Tata Sons Ltd filed a complaint with WIPO against MakeMyTrip regarding the domain name "oktatabyebye.com". Tata Sons argued that the domain name was confusingly similar to their registered "Tata" trademark and MakeMyTrip had no legitimate rights to use it. MakeMyTrip claimed that "Tata" was used colloquially and the site was a travel community portal. WIPO ruled in favor of Tata Sons, directing MakeMyTrip to discontinue use and transfer the domain name, unless MakeMyTrip pursued legal proceedings within 10 days.

1. Domain Name Disputes,
Cyber squatting &
Internet Issues
Sanjeev Kumar chaswal
Advocate & IPR Attorney LLM (IPR&
ARB LAW) M.S. Cyber Law and Cyber
Security 10th of June 2012
1

2. Introduction
u 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 play
u Unique URL addresses
u Internet protocol started as a series of numbers that
were difficult to remember
u Domain names started being used
u Useful mnemonic means of locating specific computers
on the Internet

3. 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
207.46.228.91)
207.46.228.91) 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 username@computer.zonename (for
username@computer.
example: president@whitehouse.gov)
example: president@whitehouse.gov).
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

4. Functions of Domain Names
u 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

5. Registration System of TM and
DNS
u 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

6. 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

7. Domain name hierarchy

8. WHOIS Records
8

9. 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

10. 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

11. Conflict between TM and DNS
u 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

12. Cyber Squatting
u 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

13. International Arbitration
u 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

14. 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

15. 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

16. ‘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

17. 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

18. 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

19. 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

20. URDP
u 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.

21. 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

22. Wipo domain name cases

23. Title
uA case study on domain name
dispute Tata sons Ltd
v.oktatabyebye.com

24. Objectives
u To
study a case related to
Domain name dispute.

25. Case
.Tata sons Ltd v.oktatabyebye.com

26. Detail of case
u Background
u When /why issue arise
u What are the effect
u Decision
u Effect of decision

27. BACK GROUND
u 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).

28. Makemytrip.com
u 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.

29. MAKE MY TRIP .COM TO OK TATA
BYE BYE .COM
three years after MakeMyTrip.com launched an online
travel community and called it OkTataByeBye.com

30. See the sites
u www.tataindicom.com
www.tataindicom.com
u www.tatamotors.com
www.tatamotors.com
u www.tcs.com
u www.tatasteel.co.in
www.tatasteel.co.in
u www.tatacommunications.com
www.tatacommunications.com
u www.tata.in
www.tata.in
u www.makemytrip.com
u www.oktatabyebye.com

31. Issue arise
u ‘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 Tata
u 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.

32. Who has deal the issue
Anand and anand ,
Delhi
• Tata sons ltd
Lal and sethi associate
,Delhi
• Ok tata bye bye .com

33. 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.

34. 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.

35. ICANN
u 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 system
u 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

36. DECISION
u (i) Discontinue use of domain name of oktatabyebye.com
u (ii) Transfer the aforesaid domain name to the
Complainant in accordance with the applicable
procedure
u (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.

37. WIPO direction
•As per directions issued by WIPO on August 24, 2009 the
transfer of the domain name okaytatabyebye.com would
not take place if MakeMyTrip went in for legal proceedings
against Tata Sons in the matter within a period of 10 days.

38. 38