A Primer on Cyber Squatting – By Raunaq Bali
An introduction to Cyber Squatting
Cyber-squatting is a form of IP infringement which involves registration or usage of an internet domain name which belongs to someone else or is highly similar to a pre-existing domain name of someone else. This is done to profit from the goodwill of the trademark belonging to that person/entity. The World Intellectual Property Office considers cybersquatting to be the abusive registration of a domain name.
A subtype of cyber-squatting is the practice known as ‘warehousing’, in which the cyber-squatters register a collection of domain names which belong to the owners of the underlying trademarks, which the intention of selling the domains to the owners at highly inflated prices.
Even though the Trade Marks Act, 1999 is a fairly comprehensive piece of legislation providing extensive protection to trademarks, there is no statutory provision that relates to the practice of cybersquatting. The Trade Marks Rules 2019 do not provide for any dispute resolution mechanism regarding this either, so in absence of a clear statutory framework, it is up to the Courts to enforce the rights of the aggrieved parties and act against the cyber-squatters. It is important to note that the Courts in India have interpreted the provisions in the Trade Mark Act relating to ‘passing off’ to include cybersquatting.
The first prominent case on cybersquatting was Yahoo! Inc. v. Akash Arora and Another (1999). The plaintiff (Yahoo) brought a suit against the defendant (Akash Arora) for using the domain name of <yahooindia.com> which was highly similar to the plaintiff’s registered domain <yahoo.com>. The Supreme Court observed that since the two domain names are similar, there is a high possibility of the users being confused and deceived and believing that both domain names belong to one common source.
In Aqua Minerals Ltd. v Pramod Borse & Anr (2001), the Delhi High Court observed that sufficiently good cause needs to be shown by the defendant for choosing a domain name similar to that of an entity having goodwill and a good reputation. In the absence of a credible explanation, the Court will draw the inference that the use of such a domain name was with the intent to exploit the goodwill and reputation of the owner of the original domain name.
In December 2022, the Intellectual Property Division of the Delhi High Court heard a suit relating to cybersquatting in which the cyber-squatter had registered and was using domain names www.addobe.com and www.adobee.com. These domain names were deceptively similar to the official domain www.adobe.com, registered by the plaintiff. (Adobe Inc v. Namase Patel)
A single judge bench of the Delhi High Court observed that the defendant was an “inveterate” cyber squatter because he had infringed the trademarks of several international companies and the WIPO Arbitration and Mediation Centre had passed several orders against him. The Court proceeded to order the defendant to pay Rs. 2 crores as damages to the plaintiff and ordered a permanent injunction from registering any domain names incorporating the trademarks belonging to the plaintiffs or using the plaintiff’s trademarks in any matter whatsoever, which would infringe the trademark. Even in the absence of explicit statutory provisions, Indian Courts have proactively protected the IP rights of various individuals, companies, and other entities. Injunctions and heavy damages are amongst the most popular reliefs granted in such cases
DISCLAIMER-
The views are that of author’s own and not necessarily the views of IPTSE Academy. This blog is a platform for academic discussions and hence authors have been given flexibility to convey their thought process.
AUTHOR:
Raunaq Bali
Student, Faculty of Law
University of Delhi
CYBERSQUATTING A NEW THREAT TO TRADEMARK OWNERS – by Sejal Chaturvedi 