METHODS OF RESOLVING CYBERSQUATTING DISPUTE IN INDIA

1. INDIRA GANDHI DELHI TECHNICAL UNIVERSITY
FOR WOMEN
Subject - Cyber Laws & Rights
M. tech. 3rd Sem., ISM.
 By: Prashant Kr. Vats,
 M.tech., Ph.D.

2. METHODS OF RESOLVING
CYBERSQUATTING DISPUTE IN INDIA

3. INTERNATIONAL BODIES

4. 1. ICANN dispute resolution policy
• A trademark is protected by the laws of a country where such trademark has
been registered. Moreover, a trademark may have a multiple registrations in
many countries throughout the world. Since the internet allows us for the access
without any geographical limitation, a domain name is accessible irrespective of
the geographical location of the consumers. This will be beneficial for the
universal connectivity which will grant domain name worldwide exclusivity and
also many times the national laws might be inadequate to effectively protect a
domain name. The international regulation was effected through WIPO and
ICANN. India is one of the 171 states of the world which is a member of WIPO.
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.1
• 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. This has been 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.

5. 2. Uniform Domain Name Dispute Resolution Policy
• 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 domain name is identical or confusingly similar to a
trademark or service mark in respect of which the
complainant has rights.
• The domain name owner has no rights or legitimate
interests in the domain name.
• The domain name has been registered and is 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.

6. 3. 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.2

7. NATIONAL BODIES

8. • In India, no legislation explicitly describes
cybersquatting or other domain name
disputes. The Information Technology Act,
2000 (IT Act), which addresses many
cybercrimes, oddly ignores the problem of
domain name disputes and cybersquatting.
However, domain names may be considered
trademarks based on use and brand
reputation. In the absence of appropriate law
that deals with cybersquatting, victims can
initiate an action for passing off and
infringement of trademarks under the Trade
Marks Act, 1999.

9. 1. ".IN"Dispute Resolution Policy
• In response to these issues the .IN Dispute Resolution
Policy (.INDRP) was formulated by the .IN Registry for the
domain name dispute resolution in India. The .INDRP claims
to be in line with internationally accepted guidelines and
relevant provisions of the Indian Information Technology
Act 2000. Under the National Internet Exchange of India
(NIXI), the .IN Registry functions as an autonomous body
with primary responsibility for maintaining the .IN ccTLD
and ensuring its operational stability, reliability, and
security.
• Proceedings at the .INDRP can be initiated by any person
who considers that the registered domain name conflicts
with his legitimate rights or interests on the premise that:
• The registrant's domain name is identical or confusingly
similar to a name, trademark or service mark in which he
has rights; or
• the registrant has no rights or legitimate interests in
respect of the domain name;

10. • the registrant's domain name has been registered or is being used
in bad faith. The registrant is required to submit to a mandatory
arbitration proceeding if a complaint is filed. The .IN Registry
appoints an arbitrator to proceedings in accordance with the
Arbitration & Conciliation Act 1996. The arbitrator usually considers
the domain name registered and used in bad faith in circumstances
when:
• the registrant has acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the
registration to the owner of the trademark or service mark, or to a
competitor of the complainant, for valuable consideration in excess
of the registrant's documented out-of-pocket costs directly related
to the domain name; or
• the registrant has registered the domain name in order to prevent
the owner of the trademark or service mark from reflecting the
mark in a corresponding domain name, provided that the registrant
has engaged in a pattern of such conduct; or
• the registrant has intentionally attempted to attract Internet users
to his website or other online location, by creating a likelihood of
confusion with the complainant's name or mark as to the source,
sponsorship, affiliation, or endorsement of the registrant's website
or of a product or service on the registrant's website.3

11. Starbucks corporation v. Mohanraj
• In the case of Starbucks corporation v. Mohanraj (Decided on
26th Nov, 2009) the respondent's domain
name www.starbucks.co.in was confusingly similar to the
complainant's domain name www.starbuscks.in., it was contended
that the domain name of the respondent is identical and
confusingly similar to the complainant's domain name. it was also
contended that the respondent has no legitimate interest in the
domain name. Further it was contended that the mark was used by
the respondent in bad faith.4 The learned arbitrator held that the
disputed domain name was confusing, similar and identical to the
complainant and that they had right in the trademark. The
respondent had registered the domain name in bad faith and so the
domain name should be transferred to the complainant

12. Morgan Stanley v. Bharat Jain
• In the case of Morgan Stanley v. Bharat
Jain (Decided on 28th October 2010) the disputed
domain name www.morganstanleybank.co.in was
registered by the respondent on June 20, 2010.
The complainant contended that the addition of
ccTDL ".co.in." was insufficient to render the
disputed domain name dissimilar to the
complainant's mark MORGAN STANLEY. Hence
the disputed domain name was confusingly
similar to the above stated mark.5

13. GOOGLE Inc. v. Gulshan Khatri
• In the case of GOOGLE Inc. v. Gulshan Khatri (Decided on
6th May, 2011). The complainant filed the instant complaint
challenging the registration of the domain name in favor of
the respondent the grievance of the complainant was
regarding the latter's act of adopting identical and identical
domain name and that also in respect of similar services of
the respondent.
• The learned arbitrator held that the impugned domain
name was identical and confusingly to the other prior
registered domain name and registered trademark of the
complainant and directed the registry to cancel the said
domain name forthwith and transfer the said domain name
in favor of the complainant.6
• In 2018, October 10 the .INDRP has retrain the respondent
from using the domain name and transfer the domain
name in favor of the complainant.7

14. 2. Judicial Precedence
• 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. Cyberbooth8.
• 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.9 The
court gave the decision in favor of the plaintiff.

15. • The Delhi HC very recently in 2018 the court has restrained
a cyber-squatter from using or selling or commercially
exploiting the domain name and further said that India
Today Group chairman Aroon Purie has prima facie the
right over the domain name aroonpurie.com. In an interim
order, the court has restrained a cyber-squatter from using
or selling or commercially exploiting the domain name.10
• The domain name aroonpurie.com was registered and
appropriated by one Kautilya Krishan Pandey. He had also
used a picture of Mr Aroon Purie on the home page of the
said domain name and put it up for sale. Pandey also made
an offer to sell the domain aronpurie.com to Aroon Purie at
a premium rate, which was contested, after which he
assured the India Today Group about transferring the
domain back to Mr Purie, but did not do so. Dr Puneet Jain,
appearing for Mr Purie, sought permanent injunction
against defendants for cybersquatting and misuse of
domain name aroonpurie.com.11

16. CONCLUSION
• In India, due to the absence of relevant cyber laws,
cases are decided within the ambit of trademark laws
by interpreting the principle of Passing off with regard
to domain names in the court and by the .IN dispute
resolution policy in India. On account of the problems
Indian jurisdiction faced and the various jurisdictions
looked into there is an urgent need to draft a new
legislation in India which would expressly deal with
cybersquatting and domain name disputes.
• Footnotes
• [1] Satyam Infoway v. Sifynet Solutions, AIR 2004 SC 3540.
• [2]http://www.wipo.int/amc/en/center/faq/domains.html#7, accessed on October 18, 2018.
• [3] Rana Lucy, Shrivastava Rishu ; " Balancing the odds: An evaluation of the .IN domain name dispute resolution polivy"; World
Intellectual Policy Review November/December 2011
• [4] http://www.ssrana.in/Intellectual%20Property/Domain%20Names/Domain-Name-Case-Law-in-India.aspx
• [5] Ibid.
• [6] http://www.ssrana.in/Intellectual%20Property/Domain%20Names/Domain-Name-Case-Law-in-India.aspx
• [7] INDRP/1028.
• [8] AIR 2000 Bom 27.
• [9] Ibid.
• [10]https://www.indiatoday.in/india/story/delhi-hc-says-aroon-purie-has-right-over-domain-name-aroonpurie-com-removes-squatter-
warns-seller-1263363-2018-06-18 (last visited on Jan 30, 2019)
• [11] Ibid.

17. Thank you