How to Protect Your Domain Name from Cybersquatting

Overview:

Cybersquatting refers to the unethical practice of registering, selling, or using a domain name with the intention of profiting from the goodwill of a trademark that belongs to someone else. This typically involves acquiring domain names that are identical or confusingly similar to registered trademarks or business names, with the goal of selling the domain to the rightful owner at an inflated price or diverting web traffic for fraudulent purposes. The High Court of Delhi, in the case of Manish Vij v. Indra Chugh, defined cybersquatting as “an act of obtaining fraudulent registration with an intent to sell the domain name to the lawful owner of the name at a premium.”

Cybersquatters often exploit well-known brands or trademarks, creating confusion among consumers and damaging the reputation of legitimate businesses. In some cases, cybersquatting may also involve directing internet users to competing or malicious websites, which further harms the affected business.

In today’s digital age, a domain name is more than just an address. It is an integral part of a brand’s identity. With the rise of cybersquatting—where individuals register domain names similar to established trademarks with the intent to profit from them—protecting domain names has never been more critical. In India, while there is no specific legislation addressing cybersquatting, several legal frameworks and case laws provide avenues for protection.

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 typographical errors in the names of well-known brands. Examples of such misspelled domains are yajoo.com and facebok.com. The intention behind this act is to divert the target audience whenever they misspell a domain name.
2. Identity Theft: In cases of identity theft, the website of an existing brand is copied with the intention of confusing the target consumer.
3. Name-jacking: Name-jacking involves impersonating a well-known name or celebrity in cyberspace. Instances of name-jacking include creating fake websites or social media accounts using a celebrity’s name.
4. Reverse Cybersquatting: Reverse cybersquatting occurs when a person falsely claims a trademark as their own and falsely accuses the domain owner of cybersquatting. In essence, this act is the opposite of cybersquatting.

Legal Remedies:

While cybersquatting laws vary across jurisdictions, two notable frameworks are used to combat this practice:

1. Uniform Domain-Name Dispute-Resolution Policy (UDRP): Administered by the Internet Corporation for Assigned Names and Numbers (ICANN), this international policy allows trademark owners to resolve domain name disputes efficiently. It is an arbitration process that can lead to the transfer of the domain name to the rightful trademark owner.
2. Anti-Cybersquatting Consumer Protection Act (ACPA): This U.S. law, enacted in 1999, makes it illegal to register, traffic in, or use a domain name identical or confusingly similar to a trademark or personal name with bad-faith intent to profit. Penalties include damages and domain forfeiture.

India lacks a dedicated anti-cybersquatting law like the ACPA, but several existing laws can be invoked against cybersquatting:

1. The Trade Marks Act, 1999: This Act provides protection for registered trademarks and can be used to challenge unauthorized use of similar domain names. The courts have recognized that a domain name is entitled to the same protection as a trademark.
2. The Information Technology Act, 2000: Sections under this Act can be applied in cybersquatting cases, particularly those dealing with fraudulent activities online.
3. The Bharatiya Nyaya Sanhita, 2023 (Section 336: Forgery): If a cybersquatter creates a false document or electronic record with the intent to cause damage, support a fraudulent claim, or deceive a party into entering into a contract, the relevant provisions related to forgery can be applied. This includes situations where the cybersquatter intends to harm the reputation of a party or induce fraudulent transactions through the false use of a domain name.

Remarkable Case Laws: Several landmark cases in India have set precedents for handling cybersquatting:

• 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 using the domain name “kalyanjewellers.com.” However, the WIPO advised the plaintiff to approach the appropriate forums to establish bad faith. Following this, the Madras High Court established trademark infringement, restraining the defendant from using the mark “Kalyan” or “Kalyan Jewelers.”
• Rediff Communication Ltd v. Cyberbooth: The Bombay High Court ruled that a domain name is more than just an address; it serves as a corporate identifier and deserves trademark protection. The court granted an injunction against the defendant for using a similar domain name that could confuse consumers.
• Yahoo Inc. v. Akash Arora: In this case, Yahoo successfully argued that the use of a deceptively similar domain name constituted passing off, leading to consumer confusion and dilution of its brand.
• Satyam Infoway Ltd v. Sifynet Solutions: The Supreme Court recognized the lack of specific legislation in India for cybersquatting but emphasized the need for judicial intervention to protect trademark rights.
• Aqua Minerals Limited Vs Mr. Pramod Borse & Anr: The Delhi High Court held that the defendant was guilty of trademark infringement for registering the website www.bisleri.com and allowed the plaintiff to seek the transfer of the website.
• SbiCards.com v. Domain Active Property Ltd.: WIPO ordered the domain SbiCards.com to be transferred to an Indian company from an Australian entity, which had stolen the domain name, planning to sell it later for profit.

Steps to Protect Your Domain Name:

1. Register your domain early.
2. Consider registering multiple variants.
3. Use WHOIS privacy protection.
4. Monitor your domain regularly.
5. Take legal action if necessary.
6. Utilize UDRP and INDRP.

ConclusionCybersquatting primarily targets well-known brands, leveraging their goodwill and reputation to mislead consumers or extort businesses. The risk is even greater for international brands not yet established in India, as cybersquatters can exploit the absence of immediate legal recourse.

To tackle this issue effectively, several measures should be considered:

1. Stricter regulation of domain providers.
2. Trademark registration of domain names.
3. Awareness of UNDRP.
4. Sui generis laws for cybersquatting.

In conclusion, combating cybersquatting requires a combination of specific laws, awareness, and stronger regulatory frameworks to protect both businesses and consumers.

Written by Srishti Saxena, we appreciate her excellent work and contribution to this article.