Cybersquatting And Trademark Issues: An Analysis With Reference To India
Contributor: Akshay Agarwal
Cybersquatting is a malicious practice in which individuals or entities register domain names that are confusingly similar to well-known trademarks with the intent to profit from the goodwill associated with those trademarks. This practice has gained prominence with the growth of the internet and e-commerce. Cybersquatting poses a significant threat to brand owners, and it has become a global issue. This article explores the concept of cybersquatting, its implications, and the legal framework in India for addressing cybersquatting and trademark issues.
Cybersquatting involves the registration of domain names that infringe upon the trademarks of legitimate brand owners. The cyber squatter’s primary motive is to profit from the confusion created by the domain name’s similarity to a well-known trademark. Cyber squatters often use these domains for activities such as:
1. Diverting web traffic to their own websites or those of competitors.
2. Selling the domain name back to the legitimate trademark owner at an inflated price.
3. Hosting pay-per-click advertising on the website, generating revenue from the trademark owner’s brand.1
Legal Framework in India
In India, the legal framework to combat cybersquatting and protect trademark rights is primarily governed by the Trademarks Act, 1999, and the Information Technology Act, 2000. Here are some key legal provisions and mechanisms for addressing cybersquatting and trademark issues in India:
1. Section 29: Infringement of Trademarks: It provides a legal basis for trademark owners to combat cybersquatting. It defines various situations where the use of a trademark is considered infringement. If a cybersquatter’s domain name infringes upon a registered trademark, the trademark owner can take legal action.2
2. Section 135: Burden of Proof: This section places the burden of proof on the defendant in trademark infringement cases. If a domain name is identical or deceptively similar to a registered trademark, the burden is on the cybersquatter to prove that there is no infringement.3
3. Section 66D: Punishment for Identity Theft: Cybersquatting can often involve impersonation or identity theft. Section 66D of the Information Technology Act criminalizes identity theft and provides for imprisonment and fines for those found guilty.4
Domain Name Dispute Resolution Policy (INDRP)
The .IN Domain Name Dispute Resolution Policy (INDRP) is an alternative dispute resolution mechanism specific to India. It provides a cost-effective and expedited procedure for resolving domain name disputes related to .IN domain names. Under INDRP, trademark owners can file complaints against cyber squatters to seek the transfer or cancellation of infringing domain names.5
The case of YouTube LLC v. Rohit Kohli 2007,6 in which the respondent registered the domain name “www.youtube.co.in,” was a notable one brought under the INDRP’s purview. The trademark in the domain name belongs to a corporation called “YouTube.” The Board found that the domain name was phonetically and conceptually similar to the complainant’s trademark and hence granted the domain name transfer to the trademark’s original owner.
In addition, a few clauses of the Information Technology Act of 2000 and the Indian Penal Code of 1860 may apply in the event of cybersquatting in India. The following are some such provisions:
- Forgery under Section 469 of the IPC: A person found forging with the intent to harm the reputation of any party, or knowing that the document forged will be for that purpose, shall be punished with imprisonment of either description for a term
that may extend to three years, as well as a fine. - Section 66 of the Information Technology Act of 1999: Under this provision, any person who commits any act referred to in section 43 dishonestly or fraudulently is punishable by imprisonment for a term up to three years, a fine up to five lakh rupees, or both.
- Section 66A of the Information Technology Act of 1999: This clause punishes anyone who uses a computer resource or communication device to convey “grossly offensive” or “menacing” material used
Implications and Case Law
To illustrate the application of the legal framework in India and the implications of cybersquatting, several case law examples can be examined:
In the Tata Sons Limited v. Manu Kohli 2001 IIIAD Delhi 545,7 the domain name <tatainfotech.com> was registered by the defendant, which was similar to the well-known trademark ‘TATA.’ The court held that the defendant was guilty of cybersquatting and ordered the transfer of the infringing domain name to Tata Sons Limited.
In the case of Yahoo! Inc. v Akash Arora and Anr 1999 IIAD Delhi 229,8 where the respondents were using the domain name “yahooindia.com,” which was identical to the plaintiff’s trademark “Yahoo,” one of the most significant verdicts on trademark passing off through domain names were handed down. The respondents, on the other hand, claimed that the services offered did not meet the definition of goods under the Indian Trademark Act. Yahoo, on the other hand, was granted an injunction since web services are regarded as goods worldwide.
Conclusion
Cybersquatting poses a significant threat to trademark owners and can result in substantial financial losses and damage to brand reputation. India has established a legal through the Trademarks Act, 1999, and the Information Technology Act, 2000, to address cybersquatting and protect trademark rights.
Trademark owners can use these legal provisions and mechanisms, such as the INDRP, to combat cybersquatting and seek the transfer or cancellation of infringing domain names. The burden of proof in trademark infringement cases is on the cyber squatter, making it challenging for them to justify their actions. In conclusion, India has established a robust legal framework to address cybersquatting, and trademark owners should be vigilant in protecting their brands and taking legal action against cyber squatters to safeguard their intellectual property and online presence. Combating cybersquatting is crucial not only for the protection of trademarks but also for maintaining consumer trust and a fair online marketplace. framework
