What constitutes trademark infringement in cyberspace?

By- Rupali Kumari

A trademark is a distinguishing sign that identifies certain goods or services as those

produced or provided by an individual or business, distinguishing them from similar goods or
services produced by others. Consumers can identify and purchase goods or services that bear
a specific trade mark that indicates the goods or services will meet a certain standard or
quality. It also refers to a person who has the right to use the property, either as the owner or
as a registered user to use the mark, with or without an indication of that person's identity. It
can also be defined as a registrable or registered mark under Part XI of the Trade Mark Act of
1976. If there is a likelihood of confusion, a registered trade mark will be infringed even
without the owner's authorization, and an identical or similar mark is used in the course of
trading in relation to goods or services of the same description. In the new millennium, the
use of cyberspace as a medium to advertise products is commonly used by individuals or
businesses via websites, with their trade mark serving as the domain name. It is very common
for an internet user to be misled about the website maintained by a third party of the domain
name that included a well-known trademark.

Like trademarks, some alphanumeric characters are assigned to have a distinct market in
cyberspace. It is also attempted to analyse the relationship of Internet Domain Names with
trademarks and how domain name disputes affect it in this paper. The primary goal of this
paper is to examine the issue of cybersquatting and other similar domain name disputes. The
research paper also discusses the legal position of trademarks in cyberspace under trademark
law. Because trademark laws are territorial in nature, the paper also discusses the inadequacy
of laws for dealing with this issue. The paper concludes by providing some suggestions as to
how Indian Trademark Laws can make the working of UDRP better by working on its own
laws.
Trademark law in cyberspace

The history of trademark law in cyberspace can be traced back to the creation of the World
Wide Web (www), which undoubtedly created a link between trademark law and Internet
domain name disputes. And it has sparked interest among users as the commercialization of
the Internet medium. Thousands of businesses have set up online storefronts to distribute
marketing materials, provide customer service, and sell goods and services. Not surprisingly,
there is a growing relationship between trademark law and domain names as a result of this
commercialization factor.1

The internet is a profitable platform for trademark owners, but it can also be problematic in
terms of business growth in some cases. These trademark owners frequently have to deal with
third-party domain name disputes, such as cyber squatting, but because India does not have a
Domain Name Protection Law, cases involving cyber squatting are decided under the Trade
Mark Act, 1999.

Under the current law, Section 292 provides for the protection of registered trademarks in
addition to registered trademark protection is given under section 32. 3
However, the act is
silent on trademark infringement protection in cyberspace. The majority of domain name
disputes appear to involve trademarks, as it is claimed that the dispute arises from the
registration or use of a domain name that infringes any legally recognised right, such as a
trademark right, a common law right in passing off, or any other right.

Because trademark laws are territorial in nature, but the internet is a global domain, disputes
involving bad faith registrations are typically resolved using the UDRP (Uniform Domain
Name Dispute Resolution Policy) process developed by the Internet Corporation for
Assigned Names and Numbers (ICANN). WIPO is the leading ICANN accredited domain
name dispute resolution service provider under the UDRP, which was established as a tool
for promoting the global protection, dissemination, and use of intellectual property. 4 Because
the TRIPS agreement only specifies minimum standards, there is some similarity in domestic
IP laws; however, aside from these principles, there are few laws that are uniform, and as a

1
Murugendra B. Tubake; US and Indian Trade Marks Law: A Comparison; PL February S-1 Introduction
(2012).

2
Trademark Act, 1999, Intellectual Property Laws, Universal Law Publishing, (2015).
3
Ibid.
4
The Uniform Domain Name Dispute Resolution Policy and WIPO; © World Intellectual Property
Organization, (2011).
result, there are some advantages and disadvantages of a nation's IP laws over those of other
nations.5

Disputes relating to Trademark in Internet Domain Name

Domain names have a high economic value for online businesses, but they are vulnerable in a
variety of ways that put them at risk.

a) "Cyber squatting6, which is the registration of a domain name by someone who lacks a
legitimate claim with the intent to

(i)sell the name,

(ii) prevent the trademark holder from gaining access to the name,

or (iii) divert traffic who occupy a name in the hope that a trademark owner will make an
offer for it" 7

For example, in the case of 'Green Products Co. v Independence Corn By-Products
Co.'8(ICBP), both companies were competitors in the corncob by-product market. The
domain name was obtained by ICBP, but has yet to launch a website. The court determined
that ICBP's intention was to use its confusing domain name to attract potential customers to
the site once it was created and that it wanted to benefit unfairly from the use of Green
Product's name. The court also stated that while consumers may not be confused once they
arrive at the site, they may only purchase the product from the ICBP's site. Based on these
findings, the court ruled that it was an infringement.

b) Reverse Domain Name Hijacking occurs when individuals register confusingly similar
versions of domain names, directing them to gripe sites that contain other propaganda.9 ;

c) Typo-Squatting; done by people who register domain names incorporating variations of

well-known trademark terms, such as misspellings 10 (micr0soft.com) or the addition of

5
Supra note 1.

6
Sourabh Ghosh; Domain Name Disputes and Evaluation of The ICANN’s Uniform Domain Name Dispute
Resolution Policy, Journal of Intellectual Property Rights, Volume 9 (2004).
7
Mohammad S. Al Ramahi; Internet domain names & Trademark Law: Does the current legal scheme provide
an adequate protection to domain names under the US & the UK jurisdictions? (2006).
8
No. C-97-177-MJM
9
Chiramel; THE DOMAIN NAME CHAOS- A LEGAL PERSPECTIVE (2011). Also available at:
http://www.vaishlaw.com/article/information_technology_laws/the_domain_name_chaos.pdf?articleid=100324
10
Supra note 7.
prefixes or suffixes to the existing domain name (yahooindia.com), and use them for websites
to exploit unwary Internet users.

Yahoo Inc. Corporation v Akash Arora 11 is the first case in which the Indian Court addressed
issues concerning Internet-based services. In this case, the plaintiff claimed that they
registered the domain name yahoo.com with Network Solutions Inc. and had registrations in
more than 69 countries. The defendant argued that he had provided a disclaimer on his
website, which avoided the confusion, and that yahoo is a dictionary word and thus could not
be protected, but the High Court of Delhi ruled that the marks were similar and that a
disclaimer would not help because people would still associate it with the original yahoo,
administratively or economically. Furthermore, the word yahoo was protected because it was
a well-known brand.

The main issue in this dispute is Cyber Twins12 which occurs when both the domain name
holder and the challenger have a legitimate claim to a domain name and are referred to as
cyber twins.13 Cases involving cyber twins are the most difficult to resolve because trademark
and unfair competition law may otherwise permit both parties to enjoy concurrent use of
both. These types of disputes also occur at two levels: first, when the same mark is owned
and used by different people in relation to different goods or services specialty. Second,
'territoriality' occurs when the same mark is owned and used by different people in different
countries in relation to the same goods or services.14

In Data Concepts, Inc. v. Digital Consulting Inc. 15, both entities had a legitimate claim to the
domain name (dci.com) because they both had DCI trademark rights. Data Concepts, on the
other hand, registered the trademark dci.com in 1993. It would appear that in cases where
both entities have claims, the entity that registers first would win, but the Sixth Circuit ruled
that there was still a possibility of infringement. Because trademark infringement is a
question of fact as well as law, the case must go to trial to determine infringement. In this
case, the matter was dismissed due to a lack of evidence and the fact that Digital had no
knowledge of Data's prior existence.16
11
78 (1999) DLT 285.
12
Supra note 6.
13
Ibid.
14
Supra note 7.
15
150 F.3d 620, 625 (6th Cir.1998).
16
Ibid.
Relation of Disputes Resolving Between URDP and The Courts

A complainant must establish the following three elements in order to succeed under the
UDRP:

(i)"That the domain name is identical or confusingly similar to the complainant's trademark
or service mark;

(ii) That the registrant has no rights or legitimate interests in the domain name; and

(iii) That the registrant registered and used the name in bad faith."17

The UDRP process is carried out online, with a single electronic and hard copy document
submission of facts and legal arguments, making the process simple and easily accessible.
Service of process can be accomplished via email to the registrar's address. 18 The UDRP
process is carried out online, with a single electronic and hard copy document submission of
facts and legal arguments, making the process simple and easily accessible. Service of
process can be accomplished via email to the registrar's address. Panellists make decisions
based solely on the evidence presented to them, so they must regard it as reliable when there
is a lack of documentary evidence, even in cases of legitimate interest. So, it is not required
that the same or correct conclusion be reached in this type of Resolution Policy, as the
decision in UDRP or courts would differ depending on where better evidence is presented.19

As also seen, in the case of Referee Enterprises Inc. v Planet Ref. Inc20, Where the dispute
was between a magazine publisher and another publisher on the internet, the plaintiff initiated
the UDRP proceedings on the basis of his ownership of the term referee as his magazine title,
challenging his rival's mark "ereferee" on domain name, the panel dismissed the complaint on
the grounds that the plaintiff's word is generic in nature. The publisher then filed a case
against the inferior, accusing him of violating federal trademark law. In response, the court
granted a preliminary injunction that was broad enough to prohibit the defendant from using
all domain names containing the word in dispute. The court did not take notice of the UDRP
proceedings and did not mention them. Furthermore, in a case where the applicant filed a
subsequent suit in court after being defeated in the UDRP proceedings, the trademark owner
moved to dismiss the action on the grounds that it lacked sufficient grounds to vacate the

17
World Intellectual Property Organization (August) 2011
18
Levy, J., “Precedent and other problems with ICANN’s UDRP Process”, April 2001 Domain Name Law
Reports (2001).
19
Penguin Books Limited v The Katz family and Anthony Katz, WIPO D 2000 – 0204 (2000).
20
No. 00-C-1391 (E.D. Wis. Jan. 24, 2001)
UDRP arbitral award; the court denied this argument, stating that the Federal Arbitration Act
does not apply to UDRP proceedings. 21

One of many examples of failure of the mechanism is the case Maruti.com et al. v. Maruti
Udyog Ltd. et al22 , where Maruti Udyog, an Indian Company which has its reputation with
its name in India had also registered its domain name in the United States with
marutiudyog.com. the respondent got the domain name as "maruti.com". When the plaintiff
filed a complaint with the WIPO panel, the decision was in Udyog's favour. In addition, the
WIPO panel had stamped the respondent as a cyber squatter three times in WIPO arbitration
cases filed by Onida, Hero Honda, and Maruti. However, when the case was brought before
the US courts, the WIPO panel decisions were deemed non-binding. Even the Anti-
Cybersquatting Consumer Protection Act of the United States was said not to apply. The
court ruled that because Maruti did not manufacture or sell its vehicles in the United States, it
was not entitled to trademark protection under the Lanham Act of 1946.23

Position In India

Another issue that needs to be addressed is ‘Are the trademark law in the country adequate to
resolve the matter?’ According to the court in the case of Satyam Infoway Ltd v. Sifynet
Solutions (P) Ltd24case 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 to be legally protected to the extent
possible under the laws relating to passing off.”25

In India, since, there exists no direct law to wrestle the threat of such disputes; hence courts
have largely used the principle of passing-off. 26It is interesting to note that despite the fact
that the national court framework is not bound by the decision of WIPO Arbitration Panel,
they still have made various findings and judicial decisions based on the ICANN’s UDRP

21
Shreya Chaddha; IP Valuation and Management Project On "A Critical analysis of domain names dispute
resolution policy, with special emphasis on Uniform domain name resolution policy"
22
U.S. Dist. Ct. No. L- 03-1478.
23
Supra note 9.
24
AIR 2004 SC 3540.
25
Ibid
26
Rediff Communication Limited v Cyberbooth (1999 (4) BomCR 278).
Policy which shows that the courts find the policies and decisions of the UDRP to be of
sound authority on the matter in hand. national courts can easily shift domain name cases
towards ICANN’s UDRP mechanism which is an efficient alternate dispute resolution remedy
easing the over burdened domestic court system of a country.

Conclusion

There is no doubt that the UDRP has proven to be the most simplified and cost-effective way
of resolving domain name disputes in an era of online world, but much work remains to be
done to improve its working at the territorial level. Many other countries have attempted to
fill the legal void by enacting separate legislation to address the issue, such as the United
States, which enacted the Trademark Cyber Piracy Prevention Act in 1999. Similarly, India
requires a law on the subject because enacting a law does not provide a complete solution to
the problem at hand. Under Indian trade mark law, there should be a provision for an easier
and supplemental method of registering for each State, so that the owner who only wants a
territorial registration does not have to be tortured with 'n' number of procedural formalities,
thereby saving a lot of time. The period of non-use of a trade mark for five years as a ground
for revocation should be reduced to three years under Indian law so that one does not take
advantage of getting a name registered to prevent another squatter from using the same
because they are aware of how time-consuming and lengthy the litigation process. Another
suggestion is that cyber crimes, particularly cyber squatting, be regulated not only under trade
mark law but also under information and technology law in order to protect the rights of
legitimate claimants at both the territorial and extra-territorial levels.