Domain Name Disputes

Introduction

In Part 1, we looked at how domain names can be protected. In Part 2, we shall analyse the various categories of conflicts related to domain names.

Domain Name dispute is a conflict that arises when more than one individual or group is under the impression that they have the right to register a specific domain name. The disputes generally arise over second-level domain names as no two identical second-level domain names can exist under the same top-level domain name. For example, a second-level domain name in www.theipmatters.com is “theipmatters”.

Disputes relating to domain names fall broadly into four categories:

• Cyber Squatters

The term cyber squatter refers to a case where an individual has speculatively registered or acquired a domain name primarily for the objective of selling, renting, or otherwise transferring the domain name registration to the owner of trademark or service mark or even to a competitor for valuable consideration in excess of the documented out of pocket expenses directly related to the domain name registration. In simpler words, it means unauthorized registration or usage of a domain name that is deceptively similar to another domain name, trademark, service mark, etc. In British Telecommunications v. One in a million[2], the defendants had registered a number of well-known trade names associated with large corporations, including marksandspencers.com and Britishtelecom.com, with which they had no connection. They then offered them to the companies associated with each name for an amount much more than they had paid for them. The Court of Appeal ruled in favor of the plaintiff.

• Cyber Parasites

Like cyber squatters, cyber parasites also expect to gain financially. However, unlike squatters, such gain is expected through the use of the domain name. Typically, a domain will be registered that is similar to or is a commonly mistyped version of a famous organization. For instance, cyber parasites may register the misspelt version of google.com where the alphabet ‘o’ is replaced by zero. In Yahoo Inc. vs. Akash Arora[3], there was a petition by Yahoo Inc. seeking injunctive relief against the defendants who were trying to use the domain name YahooIndia.com for internet-related services. The defendants contended that there is no passing off of plaintiff services as the services offered by them do not come under the ambit of Trade and Merchandise Act 1958. Secondly, Yahoo was a dictionary word that was not distinctive and since the defendants have been using a disclaimer, there could be no chance of deception and therefore no passing off involved. The court held the matter as one of passing off and concluded that appropriation of Yahoo name thereby granted an injunction to the plaintiff.

Similarly in Rediff Communication v Cyberbooth[4] , the plaintiff had filed a case of passing off against the defendant, who had adopted the domain name radiff.com, which was alleged to be deceptively similar to the domain name of the plaintiff (rediff.com). The Court opined that as both the plaintiff and the defendant had a common field of activity and provided services are of similar in nature, there is a high likelihood of internet users getting confused and deceived in believing that both domain names belong to one common source and connection.

• Cyber Twins

When both the domain name holder and the challenging party have a legitimate claim to the domain name, then they are known as cyber twins. These cases are the most difficult ones because the law of trademark might in such cases allow each party to enjoy concurrent use of the name. In Indian Farmers Fertiliser Corporation v International Foodstuff Co.[5] The dispute was relating to the domain name called iffco.com. The respondent had registered this domain name and had been using it with bonafide intention. While on the other hand, the complainant also had domain names related to iffco.com and thereby had a legitimate interest in the domain name. The complainant alleged that the defendant was diverting the internet users to his own website. However, the WIPO Arbitration and Mediation Centre dismissed the case as both the parties had a legitimate interest in the domain name and the complainant had failed to prove mala-fide intention on the part of the defendant.

• Reverse Domain Name Hijacking.

In certain cases, the complainant may try to overextend the scope of their famous name and thereby might indulge in reverse domain name hijacking. Reverse name hijacking is an attempt by a trademark holder in bad faith to take charge of a domain name of another individual who has a legitimate interest in the name.

Conclusion

Protection of domain names has become of immense significance because of online business and communication. Domain names could be protected as trademarks under the auspices of ICANN and WIPO. Nonetheless, robust protection of domain names at the international level and uniformity in national trademark legislations are highly needed in contemporary times.

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References:

[1] Satyam Infoway Ltd. Vs. Sifynet Solution Pvt. Ltd Case No. Appl. (civil) 3028 of 2004

[2] British Telecommunications v. One in a million [(1999) F.S.R 1]

[3]Yahoo Inc. vs. Akash Arora [78 (1999) DLT 285]

[4] Rediff Communication v Cyberbooth A.I.R 2000 Bom.27

[5] Indian Farmers Fertiliser Corporation v International Foodstuff Co [(20010 WIPO Case No. D2001-1110]