Cybersquatting

With the advancement of technology, today almost all business entities have an online presence. Widespread presence has helped businesses in getting well-deserved access to customers, vendors etc. but it has also made businesses prone to possible IP threats like “cybersquatting”. Cybersquatting takes place when someone buys a domain name which belongs to an existing business entity with the intention of selling it to the same businesses at a higher price for profit. In this article, we look into different types of cybersquatting along with the laws pertaining to the same.

There are various types of cybersquatting such as typosquatting, identity theft, name jacking and reverse cybersquatting. We have briefly explained some of these below:

1. Typosquatting: In Typosquatting, domains are bought with typological errors in the names of well-known brands. Examples of such misspelt domains are yajoo.com, facebok.com etc. The intention behind this act is to divert the target audience whenever they misspell a domain name.

2. Identity theft: In cases pertaining to identity theft, the website of an already existing brand is copied with the intention of confusing the target consumer.

3. Name Jacking: Name jacking involves impersonating a well-known name/ celebrity in cyberspace. Instances of name jacking would include creating fake websites/ social media accounts with a celebrity’s name.

4. Reverse Cybersquatting: Reverse cybersquatting means an event whereby a person/s falsely claims a trademark as their own and falsely accuses the domain owner of cybersquatting. In essence, this act is the opposite of cybersquatting.

In India, there are no specific laws that condemns, prohibits or penalizes the act of cybersquatting. However, domain names are considered as trademarks under the Trademark Act, 1999. Hence, any person who starts using an identical/similar domain name will be held liable for trademark infringement as described under Section 29 of the Trademark Act, 1999.

The United States has enacted the Anti Cybersquatting Consumer Protection Act (ACPA). The ACPA gives the owner of a registered trademark the right to file suit for alleged cybersquatting in the federal court which ultimately results in the domain name being transferred in the name of the registered owner. 

Additionally, the ICANN (Internet Corporation on Assigned Names and Numbers) in the year of 1999 adopted UDNDRP (Uniform Domain Name Dispute Resolution Policy) which prescribes certain terms and conditions in order to deal with domain name disputes through arbitration and not litigation procedures. It is however interesting to note that the remedies that are available under the UDNDRP are only limited to cancellation or transfer of the alleged disputed domain name and do not provide any monetary compensation. In India, the designated authority is INDRP (.IN Domain Name Dispute Resolution Policy). The terms and conditions set forth by the INDRP apply to any or all disputes in connection with domains registered with .in or Bharat (available in all Indian languages). 

It is pertinent to mention here that the UDNDRP has observed a significant surge in cybersquatting cases. According to the reports published by the WIPO, the registration of domain name related disputes has seen a significant rise of 7 per cent from the year 2022 to 2023.

Yahoo Vs. Akash Arora is one of the first cases with respect to domain name disputes in India, whereby the defendant had bought a domain name “YahooIndia.com." The plaintiff argued that the defendant had bought the domain name with bad faith in order to provide similar services to that of the plaintiff. The court concluded that the names are similar and there is a clear case of consumer confusion. The defendant was thus restrained from using the said domain.

In a more recent case, M/s Kalyan Jewellers India Ltd vs Antony Adams & Ors., the plaintiff approached the WIPO (World Intellectual Property Organization) for arbitration proceedings against the defendant for the usage of the domain name “kalyanjewlers.com." However, the WIPO advised the plaintiff to approach the appropriate forum/s to establish bad faith. Following this, a case was filed by the plaintiff in the Madras High Court, where trademark infringement was established, and the defendant was restrained from using the mark “Kalyan” or “Kalyan Jewelers”.

Similarly, another case of this nature is Bundl Technologies Private Limited vs Aanit Awattam alias Aanit Gupta & Ors wherein the plaintiff had filed a case against the defendant for alleged infringement of their trademark Swiggy. The Bombay High Court directed Godaddy LLC (one of the defendants in the said matter) to not register any domain with the word SWIGGY. Aggrieved by the judgement, Godaddy filed an application to partly recall the judgement where they are restrained from registering a domain name with the word “SWIGGY.” Pursuant to the said application, The Bombay High Court modified the judgement, stating that whenever any domain with the word “SWIGGY” will be registered, Godaddy has to inform the plaintiff about it.  

In one of the WIPO cases, “Canva” the famous online design and publishing tool filed a case of cybersquatting with the WIPO for the recovery of 174 infringing domain names and successfully got all the domains transferred to its own name.

In another instance, popular Hollywood singer-actress Jenifer Lopez, filed a complaint with the WIPO (The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC) for domain name dispute for the domain name “<jenniferlopez.net> and <jenniferlopez.org>. Pursuant to her complaint, the said domain names were transferred in the name of Miss Lopez.

From the above cases, it can be noted that well-known brands are usually the target of such activities. The reason behind this can be two-fold: firstly, these businesses already have a large goodwill and reputation to bank on. Hence, it becomes easy for anyone to take advantage of that goodwill by securing a similar domain name. Secondly, it also becomes easy to make money by misleading the target audience by posing to be someone else on the web. While tackling such acts is possible for brands present in the country, for famous brands yet to be launched in India, this kind of activity poses even bigger threats.

Some of the following acts can be considered while tackling such issues:  

1. Stringent laws for domain name providers: With a plethora of domain name providers, it has become difficult to keep track of all the domain names that are being issued. Certain guidelines shall be issued which should be mandatory before issuing any domain name.

2. Trademark Registration on Domain Names: Since Indian trademark law recognizes domain names as part of trademarks, businesses without fail should be encouraged to register their domains as trademarks as well.

3. Awareness regarding UNDRP: Since UNDRP provides cost-effective methods of dealing with cybersquatting and ancillary issues, more emphasis can be put on spreading awareness regarding such procedures.

4. Sui Generis Laws Regarding Cybersquatting: Acts of cybersquatting not only affects business owners but also consumers as it ultimately results in the misleading of the public in general. Therefore, it has become very important to make specific laws with regard to cybersquatting along with the consequences. 

About the authors: Neeraj Vyas is a Partner and Shilpa Chaudhary is a Senior Associate at Saga Legal.