Cyber Squatting

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Legal Aspects of Business
Cyber Squatting
Submitted By:
Samir Singh (EPGP -030)

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What is Cyber-squatting:
The term also known as “Domain Squatting” is derived from "squatting", which is
the act of occupying an abandoned or unoccupied space or building that the
squatter does not own, rent, or otherwise have permission to us
The Term “Cybersquatting” refers to “The practice of registering names, especially
well-known company or brand names, as Internet domains, in the hope of
reselling them at a profit.” It is basically registering, selling or using a domain
name with the intent of profiting from the goodwill of someone else's trademark.
It generally refers to the practice of buying up domain names that use the names
of existing businesses with the intent to sell the names for a profit to those
businesses.
Examples of Cybersquatting:

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Today, when the world has literally gone digital, our presence in the virtual
platform has become our identity! Your name is the connecting bond with
millions of viewers in the online world. However, like real world, this virtual world
too is not spared from crimes and transgression of rules. Picture this’¦ if you have
a website and you happen to be a popular personality, chances are likely that an
unknown hacker, with a huge appetite for making some easy money, may hijack
your website and start selling lewd stuff that pulls maximum eye balls like a
magnet. This new crime in this unbelievably eclectic age of cyber is termed as
cybersquatting. It is unfortunate that the transgressor easily makes easy money
by selling the good will of a popular person, with minimal chances of getting
nabbed

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As the above figure suggests the extension can be said in a number of ways .
Below are the extensions of the website can have. Let us first know what the
domain name is.

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Why CyberSquatting:
Here are some popular examples of celebrities who have faced the odds of cyber
squatting, fought and resurrected their clean image in front of the world.
2. Paris Hilton: When this blonde socialite registered for her official website
parishilton.com, little did she know that she had already become the talk of the
town in the online world with illegal websites operating under her name. The
fraudster had been making a living, and we mean an illustrious living with an
illegitimate website Paris.org in the year 2005. He had been posting personal
pictures and videos of this controversial star and glued the world to his posts.
Ever since the face-off, the star had been on the roll to expose the man.
3. Microsoft
This multi-million corporate venture too faced the flak of the crime committed by
a Canadian teenager named Mike Rowe. This techy wizard was running a

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duplicate website to Microsoft.com, by the name MikeRoweSoft.com. “Since my
name is Mike Rowe, I thought it would be funny to add ‘soft’ to the end of it’ ,
were the words in justification of his crime, when he was caught red-handed by
the giant company. He was prosecuted with desist and cease order by WIPO
4. Dell
Way back in 2007 this huge Unites Sates headquartered, computer technology
company, filed a case against spurious online ventures- CapitolDomains, Belgium
Domains and DomainDoorman for cyber squatting. These online companies had
professed in the sale and purchase of web site domains using unacceptable
norms. These fake entities had earned huge bucks from their illegal endeavors.
They were finally banned and ceased by the unrelenting efforts of Dell.
5. PETA
This international online venture, vouching more humanely treatment of animals,
is better known by its tag line, ‘Turn your back towards fur’ . The company head
was in furor over a fake website, operating under its domain name, PETA.org. The
site owner played evil on the good will of the company with its outrageous tag
line, ‘People Eating Tasty Animals’ , and linked the tag with websites putting
animal meat on sale. The owner of the spurious website was indicted for tagline
infringement and cyber squatting
6. Jennifer Lopez:
This American singer who stormed the world with her vivacious tracks like If You
Had My Love, Get Right et al took a break from her on-going reality show
American Idol, only to bring the imposter website jenniferlopez.org and its owner
to books. In 2009, this media glam doll filed a law suit against Jeremiah Tieman of
Arizona for illegally using the website to post indecent photos, videos and fake
news about her. The case was filed with the World Intellectual Property
Organization by the celebrity’s charitable trust
7. Madonna :

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The queen of pop and one of the most searched artistes on World Wide Web, got
on roll ever since she discovered an unregistered website Madonna.com, posting
her objectionable images. World Intellectual Property Organization recently
nailed New York based Dan Parisi for operating the website for the intent of
selling adult content related to the star on web. Even though her videos are
rather overtly doting, she believed that the porn star image promoted by the
website was rather marring her artistic reputation in the world.
8. Career Agents Network:
This international recruitment firm got a blow when it learned about a spurious
site, created intentionally to sabotage the image of the firm world-over. Any
online viewer with a prospect of reaching the website to learn about his
recruitment options, mistakenly substituted .com with .biz was taken to the
dummy site which promoted offensive messages against the actual website. The
fake website was created by a dissatisfied customer of CAN and wanted to spread
hatred against the company owners
8. Spike Lee :
A sought-after American film producer, actor and writer had never imagined that
his venture to promote his movies online would take such a notorious turn. WIPO,
in the year 2004, indicted a fraudster who was running a deceptive website by the
producer’s domain name to direct his fans to some obnoxious porn site. The
producer got respite when the criminal was caught and prosecuted by WIPO
9.Donald Trump:
Donald, America’s business mogul, an established investor and a coveted media
personality fought and won a lawsuit against J. Taikwok Yung, accused of illegally
procuring his official website to carry-forward offensive endeavors. Donald also
sought a remuneration of $ 400,000 as a compensation amount against the
damages done to his clean image in the online world.
10. Emimem:

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Emimem , the rapper and the winner of Grammy Awards, faced the brunt of cyber
squatting with a fake website running under his name, eminemmobile.com. The
website owner was clearly exploiting the name of the popular singer to sell his
products, essentially ring tones, mobiles and mobile accessories to his fans across
the world. The case was registered with WIPO, which after meticulous
investigations declared that the star’s title had been misused for profit motive by
the executer.
These were examples of ten most famous cyber squatting cases that have come
under the media’s glare. The perpetrator, in all the above cases, was brought to
legal books for playing nasty games at the expense of popular celebrities.
History of Cybersquatting:
Individuals and entities have been able to register domain names identical, or
confusingly similar, to another’s trade marks largely because of the nature of the
domain name registration system.
Domain names were introduced in order to provide an easier means of identifying
the Internet Protocol (IP) address of a particular web site. However, Internet
domain names are issued by private companies (or registrars) on a “first come,
first served” basis, requiring only the payment of a small fee. These registrars are
not required to ensure that domain names including trademarks are purchased
only by trade mark owners. Anyone can register an available domain name. As a
result, in the 1990s, free-riders began to register established trademarks as
domain names in order to sell them to the trade mark owners. Such free-riders
are referred to as cybersquatters – individuals who own multiple domain names
for no legitimate purpose. When the practice first began, cybersquatters then
tried to sell their newly-purchased domain names back to the rightful owner of
the trademark. However, after realizing that big businesses were unlikely to pay,
cybersquatters evolved and began using these domain names to divert
consumers to their own sites and businesses for profit. This type of action seemed
to require additional rules and legislation beyond those already available through
traditional intellectual property law. It was argued in many countries that the use
of a domain name (in and of itself) was not a commercial use and therefore did
not fall under traditional trade mark protection. Therefore, new laws were
required to confront the emerging problem of cyber-squatting.

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Applicable Legislation:
The United States was the first nation to pass anti-cyber-squatting legislation. In
1999, the US Congress passed the Anticybersquatting Consumer Protection Act
(ACPA), allowing trade mark owners to obtain monetary damages and injunctive
relief in a federal court when a third party with a bad faith intent to profit . . .
registers or uses a domain name that is identical or confusingly similar to a mark.
The ACPA provides a nine factor test to consider whether a person acted in bad
faith, including whether the domain name is used commercially or if the domain
name was offered for sale to the trade mark holder.
There is no European counterpart to the ACPA. Acts of cyber-squatting are dealt
with according to national laws. With respect to existing European legislation, the
use of a famous trade mark in a domain name would fall under the special
protection provided for well-known trade marks in Article 5(2) of council directive
89/104. This provision applies if a trade mark is infringed by use of an identical or
similar sign in the course of trade with dissimilar goods provided that the trade
mark has a reputation in the Member State and the use of the sign takes unfair
advantage of or is detrimental to the distinctive character or the repute of the
trade mark.
However, the World Intellectual Property Organization (WIPO) has now
developed an international standard for dealing with cyber squatting. In 1998,
WIPO established its First Internet Domain Name Process to develop
recommendations for the international community concerning issues with
Internet domain names, including domain name dispute resolution. In 1999, the
Internet Corporation for Assigned Names and Numbers (ICANN), the U.S.
Company in charge of regulating the Internet, adopted these recommendations in
a Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP provides
trade mark owners with an efficient administrative mechanism for resolving
domain name disputes and combating cyber squatters. Under the UDRP, a
complainant must demonstrate that the disputed domain is identical or
confusingly similar to its trade mark, that the respondent does not have a right or
legitimate interest in the domain name and that the respondent registered and
used the domain name in bad faith. Disputes are decided by independent
panelists drawn from the WIPO Arbitration and Mediation Center’s list of 400
trademark specialists from over 50 countries. An important distinction between
the UDRP and the ACPA, however, is the available remedy. Under the UDRP, the

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sole remedy is the transference of the domain name (not monetary damages or
injunctive relief). The UDRP is followed by nearly all registrars (for domain names
ending in .com, .net, etc), however, for domain names ending in a country code
(ie .se for Sweden and .de for Germany), different national policies apply. These
policies usually mirror the language of the UDRP.
Newer Forms of Cyber-squatting:
The emergence of the UDRP and other dispute resolution procedures have made
it increasingly difficult for people to make money from traditional forms of cyber
squatting. It is now much more difficult for a traditional cyber-squatter to
successfully extort money from a trade mark owner in return for a particular
domain name. Also, due to greater awareness, most large companies are now
proactive in confronting the problem. Such companies now register domain
names for their company name and any potential products well before they are
released onto the market.
However, the business of cyber-squatting continues to be a lucrative source of
income for those who wish to defraud consumers. A newer form is typosquatting,
in which a person purchases a domain name that is a variation on a popular
domain name. For example, someone might register the domain name
www.googl.com with the expectation that the site will get traffic intended for
www.google.com because of a user’s misspelling of the name. This widespread
practice has led to the recent phenomenon of domain name parking services.
Parking services work together with typo-squatters and generate revenue from
links provided at certain web sites. The parking service contracts with both the
owners of the domain name and the companies for which links are provided.
Domaineering is the Internet marketing practice of using domain names primarily
as an advertising venue. This is usually done through the use of a parking service.
These parking services enable domaineering by devising a system of shared
revenue from links posted at various web sites.
In this regard, cyber-squatters are taking advantage of a five-day grace period to
sample millions of domain names, keeping the relative few that might generate
advertising revenues and dropping the rest before paying. Spammers and scam

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artists are also starting to use the grace period as a source of free, disposable web
addresses.
With up to six million names tied up at any given time through a practice known
as domain-name tasting, individuals and businesses are having even greater
difficulty finding good names, particularly in the already crowded dot-com space.
ICANN has for years required operators of major web suffixes such as .com to
refund cancellations within five days. A newer variant, sometimes called kiting,
involves the same company re-registering the same name every fourth or fifth
day to hang onto it in perpetuity, without ever paying for it.
Additionally, those who wish to engage in traditional forms of cybersquatting can
still do so, provided they are aware of the obstacles contained in the various
pieces of legislation. For example, as long as one has a legitimate purpose for
using a particular domain name, they cannot be considered to be acting in bad
faith. Therefore, merely by constructing a fan site (egwww.ireallylovesony.com) or
a site consisting mainly of free speech (egwww.microsoftsucks.com) one can
evade existing laws in many jurisdictions.
WIPO
WIPO is the global forum for intellectual property services, policy, information
and cooperation.
Businesses and innovators need easy, cost-effective ways to protect their
inventions, their brands, and their designs in multiple countries.
WIPO offers a range of global services for protecting intellectual property (IP)
across borders, and for resolving IP disputes outside the courts.
Attached below is the different pla-cards of WIPO

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Recent Cases
There is a recent case won by eBay .
eBay wins second largest WIPO cybersquatting dispute
Online auction and shopping site eBay has successfully transferred more than a
thousand web addresses that were registered in its name.
The World Intellectual Property Organization’s (WIPO) Arbitration and Mediation
Center handed over 1,153 domain names that eBay had previously claimed were
registered in bad faith.
In November last year, eBay had filed what was the second largest cyber
squatting complaint at WIPO as it attempted to transfer the domains.
In its decision, WIPO agreed that the domains were registered in bad faith under
the Uniform Domain Name Dispute Resolution Policy (UDRP).
The domains all included the word ‘ebay’ with three numbers preceding either a
.net or .com suffix.
“Neither the addition of the numeral(s), nor the ‘.com’ or ‘.net’ suffixes detracts in
any way from the distinctiveness of the complainant's trademark,” the panellist
Tony Willoughby wrote in his January 7 judgment.
“The panel finds that the domain names are all confusingly similar to a trademark
in which the complainant has rights,” he said.
“For the respondent to have registered over 1,000 domain names all featuring, as
the only distinctive element, the complainant's well-known trademark, a
trademark which is itself highly distinctive and on the evidence submitted by the
complainant a trademark exclusive to the complainant, calls for an explanation,
he added.

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He continued: “The complainant has made it clear that it has not authorised use
of its trademark in this way and there is nothing before the panel to suggest that
the respondent might reasonably be said to have a justification for having
behaved as it has.
“In the absence of an answer the panel finds that the respondent has no rights or
legitimate interests in respect of the domain names.”
Brian Beckham, head of internet dispute resolution section at the centre, said the
case was another reminder that brands are continually targeted online.
“We have seen an evolution in UDRP cases in recent years reflecting increased
allegations of counterfeiting under cyber squatted domain names.
“With new domains still emerging, brand owners are increasingly vigilant and yet
selective about their enforcement efforts,” he said.
According to Whois, a system that helps to identify who owns a domain name,
the domains were registered by a user in Shijiazhuang, China operating under the
company name Hangzhou Aiming Network. They were registered on August 4,
2014.
CYBER SQUATTING IN INDIA
POSITION IN INDIA
In India victims of cyber squatting have several options to combat cyber
squatting. These options include: sending cease-and-desist letters to the cyber
squatter, bringing an arbitration proceeding under ICANN’s rules, or bringing a
lawsuit in state or federal court. Whatever strategy a victim of cyber squatting
elects to use, that person should not dismiss the serious effects that cyber
squatting can have if left unchecked.

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A case could be filed with the .in registry handled by National Internet Exchange
of India(NiXI) who brings the matter to fast track dispute resolution process
whereby decisions are transferred within 30 days of filling a complaint.
Like always our legal system is silent on this matter too, there is no provision in
the current or proposed Information Technology Act in India to punish cyber-
squatters, at best, the domain can be taken back. Though there is no legal
compensation under the IT Act, .in registry has taken proactive steps to grant
compensation to victim companies to deter squatters from further stealing
domains. Most squatters however operate under guise of obscure names.
SOME INDIAN CYBER-SQUATTING CASES
#Yahoo! Inc. v. Akash Arora
Probably the first reported Indian case is, wherein the plaintiff, who is the
registered owner of the domain name “yahoo.com” succeeded in obtaining an
interim order restraining the defendants and agents from dealing in service or
goods on the Internet or otherwise under the domain name “yahooindia.com” or
any other trademark/ domain name which is deceptively similar to the plaintiff’s
trademark “Yahoo Although, as on the date of writing, there are very few
reported judgments in our country, newspaper reports and information from
reliable sources indicate that there are at least twenty-five disputes pertaining to
domain names pending before the Delhi High Court itself.
#Tata Sons Ltd Vs. Ramadasoft
Tata Sons, the holding company of India’s biggest industrial conglomerate, the
Tata Group, won a case to evict a cyber-squatter from 10 contested internet

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domain names. Tata Sons had filed a complaint at the World Intellectual Property
Organization.
The Respondent was proceeded ex-parte. The Panel concluded that the
Respondent owns the domain names. These domain names are confusingly
similar to the Complainant’s trademark TATA, and the Respondent has no rights
or legitimate interests in respect of the domain names, and he has registered and
used the domain names in bad faith. These facts entitle the Complainant to an
order transferring the domain names from the Respondent.
#Sbicards.com vs Domain Active Property Ltd.
Sbicards.com was ordered by the World Intellectual Property Organisation to be
transferred to the Indian Company from an Australian entity, which hijacked the
domain name hoping to later sell it for a hefty sum to the State Bank of India
subsidiary. 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.
#Bennett Coleman & Co Ltd Vs. Steven S Lalwani
Since 1996, the complainant has held the domain names,
www.economictimes.com, using them for the electronic publication of their
respective newspapers. The complainant had registered in India this mark for
literary purposes.
However, in 1998, Steven S. Lalwani, USA registered the same domain name.

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The WIPO judgement made it clear that the complainant have a very substantial
reputation in their newspaper titles arising from their daily use in hard copy and
electronic publication. It was also categorically held that the registration and use
of the domain names by the respondents is in bad faith in the sense that their use
amounted to an attempt intentionally to attract, for commercial gain, Internet
users to their web sites by creating a likelihood of confusion with the
complainant’s marks as to the source, sponsorships, affiliation or endorsement of
those web sites and the services on them.
Other Global brands like MonsterJobs, PepsiCo, SonyEricsson, Siemens, McAfee,
Kingston and search giant Google have of late been at the receiving end of the
squatters. Apart from global brands, celebrities domains are also targeted by the
squatters like Amitabh Bachhan, Sonia Gandhi, Sushmita Sen and Gul Panag.
Cyber-sqatting is a major concern especially for the domains which involve
financial transactions, because usually these squatters may some times fool
people and misuse take their credit card details. So many corporates and banks
have their special dedicated IT teams which keep a check on all these domains.
Urgent need for definite laws
There is a urgent need for the strict laws in this field, so that these squatters could
be punished and these crimes could be avoided in future. The new domain name
dispute law should be intended to give trademark and service mark owner’s legal
remedies against defendants who obtain domain names “in bad faith” that are
identical or confusingly similar to a trademark. And the plaintiff may elect

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statutory damages and has discretion to award in damages for bad faith
registration. It should act as an important weapon for trademark holders in
protecting their intellectual property in the online world.