Cybersquatting

Cybersquatting is the act of registering a domain name that is same as, or confusingly similar to, the
trademark of another with the intention of selling (at a profit) the domain name to the trademark
owner.

One of the earlier cases pertaining to cybersquatting was Card Service International Inc. v. McGee 1.
Therein the American Court held that the domain name serves the same function as a trademark
and is not merely to be construed as an address, as it identifies an Internet site to those who reach
it, much like a persons name identifies a particular person.

In Marks & Spencer v. One-in-a Million 2, the UK Court observed that when a person deliberately
registers a domain name on account of its similarity to the name, brand name or trademark of an
unconnected commercial organization, he must expect to find himself at the receiving end of an
injunction to restrain the threat of passing-off.

Further, in Jews for Jesus v. Brodsky,3 the US Court held that merely placing a disclaimer, in the
Website would not be an adequate remedy against the appropriation of plaintiff’s trademark by the
defendant.

Indian Perspective on Cybersquatting

In India, since there exists no direct law to wrestle the threat of cybersquatting; hence courts have
largely used the principle of passing-off. This approach is significant in the sense that such an
approach seems necessary in a country where trademark application take years to process Indian
businesses had to face such threat before WIPO also in a large no. of cases as Complainant. In most
cases, Indian firms and corporations have successfully defended their trademark. The domain name
involved in such cases include, Mahindra.com, Tridenthotels.com, Theeconomictimes.com,
Timesofindia.com, Tata.org.

Indian judiciary too adopted the approach adopted in Brodsky and other foreign judgements in Tata
Sons Ltd v. Kirti Sharma4. One of the most significant cases in the Indian context of cybersquatting
remains Yahoo! Inc. v. Akash Arora & Anr.5 , wherein Court held that trademark law applies with
equal force on the Internet as it does in the physical world.

The Indian Courts has followed this decision in several other subsequent cases such as tanishq.com
case6, Rediff Communication Ltd. v. Cyberbooth & Anr.7 , wherein the Bombay High Court has upheld
the value and importance of a domain name as an corporate asset.

However, incases where domain names involves a descriptive term such as mutualfundsindia.com,
Courts, has refused to grant an injunction holding that in absence of secondary meaning, the term

1
Card Service International Inc. v. McGee,
2
Marks & Spencer v. One-in-a Million
3
Jews for Jesus v. Brodsky
4
Tata Sons Ltd v. Kirti Sharma
5
Yahoo! Inc. v. Akash Arora & Anr.
6

7
Rediff Communication Ltd. v. Cyberbooth & Anr
MUTUALFUNDSINDIA is descriptive and the plaintiff cannot be said to have any trademark rights
over it8.

Similar decisions were arrived at by the Panel in Julia Fiona Roberts v. Russell Boyd and Mick
Jagger v. Denny Hammerton. Further, the Panel has consistently ignored the suffix (.com, .org etc)
and resorted to apply the test whether an Internet user would consider that the domain name
suggested a connection with the trade mark proprietor, while ascertaining the requirement of ‘identical
or confusingly similar’ requirement in clause 4(a) (i). Thus intentionally misspelling the trade mark will
still result in a finding of confusing similarity . Same will be the result in most cases where a prefix or
suffix is added to the trade mark.

In the case of American Civil Liberties Union v. Reno 9, Judge Mokenna has explained the Internet
address system, as follows; each host computer providing Internet services (site) has a unique
Internet address. Users seeking to exchange digital information with a particular internet host
require the host’s address in order to establish a connection. Hosts actually posses two fungible
addresses a numeric IP address and alphanumeric Domain name, with greater mnemonic potential

Case laws regarding trademarks dispute over Internet Domain Names

1. Princeton Review v. Kaplan

Princeton Review, Inc. ("Princeton Review"), a test preparation service, obtained the domain name
"kaplan.com," which contains the trademark of its commercial rival, Stanley H. Kaplan Educational
Centers, Ltd. ("Kaplan"). In what is believed to be the first ruling on this issue, a mutually agreed
three person arbitration panel recently required Princeton Review to relinquish the "kaplan.com"
domain name to Kaplan.

The first key fact is that the panel had to assume that Internet addresses can in fact act as
trademarks. This is not surprising given the true nature of Internet addresses. Although the name
"addresses" conjures up the post office addresses of real-world places, this is only part of the
purpose of Internet addresses.

As summarized in the colorful prose of the McDonald's pirate himself: "Domain names are to the
Internet what addresses are to the Postal Service. They're more than that, really, since your domain
name can tell the on-line world something about who you are. Domain names are kind of like postal
addresses, vanity license plates and billboards, all rolled into one digital enchilada.”

The second key fact about the "kaplan.com" case confirms the ability of domain names to serve as
trademarks. To quote the McDonald's pirate again: "If you logged into kaplan.com, you could read a
Q&A comparing the programs offered by [Princeton Review and Kaplan]. Which one do you think
came out looking better?" Internet users, unaware that Princeton Review was the real owner of this

9
address, would no doubt think that Kaplan was the owner of this address and the source of the
information located there.

In short, Princeton Review's registration of the domain name "kaplan.com" very likely not only
produced confusion among Internet users over the source of the information located at this address,
but real damage to Kaplan's goodwill.

The third important fact is that the President of the Princeton Review, John Katzman, admitted they
had registered the domain name "kaplan.com" "in part just to irritate [Kaplan] . . . Clearly, we've
done that." This equity "unclean hands" aspect of the "kaplan.com" case may be applicable to many
other "domain grabbing" cases likely to arise from the current gold rush. Assuming that this factor
played a role in the panel's decision, they most likely followed traditional trademark law regarding
bad intent. Under traditional trademark law, intent to adopt a mark to derive a benefit from the
reputation of another is one of several factors in evaluating whether the infringing use is likely to
cause confusion in the market.

2. MTV Networks v. Curry

In this case, a former MTV video jockey, Adam Curry, registered the Internet domain name
"mtv.com" while working for MTV Networks ("MTVN"). Internet users connected to the "mtv.com"
address could find the posting of "MTV's Top Ten Music List,” along with other services. Promptly
after Curry's departure from MTV Networks, MTV Networks sued him for trademark infringement, as
he refused to stop using the "mtv.com" Internet address. two significant points may be gleaned from
the court's initial decision.

 The first is that Curry never argued that the Internet was exempt from trademark law.
Instead, Curry argued that the domain name "mtv.com" was not going to be used in a
confusing manner. The issue, claimed Curry, was whether MTV Networks has "'some
inherent right in mtv.com.'"
 The second important point is the clue provided by the court about how it might rule on the
key issue succinctly stated by Curry. In a footnote, the court explains Internet domain names
and analogizes them to "telephone number mnemonics." The analogy is apt because, as
noted above, the Internet domain names are in fact mnemonics for the true, but unwieldy,
initial section of a numerical address.

Although the MTV Networks v. Curry court did not address the scope of trademark protection for
Internet domain names, its telephone number mnemonics analogy suggests a fruitful line of analysis.

3. Wired v. WIRE
The last case that has arisen recently regarding claims of trademark infringement based on an
Internet domain name found the cutting-edge cyberspace magazine entitled Wired complaining
about the domain name used by WIRE, a computer network devoted to women's issues. Wired used
"wired.com" as its domain name; WIRE used "wire.net." Rather than litigating the issues, WIRE
decided that as a start-up company it could not afford legal wrangling and had to focus on its
business instead. The parties settled with WIRE agreeing to change its name to Women's Wire and
its domain name to "wwire.net." In return, Wired agreed to pay half the cost of the name change
expenses, such as redoing on-line graphics and identity materials.

Although the Wired case never even advanced as far as a cease-and-desist letter, it does illustrate
two interesting issues. The first is that Wired demanded that WIRE change not only its Internet
domain name, but its business name too. Given the fairly close similarity between "wire" and
"wired," requiring WIRE to also change its business name to WOMEN'S WIRE helps to minimize - in
the context in which these Internet addresses are used - any likelihood of confusion. The second
interesting issue is that domain names, for purely technical reasons, preclude parties from
distinguishing themselves by capitalization, stylized formats, or designs. Companies often use
capitalization of letters in their marks as part of the mark itself. WIRE obviously sought to do this, but
was technically precluded from including this additional information in its domain name. For the
same reason, special stylized formats and designs are also excluded from domain names. As a result,
companies will find it even more difficult to keep their domain name distinguishable from other
domain names because there are fewer ways to make domain names distinctive.
whether Internet Domain Names are recognizable as other Intellectual Properties such as
Trademarks

In this connection, the following judgment of the Honorable Supreme Courts of India is
worth mentioning, which was extended in the case of Satyam Infoway Ltd. Vs Sifynet
Solutions Pvt. Ltd. [Where the matter for consideration before this Apex Court of India was
whether Internet Domain Names are recognizable as other Intellectual Properties such as
Trademarks]: --- "The original role of a domain name was no doubt to provide an address
for computers on the internet. But the internet has developed from a mere means of
communication to a mode of carrying on commercial activity. With the increase of
commercial activity on the internet, a domain name is also used as a business identifier.
Therefore, the domain name not only serves as an address for internet communication but
also identifies the specific internet site, and distinguishes specific businesses or services of
different companies. Consequently a domain name as an address must, of necessity, be
peculiar and unique and where a domain name is used in connection with a business, the
value of maintaining an exclusive identity becomes critical. "As more and more commercial
enterprises trade or advertise their presence on the web, domain names have become more
and more valuable and the potential for dispute is high."

DOMAIN NAME : TO SATISFY CONDITIONS OF TRADE MARK FOR PROTECTION

It is pertinent to note that any unique internet domain name (capable of identifying and
distinguishing goods or services of a company from that of other companies), can also act as
a reliable source identifier for the concerned goods or services on the internet. And thus, may
be registered and thus protected as trademark, but this is subject to the condition that it
satisfies all other rules and requirements for registration which are commonly applicable to
the trademarks and service marks. Also, for proper registration of a domain name as a
trademark or service mark, this must be unambiguously unique from all other domains names
and well-known trademarks on the internet, so that it does not mislead, confuse, or deceive
customers of other companies engaged in the same or different fields, or violate public order
or morality. Such cases may give rise to instances of trademark infringement litigation.