement. But an injunction was issued against the

defendants, preventing them from continuing with the threats of infringement

proceedings against the plaintiff.

Chapter 4 - ICANN dispute resolution policy and WIPO

There is a distinction between a trademark and a domain name which is not relevant to

the nature of the right of an owner in connection with the domain name, but is material to

the scope of the protection available to the right. The distinction lies in the manner in

21 | P a g e

which the two operate. A trademark is protected by the laws of a country where such

trademark may be registered. Consequently, a trade mark may have multiple registrations

in many countries throughout the world. On the other hand, since the internet allows for

access without any geographical limitation, a domain name is potentially accessible

irrespective of the geographical location of the consumers. The outcome of this potential

for universal connectivity is not only that a domain name would require world wide

exclusivity but also that national laws might be inadequate to effectively protect a domain

name. The lacuna necessitated international regulation of the domain name system

(DNS). This international regulation was effected through WIPO and ICANN. India is

one of the 171 states of the world which are members of WIPO. WIPO was established as

a vehicle for promoting the protection, dissemination and use of intellectual property

throughout the world. Services provided by WIPO to its member states include the

provision of a forum for the development and implementation of intellectual property

policies internationally through treaties and other policy instruments.68

One of the most remarkable events in the past, particularly for solving international legal

problems originating through the nature of the borderless internet on the one hand and

intellectual property rights of some users on the other hand, was the foundation of the

ICANN (Internet Corporation for Assigned Names and Numbers) in 1998 as a worldwide

internet administration and the introduction of UDRP (Uniform Domain Name Dispute

Resolution Policy) in 1999 for effective and cost saving international domain name

disputes. The statistical data from ICANN show that UDRP is commonly used and has

been a success story in regard to the numbers of disputes which have been submitted for

decision by UDRP panels.69

On December 1, 1999 ICANN implemented UDRP (Uniform Domain Name Dispute

Resolution Policy) on the recommendation of WIPO. UDRP was designed to provide a

fast and inexpensive procedure used by trade mark holders around the world against

those who register internet domain names in bad faith and without rights or other rightful

interests. As trade mark litigation is an expensive, slow and, ultimately, a process with

68 Satyam Infoway v. Sifynet Solutions, AIR 2004 SC 354069 Anri Engel, “International Domain Name Disputes: Rules and Practice of the UDRP”, E.I.P.R. 2003, 25(8), 351-365

22 | P a g e

rigorous standards of proof in regard to local jurisdiction, the UDRP provides a benefit to

trade mark owners and domain holders particularly in foreign countries who wish to push

their rights to domain names registered in the United States or through accredited

registrars in other countries. UDRP is described as an “expedited administrative

proceeding” whereby the holder of trade mark rights initiates a complaint by filing one

with an approved dispute resolution provider. The policy has been adopted by all

accredited domain name registrars for gTLD and is incorporated into all registration

agreements set forth by ICANN. The scope of UDRP is limited and applies only to

Cybersquatting and similar abusive forms of domain name registration and also only to

domain names registered in the generic top-level domains (.com, .org, .info etc.), which

constitute the bulk of the domain names registered worldwide. For so-called country-code

top-level domain names (.uk, nl, .de etc.) the UDPR only applies if a country

administrator has voluntarily adopted it.70

ICANN has adopted the Uniform Domain Name Dispute Resolution Policy (UDNDRP or

UDRP), the policy for resolution of domain name disputes. This policy provides for

arbitration of the dispute instead of litigation in respect of domain name disputes. As per

this policy, any person (complainant) can bring an action on the grounds that:

(a) A domain name is identical or confusingly similar to a trademark or service mark

in respect of which the complainant has rights.

(b) The domain name owner has no rights or legitimate interests in the domain name,

and

(c) The domain name has been registered and is being used in bad faith.

But the complaint is required to prove all these elements if he wants his action to

succeed. If the abusive registration is proved, the domain name registration is cancelled

or transferred to the complainant but there are no financial remedies provided to him.

Uniform Domain Name Dispute Resolution Policy (“UDRP”)

UDRP is an online system for resolving complaints made by trademark owners about

70 Ibid.

23 | P a g e

domain names conflicting with their trademarks. It isn't a court nor is it an arbitration, but

the authority that established it in 1999 (ICANN) has the power to order the deletion or

transfer of domain names. ICANN requires the domain registrars in .biz, .com, .info, .org,

and .net to abide by the results of UDRP proceedings. They must cancel or transfer a

domain registration as a UDRP Panel directs. Domain holders agree to this procedure in

their domain registration contracts.

The UDRP Rules outline the process for filing a complaint (if you are a trademark

owner) and for responding to a complaint (if you are the domain name holder). The

Policy and the Rules also explain some of the basics of the proceedings, such as how to

choose a Provider, how Panels make their decisions, how the parties are notified of the

outcome, language to be used in the proceeding, the availability and effect of court

proceedings, and the types of remedies available.

The dispute resolution Panel is does not apply laws of any particular country, but it is a

body of rules which are developed for the purpose of dispute settlement in respect of

domain names.

The validity of UDRP is not easy to define, because UDRP is not an arbitration policy

and it does not have any binding effect except on the register of the domain names. It is

incorporated by reference in the agreement of the registrant with ICANN. It is required to

include the terms of UDRP in the agreements with the registrants for the purpose of

receiving ICANN accreditations. This means that UDRP is a legally qualified specific

contract term.

UDRP procedure is a faster, cheaper, and easy alternative to challenging the domain

name registration in courts of law as it takes a long time and the complex procedures

grant relief to the plaintiff with delay which can result in damage to the business and

goodwill of the plaintiff. UDRP does not prohibit any trademark owner or a domain name

holder from going to court before or during or after the UDRP proceedings.

24 | P a g e

Complainant/Respondent is required to inform the Panel if they have taken any court

action so the Panel can decide as to whether to continue with the proceedings or to post-

pone it.

WIPO Arbitration and Mediation Center Decisions on Domain Names

World Intellectual Property Organization is the principal domain name dispute resolution

service provider under the UDRP and is accredited by ICANN. WIPO provided qualified

panelist, thorough and expeditious administrative procedures, and overall impartiality and

credibility. A domain name case filed with WIPO is normally concluded within two

months, using on-line procedures, and a minimal fee is charged. Only extra-ordinary

cases are heard in person.71

In Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd.72, the domain names at issue were

“relojesrolex.com” and “erolexwatches.com”. Complainant was the respondent registered

the domain names“relojesrolex.com” and “erolexwatches.com”. The complainant when

came to know this, sent a letter to the respondent on November 1, 1999, demanding it to

cease and desist all infringing uses of the ‘Rolex” trademark, and consent to the deletion

or transfer of the Domain Names to Rolex.73

But the respondent did not respond letter. Instead, shortly thereafter, they registered

another domain name incorporating the “Rolex” trademark, on November 11, 1999. In

March 2000, Complainant sent a second letter to respondent, again demanding that it

cease and desist all infringing uses of the “Rolex” trademark, and to consent to the

deletion or transfer of the domain names. Complainant filed a complaint and contended

that they had the registrations of the trademark “Rolex”, that trademark registrations were

valid and subsisting, and that they served as prima facie evidence of its ownership and the

validity of the “Rolex” mark.

71 http://www.wipo.int/amc/en/center/faq/domains.html#7, accessed on October 18, 200972 Case No. D2001-039873 Ibid.

25 | P a g e

Complainant argued that the respondent’s domain names were confusingly similar to the

complainant's trademark and that the respondents had no rights or legitimate interests in

the domain names. Complainant further submitted that respondent registered and was

using the domain names in bad faith

.

The Respondent contended that the domain names were not identical or confusingly

similar to the trademark of the complainant and that they had rights to or legitimate

interests in the domain names because they were conducting a legitimate, consumer

advocacy enterprise of benefit to the general public, and they never demonstrated any ill

will or were engaged in unfair competition with complainant. Respondent further argued

that any use of the domain names that did not compete with or disparaged the business

interests of Complainant was legitimate.

But the Panel held that respondent’s domain names were confusingly similar to

Complainant’s registered trademark; and that respondent had no rights or legitimate

interest in the domain names; and held respondent responsible for registering and using

the domain names in bad faith. The Panel was of the opinion that “the owner of the

registered trademark does not have to show “likelihood of confusion”, as that term is

used in trademark infringement jurisprudence, to establish that a domain name

incorporating a trademark in its entirety is identical or confusingly similar. The question

of identity and confusing similarity is evaluated solely based on a comparison between

the complainant’s trademark and the alphanumeric string constituting the domain name at

issue”74

In Bennett Coleman & Co Ltd. v. Steven S Lalwani and Bennett Coleman & Co Ltd. v.

Long Distance Telephone Company75 (combined), the arbitration panel of WIPO gave the

decision in favour of the plaintiff, asking the respondent to transfer the domain name to

the plaintiff. In this case, the respondent had registered domain names

“www.theeconomictimes.com” and “www.thetimesofindia.com” in the United States,

which are the trademarks of the plaintiff. These two domain names were similar to the

74 Ibid.75 Case No. D2000-0014 and 2000-0015

26 | P a g e

names of the Plaintiff’s websites www.economictimes.com and “www.timesofindia.com”

and the respondent’s websites using the domain names similar to the plaintiff, redirected

the users to a different website “www.indiaheadlines.com” which provided India related

news. The WIPO judgment recognized the fact that the complainant had a very

substantial reputation in their newspaper titles arising from their daily use in hard copy

and electronic publication. In India itself, wrongfully adopting the titles so as to mislead

the public as to the source of publications or information services would in all likelihood

amount to the tort of passing off. The reputation was the result of actual use and was the

crux of the complaint. The panel held that the respondent had no rights or legitimate

interest in the domain names and the registration was done in bad faith, in an intentional

attempt for commercial gain and to attract internet users by creating a likelihood of

confusion with the complainants marks as to the source, sponsorships, affiliation or

endorsement of those web sites and the services on them76.

In case of AT&T Knowledge Venture v. Rnetworld77, AT&T Corp filed a complaint

against Rnetworld for registration of domain name “atnt-sbc.com”. AT&T Corp. is a

leading provider of telecommunication products and services under the brand name

AT&T and many of the AT&T marks have also been registered as trademarks and service

marks in the United States and other countries around the world.

AT&T Corp. merged with SBC in 2005. Following the merger, AT&T Corp. transferred

its trademark rights to the Complainant, AT&T Knowledge Venture II, L.P. (a subsidiary

of AT&T) after the merger. After the merger, the following domain names “att-sbc.com”,

“attsbc.com” and “sbc.com” were registered by AT&T.

The domain name in dispute “atnt-sbc.com” was registered by respondent. AT&T Corp.

sent a letter to Respondent asking them to cease and desist from using the domain name

76 Ibid.77 Case No. D2007-0035

27 | P a g e

in future. But the respondent refused to reply, failing which AT&T filed this case against

them.

Complainant stated that the respondent registered the domain name in bad faith, in an

attempt to take advantage of AT&T’s famous trademarks and to profit from the merger of

two companies AT&T Corp. and SBC Communications Inc. It was further contended that

the domain name “atnt-sbc.com” was virtually identical and confusingly similar to the

domain names used by AT&T to offer products and services to its customers and the

respondent had no rights or legitimate interest in the domain name registered by the

respondent. The complainant submitted that the registration of the domain name in

dispute was an example of merger cybersquatting. The respondent did not reply to the

contentions of the complainant.

The WIPO Panel found that the domain name in dispute was virtually identical and

confusingly similar to Complainant’s official, legal and world-famous marks and domain

names and that Internet users attempting to locate information regarding AT&T would

likely be confused into believing that the web page associated with the domain name in

dispute, as well those pages that link from the web page are sponsored by or connected

with AT&T.78

The Panel further observed that the Respondent was not AT&T’s licensee in any respect,

nor was the Respondent authorized to use AT&T’s marks. AT&T had not endorsed,

sanctioned, or sponsored Respondent’s use of its marks. Respondent did not own any

registered or common law marks containing the terms AT&T, ATT, ATNT, SBC, or any

similar derivation. Respondent had not been commonly known by the contested domain

name, nor did Respondent run any enterprise commonly and legitimately known by the

contested domain name.79

Therefore, the Panel held that the registration of the domain name “atnt-sbc.com” by the

Respondent was mala fide, with intent to unfairly and illegally exploit that domain name

78 Case No. D2007-003579 Ibid.

28 | P a g e

to his advantage at the expense of AT&T. The respondent was ordered to transfer the

same to the complainant.

Recently, Balenciaga is a fashion house founded by Cristobel Balenciaga, a Spanish

designer. Christian Dior himself referred to Balenciaga as "the master of us all”. Being

the complainant in this case, the fashion house submitted a complaint with the WIPO

Arbitration and Mediation Center requesting the domain name

“balenciagahandbags.com” to be transferred to them. The company owns many

trademark registrations all around the world for "Balenciaga". Therefore it is more than

obvious that the disputed domain name is confusingly similar to their company.

What makes you wonder about the intentions the respondent had when registering the

domain name is the fact that he was involved in other UDRP decisions in which he has

been found to have acted in bad faith. Moreover the Panel thought the respondent

registered the domain name to divert users seeking information about Balenciaga's

products. Therefore, the WIPO Panel concluded that the respondent registered the

disputed domain name in bad faith and ordered it to transfer the usage rights to

Balenciaga.80

Chapter 5 - Conclusion

Cybersquatting is increasingly being viewed as an important issue in the legal setup.

Courts have responded by recognizing the rights of trademark owners in cyberspace.

The requirement of consumers to get information about the origin and quality of

goods and services is fulfilled by a trademark whereas in cyberspace, domain names

serve the same purpose. Domain names are similar to trademarks in the cyberspace.

Now, when the trademark owner owns the domain name as well, there is no

80 http://www.domainnews.com/en/balenciaga-wins-domain-name-dispute.html, accessed on October 18, 2009

29 | P a g e

confusion about the goods/services, but chaos arises when the trademark owner and

the domain name registrant are two different parties. The reason behind such an

occurrence could be either

(a) When one party is misusing the domain name, or

(b) When both parties are concurrent users.

The trademark law has broadened its scope to encompass domain name issues including

cybersquatting. However, the open question is whether the law will eventually give

property rights to trademark owners in domain names or the ability to exclude others

from using their domain name. If the trademark law is broadened to give extensive rights

to trademark owners this can opens a can of worms by assigning them rights which they

might not be entitled to. There can be issues of threat of legal proceedings for

infringement or reverse domain name hijacking by a trademark owner to other honest

concurrent users of a similar trademarks and the domain name associated with such

trademarks.

In extending the coverage of trademark laws to domain name and cybersquatting areas,

there are two major points to consider:

a. Domain names are unique globally and were allotted in a first come first serve basis by

domain registrars. Traditional economic validation for trademark law rests on the premise

that there are indefinite numbers of marks available and there can be more than one

owner of a trademark or marks similar to such trademark. However, there are only a

limited number of domain names available; and

b. Trademark laws are territorial in nature while domain name issues are to be addressed

with global impact in mind. This approach to the domain names may seem to promote

protection of rights large companies or big businesses who want more rights in every

possible variation in their name. The requirement to prove the valid ownership of

trademark or connection with domain name or the legitimate interest in the domain name

at times can be easily exploited by the big market players. The interests of small business

and entrepreneurs can be greatly affected if they are honest users of such domain names

and similar trademarks.

30 | P a g e

It is understood that goodwill and reputation of a trademark is required to be protected

online and so as the need to protect the consumers from falling in the trap of

misrepresentations and frauds on the world web. But at the same time, consideration is to

be given to the fact that there can be an honest owner of a domain name related to one’s

trade and he might not be financially capable of sustaining a trademark infringement

battle with a multinational over the domain rights. So, the requirement of the criteria of

legitimate interest or right in the domain names is required to be applied carefully so as to

ensure that an honest owner is not deprived of his domain name and the right to use the

same putting his goodwill and reputation at threat for the convenience of another.

31 | P a g e

Bibliography

Books:

G. Kaufmann-Kohler and T. Schultz, “Online Dispute Resolution: Challenges for

Contemporary Justice”, 2004 ed., The Hague: Kluwer Law International

Ian J. Llyod, “Information Technology Law” 5th ed. 2008, Oxford University Press

J. T. McCarthy, “McCarthy on Trademarks and Unfair Competition”, 4th ed. 2001, West

Publishing

Michael A. Epstein, “Intellectual Property”, 5th ed., 1st Indian Rep. 2008, Aspen

Publishers

Articles:

Anri Engel, “International Domain Name Disputes: Rules and Practice of the UDRP”,

E.I.P.R. 2003, 25(8), 351-365

Caroline Wilson, “Internationalized Domain Name Problems and Opportunities”

C.T.L.R. 2004, 10(7), 174-181

G. Akerlof, “The Market for ‘Lemons’: Quality Uncertainty and the Market Mechanism”,

(1970) 84/3 Quarterly Journal of Economics

James Marcovitz, “Ronald@McDonalds.com -“Owning a Bitchin” Corporate Trademark

as an Internet Address--Infringement?”, 17 (1995) Cardozo L. Rev. 85

Juan Pablo Cortes Dieguez, “The UDRP Reviewed: The Need For A Uniform Policy”,

C.T.L.R. 2008, 14(6), 133-139

Lisa M. Sharrock, “The Future of Domain Name Dispute Resolution: Crafting Practical

International Legal Solutions from within the UDRP Framework”, Duke Law Journal,

Vol. 51, No. 2 (Nov., 2001), pp. 817-849

S. M. Maniatis, “Trade Mark Rights: A Justification Based on Property”, [2002] I.P.Q.

123

Spyros M. Maniatis, “Trade Mark Law and Domain Names: Back to Basics”, E.I.P.R.

2002, 24(8), 397-408

v | P a g e

Websites:

http://definitions.uslegal.com/i/internet-domain-names/

http://www.domainnews.com/en/balenciaga-wins-domain-name-dispute.html

http://www.icann.org/en/general/glossary.htm

http://indlaw.com

http://www.internetlibrary.com/publications/anticybsquattSamson9-05_art.cfm

http://knowledgerush.com/kr/encyclopedia/cybersquatting/

http://legal.web.aol.com/resources/legislation/cybersquat.html

http://manupatra.com

http://news.ciol.com/News/News-Reports/Mahindra-amp-Mahindra-wins-cybersquatting-

case-in-US/19809123809/0/

http://westlaw.com

http://www.wipo.int/amc/en/center/faq/domains.html#7

http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0271.html

vi | P a g e