A domain name is a unique name that identifies a website. Squatting is the act of registering a popular Internet address--usually a company name--with the intent of selling it to its rightful owner at an inflated price or put the domain names up for auction.....

1. CYBER SQUATTING INDIA –
Genesis & Legal Scenario
By
Nishi Shabana
nishi@singhania.in

2. Domain Name
A domain name is a unique name that
identifies a website.

3. Domain name
• Each website on the Internet has an IP
address behind the name.
• IP address is a string of numbers
• The domain name is made of characters that
are easier to remember
• Example: Singhania.in is easier to remember
than its corresponding IP address

4. Domain Name System
• DNS provides a mapping service which
links the domain name and the
corresponding IP addresses
• Every Web server requires a Domain Name
System (DNS) server to translate domain
names into IP addresses.

5. Levels of domain name
• A domain name can be categorically
divided into two levels:
Top- level domains (TLD)
 Second- level domains (SLD)
• For example:
Second-level domain
www.singhania.in
Top-level domain

6. TOP LEVEL DOMAINS
• Three letter generic Top-Level Domains (gTLDs)
• Examples: .com, .net, .org, .edu, .gov, .int, .coop
• Two letter Country-Code Top-Level Domains (ccTLDs)
• Examples: .au for Australia, .mx for Mexico, .in for India
• additional tiers within the ccTLDs .com.au; .edu.au;
.nic.in
• Internationalized Domain Names (IDNs)
• Different scripts and enabled Internet users to access
domain names in their own language
• Examples: 香港 (Hong Kong), рф (Russian Federation),

7. Example of Greek IDN with country code top-level domain in non-Latin alphabet

8. Second Level Domain (SLD)
• Second level domain are chosen by applicant
• These are the names on the left of the TLD like
msn, yahoo, delhihighcourt etc
• SLD are the important part of the discussion as
most of the disputes arises for SLD only.
• SLD must be unique term not previously used
by any one and must be registered

9. 1993 - Network Solution Inc. (NSI)
• Sole administrator over the domain name
registry
• Dominated Second-Level Domains with respect
to Top-Level Domains (TLDs), i.e. .com, .net and
.org
• 1998 - National Tele Communications and
Information Agency, US Department of
Commerce initiated for formation of non-profit
organization corporation by private sector
Internet stakeholders to administer the policy of
domain names system

10. Internet Corporation for Assigned
Names and Number (ICANN)
• ICANN - created 1999
• Responsible for managing the domain name
system.
• Facilitating the technical, managerial and policy
decisions on the Internet.
• Registration of domain names is delegated to
various accredited Registrars.
• Individual countries control their respective
ccTLDs and establish their own policies for
registration and use.

11. DOMAIN SQUATTING
CYBERSQUATTING
Squatting is the act of registering a popular
Internet address--usually a company name--with
the intent of selling it to its rightful owner at an
inflated price or put the domain names up for
auction

12. First Cyber squatter
• Dennis Toepen, an US Citizen
• In 1998 registered over one hundred domain
names of various well-known trademarks,
including "panavision.com", "panaflex.com“
• Various marks belonging Delta Airlines,
Neiman-Marcus, Eddie Bauer and Lufthansa
• Offered to sell domain to Panavision for
$13000

13. First Cyber squatter.....
• Panavision brought an action under the Federal
Trademark Dilution Act (FTDA).
• Dennis Toeppen failed in defending his rights.
• Panavision International Vs Toeppen and
Intermatic Inc. Vs Toeppen pivotal cases and
have profound impact on the development and
drafting of Anticybersquatting Consumer
Protection Act, 1999.

14. TYPOSQUATTING
This is type of cyber squatting which relies on
typographical errors internet users make while
entering website address into a web browser.
For e.g.
www.dellll.com instead of www.dell.com

16. Typosquatting......
• Typosuatters takes benefit of misspellings
• Diverts the traffic of the target site to their site
• In course of an electronic transaction, the
potential customer might end up making an
alternative purchase from competitors company.
• Tarnish the image of company
• e.g. PETA used by cybersquatter “People Eating
Tasty Animal”

17. • Twtter.com and Twitter.com
• capture typo traffic destined for Twitter.com
• Site’s entire function is to get your contact information
• Very appealing offer is presented to answer the survey question
• Your personal information goes into wrong hands
• Can be used to send SMS to you cellphone that you get charged
• Can be used for simply selling your email address

18. Uniform Dispute Resolution Policy
(UDRP)
• In 2001, ICANN devised the Uniform Domain-
Name Dispute-Resolution Policy (UDRP).
• The UDRP is an international arbitration
process for the resolution of domain name
disputes.
• The UDRP is designed to solve disputes
between a trademark owner and a domain
name registrant

19. UDRP....
• Applicable to all ICANN-Accredited Registrars for
gTLDs: .com, .info, .net, .org, .pro, etc and some
ccTLDs, such as .au (Australia)
• Incorporated by reference into the registration
agreement that the Registrant had with the
Registrar at the time of registering its domain
name.
• Registrants submits itself to the jurisdiction of the
approved dispute settlement resolution provider
and binds itself to the UDRP

20. UDRP....
• The UDRP proceedings are conducted by ICANN
approved service providers.
• Factors while selecting service provider location
• cost
• language skills
• the type of domain at issue
• availability of each provider

21. UDRP service provider
• World Intellectual Property Organization
(WIPO), Geneva
• National Arbitration Forum (NAF),
Minneapolis, USA
• Asian Domain Name Dispute Resolution
Centre
• The Czech Arbitration Court Arbitration Center
for Internet Disputes, Prague

22. UDRP Complaint
Criteria for initiating UDRP procedure:
Same or confusingly similar trademarks
No legitimate interest in the domain name
Bad faith registration and use of the
domain name

23. UDRP Remedies
• Cancellation of the domain name
• Transfer of the domain name to the trademark
owner
• If the complainant wins, the domain name is
transferred within 10 days of judgment unless
the panel is informed by the defendant that
they are initiating court proceedings on the
matter

24. UDRP – First case
• World Wrestling Federation Entertainment
Inc.(WWF) V. Michael Bosman (December 09,
1999)
• WWF initiated suit against Michael Bosmon
who registered worldwrestlingfederation.com
• Offered to sell it to WWF at huge amount

25. UDRP – First Case
Held by court that
• Domain name registered by the respondent
was ‘identical or confusingly similar’ to the
trademark of WWF
• Respondent had no legitimate rights or
interests in the domain name
• Domain name in question was registered in
bad faith by the registrant in violation of
WWF’s trademark

26. Other countries approach
• Many countries have their own policies and
procedures
Examples:
• Mexico —Domain Name Dispute Resolution
Policy for .mx (LDRP)
• Israel—Procedures for Alternative Dispute
Resolution under the .il ccTLD by Dispute
Resolution Panels (IL-DRP)

27. US Approach
• US have specific laws against cyber squatting
beyond the normal rules of trademark law.
• U.S. Anti-cyber squatting Consumer
Protection Act (ACPA) of 1999
• ACPA is intended to provide protection
against cyber squatting for individuals as well
as owners of distinctive trademarked names.

28. Card Service International Inc. v.
McGee
In this case the American Court held that the
domain name serves the same function as a
trademark and is not merely to be construed
as an address, as it identifies an Internet site
to those who reach it, much like a persons
name identifies a particular person.

29. ACPA...
Therefore a victim of cyber squatting in the United
States has two options:
To sue under the provisions of the Anti cyber
squatting Consumer Protection Act (ACPA), or
Use an international arbitration system created
by the Internet Corporation of Assigned Names
and Numbers (ICANN).

30. INDIAN SCENARIO
• No legislation exclusively dealing with domain
squatting disputes.
• No provision in the current Information Technology
Act to punish cyber-squatters
• Cases involving cyber squatting is decided under
the relevant provision of trademark laws.
• Court decides whether a domain name has the
characteristics of a trade or service which is
available to potential users of the internet.
• Cyber squatting cases decided through the
principle of Passing off/Infringement

31. Yahoo Inc. V. Aakash Arora & Anr.
www.yahoo.com www.yahooindia.com
•The plaintiff being registered owner of the domain name "yahoo.com"
succeeded in obtaining an interim order restraining the defendants from
dealing in service or goods on the Internet or otherwise under the domain
name "yahooindia.com“.
•The court rejected the argument of the defendants that the provision of the
Indian trademark Act would not be attracted to the use of a domain trade
name or domain name on the internet. It was held that although service
marks are not recognized in India, services rendered are to recognized for
action of passing off. Therefore, the decision of the court treated the matter
as one of “passing off”.

32. Other Indian Cases
The Indian Courts has followed this decision in
several other subsequent cases such as
• Rediff Communications LTD, v Cyber booth and
Anr.
www.rediff.com www.radiff.com
• Info Edge (India) Pvt Ltd V Shailesh Gupta
www.naukri.com www.naukari.com

33. Tata Sons Ltd Vs. Ramadasoft
• Tata Sons had filed a complaint at the World Intellectual Property
Organization.
• Tata Group, won a case to evict a cyber-squatter from 10 contested
internet domain names.
• Respondent was proceeded ex-parte.
• The Panel concluded
• Domain names are confusingly similar to the Complainant’s trademark TATA,
• Respondent has no rights or legitimate interests in respect of the domain
names
• Respondent registered and used the domain names in bad faith.
These facts entitle the Complainant to an order transferring the domain names
from the Respondent.

34. Sbicards.com vs Domain Active
Property Ltd.
• Sbicards.com was registered by an Australian
entity with the intention of selling it back to State
Bank of India for hefty amount
• Ordered by the World Intellectual Property
Organization to transfer the domain name to the
Indian Company
• The panel accepted SBI Card counsel’s argument
that “the Australian company was in the business
of buying and selling domain name through its
website”.

35. Satyam Infoway Ltd. v Sifynet
Solutions 2004 (6) SCC 145
• The Respondent had registered domain names www.siffynet.com and
www.siffynet.net which were similar to the Plaintiff’s domain name
www.sifynet.com.
• Satyam (Plaintiff) had an image in the market and had registered the
name Sifynet and various other names with ICANN and WIPO.
• The word Sify was first coined by the plaintiff using elements from its
corporate name Satyam Infoway and had a very wide reputation and
goodwill in the market.
• The Supreme Court held that “domain names are business identifiers,
serving to identify and distinguish the business itself or its goods and
services and to specify its corresponding online location.”
• The court also observed that domain name has all the characteristics of
a trademark and an action of Passing off can be found where domain
names are involved.
• The decision was in favour of the plaintiff.

36. Indian Domain Name Dispute
Resolution Policy
• “.in” is India,s Top Level Domain(TLD) on
internet
• “.in” domain name disputes are resolved in
accordance with .IN Dispute Resolution
Policy (INDRP) and INDRP Rules of
Procedure which is formulated by .IN
registry operated under the authority of
NIXI, the National Internet Exchange of
India.

37. A complaint can be filed with the .IN
Registry on the following grounds:
1. Registrant's domain name is identical or
confusingly similar to a name, trademark or
service mark in which the Complainant has
rights,
2. Registrant has no rights or legitimate
interests in respect of the domain name,
3. Registrant's domain name has been
registered or is being used in bad faith.

38. INDRP – Basic Procedure
• Complainant files the complaint with the .IN
Registry along with the relevant fees.
• .IN Registry appoints an Arbitrator out of the list of
arbitrators maintained by it
• Complaint and documents are forwarded to the
Respondent and the Arbitrator
• Arbitrator conducts arbitration proceedings in
accordance with the Arbitration and Conciliation Act
1996, rules thereunder, and the Dispute Resolution
Policy & rules

39. Basic procedure.....
• Arbitrator must pass a reasoned award
within 60 days
• Forward a copy of it immediately to the
complainant, respondent and the .IN Registry

40. CONCLUSION
• An Indian domain name squatted by Indian
• An Indian domain name squatted outside
India
• International domain squatted by an Indian
 For gTLD like .com – UDRP
 For ccTLD like .in – INDRP