Microsoft power point domain and cyber squatting [compatibility mode]
Domain Name Disputes, Cyber squatting & Internet Issues Sanjeev Kumar chaswalAdvocate & IPR Attorney LLM (IPR&ARB LAW) M.S. Cyber Law and Cyber Security 10th of June 2012 1
Introductionu What is domain name - domain name is an identification label that defines a realm of administrative autonomy, authority, or control in the Internet, based on the Domain Name Internet, System (DNS)u Whenever human beings use a word to identify a business trademark law comes into playu Unique URL addressesu Internet protocol started as a series of numbers that were difficult to rememberu Domain names started being usedu Useful mnemonic means of locating specific computers on the Internet
Domain Name System (DNS)u Domain Name System (DNS), in computer communications, a method of translating Internet addresses so that computers connected in the Internet can find each other. A DNS server other. translates a numerical address assigned to a computer (such as 18.104.22.168) 22.214.171.124) into a sequence of words, and vice versa. versa.u A domain name, written in lowercase letters with words separated by periods, takes the form of email@example.com (for username@computer. example: firstname.lastname@example.org) example: email@example.com).u Username is the name or account number used to log on. The on. hostname (Whitehouse in the example above) is the name of the computer or Internet provider; it may consist of several parts. provider; parts. Zonename indicates the type of organization. Common zone names organization. include com (commercial organization), edu (educational), gov (government), and net (networking organization). organization). 3
Functions of Domain Namesu In the context of electronic commerce, domain names serve strategic and important functions for both individuals and corporations that embark the worldwide web. web.u Among other things, it serves the purpose of branding, reputation building and convenient way to establish consumers’ identification and recognition of the goods or services to be offered online. online. 4
Registration System of TM and DNSu Trade Marks registration are acquired on the basis of establishing the distinctiveness of the mark from those exist before. Thus a TM cannot be registered unless it before. fulfills legal requirements of TM including distinctiveness and eligibility. This registration is jurisdiction basis. eligibility. basis.u Meanwhile, domain name can always be registered by anyone anywhere in the part of the world on ‘first come first serve’ basis, without necessity of checking if the said name has been ever registered as trade mark by other people or entities. entities.u This situation has resulted in many conflicts between the owner of registered trade marks and owner of a domain name. name. 5
How The Domain Name System Works— ICANN – Internet Corporation for Assigned Names and Numbers— ICANN- ICANN-Accredited Registries— ICANN- ICANN-Accredited Registrars— Domain Name Registrants 6
Types of Domains— Country- Country-Code Top Level Domains – ccTLDs — Generally, TLDs with two (2) letters — Examples: .us .cn .mx . .jp .uk — Over 250 ccTDLs — May be additional tiers within the ccTLDs — .com.au; .edu.au com.au; .edu.au — .co.uk; .ltd.uk co.uk; .ltd.uk — May require local presence for registration 9
Trademarks v. Domain Names— Trademark Infringement Issues — Cyber squatting /Typo squatting — How is the domain name used? What is the posted content? — Domain Name Watch Services Available 10
Conflict between TM and DNSu The ‘conflict’ centers in the following issues: issues: – Can a person register for domain name those names ever registered earlier as trade mark of others? – If a similar or identical name to a registered TM is registered for a domain name, what action can be taken by trade mark owner? – How the international arbitration deals with issue of cyber squatting? 11
Cyber Squattingu It is a malicious practice of registering and acquiring for domain name(s) those names that are associated or linked with other people’s interests, such as trade marks or personal names. names.u Cyber squatter acquire those names for variety of reasons, including: including: – Blocking a business competitor/rival from acquiring certain names for their domain name. name. – Disrupting other’s business – Confusing public by representing a website that may look like originating from other people. people. 12
International Arbitrationu The issues of cyber squatting has been dealt with by international arbitration body including the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO). (WIPO).u These arbitration bodies are applying the principles under the Uniform Domain Names Dispute Resolution Policy (UDRP) that is adopted by the international administering body for Domain Names System, i.e. ICANN. ICANN.u These arbitration bodies hear cases from all over the world that involve the registration of top domain level names (i.e. that ends with .com, .org, .biz, etc) (i. 13
Three Factor-Tests Factor-(a) Whether or not the domain name registered by the Respondent is identical and confusingly similar to a trademark or service mark in which the Complainant has rights;(b) Whether or not the Respondent has legitimate interests in respect of the domain name; and(c) Whether or not the domain name has been registered and used in bad faith. faith. Complainant à the one who complained on domain names registration Respondent à the one who registered the domain names in question 14
Three Factor-Tests (cont’d) Factor-u If the principles are to be applied, cyber squatting claims will be successful and the complainant will have the right to get the domain names from respondent if: if: – The domain name in question is identical and confusingly similar to a registered trademark belongs to complainant; and complainant; – The respondent does not have legitimate interest on the said domain name; or name; – The respondent registered the domain name in bad faith. faith. 15
‘Legitimate interest’ and ‘bad faith’u Legitimate interest may include: correlation include: between name and nature of business, long use of the name, non-commercial uses, etc. non- etc.u Bad faith may include: malicious intention to include: disrupt other people’s business, hijacking and blocking others from acquiring certain domain name, intention to confuse public, misrepresentation by way of domain names. names. 16
Domain Name Disputes— UDRP - Uniform Domain Name Dispute Resolution Policy — Administrative process through ICANN- approved service providers (currently four). — National Arbitration Forum — WIPO — Asian Domain Name Dispute Resolution Centre — The Czech Arbitration Court — UDRP process is available for all gTLDs and some ccTLDs (57) 17
Domain Name Disputes— UDRP - What does a complainant have to prove? — The conflicting domain name is identical or confusingly similar to the trademark or service mark owned by the complainant. — The respondent does not have any rights or legitimate interests in the domain name. — The domain name was registered and is being used in bad faith. 18
Domain Name Disputes— UDRP - What remedies are available? — Transfer of the domain name to the complainant. — Cancellation of the domain name. — No monetary damages available.— UDRP – What are the costs? — Depends on the number of domain names in a complaint. — Depends on the number of panelists deciding the complaint. — General Budget: ~US $5,000 per complaint (one domain name, one panelist) 19
URDPu Uniform Domain Name Dispute Resolution Policy is a policy adopted by ICANN that provides a mechanism for trademark owners to obtain domain names from cyber squatters.u All domain name registrars have the power to grant “.com”, “.net”, and “.org” generic top-level domains must net”, top- follow the UDRP. UDRP.u Domain name registrar will cancel, suspend, or transfer a domain name that is the subject of a trademark-based trademark- dispute, it must have an agreement signed by the parties, a court order. order.
UDRP ….u The UDRP created a streamlined "cyber arbitration" procedure to quickly resolve domain name ownership disputes that involve trademarks. trademarks.u All owners/registrants of “.com”, “.net”, and “.org” net”, domain names are subject to the UDRP by virtue of the registration agreements agreed to with their registrars at the time of acquiring their domain names
Detail of caseu Backgroundu When /why issue ariseu What are the effectu Decisionu Effect of decision
BACK GROUNDu Tata Sons Limited under the Indian Companies Act, 1913 having its registered office at Bombay House, 24, Homi Mody Street, Mumbai – 400 001, India.u TATA Group of companies-India’s oldest, companies- largest and best-known conglomerate, with a best- turnover that is over USD 62 Billion. Total turnover for 2007-08 is stated to be 2007- Rs.251,543 crores (USD 62.5 billion).
Makemytrip.comu MakeMyTrip.com - Gurgoan based travel company that in a span of 8 years has garnered a wealth of experience and respect in the travel industry.u The pioneers of online travel services in India; leading travel website in the country, with over 2 million unique visitors each month choosing to use our travel services.
MAKE MY TRIP .COM TO OK TATA BYE BYE .COMthree years after MakeMyTrip.com launched an online travel community and called it OkTataByeBye.com
See the sitesu www.tataindicom.com www.tataindicom.comu www.tatamotors.com www.tatamotors.comu www.tcs.comu www.tatasteel.co.in www.tatasteel.co.inu www.tatacommunications.com www.tatacommunications.comu www.tata.in www.tata.inu www.makemytrip.comu www.oktatabyebye.com
Issue ariseu ‘TATA’ is a well-known and registered trademark and well- service mark over which Tata, being the registered proprietor had statutory rights as well as common law rights by virtue of a long and continuous use. use.u scope for confusion in the minds of relevant group of consumers . The use of the word ‘TATA’ in the first part of the domain name could lead to consumers assuming it to be a site maintained by Tatau MakyMyTrip did not establish “any demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods or services” when it already had a site makemytrip.com in makemytrip. connection with its business. business.
Who has deal the issue Anand and anand , Delhi • Tata sons ltd Lal and sethi associate ,Delhi • Ok tata bye bye .com
Claimant says …u The MakeMyTrip had “ill intention” behind creation ofoktatabyebye.com ofoktatabyebye.com in order to infringe the intellectual property rights of its registered trademark/service mark ‘Tata’.u confusingly similar to its ‘Tata’ brand and the travel portal runner has no rights or legitimate interests to use it.
Respondent points..u Make my trip was an online travel portal rendering travel consultancy services, while oktatabyrbye.com community portal for travelers to share their experiences and give first-hand travel advice to other wanderlusts. first-u the word ‘tata’ had been used in a colloquial sense ‘tata’ which is to bid adieu and this was clear from the way it had been placed between the words ‘ok’ and ‘bye bye’. bye’.u the word ‘tata’ could be found on practically every truck ‘tata’ on an Indian highway and this was used in a generic sense.
ICANNu Internet Corporation for Assigned Names and Numbers (ICANN) a non profit corporation is now responsible for co- co- ordinating the assignment of protocol, and management of the Domain Name systemu Located - California, non-profit corporation non- that consists largely of Internet society members. members. created on September 18, 1998 in 18, order to take over a number of Internet- Internet- related tasks previously performed on behalf of the US Government. Government.u First come-first served policy and put on come- hold if complaint made
DECISIONu (i) Discontinue use of domain name of oktatabyebye.comu (ii) Transfer the aforesaid domain name to the Complainant in accordance with the applicable procedureu (iii) Refrain from all manner of use of the aforesaid domain name or any other mark, name, domain name, etc that is confusingly similar to the trademark of the Complainant.
WIPO direction•As per directions issued by WIPO on August 24, 2009 thetransfer of the domain name okaytatabyebye.com wouldnot take place if MakeMyTrip went in for legal proceedingsagainst Tata Sons in the matter within a period of 10 days.