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Internet Law:

The Cyber Menace: Seeking a Global Forum
© Parikshit Dasgupta, 6 March 2003. All Rights Reserved.

In the wake of the 21st century, with the advent of the cyber space and unprecedented growth in e-commerce, and hence it is commercially prudent for a company to have an easily traceable address in the cyber-space. For this purpose, registration of a particular domain name and web site under the domain name system (DNS) is required. However, this practice has spawned a new industry in valuable domain names.

The process of registration of domain names is simple and on 'first come, first served' basis. Therefore, the only thing that needs to be avoided is the issuance of duplicate domain names.

Abusive Domain Name Registration and Cyber Squatting

One consistent thread in the fabric of discussions concerning management of DNS has been the interface between domain names as addresses on the internet and intellectual property.

On one hand, DNS is, for the most part, privately administered and gives rise to registrations that result in global presence. Whereas, the intellectual property rights system is publicly administered on a territorial basis. The conflict between these two systems has harnessed many predatory practices.

These practices include the deliberate bad faith domain name registration of well-known trademarks in the hope of being able to sell the domain to the owners of those marks (or rivals owners) or simply to take unfair advantage of the reputation attached to those marks. In technical parlance, this is called cyber squatting. Cyber squatting, thus involves the use of domain name by a person with neither trademark registration nor any inherent rights to the name.

So, what is the magnitude of the present day problem cyber-squatting? It would be a futile attempt to encompass the ever-increasing magnitude of cyber-squatting, but a bare reference to a few cases, highlights possible abuse and commercial nuisance generated by cyber squatting: -

1) In perhaps the most famous cyber-squatting case, Marks Spencer p.l.c. and others vs. One in a Million Ltd., the English Court of Appeals held that by the registration of distinctive household names like Marks & Spencer p.l.c., J. Sainsburry p.l.c., etc., a false representation was made to the person who consulted the register, that the registrant was connected with the name registered and constituted passing off.

2) In Rediff Communications Ltd., v Cyberbooth (AIR 2000 Bom 27), plaintiff, the owner of the well-known portal and domain name rediff.com filled for injunction against the defendant, registrant of the domain name "rediff.com". There was a common field of activity and the judge was satisfied that there was a ‘clear intention to deceive’ and granted interim relief to the plaintiff. The judge stated, "A domain name is more than an Internet address and is entitled to the equal protection of trademark."

Seek and ye should find

Cyber squatting is undoubtedly the most contentious issue in cyber law area throughout the world. But wherein lies the solution?

In India in the absence of requisite cyber laws to prevent cyber-squatting, the cases involving cyber-squatting are decided under the relevant provision of trademark laws. In UK, if someone has registered a domain name incorporating a trademark, then the domain name holder could be in breach of section 10 of the Trademark Act, 1994 that states " a person infringes a registered trademark if he uses identical or similar to the registered trademark in relation to identical or similar goods or services".

Recognizing the problems raised by clash between domain name system and trademarks, the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre is developing an online Internet based system for administering commercial disputes involving intellectual property.

The Dispute Resolution Mechanism is unique in that it is designed to be used online both for document exchange and for filling of evidence. However, the original documentary evidence will still be needed to be filled in a physical form. The dispute resolution is simply signed and thus, providing an inexpensive and efficient service and does not in any way seek to take the place of national jurisdiction.

In October 1999, the Internet Corporation for Assigned Names and Number (ICANN) (the current administrator of the .com, .org and .net domain name systems) adopted the uniform name domain dispute resolution policy to clarify its position and to cut the cost and number of lawsuits over domain name disputes.

In the lines of the final WIPO report of internet domain name possess, the policy to which all domain name registrations now adhere, is one, which attempts to bring about settlement of domain name disputes. Under the policy in cases involving cyber squatting the complainant can (but need not) invoke mandatory administrative procedure (herein after called the procedure) before one of the administrative dispute resolution service providers approved by ICANN. The complainant selects the provider and all costs involved (expected to be in the region of US $1000) must be borne by him., A successful complainant’s remedy is limited to requiring the cancellation of the registrant's domain name or the transfer of domain name registration to the complainant.

The procedure will be handled in large part online and is designed to take less than 45 days with a provision for the parties to go to courts to resolve their disputes or contest the outcome of the procedure.

Can the conflict be resolved?

A statistical examination of Domain Name conflicts reveals that website proprietors gain access to property rights to which they would otherwise not be entitled to under traditional notions of intellectual property rights. There are cases where the conflict between the domain name and trademark systems is irreconcilable where both the parties act in goods faith.

That in light of the approach being adopted by the domain name registrars (which inter alia includes the filing of a interpleader suit against the domain name owner and the challenger), the courts and International Organizations such as WIPO will prevent the use of domain names which have been which have been previously registered as a trademark. Thus, this conflict will be resolved primarily at the domain name registry level. . The courts are rapidly developing techniques for curbing cyber-squatting and in course of time, arbitration and mediation are likely to be the means for effecting conflicting legitimate users of trade names to reach an accommodation with each other.

It is increasingly clear is due to the global nature of Internet any policy in order to be effective must also be uniformly accepted and enforced worldwide. In the wake of 21st century all countries must join hands to curb this international problem or else - face the risk of this menacing problem emerging time and again.

back to Lex e-Scripta© Parikshit Dasgupta, 6 March 2003. All Rights Reserved.

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