Dr.

RAM MANOHAR LOHIYA NATIONAL

LAW UNIVERSITY

ACADEMIC SESSION: 2023-2024

INTELLECTUAL PROPERTY RIGHTS-I

CYBERSQUATTING AND DOMAIN NAME DISPUTES UNDER

THE TRADEMARK LAW

Submitted to: Submitted by:

Dr. Vikas Bhati Saddhvi Nayak

Associate Professor (Law) 200101114

RMLNLU 7th semester (Section B)

B.A.LLB.(Hons.)
 CONTENTS

S.NO. Topic Pg.NO.

1. Declaration 3
2. Acknowledgement 4

3. Introduction 5-6

4. What are Domain Names? 6-7

5. Domain Name Disputes 7-8

6. Cybersquatting and Domain Name Disputes 8-11

7. India’s response to Cyber Squatting 11-12

8. Recommendations & Suggestions 12-13

9. Conclusion 14-15

10. References 15-16

 DECLARATION

I hereby declare that the project work entitled “Cybersquatting

and domain name disputes under the trademark law”
submitted to the Dr. Ram Manohar Lohiya National Law
University, Lucknow is a record of an original work done by me
under the guidance of Dr. Vikas Bhati, faculty of law, the Dr.
Ram Manohar Lohiya National Law University and this project
is submitted in the partial fulfillment of the requirements for the
award of the degree of B.A.L.L.B (Hons.). The results embodied
in this have not been submitted to any other University or
Institute for the award of any degree or diploma.
 ACKNOWLEDGEMENT

This research paper would not have been accomplished without the
generous contributions of individuals. First of all, I express my gratitude
to the Almighty, who aided me with his strength, wisdom and patience to
complete this project as a term paper.

Additionally, I express my gratitude and deep regards to my teacher Dr.

Vikas Bhati for giving me the freedom to work on “Cybersquatting and
domain name disputes under the trademark law” and also for his
exemplary guidance, monitoring and constant encouragement
throughout the course of this research paper.

I would also like to thank the authorities of Dr. Madhu Limaye Library
who provided the remote access of the library to provide the research
material.

Moreover, I also thank all my batchmates and seniors who aided me

along the way, and my family and friends for their constant
encouragement without which this assignment would not have been
possible.

I know that despite my best effort some discrepancies might have crept
in which I believe my humble professor would forgive.

THANKING YOU ALL.

Saddhvi Nayak.
 INTRODUCTION

A domain name is not merely an address on the Internet. From a technical viewpoint, a domain
name is part of the Internet communication system and allows anyone to access a website. When
the name is used for business, and becomes the vehicle of the firm’s identity, it cannot be viewed
only as a technical tool, but also has to be recognized as a sign with specific features. A domain
name is an identification label to define a realm of administrative autonomy, authority, or control
in the Internet, based on the Domain Name System (DNS). The Domain Name Systems (DNS) is
a hierarchical naming system for computers, services or any resource participating in the
internet. It associates different information with domain names assigned to each of the
participants. The original role of a domain name was to provide an address for computers on the
Internet. The Internet 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. The domain name not only serves as an address for Internet
communication but also identifies the specific Internet site. The core question is: Can domain
names be subject to an intellectual property right? The main international treaties on intellectual
property do not define the concept of intellectual property - they merely give a definition of what
is subject to an intellectual property right. In the scope of these treaties, there are trademarks,
copyrights, industrial designs, patents, geographical indications and topographies of integrated
circuits. However, there is no mention of domain names in existing international conventions,
and that is why domain names cannot be statutorily listed in the intellectual property category. It
must be noted that a trademark, like any other sign, has to signify something else rather than
itself in order to function as a trademark.1

Due to the rapid growth, domain name disputes have increased in India. There have been
increasing instances of domain name abuse and misuse in the form of cybersquatting. Indian
courts have held the domain names as online trademarks and business identifiers. However, due
to the absence of a specific law, the courts have not been consistent in imposing fines and giving
relief to the plaintiffs. Therefore, a comprehensive law against cybersquatting that grants
adequate protection to domain names is the need of the hour in India. This research paper
focuses on judicial decisions and the current legal framework relating to cybersquatting in India.
1
Spyros M. Maniatis, ‘Trade Mark Law and Domain Names: Back to Basics’, EIPR 2002, 24(8), 397-408.
It also gives a global perspective on cybersquatting laws and international framework. At the
same time, the research paper highlights the need for a specific domain name protection law in
India. This research paper Aims to find what are the laws that are currently in place in India that
protect domain names, the issues with them, understanding the international framework and
understanding the need for a specific domain name protection law in India.

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.

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.2

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 (TLD). The top-level
domain for the sample used earlier, www.spareparts.com is .com.

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

2
Accountability and Transparency Review, ICANN, http://www.icann.org/en/general/glossary.
 (uTLDs).3 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. Four of the new TLDs (.biz, .info, .name,
and .pro) are unsponsored. The other three new TLDs (.aero, .coop, and .museum) are
sponsored.4

(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.5

Domain names perform the same role online as trademarks do offline in many types of
transactions. Any domain name that is distinctive, capable of distinguishing its products and
services from that of the others, and acts as a legitimate source identification of related
products and services on the web could well be called a trademark.

DOMAIN NAME DISPUTES

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.6

3
Ibid.
4
Ibid.
5
Ibid.
6
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.
 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 Satyam Infoway v. Siffynet Solutions7 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”.

Moreover, in case of Rediff Communication v Cyberbooth8 the court decided that the value
and importance of a domain name is equitable to being like the company’s asset and
therefore, domain names must be treated like corporate assets and must also be protected as
such, similar to trademarks.

Yahoo Inc v. Akash Arora9 was another such case where the plaintiff sought permanent
injunction to restrain the defendants from using the trademark or domain name
“yahooindia.com” or such deceptively similar to the trademark “Yahoo” for any commercial
purposes. The defendants argued that as Yahoo was not trademarked in India, there is no
infringement, as it did not fall under the definition of goods under Indian Trade Marks Act,
1958. Yet, the plaintiff was granted the injunction, as services rendered on Internet are
globally recognized as goods and Yahoo’s trademark ought to be protected.

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 or the other
trademarks.

CYBERSQUATTING

7
Satyam Infoway v. Siffynet Solutions, AIR 2004 SC 3540.
8
Rediff Communication v Cyberbooth, AIR 2000 Bombay 27.
9
Yahoo Inc v. Akash Arora, 1999 IIAD Delhi 229.
 The system of assigning the domain name was on first-come-first registered basis. It led 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 off and
diluting of famous trademark or trade names.10

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.

CYBERSQUATTING IN INDIA

In India, cybersquatting has been defined by the Delhi High Court as “the act to sell the
domain name to the lawful owner of the name at a premium by the fraudulent registration”. 11

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. Cyberbooth.12 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 Internet address and is
entitled to protection equal to a trade mark.13The court gave the decision in favor of the

10
Manish Vij v. Indra Chugh, AIR 2002 Delhi 243.
11
Ibid.
12
Rediff Communication v. Cyberbooth, AIR 2000 Bom 27.
13
Ibid.
 plaintiff. 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. In Aqua
Minerals Limited v. Mr Pramod Borse,14 the Hon’ble High Court of Delhi has held that
unless and until a person has a credible explanation as to why did he choose a particular
name for registration as a domain name or for that purpose as a trade name which was
already in long and prior existence and had established its goodwill and reputation there is no
other inference to be drawn than that the said person wanted to trade in the name of the trade
name he had picked up for registration or as a domain name because of its being an
established name with widespread reputation and goodwill achieved at huge cost and
expenses involved in the advertisement.15

In case of Intel Corporation v. Anil Handa16, 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. Ltd.” and “Intel Travels Pvt. Ltd.” 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

14
Aqua Minerals Limited v. Mr Pramod Borse AIR 2001 Delhi 467.
15
5 ‘India: Cyber Squatting Laws In India’, Mondaq, 29 November, 2012,
http://www.mondaq.com/india/x/208840/Trademark/CYBER+SQUATTI+NG+LAWS+IN+INDIA .
16
Intel Corporation v. Anil Handa, 2006 (33) PTC 553.
 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.”17

INDIA’S RESPONSE TO CYBERSQUATTING

Cybersquatting is a menace which has no boundaries, and is similar to terrorism.18 In spite of

the realization of the dangers of cybersquatting, India has still not enacted any legislation
specifically prohibiting cybersquatting.

Domain names, on the other hand, serve as identifiers for a certain brand of goods or a given
level of service in the world of ecommerce. This may have spurred the Indian judiciary to
apply trademark law concepts to domain name disputes, ensuring that cybersquatting does
not infringe on offline trademark rights.

Now, if domain names cannot be registered as trademark, which law should govern
cybersquatting in India?

The Hon’ble Supreme court has expressed in the case of Satyam Infoway Ltd vs Sifynet
Solutions19 that “As far as India is concerned, there is no legislation which explicitly refers to
dispute resolution in connection with domain names. But although the operation of the Trade
Marks Act, 1999 itself is not extraterritorial and may not allow for adequate protection of
domain names, this does not mean that domain names are not to be legally protected to the
extent possible under the laws relating to passing off'.”20

As per the present state of laws in India, cybersquatting can be challenged by way of
litigation in courts, by launching an arbitration proceeding before ICANN-approved panels or
by personally sending cease-and-desist notices to the alleged cyber squatter.21 Further, the
dispute can be filed with the .in registry administered by the National Internet Exchange of
India (NIXI) who ensures fast track dispute resolution process with the disputes being

17
Ibid.
18
Ashwin Madhavan, ‘Domain Names and Cybersquatting’, Indian Law Journal,
http://www.indialawjournal.org/archives/volume1/issue_2/article_by_ashwin.html .
19
Satyam Infoway Ltd vs Sifynet Solutions, AIR 2004 SC 3540.
20
Ibid.
21
Divya Srinivasan, ‘India: DNS The Menace: Cybersquatting’, Mondaq, 15 September, 2015,
http://www.mondaq.com/india/x/425096/Trademark/DNS+the+Menace+Cybersquatting
 transferred for arbitration within 30 of the registering of the complaint.22 However, these
methods are inadequate in more than one ways as has been discussed in the previous section.
The Information Technology Act, 2000, which is the primary legislation penalizing
cybercrimes, is silent on the matter of cybersquatting. India does not have a law for
prohibition of cybersquatting. Legislature seems to have passed the ball in the Judiciary’s
court, quite literally, as in the absence of effective laws it is the judiciary who has come
forward to prevent cybersquatting.

CAN INDIA DO BETTER? – RECOMMENDATIONS AND

SUGGESTIONS

Effective redressal of cybersquatting requires work in two directions: firstly, towards the
recognition of domain names as subject-matter of trademark and secondly, towards the
prohibition of cybersquatting and penalization of the same. Developed nations like USA have
enacted strict laws on cybersquatting like Anticybersquatting Consumer Protection Act
(ACPA). One may ask that mere registration of domain name by an entity with the relevant
registry is sufficient protection to a domain name, as it is impossible for any other entity to
register the same (due to uniqueness of the IP address associated with a domain name). So,
why should domain names be protected as trademarks? The explanation is simple: as
ecommerce grows in popularity, a company may only have an online presence; this online
presence will undoubtedly necessitate the purchase of a domain name, which will serve as
the company’s identity. What is the remedy available to the owner of the earlier domain
name if another entity tries to falsify and benefit from its goods under this domain name, for
example, by inserting a comma or an underscore in the SLD and registering it? If the domain
name is identified as a trademark, the domain name owner will have legal grounds to have
the deceptively similar or confusing domain name removed.

Trademark owners may face huge losses due to activities like cybersquatting and the current
set of procedures are not adequate and definitive. Thus, it is strongly recommended that
cybersquatting legislation be adopted as quickly as possible.
22
Charms, And Dangers Of Harry Potter's World, (Text of speech delivered by Justice Yatindra Singh, Judge
Allahabad High Court, Allahabad] (May 2008), http://www.allahabadhighcourt.in/event/IPR_on_the_Internet_4-5-
2008.pdf
 Following amendments are suggested to the Trademarks Act 1999:

1. The definition of mark under Section 2(m) should be amended to provide for express
inclusion of domain names in its sphere.
2. Existence of an identical or confusingly similar trademark in the same class of goods
or services in the offline market should be made a relative ground for the refusal of
registration of a particular domain name as a trademark.
3. Scope of Section 103 should be expanded to provide for imposition of penalty on any
person who “provides online access to goods or services or publishes any information
about such goods or services on a webpage with a domain name similar to an already
existing trade mark”.
4. There should be a specific provision empowering the Court to award minimum
damages in civil suits against trademark infringement by registering of deceptively
similar domain names.
5. In cases where the application for a trademark is pending or the title of the trademark
is disputed in litigation, the law must prevent registration of a domain name identical
to or confusingly similar to the one embroiled in litigation. This is because cyber
squatters often take advantage of the uncertainty over the registration of a trademark
to grab profitable domain names.
6. To prevent frivolous claims and harassment by the trademark owners, bad faith must
be proved by the trademark owner to claim cancellation of the registration of domain
name by the alleged cyber squatter.

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 confusion about the goods/services, but chaos arises when the trademark
owner and the domain name registrant are two different parties.

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.

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.
The active involvement of WIPO in resolving disputes regarding domain names has played a
vital role in evolving concrete principles in this field.

UDRP can be considered to be the solution right now for India. The domain name disputed can
be addressed by the local courts, but people find the process of litigation to be expensive and
time consuming. UDRP is cheap as well as less time consuming. However, we need to address
the issue of cybersquatting through a legislation. Thus, the hypothesis stands approved.

REFERENCES

 Satyam Infoway v. Siffynet Solutions, AIR 2004 SC 3540

 Rediff Communication v Cyberbooth, AIR 2000 Bombay 27
 Yahoo Inc v. Akash Arora, 1999 IIAD Delhi 229
 Manish Vij v. Indra Chugh, AIR 2002 Delhi 243
 Rediff Communication v. Cyberbooth, AIR 2000 Bom 27
 Aqua Minerals Limited v. Mr Pramod Borse AIR 2001 Delhi 467
 YouTube LLC v. Rohit Kohli, Case no. INDRP/42; https://www.registry.in/showdoc?
id=youtubecoO.pdf
 Vodafone Group Plc v. Rohit Bansal, INDRP/052; https://www.registry.in/showdoc?
id=vodafoneO.pdf
 Intel Corporation v. Anil Handa, 2006 (33) PTC 553
 Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd, Case No. D2001-0398
 Spyros M. Maniatis, ‘Trade Mark Law and Domain Names: Back to Basics’, EIPR 2002,
24(8)
 Accountability and Transparency Review, ICANN,
http://www.icann.org/en/general/glossary.html
 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
 ‘India: Cyber Squatting Laws In India’, Mondaq, 29 Nove,ber, 2012,
http://www.mondaq.com/india/x/208840/Trademark/CYBER+SQUATTI+NG+LAW
S+IN+INDIA
 Anri Engel, ‘International Domain Name Disputes: Rules and Practice of the UDRP’,
E.I.P.R. 2003, 25(8), 351- 365
 Frequently Asked Questions: Internet Domain Names, WIPO,
http://www.wipo.int/amc/en/center/faq/domains.html
 WIP0 Case Summary: https://www.wipo.int/amc/en/domains/search/case.jsp?
case_id=49963
 WIP0 Arbitration and Mediation Centre, Administrative Panel decision, 2021:
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2020-2439
 Ashwin Madhavan, ‘Domain Names and Cybersquatting’, Indian Law Journal,
http://www.indialawjournal.org/archives/volume1/issue_2/article_by_ashwin.html
 Divya Srinivasan, ‘India: DNS The Menace: Cybersquatting’, Mondaq, 15 September,
2015
http://www.mondaq.com/india/x/425096/Trademark/DNS+the+Menace+Cybersquatti
 Charms, and Dangers of Harry Potter's World, (Text of speech delivered by Justice
Yatindra Singh, Judge Allahabad High Court, Allahabad] (May 2008),
http://www.allahabadhighcourt.in/event/IPR_on_the_Internet_4-5- 2008.pdf
 Rukmani Sachdeva, ‘Critical Study on Trademark Infringement related to Domain
Names and Cybersquatting’ (2022) 2 Jus Corpus LJ 427
 Julien Chaisse, 'The Merging of Two Worlds: Cyber Law and Trade Law Normative
Convergence on Internet Domain Names' (2019) 37 BU Int'l LJ 281
 Shaunak Deshpande, 'Cyber Squatting: - A Study of Legal Framework in India' (2020) 3
Int'l JL Mgmt & Human 1825
 Jeetika Aggarwal & Priyanshi Bainwala, 'Cybersquatting and Trademark Infringement'
(2021) 4 Int'l JL Mgmt & Human 1220
 Akansha Srivastava, 'Domain Names and Cybersquatting in IP Laws' (2018) 7 Supremo
Amicus 12
 Manthan Agarwala & Simran Kang, 'Cybersquatting India: Genesis & Legal Scenario'
(2021) 4 Int'l JL Mgmt & Human 740
 Michael Karanicolas, 'The New Cybersquatters: The Evolution of Trademark
Enforcement in the Domain Name Space' (2020) 30 Fordham Intell Prop Media & Ent LJ
399
 Aisha Saleem Khan, 'Cybersquatting in India: Jeopardy to Cyberspace' (2020) 3 Int'l JL
Mgmt & Human 996.