CYBERSQUATTING AND CYBERSQUATTING AND ITS REMEDIESITS REMEDIES

SUCHITRA BAIALTACIT GLOBAL

CHENNAI

WHAT IS CYBERSQUATTINGWHAT IS CYBERSQUATTING

Cybersquatting is the practice by means of which a person or legal entity books up the trade mark, business name or service mark of another as his own domain name for the purpose of holding on to it and thereafter selling the same domain name to the other person for valuable premium and consideration.

Registering, trafficking in or using a domain name with bad faith intent to profit from the goodwill of a Trade Mark belonging to someone else.

Registration of a domain name by unaffiliated party.

WHO ARE CYBERSQUATTERSWHO ARE CYBERSQUATTERS

Cybersquatters frequently own thousands or even hundreds of thousands or millions of domain names, which are typically misspellings or variations of others’ trademarks.

Cybersquatters do not acquire these domain names out of spite or for amusement. Rather, they acquire these domain names to make money. It’s all about the income stream, and if the income isn’t there, the cybersquatter will drop the domain name.

HOW CYBERSQUATTING WORKSHOW CYBERSQUATTING WORKS

The cybersquatter registers a domain name containing another’s trademark and sets up a website.

The cybersquatter displays advertisements on the website on behalf of advertisers willing to pay the cybersquatter anywhere from a few pennies to a few dollars each time somebody clicks on one of the advertisements.

DEFINITION OF DOMAIN NAME DEFINITION OF DOMAIN NAME

A domain name is a Web site's address expressed in an individual and memorable way, typically using words or names, such as "yourname.com." Companies and other organizations often use their trademarked name in their Web site's domain name.

Domain names can be termed as the addresses of computers connected to the internet.

Domain names are registered on a first come first serve basis and offer a unique presence on the internet.

EXAMPLES OF DOMAIN NAMESEXAMPLES OF DOMAIN NAMES

.com: used for commercial and personal sites..org: Recommended for non-profit organizations..net: Recommended for companies involved in

internet infrastructure..edu: Recommended for educational institutions..mil: used by military agencies..gov: Used by Government organizations..int: used by international organizations.

DOMAIN NAME AND TRADEMARK DOMAIN NAME AND TRADEMARK

The prime reason is that there is absolutely no connection between the system for registering trade marks and the system for registering domain names. The former system (Trademark) is administered by a public (governmental) authority on a territorial (either national or regional) basis which gives rise to rights on the part of the trade mark holder that may be exercised within the territory. The latter system (domain name) is usually administered by a non-governmental organization without any functional limitation.

MANAGEMENT OF DOMAIN NAMEMANAGEMENT OF DOMAIN NAME

Management of domain names is overseen by the Internet Network Information Center (InterNIC), which is itself a division of the Internet Corporation of Assigned Names and Numbers (ICANN).

Compliant – ElementsCompliant – Elements

Domain Names is identical or confusingly similar to the complainant’s mark

Respondent does not have legitimate interest in domain name at issue.

Respondent registered and is using the domain name in bad faith.

Registered domain name to prevent owner of Trademark from using mark is corresponding domain name and have engaged in pattern of such conduct.

Registered domain name primarily for purpose of disrupting business of competitor.

By using domain name, owner intentionally attempted to attract for commercial gain, web users resulting in a likelihood of confusion.

Non-Exclusive List of Factors Evidencing Bad Non-Exclusive List of Factors Evidencing Bad

Faith Faith

Whether defendant offered to sell domain name to Trademark owner for financial gain without having used domain name itself.

Whether defendant has history of trafficking in domain names.

Whether defendant’s intent is to divert consumers from Trademark owner’s website to a site that could harm the goodwill of the Trademark for commercial gain with the intent to tarnish or disparage the mark.

Whether defendant provided material and misleading false contact information when applying for domain name

AUTHORITYAUTHORITY

The Uniform Domain Name Dispute Resolution Policy (the UDRP Policy) sets out the legal framework for the resolution of disputes between a domain name registrant and a third over the abusive registration and use of an Internet domain name.

On October 24, 1999, the ICANN Board [Internet Corporation for Assigned Names and Numbers] adopted a set of Rules for Uniform Domain Name Dispute Resolution Policy (the UDRP Rules) setting out the procedures and other requirements for each stage of the dispute resolution administrative procedure. The procedure is administered by dispute resolution service providers accredited by ICANN. The WIPO Arbitration and Mediation Center (WIPO Center) is such a dispute resolution service provider.

REMEDIESREMEDIES

Victims of cybersquatting have several options to combat cybersquatting. These options include:

a. sending cease-and-desist letters to the cybersquatter, b. Bringing an Arbitration proceeding under ICANN’s

rules (Internet Corporation for Assigned Names and Numbers is the nonprofit organization that oversees the domain name registration system), or

c. Bringing a lawsuit.

ADMINISTRATIVE PROCEDURES OF UDRPADMINISTRATIVE PROCEDURES OF UDRP

The five basic stages in a Uniform Dispute Resolution Procedure’s Administrative Procedure are:

The filing of a Complaint with an ICANN-accredited dispute resolution service provider chosen by the Complainant, such as the WIPO Center;

The filing of a Response by the person or entity against whom the Complaint was made;

The appointment by the chosen dispute resolution service provider of an Administrative Panel of one or three persons who will decide the dispute;

The issuance of the Administrative Panel's decision and the notification of all relevant parties; and

The implementation of the Administrative Panel's decision by the registrar(s) concerned should there be a decision that the domain name(s) in question be cancelled or transferred.

REMEDIESREMEDIES

Cancellation of the Registered Domain Name

[or]

Transfer of the Registered Domain Name

Yahoo ReYahoo Re

In India the first important case regarding Domain Name dispute is the case involved in the use of domain ‘yahooindia.com’. In the suit initiated by Yahoo Inc, the Delhi High Court granted interim injunction restraining the defendants from operating any business or selling, offering for sale, advertising from operating and/or in any manner dealing in services or goods on the internet. The Court also restrained the defendents from using and/or copying the contents of the programs of the plaintiff under the domain name “yahoo.com”

Rediff Communications Ltd ReRediff Communications Ltd Re

The Yahoo decision was subsequently cited with approval by the Bombay High Court in the decision of Rediff Communications Ltd. V. Cyber Booth.

The defendant adopted the domain name www.radiff.com’, the court found such an adoption by the defendant completely dishonest and the intension to deceive was established. The court decided in favour of the Plaintiff.

Julia Roberts ReJulia Roberts Re

In the case of Julia Fiona Roberts V Russell Boyd Case where the famous American actress Julia roberts got a decision in favour for the domain name juliaroberts.com which was registered by a cybersquatter from New Jersey.

It was held that the (a) domain name <juliaroberts.com> was identical to complainant’s common laws trade mark in her name “Julia Roberts” (b) that respondent had no rights or legitimate interest in the domain name and (c) that respondent registered and used the domain name in bad faith.

FIFA Worldcup ReFIFA Worldcup Re

The international governing body of football, FIFA, has won a cybersquatting case at the World Intellectual Property Organisation (WIPO) against a US-based person, who had registered the term ‘Fifa World Cup’ in an Internet domain.

Chris Carter was using the domain ‘fifaworldcup2010.com’, about which the FIFA contended that the name is confusingly similar to its registered trade marks and the website has been registered in bad faith.

WIPO asked Carter to transfer the disputed Internet site to FIFA. The disputed domain name was registered on February 13, 2000,

according to the judgement copy of the case. The WIPO’s Arbitration and Mediation Centre found that the domain

name has been both registered and used with a view to taking unfair advantage of the reputation of the terms embodied in the complainant’s (FIFA) trade marks.

FIFA, the organiser of football world cup, owns numerous trade marks around the world that either comprise terms-’Fifa’ or ‘World Cup’.

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