Module 3

MODULE 3

CYBERSQUATTING IN INDIA

3.1. CYBER SQUATTING EFFECTUAL POSITION IN INDIA

There is no law in India that specifically applies to dispute resolution in relation to
cybersquatting or other conflicts over domain names. The Trademarks Act, 1999 used to regulate
the use of trademarks in domain names, is not extra-territorial, hence, it does not authorize
appropriate domain names protection.1 The SC has taken the view that “Domain names are to be
legally protected to the extent possible under the laws relating passing off.” In India, this law was
established by judges, and all the high courts were of unanimous view, which the SC has selected
out and accepted.

In the landmark case of the Satyam Infoway Ltd v. Sifynet Solutions (P) Ltd2, the court provided
the ground of action for Indian domain name disputes cases in 2004 stating that- “As far as India
is concerned, there is no legislation which explicitly refers to dispute resolution in connection
with domain names. But although the operation of the Trademarks Act, 1999 itself is not extra-
territorial and may not allow for adequate protection of domain names, this does not mean that
domain names are not protected within India.”

The remedy that prevails in the absence of the proper cyber laws is an action for passing off and
infringing trademarks. But then in the case of Cyber squatting, the Indian Courts are very
involved in delivering relief. While it is another fact that due to the rise in number of cases
people have begun to turn to alternative dispute resolution approaches in this field, instead of
approaching the formal judicial procedure, particularly the UDNDRP developed by the ICANN
and the Arbitration and Mediation Council of the WIPO.

It should be acknowledged that India's Trade and Merchandise Marks Act, 1958 and the
Information Technology Act, 2000, do not resolve domain name disputes. Therefore, the Indian

1 Zohaib Hasan Khan, Piyush Charan, Mohd Amir Ansari & Kashiful Hasan Khan, Cybersquatting and its Effectual
Position in India (2015), International Journal of Scientific & Engineering Research.
2 Appeal (civil) 3028 of 2004

courts follow the "passing off" laws in respect of these disputes. The passing off practice is based
on the principle laid out in N. R. Dongre v. Whirlpool3 wherein the courts said that “a man may
not sell his own goods under the pretence that they are the goods of another man.”

Passing off is a type of unethical trade competition by which one party tries to benefit from
another's popularity in a specific trade or company. A passing off action is a primary subject
matter of contract law or common law, i.e. jurisprudence. The Act does not describe passing off
but instead lays down the rules of practice and necessary remedies. The Trademark Act,
however, is devoid of any provision within the scope of which the cyber squatting offense may
be brought. Hence, in the absence of any other clause, the Indian Courts have adopted the
passing off principle and the WIPO and UDRP recommendations and policies.

The Indian Courts also relies upon the definition provided by the Delhi High Court in Manish Vij
v. Indra Chugh4 wherein Cyber squatting was defined as “an act of obtaining fraudulent
registration with intent to sell the domain name to the lawful owner of the name at a premium”.

3.2. DISPUTE RESOLUTION MECHANISM ADOPTED BY THE INDIAN JUDICIARY
SYSTEM

Cyber squatting can inflict potential damage to all parties as any mistake done can conveniently
be transmitted to every nook and corner of the planet. And cyber squatting activity needs to be
prohibited and avoided. The gTLD issues can be litigated before Indian Courts. However, there
is no clear law in India dealing with cyber squatting and the protection of domain names. The
Information Technology Act, 2000, and its 2008 version of the amendment do not address
domain name problems. Without any specific legislation in India, the grounds for the litigation
could be5:

• Trademark infringement - When the Trademark has been registered in compliance with
the Trademarks Act , 1999; then the party concerned can sue in court for a trademark
infringement. The trademark registration gives the registered owner the title.

3 Appeal (civil) 10703 of 1996
4 AIR 2002 Delhi 243, 97 (2002) DLT 1
5 Supra Note 56.

• Passing off – In India the legal opinion on "passing off" came from N.R. Dongre vs.
Whirlpool Company. The Delhi High Court found that a company can not sell its goods
on the pretext that it is goods of another company.6 The court applies the test of
"likelihood of confusion" to determine the "passing off" cases. If it can be proven that by
using the name of an registered trademark, the domain name owner tries to mislead the
public, then court can issue an injunction and eject the cyber-squatter. The "passing off"
is essentially an act of torture. In India, the legal opinion on "passing off" may be equated
with "unfair competition through misrepresentation" in the USA.7

If a party succeeds in receiving court order, then a copy of the order must be provided to the
company registrar. The registrar will then pass the domain name to the effective party in favor.

3.3 SOME INDIAN CYBER-SQUATTING CASES

(a) Satyam Infoway Ltd v. Sifynet Solutions (2004)8 –

This is the first case dealing with legal protection of domain names in India's SC. In this case ,
the SC gave seal of approval to carious High Court rulings involving the legal rights of domain
names equal to that of a trademark. In this case, the complainant (Satyam Infoway Ltd.)
registered with ICANN in June 1999 with multiple domain names such as sifyrealestate.com,
sifynet.com, sifymall.com etc. It was reported that the term 'Sify' was created using elements of
the corporate name, Satyam Infoway. From June 2001, the web squatter (Siffynet Solutions Pvt .
Ltd.) performed its business under the domain names www.siffynet.net and www.siffynet.com..

The SC held that “domain name is a business identifier in today’s internet driven commercial
marketplace and may possess all the characteristics of a trademark. Thus a domain name may
pertain to provision of services within Section 2(Z) of the Trade Marks Act, 1999. The close
visual and phonetic similarity between Sify and Siffy can confuse the users. So, the Court held

6 N. Jatana, Did Whirlpool Make Its Mark in India- N.R. Dongre v. Whirlpool Corp. (1997), Global Business and
Development Law Journal.
7 P. Narayanan, Law of Trademarks and Passing off (2017), Eastern Law House.
8 2004(3)AWC 2366 SC

that cyber-squatter was passing off its services in name of plaintiff and restrained the cyber-
squatter from doing so.”

The SC further stated that “As far as India is concerned, there is no legislation which explicitly
refers to dispute resolution in connection with domain names. But although the operation of
Trademark Act, 1999 itself is not extra territorial and may not allow for adequate protection of
domain names, this does not mean that domain names are not to be legally protected to the extent
possible under the laws relating to passing off”. However, there was no order as to costs.

The Hon’ble SC also stated that: “As far as India is concerned, there is no legislation which
explicitly refers to dispute resolution in connection with domain names…although the operation
of the Trademarks Act…may not allow for adequate protection of domain names, this does not
mean that domain names are not to be legally protected to the extent possible under the laws
relating to passing-off.”

(b) Yahoo! Inc. v. Akash Arora (1999)9

This is certainly the first recorded Indian case in which the plaintiff, who is the registered owner
of the domain name "yahoo.com," succeeded in securing an temporary injunction banning the
defendants and associates from marketing goods or services on the Internet or anywhere else
under the domain name "yahooindia.com" or any other trademark or domain name that is
deceptively close to the company. While our country has very few published judgments as at the
date of publishing, media reports and details from reputable sources indicate that at least twenty-
five cases involving domain names are pending before the Delhi High Court itself.

(c) Titan Industries Limited v. Prashanth Koorapati and Ors.10

The first case was decided by an Indian court that granted domain names the protection of a
trademark. The Delhi High Court was found to be in the plaintiff's favour, and granted an ex-
party ad-interim injunction restricting the defendant from using the Tanishq trade name or any
other name that is deceptively similar and would likely result in the plaintiff's business and goods
being transferred.

9 1999 IIAD Delhi 229
10 Delhi High Court Suit No. 179 of 1998,

(d) Dr. Reddy’s Laboratories Ltd. v. Manu Kosuri and Anr. 11

The defendants were prevented from using the name of the domain in question,
"drreddyslab.com," which was identical to the trade name of the plaintiff. The Court held that
domain names occupy an important e-commerce position and held that the defendants were
liable under passing-off.

(e) Maruti Udyog Ltd v. Maruti Software Private Ltd. 12

In this case, a complaint was filed against the respondent who had owned the domain name
"marutionline.com." The court found that the domain name was licensed in bad faith because
there was no evidence to prove that the defendant wished to use the domain name for legal
reasons.

(f) Tata Sons Ltd Vs. Ramadasoft13

Tata Sons, India's largest corporate holding corporation, the Tata Group, has secured a case to
bar a cyber-squatter from the 10 domain names in dispute. Tata Sons had filed a complaint with
the WIPO.

In the case, the respondent had been proceeded ex-part. The Committee decided the respondent
is the domain names owner. These domain names are confusingly identical to the Complainant's
TATA trademark, and the Respondent has no rights or legal claims in the domain names, and has
licensed and used the domain names in bad faith. Such facts entitle the claimant to an intimate
order that transfers the domain names.

(g) Tata Sons Ltd. and Anr. vs. Fashion Id Ltd.14 (2005)

In this case, a domain name www.tatainfotecheducation.com is owned by the cyber-squatter
(Fashion Ltd.) This domain name was misleadingly identical to plaintiff’s (Tata Infotech)
trademark of the defendant. The high court in Delhi held that- this deceit could lead to "passing

11 2001 PTC 859 (Del)
12 Case No. D2000-1038
http://arbiter.wipo.int/domain/decisions/2000-0520.html
13 2001 IIIAD Delhi 545, 90 (2001) DLT 659, 2001 (58) DRJ 306, 2001 (2) RAJ 311
14 117 (2005) DLT 748, (2005) 140 PLR 12, 2005 (30) PTC 182 De

off" In the interest of the cyber-squatter, the court annulled the domain ownership and assigned it
to the appellant. The court has directed the cyber-squatter to pay the complainant Rs 100,000.

(h) Mr. Arun Jaitley vs. Network Solutions Pvt. Ltd. (2011)15

This was the case of abusive online registration of trademarks in India. The plaintiff (Mr. Arun
Jaitley) is a prominent public figure and current Finance Minister of India. In 2011, he was the
leader of opposition in Rajya Sabha and was the member of Parliament for last 10 years. The
cyber-squatter (Network Solutions Pvt. Ltd.) registered the domain www.arunjaitley.com. The
plaintiff tried to buy the domain name from the cybersquatter but the cyber-squatter tried to sell
at an exorbitant cost. Delhi High court held that the cyber-squatter guilty for the registration of
domain name which was abusive of a prominent public figure and directed the domain name to
be transferred to the plaintiff. The court also held that plaintiff is also entitled to legal costs from
the cyber-squatter.

(i) Google Inc. v. Herit Shah (2009)16

The Internet software company Google Inc. won a cybersquatting case against an Indian teenager
who registered a domain name as googblog.com. The domain name, Google contended, was
confusingly similar to its trademark. On May 15, 2009, the WIPO ordered an Indian teenager,
Herit Shah (Shah), found to be using the domain name 'googblog.com', to transfer the rights of
the domain to Google Inc. (Google). Industry observers viewed this as a case of cybersquatting,
and said that Google had been able to successfully defend its IPR. According to WIPO, there
have been a rise in allegations of cybersquatting by trademark holders in 2008.

(j) Rediff Communication Ltd. vs. Cyberbooth & Anr. (1999)17

In this case, cyber-squatter registered the domain name as www.radiff.com, which was similar to
plaintiff’s domain name (www.rediff.com). Bombay High Court observed that domain names are
a valuable corporate asset as it facilitates communication with a customer base. The court stated
that “the similarity in website names can confuse the public, particularly new customers. So, it
restrained the cyber-squatter from using the domain name www.radiff.com.”

15 CS(OS) 1745/2009 & I.A. No. 11943/2009 & 17485/2010
16 Case No. D2009-0405
17 AIR 2000 Bombay 27

(k) Acqua Minerals Ltd. vs. Mr. Pramod Borse & Anr. 18(2001)

In this case, the plaintiff (Acqua Minerals Ltd.) was the registered owner of the trademark
“Bisleri” in India. The cyber-squatter Mr. Pramod Borse & Anr registered the website
www.bisleri.com in its name. The Delhi High Court held the cyber-squatter guilty of
infringement of trademark and allowed the plaintiff to seek the transfer of website in its name.

(l) Sbicards.com vs Domain Active Property Ltd.19

The World Intellectual Property Organization ordered Sbicards.com to be transferred from an
Australian entity to the Indian Company, which hijacked the domain name hoping to later sell it
to the State Bank of India subsidiary for a heavy sum. The panel accepted the argument of SBI
Card counsel that "the Australian company was in the business of buying and selling domain
name through their website."

(m) Bennett Coleman & Co Ltd vs. Steven S Lalwani20

In this case, the respondent had registered domain names www.theeconomictimes.com and the
www.timesofindia.com with network solutions of the United States. These two names are similar
to the names of the Plaintiff‟s websites www.economictimes.com and www.timesoftimes.com.
Another important fact was that the respondent‟s websites using the domain names in contention
redirect the users to a different website www.indiaheadlines.com which provided India related
news. The arbitration panel of the WIPO gave a decision in favor of the plaintiff.

(o) Tata Sons Ltd v Manu Kosuri & Ors.21

The defendant registered a series of domain names incorporating the well-known trademark
“TATA”. The Court, in delivering judgment, referred to Rediff Communication Limited v.
Cyberbooth & Anr and Yahoo Inc. v Akash Arora & Anr., both mentioned above, and held that
internet domain names are not merely internet addresses but are in fact corporate assets that are

18 AIR 2001 Delhi 463, 93 (2001) DLT 203
19 Sanchit Mehta, Cyber Squatting And Its Legal Position (2010), Mightylaws.in mighty laws simplified
http://www.mightylaws.in/201/cyber-squatting-legal-position
20 Cases No. D2000-0014 and 2000-001
21 III AD Delhi 545, 90 (2001)

extremely important and valuable and as such, are entitled for protection equivalent to that
afforded to registered trademarks.

3.4. INDIAN DOMAIN NAME DISPUTE RESOLUTION POLICY

“.in” is India‟s TLD on internet. The IN Registry has published the IN Dispute Resolution Policy
(INDRP) which is a mandatory dispute resolution procedure. India does not subscribe to UDRP.
However, INDRP has been formulated in lines of UDRP, internationally accepted guidelines,
and with the relevant provisions of the Indian IT Act 2000.22 INDRP sets out the mechanism to
resolve a dispute between the Registrant and the Complainant, arising out of the registration and
use of the .in Internet Domain Name. Para 4, INDRP is strikingly similar to Para 4 (a) of the
UDRP and constitutes the same essential premises for filing a complaint. INDRP makes it
obligatory on the Registrant to submit to arbitration proceeding in an event a complaint is
brought against the same with ‘.IN’ Registry.

Upon receipt of complaint the .IN Registry shall appoint an Arbitrator out of the list of
arbitrators maintained by the Registry. Within 3 days from the receipt of the complaint the
Arbitrator shall issue a notice to the Respondent. The Arbitrator shall then conduct the
Arbitration Proceedings in accordance with the Arbitration & Conciliation Act 1996 and also in
accordance with this Policy and rules provided there under. Once the arbitrator is appointed the
.IN Registry shall notify the parties of the Arbitrator appointed. The Arbitrator shall pass a
reasoned award and shall put forward a copy of it immediately to the Complainant, Respondent
and the .IN Registry. The award shall be passed within 60 days from the date of commencement
of arbitration proceeding.

In exceptional circumstances this period may be extended by the Arbitrator maximum for 30
days. However, the Arbitrator shall give the reasons in writing for such extension. Evidence of
registration and use of domain name in Bad Faith has to be ascertained by the Arbitrator taking
into consideration Para 6, INDRP; but without any limitation. These considerations are
analogous to those provided under Para 4(b), UDRP. The Arbitrator shall ensure that copies of

22 Supra Note 59.

all documents, replies, rejoinders, applications, orders passed from time to time be forwarded to
.IN Registry immediately for its records and for maintaining the transparency in the proceedings.

The policy provides that no in-person hearing is to take place (including hearings by
teleconference, videoconference, and web conference), unless the Arbitrator determines, in his
sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the
Complaint. The remedies available to a Complainant pursuant to any proceeding before an
Arbitrator is limited to cancellation of the Registrant's domain name or the transfer of the
Registrant's domain name registration to the Complainant. Costs may also be awarded by the
Arbitrator.

The INDRP prohibits a Registrant from transferring a disputed domain name registration to
another holder in case an Arbitration proceeding is initiated pursuant to this policy, for a period
of 15 working days ("working day" means any day other than a Saturday, Sunday or public
holiday) after such proceeding is concluded, or, while the dispute is pending, unless the party to
whom the domain name registration is being transferred agrees, in writing, to be bound by the
decision of the court or arbitrator.

3.5. SIGNIFICANT CASE OF INDRP

Bloomberg Finance L.P., (BF) vs. Mr. Kanhan Vijay (2009)

The most important case of the INDRP Arbitration Panel is that of the 2009 case of Bloomberg
Finance L.P., (BF) vs. Mr. Kanhan Vijay. In this case, the domain name in question was
www.bloomberg.net.in which was registered by Bloomberg Finance L.P. which was also the
registered proprietor of the services mark BLOOMBERG in India and abroad, with rights from
1986 as a trademark, trade name and corporate identity establishing widespread reputation and
goodwill. The complainant had registered various domain names incorporating "Bloomberg" as
the name and therefore was the prior adopter, user and registrant, although it had no reason to
adopt or register www.bloomberg.net.in as domain name. The respondent’s bad faith intent was
established by the Panel stating that there was a lack of due diligence or evidence on the part of

the respondent towards their claims and that the domain was to be transferred to the complainant
accordingly.

3.6.SOME OBSERVATIONS BY THE HIGH COURTS
The Hon’ble Delhi High Court observed that23: “The present suit raises very significant
questions in the realm of intellectual property law concerning the protection that a person is
entitled to, particularly when the persons name had acquired distinctiveness, goodwill and
reputation. It also raises an important question whether the right to ones own name is part of the
bundle of personal rights enshrined in the right to life under the Article 21 of the Constitution of
India, and Article 17 of the International Convenant on Civil and Political Rights. Is a person
entitled to protection of such a right and all other rights incidental to and stemming from that
right viz., the rights to publicity and to privacy. It appears to this Court that the Plaintiff has
more than a stateable prima facie case.”
The Hon’ble High Court further observed that24 “The Plaintiff has prima facie demonstrated,
with the help of all several documents, that Defendant No.3 is squatting on his name with the
intention of exploiting it for profit. If not injuncted, the domain name www.arunjaitley.com could
well be purchased by any person. Such person could then use it for any purpose detrimental to
the goodwill and reputation of the Plaintiff. The balance of convenience in restraining the
Defendants from transferring, alienating or offering for sale the domain name “arunjaitley.com”
to any third party and from creating any third party interest in the said domain name
“arunjaitley.com” appears to be in favour of the Plaintiff at this stage.”

23 Zohaib Hasan Khan, Piyush Charan, Mohd Amir Ansari & Kashiful Hasan Khan, Cybersquatting and its Effectual
Position in India (2015), International Journal of Scientific & Engineering Research, Volume 6, Issue 2.
24 Ibid.