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Standing up to domain squatting: secure your IP in virtual world


Domain names are the equivalent of trademarks in business





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Domain squatting is a common nuisance for many a company that strives hard to protect its IP rights for its business.
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MANY OF us may have gone through the ritual of keying in a popular brand name on an Internet search engine, only to be bombarded with a host of websites, having IP addresses identical or similar to the popular brand name.

Welcome to the world of domain squatting where any company possessing fairly good brand recall value stands the risk of being targeted by domain pirates who register domain names identical to the brand name of the company.

The recent decision awarded by the WIPO Arbitration and Mediation Centre that the domain name www.sbicards.com registered by Domain Active Pty. Ltd., Clayfield, Australia, should be transferred to SBI Cards and Payment Services Private Limited, India, has focussed the spotlight yet again on the rampant domain name infringement that companies around the world are battling against.

A common irritant


The problem of domain squatting raises its ugly head now and then when a company conscious of its Intellectual Property rights and vigilant about its protection, suddenly discovers that its trademark is being used by a website or two as the latter's domain name, thus misleading potential customers.

Domain squatting that started off as a relatively singular phenomenon and was the bane of a few large companies, is a common nuisance today and an irritant to many a company that strives hard to protect and lawfully exploit its IP rights for its business.

Any title or name or mark or brand or identity in any field of activity or a trade name over which a particular individual has the exclusive, prior and lone claim can be commonly termed as the domain name or trade mark for that activity. Domain names in the virtual world are the equivalent of trademarks in actual business; both are identified with a particular company, its business and its products.

Domain pirates


However, a large number of trademarks possessing the same name can exist in perfect harmony if they deal with different products or are situated in different jurisdictions.

But since a domain name has a global audience associating it with a particular brand name, there is no other option but for that domain name to be `The One.'

This explains why the offence of domain squatting is directly proportional to the quality, reliability and excellence associated with a company's trademark. Domain squatting occurs when persons, otherwise termed as domain pirates, register domain names that are identical to or strongly resemble a company's famous trademark, thus effectively compelling the company to ultimately buy that domain. Household names such as Microsoft and Tata have been specifically targeted by domain pirates, and popular websites having mass appeal content such as Tehelka, Naukri, Sify, Rediff and Yahoo have not been spared either.

The 1998 landmark judgment of Marks and Spencer PLC v One In A Million Ltd set the trend in prosecution of domain pirates. Several domain name disputes have been decided by Indian courts, the first in the series being Yahoo! Inc. v. Akash Arora and Another in 1999. This was followed by other disputes including the recent case of Buffalo Networks Private Limited v Manish Jain in February 2005 regarding the domain attack on tehelka.com.

Indian courts have strongly condemned the practice of domain squatting and repeatedly restrained domain pirates from using the deceptive domain name or the word brand name or any other word comprising the same or deceptively similar to it on the internet.

WIPO's online arbitration


The WIPO Arbitration and Mediation Centre has been resolving domain name cases using online arbitration since 1999.

The process is conducted by the ICANN (Internet Corporation for Assigned Names and Numbers), a non-profit organisation responsible for IP address space allocation, protocol assignment and DNS management situated in the U.S.

Complainants coming before the WIPO have to establish that (i) the domain name challenged should be identical or confusingly similar to a trademark or service mark of the complainant (the person or entity bringing the complaint), (ii) The domain name registrant has no right or legitimate interest in respect of the domain name in question, and (iii) the domain name has been registered and is being used in bad faith.

Bad faith can be proved if it can be shown that the sole purpose of registering the domain name was to sell it at a later stage for consideration over and above the normal value, or to obstruct the owner of the trademark from registering his own domain name, or to disrupt the business of a competitor, thus amounting to an unfair trade practice, or for monetary gains from increasing use of the domain by unsuspecting users.
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Some Indian

success stories


The WIPO has been instrumental in securing Bennett, Coleman the eviction of domain squatters from thetimesofindia.com and theeconomictimes.com, which were deceptively similar to their brands of newspapers.

Other Indian success stories include those of TATA and Philips India that got back the domain names `www.tata.org' and `www.philipsindia.com' respectively.

As of September 2005, India had filed 86 cases before the WIPO Arbitration and Mediation Centre against domain pirates all over the world.

Since the proceedings are online and are normally completed within 45 to 50 days, it is becoming the most preferred means to resolve domain name disputes. This online dispute resolution mechanism also solves the dilemma regarding the jurisdiction of national courts over foreign domain squatters.

A major drawback in this system is that the WIPO decision can be challenged by the domain squatter in the national courts. It is essential that the WIPO Administrative Panel's decision is made binding to combat this menace. Enhanced sensitivity and awareness regarding IP protection in the virtual world will be the most powerful deterrent in the days to come.





SURYA SENTHIL


Head, Technology Law Division,
Surana & Surana International Attorneys

From The Hindu
Online edition of India's National Newspaper
Monday, Jan 09, 2006

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