This article has been published by Delhi High Court Bar Association Quarterly Bar Review.

A domain name is your address, your address on the Internet. We all have a physical address; we’re all going to need an address in cyberspace. They’re becoming increasingly important. I believe we’ll get to the point where when you’re born, you’ll be issued a domain name – Bob Parsons

1. INTRODUCTION

 In the vast landscape of the Internet, domain names act as signposts guiding users to their desired destinations and serve as a unique and memorable identifier for a specific online space/ business. As a result, businesses opt for domain names with relevant extensions which are in sync with their established trademarks and brand names so that they easily resonate with the general public.

The challenge lies in the fact that maintaining/controlling such domains by newer businesses or brands vis-à-vis other miscreants/ counterfeiters who deceive and disguise well-known and prominent brands and players in the industry and cheat by impersonation and supply fake, sub-standard and/or counterfeit goods thereby, tarnishing and diminishing legitimate businesses and given the global nature of cyberspace such illegalities are often cross-border and multi-jurisdictional in nature.

The standard modus operandi of such counterfeiters’ resort to obtaining registration of deceptive domain names which are identical or similar to established trademarks and brand names in an attempt to take undue advantage of the goodwill associated with such brands which has been meticulously garnered over the years. Moreover, the fact that domain names are registered on a first come first serve basis and need no prior approval from any authority per se about the proprietary rights over the trade mark or trade name further encourages counterfeiters to leverage the recognition already associated with a certain trademark or brand name in order to deceive consumers and attract them to fake/counterfeit websites. A classic example would be a case wherein the Delhi High Court injuncted counterfeiters from using infringing domain names for selling counterfeit Mont Blanc pens^[1].

The practice of registering names, especially well-known company or brand names, as internet domains in the hope of re-selling them at a profit and/or selling counterfeit goods is commonly termed as ‘Cybersquatting’^[2]. While the repercussions of consuming counterfeit goods in the physical realm are well established, discussions surrounding digitally promoting the sale of counterfeit products have also been gaining traction. Such tactics can potentially result in eroding consumer trust in an established brand and destroying the goodwill and reputation associated with such brands. This menace of cybersquatting has been rising owing to inadequate mechanisms for enforcement of the legal provisions regulating domain names and non-compliance of the Domain Name Registrars (“DNRs”).

Cybersquatting is not a new phenomenon by any measure. In fact, as far back as 2002, the Delhi High Court in one of the earliest cases of cybersquatting in India acknowledged that domain names deserve equal protection as that conferred upon a trademark but also went a step further to grant an injunction order restraining counterfeiters from using infringing domain names^[3].

The nature and extent of the menace of ‘cybersquatting’ can be best explained by referring to a popular case wherein the Delhi High Court had reprimanded entities who had wrongfully obtained registration of a domain in the name of a well-known political figure and a Senior Advocate and permanently restrained them from using the same domain and directed them to transfer the said domain in his name^[4].

With the ever-rising cases of cybersquatting, the larger question deserving consideration is whether the domain names are actually capable of distinguishing the subject of trade or service made available to potential users of the internet and whether they deserve due and proper protection and effective regulation with robust mechanism with effective global enforcement as is rendered to a well-known trademark or brand name, and this article aims to dwell in extensio in this limited and niche area of law.

II. REGULATION OF DOMAIN NAMES AND DOMAIN NAME REGISTRARS

REGULATION THROUGH STATUTES

The contemporary strategy for addressing issues related to cybersquatting in India is governed under the realm of the Information Technology Act, 2000 (“IT Act”) and related intellectual property statutes such as the Trade Marks Act, 1999 (“Trade Marks Act”). The Trade Marks Act provides certain measures to indirectly combat cybersquatting, particularly within the realms of trademark infringement and the common law principle of passing off^[5]. According to Section 29 of the Trademark Act^[6], the unauthorized use of a registered trademark, or a similar mark, in a manner likely to cause confusion or deception is considered infringement. Therefore, in the context of domain names, registering a domain identical or deceptively similar to a registered trademark could and is usually construed as infringement. A classic example is a case wherein the Bombay High Court found a domain name containing the word ‘Radiff’ to be infringing upon the well-known trademark ‘Rediff’^[7].

Moreover, the regulations within the IT Act, particularly Section 43 and Section 66, pertain to unauthorized access and damage to computer systems and data. These provisions could potentially be applied in instances of cybersquatting. Nevertheless, it’s crucial to note that these regulations were originally formulated to combat cybercrimes such as hacking, data theft, and virus attacks. This specificity may constrain their effectiveness when addressing cybersquatting cases. Additionally, the rules to the IT Act namely the Information Technology (Blocking) Rules, 2009 and the newly incorporated Information Technology (Intermediary Guidelines and Digital Media Ethics Code), 2021 (“IT Rules 2021”) are other effective forms of blocking and passing relevant orders to the DNRs to ensure compliances when such acts of cyber-squatting are brought before the court.

REGULATION THROUGH INTERNATIONAL BODIES AND POLICIES

Domain Names and DNRs globally are registered and regulated by international bodies such as the Internet Corporation for Assigned Names and Numbers (“ICANN”) which is a non-profit organization that oversees the global domain name system and is responsible for establishing policies and guidelines that DNRs must mandatorily comply. ICANN requires domain registrars to enter into a ‘Registrar Accreditation Agreement’ (“RAA”) which essentially outlines the terms and conditions that DNRs must follow, including their responsibilities and obligations to domain registrants. Importantly, ICANN is also vested with the power to terminate a DNR’s registration that fails to comply with the orders issued by a court of competent jurisdiction.

ICANN has also developed the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) that provides a legal framework for the resolution of domain name disputes and sets out the rules for resolving disputes between domain registrants and third parties who claim infringement of their domain name as the case may be.

UDRP facilitates arbitration instead of litigation when addressing domain name conflicts. Under the UDRP, an individual/body corporate apprehending infringement of its brand, trademark, etc. can initiate action if:-

1. the allegedly infringing domain name is identical or confusingly similar to his trademark or service mark in which the complainant holds rights;
2. owner of the domain name lacks rights or legitimate interests in the said domain; and
3. the domain name has been registered and is used in bad faith. UDRP sets forth a robust mechanism whereby a complaint can be lodged if a domain name is akin to a trademark in which the complainant holds rights,^[8] and flags registrations made in bad faith i.e., if the domain owner lacks legitimate interest or if the name was registered to hinder a competitor.^[9] The policy, prior to registration of any domain name, mandates determination of the fact that whether the domain name sought to be registered is infringing or violating an individual/corporation’s right, by seeing if it is identical or confusingly similar to a trademark, or that it has been made in bad faith, etc.[10]. However, historically, this methodology is not effective from an Indian standpoint given the lack of knowledge and awareness amongst domestic disputes and by and large, it eventually falls upon the Courts for adjudication of the said issues when the same is brought for adjudication.

In the Indian context, a similar process is adopted by .IN Domain Dispute Resolution Policy has been formulated by the .IN Registry (autonomous body formed under National Internet Exchange of India (NIXI)) for resolution of domain name dispute resolution in India.

Yet, even with the mentioned laws in place, it has been observed that the protection and remedy against domain name infringement are not extremely strong and effective, and the only legal recourse to counter the aforestated menaces is through judicial intervention, which too was seldom in the past. However, in recent times, with the rampant increase in internet usage and the e-commerce boom, this area for lack of a better word has exploded by leaps and bounds.

III. JUDICIAL PRECEDENTS BY INDIAN COURTS

With the internet and e-commerce boom, the last decade has observed rampant and growing trends of cybersquatting and misutilization of domain names which are deceptively similar to well-known websites or contain the mark or name of well-known brands with the intent to deceive the general public. Owing to the increase in litigations surrounding this area, Indian courts have had the occasion to deal with various aspects surrounding cybersquatting.

In 2019, the Delhi High Court initiated suo-moto proceedings to address the menace posed by such fake/counterfeit websites and domain names^[11]. One of the important issues to be determined by the Delhi High Court in the said proceedings is the role to be played by DNRs in dealing with the advent of fake/ counterfeit websites and domain names and thereby, have also made DNRs (such as GoDaddy.com LLC) as parties to the said suo-moto proceedings.^[12]

The Delhi High Court in the matter of Snapdeal Private Limited vs. Godaddy.com LLC and Ors.^[13] held that DNRs would fall within the contours of ‘intermediaries’ as defined under Section 2(1)(w) of the IT Act, however, also went on to opine that DNRs also act commercially for a profit as they also provide alternative domain names (in case of unavailability of the domain name sought by the registrant) and in fact charges higher prices for more ‘in demand’ domain names and thereby, also offer infringing domain names for sale to aspiring registrants for a price. Accordingly, the Delhi High Court held DNRs to be liable for trademark infringement for having allowed registration of domain names which were deceptively similar to ‘SNAPDEAL’ and also expounded that the ‘safe harbour principle’ embodied under Section 79 of the IT Act would not be available to the DNRs, to the extent that alternative domain names provided by them to registrants infringed the registered trademarks.

It is important to note that in Snapdeal^[14], while the Delhi High Court injuncted the infringing domain names and also prima facie held them to be liable for trademark infringement, the High Court also clarified that it is not permissible to pass a ‘global’ or ‘omnibus’ injunctive order qua every alternative domain name containing the word ‘Snapdeal’ and placed reliance upon Section 28 and 29 of the Trade Marks Act to hold that the cause of action for trademark infringement has to be with respect to a particular infringing trademark. Accordingly, the Indian courts have taken the position that they will refrain from passing ‘global’ and ‘omnibus’ in futuro injunction orders which would operate on any and all other mirror or newer versions of the rogue and infringing domain names.

However, the Courts have in the case of unauthorized broadcasting and streaming of copyright-protected material, have passed dynamic injunction orders^[15]. More recently, the Delhi High Court in Universal City Studios LLC vs. Dotmovies Baby and Ors.^[16] not only injuncted as many as sixteen rogue websites from streaming copyright-protected content but also permitted impleadment of similar mirror websites or newer versions of the injuncted websites to whom the injunctive directions can be extended upon the filing of an application. In the said case, express directions were issued to DNRs to lock and suspend the rogue websites and also lock and suspend any mirror or newer versions of the rogue websites upon receipt of information and filing of an application by the aggrieved party.

Interestingly, the Bombay High Court in one of the matters had passed a global in futuro injunction order wherein it not only injuncted rogue websites which were clearly infringing the well-known trademark ‘Swiggy’ but also passed an omnibus and global injunction directing DNRs to not register any domain name containing the word ‘Swiggy’ without the authorization of the Plaintiff^[17]. But later on, vide its subsequent order dated January 23, 2023, the High Court varied its earlier order and vacated its omnibus and global injunction on the ground that an action for infringement is necessarily an action in personam and not an action in rem^[18].

IV. ENFORCING DIRECTIONS ISSUED TO DNRs

In August 2022, the Delhi High Court was faced with a precarious issue wherein certain DNRs incorporated offshore refused to comply with injunctive directions issued qua them on the ground that these are not orders issued by courts of competent jurisdiction and further indicated that parties must approach their respective jurisdiction courts and that they would not be bound by orders of the Indian court.

Interestingly, in a batch of suits relating to Cybersquatting, the Delhi High Court had invited a status report from the Ministry of Electronics and Information Technology (“MEITY”) with respect to blocking and locking of the infringing domain names, and implementation of court orders by various DNRs, which may or may not be located in India. In the said status report, MEITY highlighted certain issues such as omnibus blockage of DNRs and their consequent impact on businesses, enforcement of orders qua domestic and foreign DNRs, an effective mechanism for resolution of disputes and raising grievances and requirement of grievance officers under the IT Rules 2021^[19]. MEITY also highlighted that ‘repeated’ non-compliance of court orders by any DNR would be construed as a violation of public order and the website/URL of the non-compliant DNR itself can be blocked by the court under Section 69A of the IT Act^[20].

V. CONCLUSION

In summary, the surge in Internet and social media users has amplified the issue of cybersquatting, posing a formidable challenge for businesses to safeguard their trademarks online. With the expanding use of social media, trademark owners must remain vigilant in monitoring and securing their intellectual property. Addressing cybersquatting, a global problem encompassing advertising and illicit product sales requires proactive measures and comprehensive global initiatives from all stakeholders and given that cybersquatting is a pervasive global issue, it is anticipated to persist as a trademark dispute, encompassing both advertising and the illicit sale of counterfeit products, with varying degrees of severity. Consequently, the crucial objective is to proactively thwart its proliferation and implement comprehensive global initiatives to combat it, spanning the realms of corporate entities and governmental bodies alike.

The Indian Courts acknowledge the need for stringent measures against the illicit registration of domain names with well-known marks. While the courts emphasize compliance with orders, they also recognize the limitations of existing redressal mechanisms, urging the necessity for tailored regulation for better enforcement as the current system grants infringers considerable power, exploiting the automated domain registration process, while the genuine mark owner faces a prolonged and repetitive ordeal in protecting their rights given the global nature of the internet.

The urgent call is for Domain Name Registrars (DNRs) to adjust algorithms, enhancing scrutiny to prevent infringing alternatives as existing abuse policies fall short of an immediate redressal mechanism and therefore,  emphasizing the need for an efficient mechanism allowing trademark owners to seek the cancellation, suspension, or transfer of infringing domain names. Therefore, embracing a well-defined regulatory framework would not only act as a deterrent against rampant domain name infringement but also contribute to a business-friendly environment, boosting confidence in India’s legal system and in turn elevating the integrity and functionality of the Indian landscape, making it an attractive and secure destination for businesses operating in the digital realm.

Footnotes:

[1] Mont Blanc Simplo GMBH vs. Gaurav Bhatia and Ors., 2017/DHC/46, 2018 (73) PTC 300 (Del).

[2] Arun Jaitley vs. Network Solutions Private Limited and Ors., 2011 SCC OnLine Del 2660.

[3] Tata Sons Ltd v. Manu Kosuri & Ors., 2001 SCC OnLine Del 250.

[4] Arun Jaitley vs. Network Solutions Private Limited and Ors., 2011 SCC OnLine Del 2660.

[5] While passing off is not defined under the Trade Marks Act 1999, Section 27 of the Trade Marks Act recognizes the common law rights of a trademark owner wherein the owner can initiate legal proceedings against any person for passing off goods and services as the goods of another person or as services provided by another person. Passing off is also recognized under the Trade Marks Act as a way to protect unregistered trademarks and also prevents unfair competition.

[6] Section 29 of Trade Marks Act, 1999 – Infringement of registered trademarks.—

(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of—

(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark,

is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which—

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.

(6) For the purposes of this section, a person uses a registered mark, if, in particular, he—

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;

(c) imports or exports goods under the mark; or

(d) uses the registered trade mark on business papers or in advertising.

(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising—

(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

(b) is detrimental to its distinctive character; or

(c) is against the reputation of the trade mark.

(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.

[7] Rediff Communication Ltd v Cyberbooth & Anr., 1999 SCC OnLine Bom 275.

[8] Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145.

[9] Arun Jaitley v. Network Solutions Private Limited, 2011 SCC OnLine Del 2660.

[10] Rule 2 and 4(a), Uniform Domain-Name Dispute-Resolution Policy.

[11] Court on its own motion vs. Ministry of Electronics & Information Technology and Ors., W.P. (C) No. 4791/2019.

[12] The next date of hearing in this matter before Delhi High Court is January 9, 2023.

[13] Arun Jaitley vs. Network Solutions Private Limited and Ors. (2022) 90 PTC 596.

[14] Arun Jaitley vs. Network Solutions Private Limited and Ors. (2022) 90 PTC 596.

[15] ^{Order dated 22 August 2022 passed by Delhi High Court in CS (Comm) No. 567/2022 titled ‘Star India Private Limited and Anr. Vs. MHDTV.WORLD & Ors.’.}

[16] 2023 SCC Online Del 4955.

[17] Order dated 29 November 2022 in Commercial IP Suit (Lodging) No. 26549/2022 before Hon’ble High Court of Judicature at Bombay.

[18] 2023 SCC OnLine Bom 227.

[19] Order dated March 27, 2023 passed by Delhi High Court in CS (Comm) No. 135/2022 titled ‘Dabur India Limited vs. Ashok Kumar and Ors.’.

[20] Order dated March 27, 2023 passed by Delhi High Court in CS (Comm) No. 135/2022 titled ‘Dabur India Limited vs. Ashok Kumar and Ors.’.