2016

JAMIA MILLIA ISLAMIA : MS. SADIYA

Cyber Squatting-The Art of Domain Name Thievery; Analysis into

Domestic and Global Legal Principles

for: CYBER CRIMES

Aarif Mohammad Bilgrami

LL.M. 3RD SEMESTER

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ACKNOWLEDGEMENT
First, I would like to thank my teacher Ms.SADIYA for giving me opportunity to
work on this project. Her guidance and support has been instrumental while making my
project on this interesting yet important issue.
I would also like to thank all the authors, writers, columnists and social thinkers
whose ideas and works have been made use of in my Project.
My heartfelt gratitude also goes to all staff and administration of Jamia Millia
Islamia for the infrastructure in the form of our library and IT lab that was a great
source of help in the completion of this Project. I also thank my friends for their precious
inputs which have been very useful in the completion of this Project.
I would also like to thank my parents, dear colleagues and friends in the University,
who have helped me with ideas about this work.
I hope you will appreciate my true work which is indeed a hard work and a result of
my true research and work.
Aarif Mohammad Bilgrami
Roll no. 007
Semester- III (LL.M.

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Contents
General Content

Statement of Purpose
Importance/Justification
Introduction
Research Objectives and Questions
Hypothesis
Research Methodology

Domain Name System and Disputes

Cybersquatting
United States Approach

Pre ACPA Era

Post ACPA Era

Uniform Dispute Resolution Policy Approach

Indian Case Laws under UDRP
Advantages of UDRP
Indian Approach
Indian Domain Name Dispute Resolution Policy
Suggestions for Reforms in the Indian Law Regarding Cybersquatting
Making INDRP more effective
Conclusion
Bibliography

Subject: Information Technology Law

Area: Domain Name Dispute
Topic: Cyber Squatting-The Art of Domain Name Thievery; An Analysis into Domestic and
Global Legal Principles
Statement of Purpose
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I have taken the topic of Cyber Squatting for my project submission as it is relatively a new form of
techno legal offence which has not been covered under the Information Technology Act, 2000 and this
fact has been duly noted by the Indian courts in some of its judgments. Not only can it result in
violation of the cyberspace regulations but it also infringers upon the Intellectual Property Rights and
hence it is high time that we examine the recourse; legal and otherwise; in case of cyber squatting.
Further we must examine as to whether the legislature is effective and up to date in keeping up with
the technological laws governing the cyberspace and come up with recommendations and suggestions
for the same.
Importance/Justification
Sweat of the brow doctrine states that one who does the hard work must reap the benefit of the same.
Cyber squatting is an illegal (ideally) shortcut which transgresses the rights of other affecting them
financially and emotionally. As students of law we have an obligation onto our shoulders to highlight
the legal lacuna which affects others and therefore in my opinion for dealing with cyber squatters we
must take logical, reasonable and effective steps as soon as possible and come up with an ideal law
which would deal with this issue comprehensively. It is rather ironical that we will be celebrating
twenty five years of globalisation by holding seminars and webinars next year talking about digital
India at the same time and we do not even have adequate laws governing the cyberspace.
Introduction
What is in a name! That which you call rose by any other name would smell as sweet! ---William
Shakespeare.
The name does matter in cyberspace as it may lead to financial gain/loss amounting to millions of
dollars to the savvy investors. Cyberspace has been growing tremendously for the past twenty-twenty
five years and with its growth it has brought upon many lacunas associated with it; so its time that we
come to an understanding that internet is not all about a merry joyride. There are millions of people
connected to the internet at any given point of time worldwide and the content posted on the internet
can disseminate as fast as one can imagine. Therefore in light of the extremely capable information
dissemination system over cyberspace it needs to be monitored especially over critical aspects where it
transgresses the right of another. We must not let people suffer financially or get victimised over
cyberspace just because of the fact that it is so huge to keep a vigil on it.
There are various kinds of complications which come hand-in-hand with the internet e.g. defamation,
squatting, hacking, bullying, stalking and so on. To monitor any sector we need to make laws
providing for general ideal way of conduct and imposing sanctions (civil & criminal) for violation of
the rules laid down; in the context of cyberspace we have Information Technology Act, 2000. The IT
Act deals with defining various aspects related to cyberspace and also impose civil and criminal
liability for unwanted behaviour of netizens in s43 and s65 respectively.
This project deals with the aspect of cyber squatting; we must understand the meaning of the term
cyber squatting before we delve into the abysmal depth of cyber world. Squatting means unlawfully
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occupying an uninhabited building or settling on a piece of land; now we need to prefix cyber and
comprehend the meaning again. In cyberspace the addresses are known as domain names which can be
better understood with an example:
Address in cyberspace: www.google.com
Using the abovementioned meaning of squatting and modifying it with the context cyber squatting is
the act of registering a similar domain name e.g. www.goooogle.com in order to divert traffic from the
original address for financial gain. A cyber squatter may try to sale the domain name at a premium
price to the original domain name holder or he may just deceive the customers of the original website
by tricking them into his squatted website.
Another definition of cyber squatting may be the practice of registering an internet domain name that
is likely to be wanted by another person, business, or organization in the hope that it can be sold to
them for a profit. Cyber squatting may also be used just for defaming a particular domain name. It
thrives basically on mistakes in typing if the domain name (original or bonafide) has already been
registered.
Secondly suppose a person A has a popular restaurant which does not have a website then a squatter
may register a domain name using the name of As restaurant and trick people into ordering food
online and at the same time earn from advertisement clicks. Here the goodwill created by the sweat of
another has been used for the benefit of an imposter. Registering a domain name is particularly easy
owing to the fact that it is done on a first come first serve basis by ICANN (The Internet Corporation
of Assigned Names and Numbers) which is responsible for the administration of top level domain
names worldwide and is a non profit organisation.
In order to tackle this serious complication legal provisions must be there to provide for liability in
case of cyber squatting. In India IT Act, 2000 deals with issues in cyberspace and we must analyse the
same in order to examine the remedies provided. When we analyse the IT Act there is absolutely
nothing dealing/penalising cyber squatting; there is no civil or criminal liability for cyber squatting in
the act. This is the lacuna the author shall be addressing in the project also analysing the global
framework i.e. is there a remedy for the squatted website owner? Along with stating and examining the
United States Act dealing with cyber squatting.1
Further the Indian judiciary has taken a proactive step and has defined cyber squatting in the following
manner:
An act of obtaining fraudulent registration with intent to sell the domain name to the lawful owner of
the name at a premium price.2

1 Anticybersquatting Consumer Protection Act (ACPA), 1999

2 Manish Vij v. Indra Chugh, AIR 2002 Del 243
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Another aspect of looking at cyber squatting is from the purview of penal jurisprudence examining the
role of mental element and intent of the squatter i.e. is cyber squatting a strict liability offence? Also,
we can analyse the rights accruing out of the remedies in light of in rem and in personam rights.
We will analyse the Indian case laws in the context of the project and will analyse the legislation under
which protection to cyber squatting is being given indirectly and try to formulate a wholesome
approach to tackle this issue.
Research Objectives and Questions
1. To analyse and discuss the concept of Cyber Squatting.

What is the legal definition of the term Cyber-Squatting?

What is the history of its evolution?

Whether there is uniformity in the definition of Cyber-squatting globally? If no, state the
differences.

2. To define the concept and determine the scope of Cyber-Squatting in the Indian legal framework.

Whether IT Act, 2000 effectively deals with the problem of Cyber-Squatting? If yes, state the
relevant provisions.

Whether any judicial pronouncement has discussed the aspect of Cyber-Squatting? If yes, list the
relevant case laws.

Whether Indian Trade Marks Act also relates to the aspect of Cyber-Squatting? If yes, can it be seen
as lacunae in Information Technology Act, 2000?

3. To trace out the role of International Organisations with regard to Cyber-Squatting

Whether there is any efficient machinery in place for domain name dispute settlement at an
international level?

Whether the role of ICANN & UDRP in relation to Cyber-Squatting is adequate? If no, state the
shortcomings in their mechanism.

Whether WIPO Arbitration Rules have a role to play in Dispute Resolution Mechanism? If yes, in
what context?
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What is the judicial value of the ICANN proceedings? Whether the proceedings are merely
administrative in nature?

4. To scrutinize the efficacy of system in place for protection against cyber squatting in the United
States of America and analyse for its adoption as model law in India.

Whether there is legislation in place for protection against Cyber-Squatting in the Unites States? If
yes, identify the law and remedy provided under it.

Whether there is a conflict on territorial application of the US Act on cyber squatting? If yes, what
is the conflict?

Whether the American law is adequate for dealing with cyber squatting in India scenario? If no,
state the reasons for so.

5. To analyse the concept of Cyber Squatting in detail from jurisprudential point of view.

Whether cyber squatting can be provided efficient protection under tortious remedy? If yes, how?

Whether intent of squatter should/can play a role in determination of sanction? If yes, provide the
basis for the argument.

Whether in rem remedies are essentially needed for protection against Cyber Squatting? If no,
why?

6. To recommend and suggest measures to tackle the issue of Cyber Squatting in India and globally.

Whether there is a need for all the nations to come together and formulate model guidelines to be
followed relating to the issue of cyber squatting? If yes, suggest some guidelines to that effect.

Whether the Law Commission of India has recommended measures to tackle the menace of cyber
squatting? If no, should the Law Commission take active steps in this regard?

Whether there should be an ideal law for all the nations in spite of the issue of jurisdiction as
inherent conflict in cyber laws? If no, what is the ideal solution?

Hypothesis
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Indian legal provisions with respect to the void in the IT Act and indirect remedy in the Trade Marks
Act are inadequate to deal with the issue of cyber squatting.
Research Methodology
The Project is based on doctrinal research methodology. The author has analysed the problem with
help of law books, existing statutes, proposed bills and decided cases pertaining to the issue. The
author has selected bibliographic databases to identify secondary sources which could be anything
from text books, bar review, scholarly articles and legal encyclopedias. Entire material has been
screened to differentiate the most authoritative from the least authoritative based on either the quality
or relevancy of the material to the research issue.
Domain Name System and Disputes
Domain Name system (DNS) was introduced not for any technical functioning necessity but solely
with the purpose of aiding users; in as much as they can be remembered more easily. This is because
the actual addresses are known as Internet Protocol (IP) and are composed of four sets of numbers,
between 0-255 separated by dots, such as 123.245.35.67. As Black 3 says, the DNS simply provides a
mapping service which links the given name and the corresponding Internet Protocol.
Broadly, domain name disputes have arisen in two contexts. In the first, an individual or organization
with no other rights to a name may register a domain name with that name. This may be for several
objectives extortion appropriation of goodwill, diversion of web- traffic, defamation, etc. the second
kind of conflict arises between persons who are equally entitled to a name a situation that arises
often, given the global nature of the internet.4
There are various domain name disputes that have come up for consideration of courts around the
world. e.g., Cybersquatting (Registration of a well-known trademark as a domain name in the hope of
selling it at a later date, Competitor Disputes (Registration of domain names that contain
company name or trademarks of ones competitors), Palming-off Disputes (Registration of domain
names with intent to palm-off the fame and goodwill of someone elses trademark), Parody Disputes
(Registration of a domain name that resembles a companys name or trademark and then using it
in connection with a website that includes commentary or makes a political or satirical statement about
it), etc.
Cybersquatting
Cybersquatting is a particular type of domain name dispute which occurs when someone registers a
domain name which is associated with an entity with the intention of selling it on to them at a higher
price. Cybersquatting is the practice of registering a trademark as a domain name with the intent of
3 William Black, The Domain Name System in Edwards and Waelde (eds.), Law and the
Internet: A Framework for Electronic Commerce 125 (Hart Publishing Co., Oxford, 2000).
4 Nandan Kamath, Law Relating to Computers, Internet and E-Commerce A Guide to Cyberlaws
167 (Universal Law Publishing Co., Delhi, 4th edn., 2009).
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profiting from it by selling it, usually to the trademark owner. As long as the cyber squatter owns the
domain name, the trademark owner cannot register its own trademark as a domain name. In this sense,
the cyber squatter breaches the fundamental rights of the trademark owner to use its trademark.
However, it is important to note that there is nothing wrong with the practice of reserving a domain
name.
Frequently, cybersquatters register words or phrases they hope will someday be sought after by new
companies or new business divisions. A trademark is not infringed by a domain name unless the
trademark existed at the time of domain name registration. This kind of cybersquatting is speculative
and legitimate. John D. Mercer also identifies "innocent" cybersquatting, whereby the registrant does
infringe a trademark "based on some unrelated interest in the word itself, without intending harm to a
trademark owner" and "concurrent" cybersquatting, whereby the registrant uses the same trademark as
another commercial entity, but not within a competing industry.5
United States Approach
The US legislature has put in place the Anti Cybersquatting Consumer Protection Act, 1999 (ACPA).
The Act creates civil liability for bad-faith registration with the intent to profit from domain names that
are identical or confusingly similar to someones distinctive trademark 6. The Act also provides for
protection of personal names along with remedies which include injunction, forfeiture or cancellation
of domain name7, actual damages or profits, or elective statutory damages of between $ 1,000 and $
100,000 per domain name. Under ASPA, a unique additional right is created by the Act in favour of
the trade mark owner. By virtue of this right, the trade mark owner can file an in rem action against
the domain name itself (as opposed to the registrant of the domain) 8. However the sine qua non for
such an action can be brought only if in personam (i.e. personal) jurisdiction cannot be obtained or if
the appropriate defendant cannot be found after notice is sent and published by means directed by the
court. The remedies available in an in rem action are limited to forfeiture, cancellation or transfer of
the domain name. There are two requirements to prove the validity of a claim under the ACPA, the
onus of which lies on the plaintiff. The first element appreciates whether the defendant possessed bad
faith intent to profit from the use of a protected name and the second element considers whether the
defendant registered or used a domain name that (i) is identical or confusingly similar to a distinctive
mark or famous mark or (ii) is a trademarked word or name.
The Act provides a non-exclusive, nine-factor test to determine whether a registrar has acted in bad
faith. These factors are:9
5 John D. Mercer, "Cybersquatting: Blackmail on the Information Superhighway", 6 Boston
University Journal of Science and Technology Law 11 (2000).
6 15 USC 1125 (a)(d)(1)(A)(1) of ACPA
7 15 USC 1116 of ACPA
8 15 USC 1125 (d) (2) of ACPA
9 Sec. 1125(d)(1)(B) of ACPA
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The trademark or other intellectual property rights of the person, if any, in the domain name
The extent to which the domain name consists of the legal name of the person or a name that is

otherwise commonly used to identify that person

The persons prior use, if any, of the domain name in connection with the bona fide offering

of any goods or services

The persons bona fide non-commercial or fair use of the mark in a site accessible under the domain

name
The persons intent to divert consumers from the mark owners online location to a site accessible
under the domain name that could harm the goodwill represented by the mark, either for
commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of

confusion as to the source, sponsorship, affiliation, or endorsement of the site

The persons offer to transfer, sell, or otherwise assign the domain name to the mark owner or
any third party for financial gain without having used, or having an intent to use, the domain
name in the bona fide offering of any goods or services, or the persons prior conduct

indicating a pattern of such conduct

The persons provision of material and misleading false contact information when applying for the
registration of the domain name, the persons intentional failure to maintain accurate contact

information, or the persons prior conduct indicating a pattern of such conduct.

The persons registration or acquisition of multiple domain names which the person knows are
identical or confusingly similar to marks of others that are distinctive at the time of registration of
such domain names, or dilutive of famous marks of others that are famous at the time of registration

of such domain names, without regard to the goods or services of the parties
The extent to which the mark incorporated in the persons domain name registration is or is not
distinctive and famous.

Bad faith intent will not be found if the court determines that the person believed and had reasonable
grounds to believe that the use of the domain name was a fair use or otherwise lawful.
Pre ACPA Era
Intermatic Inc. v. Toeppen10 and Panavision International v. Toeppen11 are considered the pivotal
cybersquatting cases and have had a profound impact on the development of cybersquatting case law,
as well as on the drafting of the Anticybersquatting Consumer Protection Act, 1999.

10 947 F. Supp. 1227 (N.D. Ill. 1996)

11 141 F.3d 1316 (9th Cir. 1998)
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Panavision illustrates some of the typical issues encountered in cybersquatting cases where trademark
infringement is raised. Toeppen registered the domain name.panavision.com and used the website to
display pictures of the city of Pana, Illinois. He offered to sell the domain name to Panavision for
$13,000. Panavision declined and brought an action under the Federal Trademark Dilution Act
(FTDA). The FTDA required the plaintiff to show that the trademark in question is famous,
that the defendant was using the mark in commerce, that the mark became famous before the
defendant started using it, and that the "defendant's use of the mark dilutes the quality of the mark by
diminishing the capacity of the mark to identify and distinguish goods and services." 12 Toeppen
argued that he was not making commercial use of the name, as he was merely displaying photographs
on his web site. The court, however, decided that by having offered the domain name for sale, Toeppen
had shown his intent to use the mark in commerce, which met the requirements for use in commerce
test. The court further remarked on the fact that a domain name carried the reputation of a trademark.
In Intermatic, the court conceded that Toeppen was not using the trademark in commerce, as he
had merely registered it, but nevertheless found infringement through dilution. Importantly, the
court in Intermatic recognized that if Toeppen were allowed to operate the web site intermatic.com,
Instamatics "name and reputation would be at Toeppen's mercy."
The rulings in Panavision and Intermatic affirmed that "traditional" trademark and trademark
dilution law applied in cyberspace. It is not only the "unadulterated" trademark that can be protected,
but also any variation of it that is likely to confuse or deceive, or in some way dilute the
"distinctive quality" of the mark. The Anticybersquatting Consumer Protection Act incorporates the
dilution and tarnishment provisions of the FTDA, but without the FTDA's requirement for use in
commerce. This significantly broadens the concept of trademark infringement.
Post ACPA Era
In Morrison & Foerster v. Wick13, the plaintiff was the owner of the registered trade mark Morrison
& Foerster, which was used for legal services. The defendant registered the domain names
morrisonfoerster.com and morrissonandfoester.com. The web pages carried a few slogans as well
as hyperlinks to other anti-Semitic and racist domain names such as letsdosomeillegalsteroids.com
and noirishneedapply.com. The plaintiff alleged that the defendant was guilty of trade mark
infringement and dilution and also violated the Act. Although the court only dealt with the provisions
of the Act, the courts conclusions equally apply to trade mark infringement and dilution proceedings.
The court held that as ampersands (&) cannot be used in domain names, the defendants disputed
domain names were virtually identical to the plaintiffs trade mark name and also remarked that
prejudice was present in that the defendant harmed the plaintiffs goodwill by tarnishment. The court
was further of the opinion that the defendants use of the disputed domain names constituted
commercial use. In the case of Jack In The Box Inc. v. Jackinthebox.Org 14, the court held that the
act of registration by the defendant was in connection with the sale of the right to use the domain
12
13 94 F. Supp. 2d 1125 (D. Colo. 2000)
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name, either as a good or service. This sale (from the domain name registrar to the unknown
registrants) constituted use in commerce and there was no need to actually develop a working website
for the illegal use of the mark to constitute commercial use. The act of registering a domain name itself
comprised a commercial act because it involved a sale between the registrant and the registrar. The
court thus concluded that it met the definition of use in commerce as per the law.15
The facts were that the plaintiff was the owner of the registered trade mark Jack in the Box. The
defendant registered the domain name jackinthebox.org and jackinthebox.net, but created no web
sites for these domain names. The question arose whether the defendant was using these domain
names in commerce, for the purpose of trade mark infringement. However, it is pertinent to note that
an Internet domain name resembling a famous trademark does not in itself, establish bad faith for
purposes of the Act. This was seen in the case of Interstellar Starship Services Ltd. v. Epix Inc 16.,
wherein a computer enthusiast did not have bad faith intent to profit from Epix trademark when he
obtained epix.com domain name, for purpose of claim under ACPA, even though enthusiast offered
to sell domain name to trademark holder. The offer was in context of settlement negotiations and offer
was in context of investment that enthusiast had already invested in websites non-infringing content,
offer was made by enthusiasts attorney, enthusiast performed web search on Epix before registering
epix.com and did not find any such site, and enthusiast adopted domain name as descriptive term to
connote electronic pictures.
Uniform Dispute Resolution Policy Approach
Like the Courts, the registering authorities have had to react to cybersquatting and have been
extremely pro-active in terms of implementing measures aimed to counteract it, partly maybe in their
attempts to avoid liability themselves17. The Internet Corporation for Assigned
Names
and
Numbers (ICANN), the body the U.S. government tasked with governing the Internet domain
name system, adopted the Uniform Dispute Resolution Policy (UDRP) on August 26, 1999, and was
implemented on October 24, 1999. The UDRP is designed to solve disputes between a trademark
owner and a domain name registrant. These disputes arise when the registrant has registered a domain
name identical or confusingly similar to the trademark, the registrant has no rights or legitimate
interests in the name, and the registrant has registered and used the domain name in bad faith. 18 The
UDRP does not deal with conflicts between two trademark holders or between a trademark holder and
a registrant with rights or legitimate interests. In particular, the UDRP does not apply if the registrant

14 143 F Supp. 3d 590 (E.D. Va. 2001)

15 Ibid
16 304 F. 3d 936 (9th Cir. 2002)
17 Mairead Moore, Cybersquatting: Prevention Better Than Cure?, 17 International Journal of
Law and Information Technology 220,226 (2008).
18 Para. 4(a) of UDRP
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has been known by the name, has used it in connection with a bona fide offering of goods or services,
or has used it for a legitimate non- commercial purpose.19
The UDRP proceedings are conducted by the ICANN approved service providers. There are presently
four approved dispute resolution service providers that are accepting complaints. Each provider
follows the UDRP as well as its own supplemental rules. These are World Intellectual Property
Organization (WIPO), National Arbitration Forum (NAF), Asian Domain Name Dispute Resolution
Centre (ADNCRC) and Czech Arbitration Court (CAC).
The UDRP has proven successful in providing a low-cost alternative means of resolving
disputes involving the bad faith registration of trademarks or variations thereof as Internet domain
names.20 It was drafted narrowly for the purpose of combating the Internet phenomenon known as
cybersquatting. The effect of the policy is that the status of the dispute resolution procedure is made
compulsory on the premise that it is incorporated into the contract at the registration stage. This means
that in the case of a dispute while the applicant is not bound, the defendant is bound to acknowledge
the procedure and submit to it as part of the contract they sign in registering the domain.
Any aggrieved person may initiate the UDRP procedure by asserting that the following three criteria
are satisfied in relation to the disputed domain:

The domain name in question is identical or confusingly similar to a trademark or service mark
in which the applicant has rights21;

The domain holder has no rights or legitimate interests in the domain22; and

The domain has been registered and is being used in bad faith23.

19 Para. 4(c) of UDRP

20 Nicholas Smith and Erik Wilbers, The UDRP: Design Elements of an Effective ADR
Mechanism, 15 The American Review of International Arbitration 215 (2004).
21 A complainant may show trademark rights through formal registration or through use, in other
words, common law rights.
22 A registrant may demonstrate this in one of three ways. First, the registrant, before notice of
the dispute can use the domain name "in connection with a bona fide offering of goods or
services." Alternatively, registrants can establish they have been "commonly known by the
domain name," even if the registrant did not acquire trademark or service mark rights. Finally,
registrants can fulfill this element by making "a legitimate non-commercial or fair use of the
domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish"
the mark.
23 There are several ways for the complainant to demonstrate bad faith. e.g., if the web site is used for the
purpose of selling, rendering, or transferring goods; if the registrant is preventing a mark owner from using
the mark in a domain name; if theregistrant intended to disrupt a competitor's business or if the registrant
is creating confusion for commercial gain, etc

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This is also known as the 'cybersquatting test'. Although the policy requires proof of all these three
elements, in practice, the complainant will establish trademark or common law rights in the domain
51
name, and generally, that the registrant operated in bad faith. The registrant may, however, have the
burden of showing legitimate interests in the domain name, and of establishing good faith. UDRP
considers a website used for the purposes of determining whether a cybersquatter has infringed on
t h e domain name, even if the name was registered, but never developed into a functioning web site.
It is the second and third elements that distinguish the UDRP from the trademark law, and therefore
these are the most important aspects of the Policy. The Policy includes a non-exhaustive list of
factors indicative of each of the existence of a legitimate interest and the presence of bad faith. It is
noteworthy to refer to paragraph 4(b) of the UDRP, which addresses circumstances which connote
bad faith:
(i) The domain name has been acquired principally for the purpose of selling it; or
(ii) The registration is designed to prevent a trademark holder from using it in a domain name; or
(iii) The registration is designed to disrupt the business of a competitor; Or
(iv) The use of the domain name is intended to confuse the public or divert users away from the
trademark holders web site.
Thus, in procedural terms, in order to initiate proceedings, the burden is on the complainant to
demonstrate in their application for proceedings that certain requirements in the Policy are met. To
demonstrate these requirements are met, it appears that the threshold is set at a low level, with
practices showing a track record of purchasing followed by offering domains for sale, clearly
establishing the bad faith element.
In terms of remedies available, Section 4(i) of the UDRP only allows the complainant to apply for
cancellation or transfer of the domain as the UDRP doesn't have provision for damages. Where the
complainant wins, the transfer of the domain name will take place 10 days after the decision is issued
unless the panel is informed by the defendant that they are initiating court proceedings on the matter.
First Cyber squatting Case (Word Wrestling Federation case)24: This was the first case decided
under the UDRP by WIPO. The proceedings were initiated on Dec 9, 1999.The US based World
Wrestling Federation (WWF) brought a suit against a California resident who registered the domain
name worldwrestlingfederation.com and offered to sell it to WWF at a huge dividend a few days
later. The WWF alleged that the domain name in question was registered in bad faith by the registrant
in violation of WWFs trademark. It was held that the domain name registered by the respondent was
identical or confusingly similar to the trademark of WWF and the respondent had no legitimate

24 Regulating Intellectual Property Rights on the Internet- Aashit Shah, Government Law College
Law Review, 1999-2000
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rights or interests in the domain name. Therefore the respondent was ordered to transfer the
registration of the domain name to the complainant, WWF.
Indian Case Laws under UDRP
Since the UDRP is an efficient and cost-effective means of resolving disputes relating to wrongful
registration of domain names in the gTLDs, a growing number of Indian companies have chosen to
settle their domain name disputes through the UDRP. In Maruti Udyog v. Maruti Infotech25, a
complaint was filed with WIPO over a dispute relating to the domain name maruti.org. Maruti
Udyog, a well known car manufacturer, proved that the trade mark Maruti was associated with its
products and that a person of average intelligence and imperfect recollection would be led to believe
that the domain name was associated with them Moreover, the respondent sought to sell the domain
name to the complainant for valuable consideration The WIPO panellists, therefore, held that there
was a clear intent on the part of the respondent to make unmerited profit from the registration of the
domain name and transferred the name to Maruti Udyog.
Non-activation of the disputed mark is also an indication of the mala fides of the respondent. In Tata
Sons v. The Advanced Information Technology Association (AITA)26, Tata Sons filed a complaint
against AITA with WIPO for the illegal registration of the domain name tata.org. The WIPO
panellists held that Tata was a well known name, linked to high quality products the name Tata
was a family name and had no dictionary meaning. Further, both AITA and Tata were based in the
same city and AITA was bound to know of Tatas reputation Further, AITA had not activated the
disputed domain name which indicated that AITA was merely hoarding the domain name. In this case
the WIPO panellists held that even if the web-site were activated, the facts would lead them to believe
that the registration was in bad faith the domain name was, therefore, transferred by ICANN to Tata
Sons based on the award granted by WIPO in favour of Tata Sons.
Another dispute where passive holding of a domain name indicated that its registration was in bad
faith occurred in the case of Hero Honda Motors v. Rao Tella27, in relation to the domain name
herohonda.com. The complaint was filed with the WIPO by Hero Honda Motors, Hondas joint
venture company in India against Rao Tella, a person based in the United States of America, who had
registered the domain name for a website dedicated to fans of Honda However, Mr. Tella had not
activated the website The WIPO panellists held that the domain name was identical to the trade mark
of the complainant, and the domain name was transferred to Hero Honda Motors.
Advantages of UDRP
The UDRP, as operated by WIPO and other Approved Providers, is very popular. The procedure is
quicker and cheaper than normal litigation. The jurisdiction is international in nature.54 In the
25 http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-1038.html
26 http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0049.html
27 http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0365.html
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traditional court system, it is difficult to gain jurisdiction over a party in another country. For example,
under the ACPA, a complainant must file in a court having jurisdiction where the registrant or registry
is located. UDRP alternatively, is international.
Unlike courts of law, some panels are comprised of experts in "international trademark law,
electronic commerce, and Internet- related issues." While this does not guarantee success, one can
expect heightened familiarity with intellectual property principles and more consistent decisions from
the panels than from courts spanning the globe.
As one country's trademark laws may not be enforceable in another country, international
complainants may encounter problems enforcing their own country's laws in traditional courts
However, under the UDRP, any country submitting to the convention must enforce the decision under
UDRP regardless of its particular laws. Furthermore, complainants from countries other than the
United States will benefit from this procedure. Canada, for example, does not have cybersquatting
laws.
Overall, by providing a quick and relatively inexpensive means to resolve clear-cut cases of
cybersquatting, the UDRP serves a useful function. The UDRP is a unique creation, able to
operate as a successful international dispute resolution system despite the challenges of
distance, jurisdiction, and a rapidly changing business environment.28 It has achieved this through a
combination of design elements that encourages efficiency and effectiveness while maintaining the
fairness essential to the credibility and enforceability of any dispute resolution system.29
Indian Approach
In India, there is no legislation which explicitly refers to dispute resolution in connection with
cybersquatting or other domain name disputes.30 The Trade Marks Act, 1999 sought to be used
for protecting use of trademarks in domain names is not extra-territorial, therefore, it does not allow
for adequate protection of domain names. The Supreme Court has taken the view that domain names
are to be legally protected to the extent possible under the laws relating passing off. In India, this law
was evolved by judges and all the High Courts were of unanimous opinion, which has been culled out
and endorsed by the Supreme Court. A look at the observations of courts as to various facets of the
disputes involving domain names shall be useful.

28 David Kitchen, David Llewelyn, et. al. (eds.), Kerlys Law of Trade Marks and Trade Names 733 (Sweet &
Maxwell, London, 14th edn., 2005).

29 Jeffrey M. Samuels and Linda B. Samuels, Internet Domain Names: The Uniform Dispute
Resolution Policy, 40 American Business Law Journal 885 (2003) at 903
30 Ashwani K. Bansal, Law of Trademarks in India 642 (Centre for Law, Intellectual Property &
Trade, New Delhi, 2nd edn., 2006).
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The Satyam Infoway Ltd v. Sifynet Solutions (P) Ltd 31 case nailed the Indian domain name scenario
way back in 2004 stating 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 extraterritorial and may not allow for adequate protection of domain
names, this does not mean that domain names are not protected within India. In absence of the proper
cyber laws the remedy that prevails is an action for passing off and the infringement of trademarks.
Even then the Indian Courts have very active in providing relief in the case of Cyber squatting.
Although it is another fact that the due to the increasing number of cases people have started resorting
to alternate methods of dispute resolution in this field specially Uniform Domain Name Dispute
Resolution Process (UDNDRP) devised by the International Corporation for Assigned Number and
Names (ICANN) and World Intellectual Property Organization (WIPO) Arbitration and Mediation
Council, instead of relying on the formal legal procedure. It must be noted that the Trade and
Merchandise Marks Act, 1958 (the TM Act) and the Information Technology Act, 2000 of India do
not deal with domain name disputes. Indian Courts, therefore, apply the rules of passing off with
respect to such disputes. The action against passing off is based on the principle enunciated in N. R.
Dongre v. Whirlpool32 wherein the courts said that a man may not sell his own goods under the
pretence that they are the goods of another man. Passing off is a species of unfair trade competition
by which one person seeks to profit from the reputation of another in a particular trade or business. A
passing off action is a direct subject matter of the law of tort or common law of right, i.e. case law. The
Act does not define passing off, but only provides the rules of procedure and the remedies available.
However the Trademark Act is devoid of any provision within purview of which the offence of Cyber
squatting could be brought. Therefore in the absence of any such provision the Indian Courts have
been following the principle of passing off and the guidelines and the policies of the WIPO and the
UDRP.
The first case in India with regard to cyber squatting was Yahoo Inc. v. Aakash Arora & Anr.,33 .In
this case the defendant launched a website nearly identical to the plaintiffs renowned website and also
provided similar services. Here the court ruled in favour of trademark rights of U.S. based Yahoo. Inc
(the Plaintiff) and against the defendant, that had registered itself as YahooIndia.com. The Court
observed that it was an effort to trade on the fame of yahoos trademark. The court further added that a
domain name registrant does not obtain any legal right to use that particular domain name simply
because he has registered the domain name, he could still be liable for trademark infringement. The
Bombay High Court in Rediff Communication v. Cyberbooth & Anr34 held that a domain name is
like a corporate asset of a company. In this case the defendant had registered a domain name
radiff.com which was similar to rediff.com. The court gave a decision in favour of the plaintiff. In Tata
Sons Ltd v. Monu Kasuri & others, the defendant registered a number of domain names bearing the
31 AIR 2004 SC 3540
32 (1996) 5 SCC 714)
33 1999 PTC(19) 201
34 AIR 2000 Bom. 27; 2000(1) RAJ 562(Bom.)
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name Tata. It was held by the court that domain names are not only addresses but trademarks of
companies and that they are equally important. 35 The arbitration panel of the WIPO in Bennett
Coleman & Co Ltd. v. Steven S Lalwani and Bennett Coleman & Co Ltd. v. Long Distance Telephone
Company36, gave a decision in favour of the plaintiff. In this to the respondent had registered domain
names www.theeconomictimes.com and the www.timesofindia.com with network solutions of the
United States. These two names are similar to the names of the Plaintiffs websites
www.economictimes.com and www.timesoftimes.com. Another important fact was that the
respondents websites using the domain names in contention redirect the users to a different website
www.indiaheadlines.com which provided India related news.
In Satyam Infoway Ltd. v Sifynet Solutions 37, the decision was again in favour of the plaintiff,
wherein the Respondent had registered domain names www.siffynet.com and www.siffynet.net which
were similar to the Plaintiffs 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 the domain
names were 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 remarked that domain name
had all the characteristics of a trademark and an action of Passing off can be found where domain
names are involved. In Google Inc.v.Herit Shah38, on May 15, 2009, the World Intellectual Property
Organization (WIPO) ordered an Indian teenager, Herit Shah (Shah), who had been using the domain
name 'googblog.com', to transfer the rights of the domain to Google Inc. (Google).
Indian Domain Name Dispute Resolution Policy
.in is Indias Top Level Domain (TLD) on internet. IN Registry is the official .IN registry. It was
appointed by the government of India, and is operated under the authority of NIXI, the National
Internet exchange of India. The Government decided to revamp the administration of the .IN registry
in late 2004. IN Registry has assumed responsibility for the registry from the previous registry
authority, The National Centre for Software Technology (NCST) and its Centre for Development of
Advanced Computing (C-DAC) The registry has published the .IN Dispute Resolution Policy
(INDRP). It has been formulated in line with internationally accepted guidelines, and with the relevant
provisions of the Indian IT Act 2000. There are two documents that all parties in a dispute should
read carefully:
1. The .IN Domain Name Dispute Resolution Policy (INDRP)

35 2001 PTC 432

36 Cases No D2000-0014 and 2000-0015, WIPO
37 2004 (6) SCC 145
38 Case No. D2009-0405
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This document explains what types of disputes can be brought, and the criteria that will be considered
by the arbitrators.
2. The INDRP Rules of Procedure: These Rules describe how to file a complaint, how to respond
to a complaint, the fees, communications, and the other procedures that will be used.
In Rediff.com India Limited v. Abhishek Verma, the respondent had registered the trademark
rediff.in. The complainant contended that the domain name was identical or confusingly similar to its
trademark
rediff
and
controlled
domain
names
rediff.com, rediff.co.in and
rediffindia.com. The expert found that the respondent, had registered domain name before the
Complainant, for selling, renting or otherwise transferring the same for monetary gains over and above
documented registration expenses. Thus, labeling this case as that of cybersquatting, it was held that
the domain name be transferred to the complainant. This case is an example of how the cybersquatting
cases relating to .in domain names are decided under the INDRP.
Suggestions for Reforms in the Indian Law Regarding Cybersquatting
The disputes between trademarks and domain names present unusual features that are currently
stretching the capacity of Indian judiciary to its limits. In certain cases, the global dimensions of
domain name disputes have made it difficult for Indian courts to come up with comprehensive
solutions to combat the cybersquatting menace.
Some of the suggest reforms in the India law to tackle the problem of cybersquatting are:
Need for a new legislation in India in lines with ACPA and UDRP
There is no legislation in India which explicitly refers to dispute resolution in connection with domain
names. The existing laws concerning trademark infringement do not adequately protect
trademark holders against cybersquatters. The Indian courts have been relying on the Trade Marks Act,
1999 (before 1999 on Trade and Merchandise Marks Act, 1958) and the Information Technology Act,
2000 to deal with the growing problem of cybersquatting. But, both these legislations fall short in
providing an effective protection to domain names in India.
The trademarks law is not amply outfitted to deal with the whole range of disputes constantly
emerging with respect to the misuse and abuse of domain names by cybersquatters. Resorting to
trademark law is a time-consuming method and is not very feasible in a market as innovative as the
Internet.39
The Information Technology Act, 2000 regulates to a large extent cyber crimes and electronic
signatures, but it does not cover all aspects of information technology and it leaves an important area Intellectual Property Rights (IPRs), specifically in respect of Internet-related activities. The Act also
39 Adam Silberlight, www.how to be a master of your domain.com: A Look at the Assignment of
Internet Domain Names under Federal Trademark Laws, Federal Case Law and Beyond, 10
Albany Law Journal of Science & Technology 278 (2000).
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does not contain any provisions with regard to cybersquatting, which is growing in prevalence by the
day as has been discussed in the aforementioned cases.
In many situations, the Indian courts have to seek guidance from English and American laws and
decisions, which really makes it pertinent to make a new legislation of its own, just like ACPA in the
US which has resulted in significantly controlling cybersquatting there. It has become important for
India to legislate a law like ACPA of US, and which necessarily conforms to the international
standards laid down in the UDRP.
Setting up of an independent adjudicatory body dealing with domain name disputes in India
There is a need for setting up an independent adjudicatory authority that shall be able to decide cases
relating to domain name disputes, especially cybersquatting in India. The setting up such bodies has
proved effective in many countries like US (National Arbitration Forum) and Czech Republic (Czech
Arbitration Court).
Setting up such an independent judicial body to tackle the domain name disputes, especially
cybersquatting, shall prove less time consuming, more expedient and more effective, as the parties will
not have to wait to get onto a docket, then for a trial, then for an outcome.
Making INDRP more effective
The INDRP which deals with .in domain name disputes needs to be further strengthened and given the
effect of a law. The policy, since not being in the shape of a law, is not mandatory to be followed. The
inconsistency between the INDRP and the UDRP needs to be removed The UDRP and the INDRP
differ on the domain names in many places. Thus to make INDRP more effective, it has to be made
more compliant to the UDRP, and be given the shape of a law.
Conclusion
The problem of cybersquatting is escalating globally and even in India. Trademark and service mark
owners need to be able to protect their marks as domain names from others who register and use the
mark in bad faith. As a preliminary matter, the owner must first discover that its mark is being used in
an Internet address. An inexpensive way to do this is simply to use a search engine to discover web
pages using the mark. Making detection even easier, one domain name registrar offers a service that
will report cybersquatting or any trademark being used in hidden or overt ways.
After analyzing various approaches relating to cybersquatting, it is clear that two methods have
developed in the form of dispute resolution by the regulatory authorities and the formal legal or
court procedure. The majority of authorities has either implemented the UDRP or has implemented
one closely modeled on it. This is indeed a very effective method of curbing cybersquatting, though it
requires changes with time. And then observing at how the courts have reacted, it is clear that the
picture is altogether different. While some countries have implemented cybersquatting specific
legislation, others have reacted rather indolently by simply applying trademark laws inappropriately.
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Finally, in the light of still increasing rate of cybersquatting in India and other countries, it is important
to make a concerted effort by registrars to address and curb it at the registration level itself. This is
indeed going to be proving beneficial in controlling cybersquatting, just like in real world the squatters
have finally given up their practice with stringent property laws in force.
We can conclude that we have a void on legal provisions for regulating cyber squatting in India and
the courts have highlighted this fact in its judgment in Satyam Infoway Ltd v. Sifynet Solutions (P)
Ltd40. Further, protection for cyber squatting under the Trade Marks Act is inadequate for two reasons:

It is an indirect protection by bringing a relatively inclined cyber aspect into intellectual property
regime.

The extent of The Trade Marks Act is not extra territorial in nature and hence the very nature of
cyberspace in not accommodated in this protection.

Current dispute redressal mechanism by international not profit bodies like ICANN known as UDRP
(Uniform Domain-Name Dispute-Resolution Policy) in collaboration with WIPO using arbitration
techniques are unfruitful as the decision of arbitration does not bear finality. Hence any party in the
midst of the proceedings can resort to judicial proceedings in his/her own country.
Indian counterpart NIXI (National Internet Exchange of India) has also incorporated UDRP
mechanism for .in domain names known as .INUDRP but again it as the arbitration does not bear
finality we need sanctions under the IT Act itself.
The extra territorial aspect is also used to criticise the American Act on cyber squatting as it requires
commerce or business activity on the US soil which implies that unless and until I do business on the
US soil I cannot have a remedy under the ACPA Act even if someone has a domain name similar to
mine but operated in the United States.41
The major difference between a conventional and cyber crime is the fact that in cyberspace the extent
and scope is much greater than in orthodox offences. Defining law regulating cyberspace is not a bed
of roses. Ten years back we did not have many gadgets that exist today; ten years down the road we
cannot possibly imagine what takes over cyberspace; therefore we need not be over critical of the
laws; but absence of law as is my hypothesis for the project must not be excused as we must try and
strive in our own way at least to regulate the Information Technology sector. With this we can
conclusively agree that cybersquatting is not protected effectively under Indian scenario and hence the
hypothesis stands proved.
Therefore there is an urgent need for all the nations to come together and indulge in fruitful discussion
over formulating an effective law on cyber squatting which would take care of the jurisdictional issues
40 AIR 2004 SC 3540
41 Maruti.com v Maruti Udyog Ltd, (U.S Dist Ct No L- 03-1478)
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involved in cyberspace as well. Also, the nature of cyberspace and cyber infringements is such that we
must strive for a model law as we have in intellectual property rights by virtue of Trade Related
Intellectual Property Rights Agreement; this is the only way to effectively tackle cyber menaces
otherwise cyberspace involves many jurisdictional aspects that further encroaches upon the
sovereignty of the judicial process of the country. Hence an international agreement is sine qua non to
have an ideal and effective law on cyber squatting.
Bibliography
Statutes:
1. The Information Technology Act, 2000
2. The Trade Marks Act, 1999
3. Indian Copyright Act, 1957
4. Anti Cybersquatting Consumer Protection Act of USA, 1999
5. Indian Dispute Resolution Policy,2005 (INDRP)
6. Indian Dispute Resolution Policy, Rules of Procedure, 2005
7. Uniform Dispute Resolution Policy,1999 (UDRP)
Articles:
1. John D. Mercer, "Cybersquatting: Blackmail on the Information Superhighway", 6 Boston
University Journal of Science and Technology Law 11 (2000).
2. Leah Phillips Falzone, Playing the Hollywood Name Game in Cyber Court: The Battle Over
Domain Names in the Age of Celebrity-Squatting, 21 Loyola of Los Angeles Entertainment Law
Review 289, 304 (2001).
3. Stacy B. Sterling, New Age Bandits in Cyberspace: Domain Names Held Hostage on the Internet,
17 Loyola of Los Angeles Entertainment L. Rev. 733 (1997).
4. Michael Xun Liu, Jurisdictional Limits of in rem Proceedings Against Domain Names, 20
Michigan Telecommunications and Technology Law Review, 2 (2014)
5. Slahudeen Ahmed, Cybersquatting: Pits and Stops, 1 Indian Law Institute Law Review, 79,
(2010)
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6. Thelka Hansen-Young, Whose Name is it, Anyway? Protecting Tribal Names from
Cybersquatters 10 Virginia Journal of Law & Technology, 6 (2005)

Books:
1. Nandan Kamath, Law Relating to Computers, Internet and E-Commerce A Guide to Cyberlaws,
(Universal Law Publishing Co., Delhi, 4th edn., 2009).
2. Chris Reed, Making Laws for Cyberspace, (Oxford University Press, 2012).
3. Pavan Duggal, Cyber Law- The Indian Perspective, (Saakshar Law Publications, 2002).
Cases:
1. Bennett Coleman & Co Ltd. v. Steven S Lalwani, Cases No D2000-0014 and 2000-0015, WIPO
2. Intermatic v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996)
3. Manish Vij v. Indra Chugh, AIR 2002 Del 243

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