Cybersquatting Explained: Risks, Prevention, and Real Examples

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Cybersquatting
Intellectual Property

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With everything being available to us on a click of a button from it has become convenient for businesses to reach the masses and create their presence but that also brings the endless possibilities of threats to the intellectual properties of the business. One such threat is “cybersquatting” which if simply put is when someone buys a domain name which is identical or so similar to an existing business or personality that can cause confusion or deception and hamper the business or tarnish the goodwill and reputation. One of the most common reasons an attempt to cybersquatting is made to extort the money from the actual owners by offering to sell them back the domain that should be rightfully theirs at a higher price with an intention to make unjust profits. 

TYPES OF CYBERSQUATTING

Though cybersquatting at its root level remains the same, but there are various ways it is attempted by squatters in order to earn quickly:

  1. TYPOSQUATTING: In this situation, the squatter buys a domain name with minor cosmetic changes in the spelling of known brands such as adidas being spelled as abbibas in the domain name and since its so similar there is always possibility of confusion and diversion of traffic which would lead to loss of revenue as well as the damage to the goodwill and reputation.

  2. NAME JACKING: Name Jacking usually plays around the personality rights where squatter or infringer gets a domain name or social media handle using the name of a well- known individual. One of the most famous examples is when Tom Cruise had proceeded with filing a case against one Jeff Burgar who had purchased the domain name TomCruise.com and divert the traffic towards his other website where he used to earn money from monetised advertisements.

  3. REVERSE CYBERSQUATTING: when an individual will bad intentions acquires a trademark or a brand and harass the owner of domain name. In this situation the squatter or infringer actually expects to sell the trademark at a high price.

  4. IDENTITY THEFT: This is a very interesting situation where the infringer or squatter illegally secures the original domain name that can be due to non-renewal or there are occasions the domain is not registered under a specific TLD by the owners and then divert the traffic in such a way that people and consumers get confused and misled.

RISKS OF CYBERSQUATTING

One of the biggest obstacles with cybersquatting is lack of direct stringent laws in India. Though since Cybersquatting is for the domain names which are considered as trademarks as per the law, any misuse, dishonest adoption and use of an identical or similar domain name is termed as trademark infringement as per the Trademarks Act. In Satyam Infoway Ltd. v. Sifynet Solutions [MANU/SC/0462/2004] the Supreme Court of India held that “the domain name not only serves as an address for internet communication but also identifies the specific internet site. In the commercial field, each domain name owner provides information/services which are associated with such domain name. Thus, a domain name may pertain to provision of services within the meaning of Section 2(z).” It was also observed that “As far as India is concerned, there is no legislation which explicitly refers to dispute resolution in connection with domain names. But although the operation of the Trade Marks Act, 1999 itself is not extra territorial and may not allow for adequate protection of domain names, this does not mean that domain names are not to be legally protected to the extent possible under the laws relating to passing off”. 

Since, internet is fast paced even the losses that comes with it can increase manifold in a short period of time and therefore it’s in important to keep an eye constantly on the internet and prevent such infringing activity from happening. Sometimes a constant vigilance is required to prevent such infringing activities from happening. Cybersquatting not only misleads the consumers and visitors but also attempts to make quick money from such activities.

GOVERNING LAW: UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (UDRP)

With Domain Names having a global presence and use it was necessary to have a body to adjudicate matters related to domain names. The Internet Corporation of Assigned Names and Numbers is a non-governmental, nonprofit organization which manages the maintenance of name and numerical spaces to enable secure and stable operation of the internet. ICANN was incorporated in 1998 and in 1999 ICANN adopted UDNDRP (Uniform Domain Name Dispute Resolution Policy) which sets a basic legal framework to decide any dispute with regards generic top-level domains such as .net, .org, com, .info, etc.

GOVERNING BODY IN INDIA NATIONAL INTERNET EXCHANGE OF INDIA

NIXI is a non-profit organization which was set up in 2003 to facilitate the internet services in India buy allowing the Internet Service Providers to route the domestic traffic rather than taking it to other countries. Later in 2024, the Government of India handed over the operation of the INRegistry to NIXI.

.IN DOMAIN NAME DISPUTE RESOLUTION POLICY (INDRP)

The National Internet Exchange of India adopted the policy in similar lines to the UDRP for dispute resolution and governance for domain related dispute for IN. as a ccTLD.

PROCESS OF RESOLUTION IN NIXI

  1. FILING OF COMPLAINT: Any person who believes that a registered domain name is:
  • Identical or similar to the trademark over which the complainant has the right; and
  • The Registrant has no rights and interests over the said domain name; and
  • The domain name is registered or user in bad faith or for illegal/unlawful purposes.

The said complaint has to be filed as per the limitations set in the runs along with all the supporting documents and the same should be submitted to NIXI along with the prescribed fees in electronic form.

  1. EVALUATION OF COMPLAINT: once the complaint is filed the same is evaluated for the compliance and if there is any objection, it has to be notified in a period of 5 working days which has to be rectified in 7 working days.

  2. APPOINTMENT OF ARBITRATOR & SERVICE: After the complaint is in compliance, the NIXIX appoints arbitrator and details are notified to the parties. On being notified, within 2 days the Complainant has to share the e-copy of the final complaint to the appointed arbitrator. The Complaint is also responsible for sharing the soft as well as hard copy of the complaint to the respondent and the proof of service has to be provided to the arbitrator and NIXI.

  3. ISSUANCE OF NOTICE: Within 3 working days from the receipt of complaint, the Arbitrator issues the notice to the Respondent. The day on which the notice is issued is the day from which the proceedings are considered as commenced.

  4. DISPOSAL OF THE PROCEEDING: within 60 days from the commencement of the arbitration proceeding the Arbitrator shall pass an award though in exceptional circumstances, the timeline may be extended by not more than 30 days with reasonable justification in writing. The pronouncement of the awards has to be communicated to both the parties and NIXI.

LANDMARK JUDGEMENTS ON CYBERSQUATTING

One of the first and renowned cases in the cybersquatting domain was titled as Yahoo Inc. v. Aakash Arora & Anr. (1999 PTC (19) 201 Delhi). In this case, the infringer i.e. Aakash Arora secured the domain name “Yahooindia.com” which was not only identical to the Plaintiff’s mark but also was being used to provide similar services. When the suit for infringement and ad-interim injunction was filed, the Court injuncted the defendants from using Yahoo as a Trade Mark or domain and also from using a same code of the software/website as that of the Plaintiff as this was an attempt to encash the goodwill and reputation and take undue advantage.

Another case where the Infringer was trying to get undue advantage of the rightful owner was Aqua Minerals Limited v. Mr Pramod Borse & Anr. (MANU/DE/0642/2001) where during applying for the domain name it was found that some other party had already registered it when approached had told the Plaintiff to pay the amount, they spent on developing the website and only then they would cancel the registration. It was therefore observed by the Court that the said registration was in bad faith and therefore amounted to cybersquatting.

In Bundl Technologies Private Limited vs Aanit Awattam alias Aanit Gupta & Ors. (COMMERCIAL IP SUIT (LODGING) NO. 26549 OF 2022) where the suit was filed for the infringement for the mark “SWIGGY” and the Bombay High Court had directed Godaddy LLC which is a domain name registrar to not register any domain with the word SWIGGY but aggrieved with the said order, the same was modified with the direction to Godaddy LLC to inform the Plaintiff whenever any domain with the word “SWIGGY” is registered.

RECENT JIOHOTSTAR CASE

Recently on account of the merger Disney Hotstar with Reliance Industries Limited for JioCinema, a Delhi based Developer secured the registration of the domain name www.JioHotstar.com in view of the merger and their potential attempt to own the said domain for future ventures and offered to given the Reliance industries the domain name back in exchange of funding for his higher education for 1 cr. When the Reliance Industries declined the offer the developer proceeded with selling the domain name to a sibling duo. Though as per the current scenario the duo is ready to handover the domain back with appropriate paperwork but this entire scenario acts as a lesson to small and big business alike to protect their rights to prevent such activities from happening as not only does it harm to the goodwill and reputation but it can also cause hinderance in the business deals.

HOW TO PREVENT CYBERSQUATTING

It is tough to cease trademark squatting from happening but there are few ways that businesses can follow to stay a step ahead by:

  1. Registering the domain name as a trade/service mark as the statutory protection will be granted to the business.
  2. Not only securing domain name in their ccTLD but should also attempt to secure other common top-level domains.
  3. Continuously monitoring the domain name expiry date and new the renewal and compliances up to date.
  4. Taking legal recourse, such as issuing cease and desist/ transfer notices to the infringer/squatter and if no solution can be found then proceeding with dispute resolution mechanism.

CONCLUSION

Cybersquatting has become a problem that is increasing day by day due to the convenience and ease of registration and procurement of the domain names and though we are far away from actually ceasing such activities but with constant monitoring and taking actions as and well required is a key to protect from potential loss and harm to the business.