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
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
Name Registration and Cyber Squatting
thread in the fabric of discussions concerning management of DNS has been the
interface between domain names as addresses on the internet and intellectual
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.
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
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
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
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.
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
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.
Parikshit Dasgupta, 6 March 2003. All Rights Reserved.