This Article is written by Arman Waseem Ahmad of Dr. Ram Manohar Lohiya National Law University, Lucknow
Introduction
The advent of the age of technology brought newer wonders with it. The biggest feat it accomplished was that it could connect people across the world. Slowly, this web grew in size, to the point where it took the form of an alternate reality. But with the growth of anything progressive, there always lies a point where certain individuals choose to exploit it. One such loophole of the internet is “Cybersquatting”. Cybersquatting isn’t a new term. The discussions surrounding it are rare and limited, but the term has been there right from the beginning of the internet.
Cybersquatting is the practice of acquiring a domain name that belongs to or is related to another entity and receiving profits from the latter’s goodwill and reputation. Certain cases might even involve the resale of the domain name back to the party at a much higher price. Furthermore, there might even be cases where the sole aim is to malign the party or redirect consumers to a competitor.
To bring things into perspective, cybersquatting became such a menace to society that it forced the US to bring laws to curb it in 1999[1] (the internet went public in 1993[2]). India was somewhat slow in its growth of internet, and the first case of cybersquatting reached Indian courts in 1999[3]. Surprisingly, India still has no legislation to overlook cases of cybersquatting, the only source of decisive authority is through precedents. Precedents defining how domains aren’t simply addresses, but trademarks as well[4], and how domain names are a form of asset to the company as well[5] are the substantially important judgments that define the limits of domain name acquisition in India.
The Problem
Generally, the sole aim of cybersquatting might look like selling the domain at high prices, but the other benefit the squatter can gain is profit through the goodwill of the company that is the rightful owner of the domain. This could hurt the company in numerous ways like:
l The consumers would be misled to the domain that doesn’t belong to the company but the squatter. Thus, garnering profits for the squatter and losses for the company.
l Another criticism is what if the squatter doesn’t compete with the company and uses the domain for businesses that lie outside the ambit of the company’s services?
The problem with this proposition is that firstly, the squatter would be deemed as a representative/affiliate of the company. Since the product doesn’t lie under the supervision of the company, there would be a potential threat to the company’s reputation. In case the squatter’s product isn’t at par with the company’s standards.
India specifically doesn’t have a law to dictate the functioning of domains or their acquisitions. Although expanding the ambit of Section 2 (1)-(zb)[6]and 2 (1)-(zg)[7] of the Trade Marks Act, 1999 through the term “Services” as those provided on the domain of the company, would bring domains under the description of a trademark. Furthermore, Indian courts have also upheld the importance of domain names and rightly so have even called them the identity of the company[8]. Coupling this with Section 9 (2)-(a)[9], it implies that the domain name gets rejected from registration, which leads us to the next question. If an authorized body does the registration of domain names, then how do individuals end up squatting domain names belonging to another?
In the modern world, everyone is leading 2 parallel lives, one in the physical world and the other in the digital one. Thus, equating cybersquatting with physical life, visiting a domain would be like looking for a shop. Someone misleads you to his shop, using boards with a name similar to your target shop.
So, the answer would be simple, right? Stop the individual from putting up boards and naming their shop close to the former’s. The underlying aspect is that there are millions of domains, so it is practically impossible to choose related domain names that could be the ones harming a specific business. The permutation and combination of the number of domains that could have a similar name to the company would be infinite. To put this into the aforementioned analogy, it would mean looking for the shop in a labyrinth of tunnels. Only knowing the correct tunnel, i.e., the specific URL would lead you to your destination.
However, the problem here is that domain disputes in India have contended under the principle of passing off, which falls under Tort Law. Passing off refers to the usage of another’s goodwill through the representation of their goods as their own. The primary question here is whether the individual passed off another’s goods as his own, which led to confusion amongst the public[10]. Additionally, there is also a reference in Section 27[11] about passing off, however, a major threat (which forced even the US to address it using legislation) cannot be ignored.
Outdated Paranoia?
Another problem postulated is people hogging domain names even before the said company debuts on the internet. Following this, the domain gets sold to the company at a higher price. Cybersquatters hog domain names which they believe at some point will be sought by a major company that will force it to acquire it from the squatter. Even though this might seem like a problem, such incidents are remote these days. Since the inception of a company, one of the first steps is to acquire a domain of the corresponding name. However, this practice was prevalent during the early days of the internet, when it was still spreading, and brands were yet to try out the new toy on the market. So, this brings to question, what is the problem then? Why is there a need for specific legislation if the primary threat posed by cybersquatting already ended decades ago?
The New Problem
Just like natural resources, there are limited domain names that one can think of or remember. To put this into the previous analogy, imagine the shop you want to go to is situated in a mall. This shopping complex has millions of outlets, all with a different name. You wish to find a product, but alas, you can’t remember the name of the shop that sells it. Now to look for the product, you first off need to find the name of the shop (remember, there are hundreds of other shops with names resembling the one you’re looking for). Thus, ensues the newer problem. Looking for the exact shop you need from the millions of other ones and the hundreds of cheap rip-offs.
The Internet has become overcrowded, which doesn’t come as a surprise. However, the recognition of the extent to which this affects the business and accessibility of the company is low. To be recognizable, a company needs a name that sticks with customers. Considering how many companies we can remember, decide the reach of the company. A study states that
“…the lack of available high-quality domains featuring popular names, locations and things could be stifling as much as a further 25% of the total current registered domains.” [12]
Example: Consider that a normal human can remember approximately 150 catchy company names. This means that the companies coming in later would find no place in the person’s memory, thus would be out of the competition.
Since there is a lack of familiar and memorizable names, there would be a potential problem for future companies that try to register for domain names.
Suggestions
l Renewal of Domain: The Majority of cases related to cybersquatting have the perpetrator register multiple domain names with intent of resale. Furthermore, there would be multiple domain names that were active previously but not anymore. They may have registration expiry in the future. The regulatory body would have to ensure that a domain name has remained inactive for a specific amount of time, and only then they would be allowed to put it up for sale. Additionally, the approaching company would also be expected to prove the legitimacy of their reason to acquire that specific domain. Constant renewal (even before the expiry of the registration) would be required for the individual to prove the activity of the domain.
l Multiple Domain Acquisition: Big companies and other entities should be encouraged to acquire more than one domain name. The primary domain name would be the one owned by the company, while the subsequent ones would be those closely related to the primary domain name. The problem this suggestion sought to address is stopping potential customers from being redirected to a competitor. If they own the names closely related to the primary domain name, then even if the customer misspells the name, they would be led to the company’s domain only. This would help in the potential loss of customers.
Reference To: Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd.[13]
The defendant acquired a domain name very similar to the appellant’s domain, the proceeding resulted in the appellant’s victory but the costs of judicial proceedings emphasize the need for multiple domain acquisition i.e., having the rights to domains that closely resemble the primary domain.
l Authority to Scrutinizing Body: The bodies authorized by ICANN should be allowed to scrutinize the name that has been put up for registration and recommend changes to the company registering it (in case of conflict). If following the registration, there arises any dispute related to the domain name, the registering body would be the primary source that will advise the courts in the judgment. This would ensure that the company registering the domain name would be aware of the consequences in case there are judicial proceedings. Furthermore, in case there is already a well-established company that hasn’t acquired a domain in its name, the body would be responsible for informing them about the registration of the acquisition of a domain name related to them.
Conclusion
The problems with domain names aren’t going away any time soon. This would imply that there is an inherent need for amendments in the existing legislation (about cybersquatting) or the drafting of new legislation that address the problems associated with it. Since it is a problem that will only escalate in future (owing to an excessive number of domains), it needs to be addressed properly. If it isn’t addressed, the companies would require excessively weird or lengthy names that would negatively affect their businesses. Lastly, since cybersquatting is a widely recognized crime that has spread over time, to protect the time, resources, and interests of the legitimate parties it is an imminent move that needs to be made.
[1] Anticybersquatting Consumer Protection Act § 2(1), 15 U.S.C. § 1125(D). [2] History.com Editors, World Wide Web (WWW) launches in the public domain, (March 30, 2020) https://www.history.com/this-day-in-history/world-wide-web-launches-in-public-domain accessed 14 August 2021. [3] Yahoo!, Inc. vs Akash Arora & Anr., 78 (1999) DLT 285 (India). [4] Tata Sons Ltd v. Monu Kasuri & others, 90 (2001) DLT 659 (India). [5] Rediff Communication v. Cyberbooth & Anr, 1999 (4) BomCR 278 (India). [6] The Trade Marks Act, 1999, § 2(1)-(zb), The Gazette of India, pt. II sec I (30th December, 1999). [7] The Trade Marks Act, 1999, § 2(1)-(zg), The Gazette of India, pt. II sec I (30th December, 1999). [8] Rajat Agarwal v. Spartan Online, 2017 SCC OnLine Cal 5035 (India). [9] The Trade Marks Act, 1999, § 9(2)-(a), The Gazette of India, pt. II sec I (30th December, 1999). [10] Prerna Chopra, Passing off is a common law tort, which can be used to enforce unregistered trademark rights. The law of passing off prevents one person from misrepresenting his goods or services as that of another, http://www.legalservicesindia.com/article/1254/Passing-off-under-trademark.html#:~:text=unregistered%20trademark%20rights.-,The%20law%20of%20passing%20off%20prevents%20one%20person%20from%20misrepresenting,as%20that%20of%20another...&text=trademark%20%E2%80%93%20An%20Appraisal-,Passing%20off%20is%20a%20common%20law%20tort%2C%20which%20can%20be,services%20as%20that%20of%20another. Accessed 14 August 2021. [11] The Trade Marks Act, 1999, § 27(2), The Gazette of India, pt. II sec I (30th December, 1999). [12] Thies Lindenthal, Overcrowded Internet domain space is stifling demand, suggesting a future ‘not-com’ boom, (March 1, 2016) https://www.cam.ac.uk/research/news/overcrowded-internet-domain-space-is-stifling-demand-suggesting-a-future-not-com-boom accessed 14 August 2021. [13] Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd., 2004 SCC OnLine SC 638.
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