CONTENTIOUS ISSUES OF DOMAIN NAME WITH SPECIAL REFERENCE TO DOMAIN NAME REGISTRATION
Authored By- Nirmala Singh
The main problem in domain name is with its registration as there is no proper investigation before registering the domain name to avoid the possible conflict. So the person with bad intention register domain which looks similar to a well-known domain creating consumer confusion and disparaging the goodwill of the well-known domain leading towards unfair trade practices. When these kinds of disputes arise there is a problem of jurisdiction as the internet is global and it is not a geographical network, it knows no boundaries. This chapter will discuss about the issues of domain name like registration issues, unfair trade practices issues, jurisdiction issues and particularly on the issues of non-availability of direct laws on domain name.
The Registration Issues
Domain name registration is the initial step. A company's domain name is its online identity; without one, buyers would have no idea where to look for it. Given how easy it is to acquire a domain name, this type of issue often arises when a company's trademark is challenged. When weighed against potential economic damages or legal fees, the cost of registering a domain name is negligible.
In contrast to trademark registries, which perform a thorough examination process to determine possible conflicts, domain name registries typically just check the availability of a given second-level domain (SLD)/top-level domain (TLD) combination to make sure no duplicate domain names are allocated. Therefore, it is feasible for a party with no relation to a trademark to register the trademark as a second level domain and prevent the lawful owner of the mark from registering the mark in the same second level domain.
Most registers also have a first-come, first-served principle, which might cause problems for those trying to register. Therefore, the domain name will go to the first person who registers for it. Given that, no additional checks are made to see if the domain name is already being used as a trade name or anything of the kind. As a result, cybersquatters now have still another reason to register a mark before its legitimate owner and then sell it for a high price. Typosquatters register domain names containing misspelt terms or huge, famous websites with malicious purpose leading to unfair commercial practises, much like cybersquatters register domain names containing prominent trademarks with the goal of generating an unlawful profit from them or misusing them.
Whenever a corporation or organisation becomes well-known, its name and logo are added to the Uniform Resource Locator (URL). For instance, if a person has a huge business called “abc” services and trademark saying ‘abc’ service; people will obviously think that the website will be www.abcservices.com. But since ‘abc’ company did not think about registering this domain the other people get the opportunity on the web and accordingly bought the URL. Now to host its own website and to prevent damage to its reputation, ‘abc’ services will have to buy back the URL from whoever purchased it. Even if a company have a site say www.abc.com, cybersquatters will register a different top-level domain like say ‘abc.net’ or ‘abc.in’ in a hope that the main website will someday buy it off their hand at handsome profit.’
People make typographical mistakes while entering in the address box. It is standard practise in the banking industry for scammers to purchase domains that seem identical to the legitimate URL but contain a mistake. An someone may have purchased the domain name "Instagrom" with the purpose of deceiving others, given that the name "Instagram" already exists and enjoys widespread popularity. Typosquatters want to do harm, steal people's identities, and make money through cybersquatting. In order to gain the trust and business of others, cybersquatters and typosquatters engage in unfair commercial practises such as deception, fraud, and unethical conduct (such as misrepresentation). Because there is a possibility that consumers will be misled or confused as to the origin of goods, such actions fall under the category of unfair trade practises. Thus, domain name registration is at the heart of the issue of domain name conflicts that spark unethical business activities.
Domain name conflicts arise when multiple parties (in different industries or jurisdictions) want to register the same name. Firstly, when the same mark was owned and utilised by various people in relation to distinct goods or services, leading to a situation where a dispute arose. Second, when different people in various nations use the same trademark for the same products.
'Since trademarks and domain names are essentially the same thing, trademark infringement and domain name conflicts are essentially the same thing. Challenges to the legislation have arisen from the wide discrepancy between the scope and nature of protection afforded to trademarks and domain names. Because of its essentially national nature, the trademark can be held by more than one individual simultaneously. It's possible that this occurs in many nations for the same products or services.
To advertise their businesses online, several owners of the same trademark could be interested in registering the trademark as a domain name. However, only one person can possess a domain name at a time, and this is a problem because domain names are unique. The first person to register a trademark as a domain name would have exclusive rights to use that mark online, preventing any other trademark holders from doing so. As a result, disagreements arise between others who use the same brand. In this predicament, what further action may be taken?
The sign-up process is first-come, first-served. Someone's right to use a trademark, corporate name, or long-standing usage of a trade name does not entitle them to demand that someone else, who registered and is using the domain name for legal purposes, give it up. Because of this, adjudicators face a significant task when dealing with disputes involving valid claims, especially when there is no clear legal resolution to be found.
There are also issues of domain name owing to the following reason: It is a virtual company registered online, one cannot know the authenticity of the company without special efforts. Therefore to know whether the authentic physical company has registered in its name or some other unauthorised person with various motives has registered, a proper investigation is required before registering the domain name which is not the part of procedure yet.
Further when the authentic physical company wants to register domain in its name there would be a problem for authenticity if domain name already registered with someone else.
Here the genuine domain name owner will be bound to face adversities because of someone’s bad motive to earn out of this situation. Here the issue becomes more complex because the domain name cannot be legally own by the right owner since it is licensed to another person or company by the relevant registries in return for fee however with some hidden motive.
A jurisdiction is a state or other area in which a particular court and system of laws has authority. 
The internet makes it simple to conduct business globally, but also increases the complexity of doing so. Going this route results in the proliferation of cyberspace's inherent overlap between legislative and judicial spheres. There are considerable offline spillover effects in many national jurisdictions even when domain name owners construct websites with worldwide online visibility. As a result, competing claims to authority have arisen between various national legislatures and courts and between various national and international organisations. ‘The collisions between trademarks and the Domain Name System ( hereafter referred to as DNS) are occurring more and more frequently. The 'access dispute' occurs when two or more trademark owners want to register the same domain name. It would be terrible enough if trademark disputes merely involved trademark owners.
Jurisdiction Over Internet
Having several parties in different locations throughout the world who have no real-world links to one other is the root of the internet jurisdiction problem. Then, where does one file a lawsuit against the other? The usual range of requirements consists of two parts: i) The location of the defendant's usual place of residence; or ii) The location of the event giving rise to the claim, if different.
Cyberspace is the electronic medium of computer networks where online communication takes happen, however establishing either of these things is problematic in the context of the internet. Given the virtual absence of territory that characterises the internet, can a court order a defendant to
appear before it for actions done in "Cyberspace"? Because of problems like these, judicial rulings concerning internet jurisdiction are often muddled and contradictory. Because cyberspace is not limited by physical location, it enables instant, global communication between everyone with Internet connection. Most of the time, a user has no idea from where a site is being viewed, making international data privacy a major concern online. In this context, jurisdictional concerns take centre stage. Internet users are nonetheless subject to the laws of the jurisdictions in which they physically reside, as the Internet does not clearly demarcate geographical or jurisdictional borders. That's why it's possible for someone to be sued in any jurisdiction, domestic or international, thanks to their World Wide Web use and connected online actions. Consequently, it is necessary to ascertain, in each circumstance, whether or not the user's online activities would expose them to the jurisdiction of a far-flung state or a foreign corporation.
Therefore, a single transaction may be subject to the laws of at least three different jurisdictions:
i. the user's home state or country;
ii. the home state or country of the server hosting the transaction; and
iii. the home state or country of the other party to the transaction.
This means that a user in one of the Indian states may be subject to the laws of India, Britain, and Canada all in regards to the same transaction if it were to take place on a server located in Canada. It is possible for a country's laws to have an effect outside its borders, known as "extra-territorial effect." As the Internet is a medium that does not have any inherent territorial restrictions, this is a particularly pressing issue. Such concerns are often dealt with using conflict of law principles, in particular private international law, as there is no unified, international jurisdictional law of universal applicability. If the information presented on a website complies with local laws but is prohibited outside, this is an example of regional divergence. When there isn't a single set of rules to follow across all jurisdictions, lawyers face a conflict of laws problem.
In this way, the central issue in cyber law is whether or not the Internet should be regulated in the same way as any other part of the physical world (and thus be subject to the laws of a given jurisdiction) or whether it should be treated as a separate world (and thus be free from such regulations). Those who advocate the latter position frequently argue that government should let the Internet community to self-regulate.
The reality, however, is that a person is subject to the laws of the country or state from which they use the Internet. However, when these lawsuits have an international component, this system becomes problematic. Put another way, something that is perfectly lawful in one country may be completely prohibited in another.
POSITION IN INDIA
In all procedural problems, the principle of lex foris (The Law of the Court or Forum) applies with full force. The use of any process established by a different legal system is prohibited. According to a recent case, Ramanathan Chettiar v Soma Sunderam Chettiar Indian courts recognise the long-standing principle of private international law that the law of the forum in which legal proceedings are filed regulates all questions of process.
The Code of Civil Procedure, 1908 governs issues of personal jurisdiction in India. For international private conflicts, the Code does not provide a distinct set of principles for jurisdiction. Detailed instructions on how to comply with the procedure's requirements while serving someone outside of the country are included. A question of geographical competence arises in an international private dispute in the same way that it does in a domestic dispute, but the question of subject-matter competence is considered differently. The Code has broad regulations concerning jurisdiction based on monetary threshold, subject matter, and territorial extent. Jurisdictional boundaries for filing lawsuits are laid forth in Sections 16 to 20 of the Code.
Rules As To The Nature Of Suit
Cyberspace cases may fall under Section 20 of the Criminal Procedure Code. Where either (a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or where (b) any of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or where (c) any of the defendants, where there are more than one, actually and voluntarily resides, or where (d) any of the defendants, where there are.
Rules Enforcing ‘‘Agreement Of Parties’’
In cases when more than one court has jurisdiction over a given subject, it is well-established under Indian law that parties may agree to have their case heard exclusively by one of those courts. Therefore, the notion of party autonomy is acknowledged and given effect to under Indian law.
It follows that the legal standing on the issue is that, first, a choice of law agreement is permissible, and, second, the agreement operates only with respect to a court that does not otherwise lack inherent jurisdiction. When considering whether court has jurisdiction, the courts always weigh the factors of convenience and the interests of justice. Accordingly, in India, it is an established concept that a court's jurisdiction can be invoked if the defendant has a place of habitation within the court's jurisdictional boundaries. Even though the defendant is not physically present in the forum state, he may nevertheless be subject to the jurisdiction of the forum court if he does business there. The physical proximity of India to the alleged wrongdoing is another justification for the courts there to use their power of adjudication. When it comes to this issue, Indian courts have consistently taken the stance that they have the authority to render judgements even against non-resident foreigners provided that the cause of action arises wholly or partially within the court's geographical jurisdiction.
Jurisdiction In Case Of Cyber Crime
There must be connectivity between the regulating nation (the forum) and the crime or criminal for a national court to decide criminal and regulatory punishments at the international level. Some courts have used four nexuses to assert their authority.
According to the territoriality nexus, jurisdiction over a crime is established by the location at which it was committed, in whole or in part.
To determine jurisdiction, the nationality nexus considers whether the offender has a connection to the country of origin of the victim.
When a forum's national or international interest has been harmed by an offender, the protective nexus might establish jurisdiction.
In accordance with the universality nexus, a court can hear cases involving crimes like piracy, slavery, assaults on or hijacking of aeroplanes, genocide, war crimes, and crimes against humanity since they affect people all over the world. The existence of such links is insufficient; there must also be a "reasonable" relationship between the forum and the individual or event in question. Depending on the specifics of the case at hand, the following may or may not be taken into account by the court when deciding what is reasonable:
How much of the illegal or regulated behaviour actually occurs in the forum state or how much of an influence it may reasonably be expected to have there; How strong the defendant's or plaintiff's "genuine link" (i.e., true and continuing connection) is to the forum; What kind of activity it is (how significant it is to the forum, whether or not other nations control it, and whether or not most countries think it should be regulated); The degree to which the regulation may promote or inhibit reasonable expectations; How much interest there is in regulation of the activity in another nation, and how likely it is that this action may collide with the laws of that country; Relevance of the rule to the global society; and The extent to which the legislation is compatible with the traditions of the world community.
Extra Territorial Jurisdiction
The biggest issue occurs when a foreign national does harm to a native population; in India, for instance, the Information Technology Act, 2000 does have extra territorial jurisdiction, but it is extremely difficult to implement and apply. If a US citizen commits a crime in Delhi by hacking the systems of an Indian company, the most the court can do is issue an order in favour of the plaintiff. However, the question then arises of how to punish the US citizen; after all, the only thing the hacker has to do to avoid punishment is not to travel to India. Even though hacking is still a serious felony, it can become an issue when it is used to facilitate other offences, such as the publication of pornographic materials online if they are posted by a British resident. Can an arrest be made with the use of international extradition laws? A possible scenario is that while the Act is illegal in India, it is not in his home country. The process of investigating, charging, and prosecuting a suspect often presents challenging jurisdictional issues. When many jurisdictions have equal competence, determining the loci delicti (the site where a crime was committed) can be difficult.
Conflicts In National Trademark Law
While there are certain commonalities between the trademark laws of different countries, the variations create a level of ambiguity that may be a serious cause for anxiety for trademark owners, especially those whose brands are famous and have a global reach. These trademarks, sometimes referred to as "renowned" marks, are typically those that have the greatest advertising and marketing budgets.
Unfair Trade Practices Issues
Another issue to know it before registering by the registrar, that is quite complex as the volume of new registration of domain name is 50,000 to 100,000 per week. Also it Uniform Resource Locator ( hereafter referred to as URL) is case sensitive matter, they cannot identify domain name registration leading towards unfair trade practices while registering 50,000 to 100,000 domain name per week. Though unfair trade practices can arise from a variety of business practices, they frequently appear in connection with the domain name. Following are the cases showing domain name disputes leading towards unfair trade practices:
Google Inc. v. Gulshan Khatri : "Complainant has filed this complaint to dispute Respondent's registration of the domain name googlee.in>." Complainant was upset because Respondent registered a domain name including its trademark, and that Respondent used a service mark that was confusingly similar to Complainant's. Complainant felt vindicated in its assertion that Respondent's sole motivation for registering the disputed domain name was to profit off of the reputation that Complainant had worked so hard to establish. It was further claimed that the challenged domain name was similar to the complainant's domain name in every respect, including appearance, meaning, and significance. The complainant went on to state that the name googlee.in> was plainly linked to the complainant and its company. The claim that the domains were operating as search engines was also made. Complainant further argued that Respondent would gain an unfair advantage from the misunderstanding caused by the disputed domain name, which would negatively impact Complainant's company, diminish Complainant's rights, and put Complainant at danger of fraud.
The complainant also argued that the Respondent registered the disputed domain name on February 17, 2001, despite the fact that the identical domain name, "google.in," has been actively servicing customers across the world since 1997. Also, the complaint claimed that it had not given the respondent permission to use its trademark or logo in any way. The respondent did not dispute that the complainant was aware of or making use of the GOOGLE trademark or domain name. Following a finding that the domain name at issue, "goooglee in," was identical or confusingly similar to the complainant's previously registered domain name and trademark, the arbitrator ordered the domain name be deleted from the registry and transferred to the complainant.
Morgan Stanley v. Bharat Jain: Respondent Morgan Stanley registered the contentious domain name www.morganstanleybank.co.in on June 20, 2010. The complaint argued that the inclusion of the ccTLD ".co. in" did not sufficiently differentiate the contested domain name from MORGAN STANLEY. That's why the domain name in question was obviously comparable to the trademark in question. It was further claimed that the respondent lacked a right or genuine interest in the challenged domain name since he was not generally recognised by the mark MORGAN STANLEY. In terms of bad faith, it was claimed that the respondent registered the disputed domain name to divert traffic away from the complainant's website (which is located at www.morganstanley.in) and make a profit off of the confusion. A knowledgeable arbitrator determined that the contested domain name is confusingly similar to the complainant's trademark and domain name MORGAN STANLEY since both are composed of a single coined word that is extremely unique in character. The learned Arbitrator agreed with the Complainant that Respondent has no rights or legitimate interests in the contested domain name since Respondent is not commonly recognised by the Complainant's trademark. Respondent, through one of its customers, had attempted to sell the disputed domain name to the complainant when the latter sent a cease and desist letter, which indicated that the domain name had been registered and used in bad faith and with the intent to offer the disputed domain for sale to the complainant or to a competitor for valuable consideration.
Yahoo! Inc. v. Akash Arora & Anr: "The present suit has been filed by the plaintiff against the defendants in order to obtain a decree of permanent injunction prohibiting the defendants and their partners, servants, and agents from conducting any business or selling, offering for sale, advertising, and otherwise dealing in any services or goods on the Internet or otherwise under the trademark/domain name "Yahoo India.Com" or any other mark/domain name which is identical with or deceptively similar to the plaintiff's mark/domain name.
In addition, the plaintiff has filed an application under Order 39, Rules 1 and 2 of the CPC, seeking a temporary restraining order to prevent the defendants from conducting any business under the trademark/domain name "Yahoo India.Com" or any other mark/domain name which is identical with or deceptively similar to the plaintiff's trademark "Yahoo!" Mr. Kapil Sibbal, counsel for the plaintiff, argued that the plaintiff is the owner of the well-known and distinctive trademark and domain name "Yahoo!" and that the defendants, by using the name "Yahooindia" for similar services, have been passing off the services and goods of the defendants as those of the plaintiff's trademark "Yahoo!," which is identical to or deceptively similar to the plaintiff's trademark. Claimant's domain name/trademark should be afforded the same protection against passing off as any other trademark, it was argued. In support of his submission, the learned counsel heavily relied upon the ratio of the decisions in Marks & Spencer Vs One-in-a-Million; reported in 1998 FSR 265. It was argued that trademarks and domain names are not mutually exclusive and that there is overlap between trademarks and services rendered under domain names, and that by adopting a deceptively similar trademark ('Yahooindia,') the defendants have copied the format, contents, layout, colour scheme, and source code of the plaintiff's previously created regional section on India at Yahoo.com.sg, passing off their services as those of the plai. He argued that Internet users know to look for a company's Web site by typing in something like "www.(company name).com" or "www.(product name).com" if they don't remember the Company's Internet address. This is because Internet users are accustomed to companies choosing domain names that incorporate their company name, well-known trademark, and/or product/service name. Therefore, it is not out of the ordinary, in his opinion, for someone seeking for an official "Yahoo!" site with India-specific information to put in "Yahooindia.com," i.e., the domain name of the defendants, and wind up at the defendants' website rather than the plaintiff's.
He further pointed out that the plaintiff has a lot of information on India available under the 'Regional:Countries:India' category on Yahoo.com and the 'Yahoo! Asia' site. It was argued that because the defendants are competing with the plaintiff in the same market, they have engaged in "cyber-squatting," which is a form of trademark infringement, by using a mark that is confusingly similar to the plaintiff's trademark, which is "Yahoo.com," which has established a strong brand identity.
In response to the foregoing, it was argued that the provisions of the Indian Trade Marks Act do not apply to the facts and circumstances of the current case since they pertain solely to products, and the Indian Trade Marks Act does not apply to trademarks for services. Also, it was argued that the plaintiff's domain name and trademark, "Yahoo!," are not registered in India, so there can be no action for infringement of the registered mark or passing off, since the services provided by the plaintiff and the defendants cannot be considered "goods" under the Indian Trade Marks Act, which is concerned only with goods and not services. In addition, he said that the defendants could not be held liable for passing off since the term "Yahoo!" is a common dictionary phrase that is not used and so cannot have gained any uniqueness, and because the defendants have been employing disclaimer, there is no possibility of deceit. He also argued that the Internet users and site-seekers are all technically savvy and literate adults, so no one would accidentally click on the defendants' site thinking it was the plaintiffs'. This would rule out the possibility of trademark infringement and passing off on the part of the defendants, he said. Taking into account the foregoing, I will now decide if the plaintiff has established a plausible basis for the interim injunction requested in the application. Since January 18, 1995, the domain name "Yahoo.com" has been registered in the plaintiff's name with Network Solution Inc. "Yahoo!" and variations on the name are registered or pending registration as trademarks in 69 countries across the world. Records show that Yahoo!, the complainant, has a pending trademark registration application in India. The plaintiff, known as Yahoo! in the domain and trade name, is a global Internet media rendering service. The Internet is a system of interconnected computer networks that provides access to millions of computers worldwide.
It's common knowledge now that the Internet is a global network, a means of communication that connects people from all over the globe who have access to its network.
Corporations, goods, and a wide range of educational, leisure, economic, and government-related activities and services are all available online. Domain names are the unique identifiers given to computers and other devices that may access the Internet. Using the 'com' extension and registering with Network Solutions, Inc. does the same thing. In the context of the Internet, a domain name is used to uniquely identify a specific machine or group of machines inside a smaller network. Setting up a website is one method of gaining an online presence. The lawsuit claims that the plaintiff was one of the first to use the domain name "Yahoo," as well as to create a web directory and offer search engine services. In June of 1994, the plaintiff chose the term Yahoo!, which at the time had a specific meaning in the dictionary, as the domain name/trade name for the directory service it was offering on the Internet. It's not disputed that the plaintiff offers a wide range of services, including those targeted at a regional audience. It was argued that as the popularity of the plaintiff's 'Yahoo!' grew in India, many third parties began using names that sounded similar in an attempt to capitalise on the plaintiff's trademark and name recognition. The defendants were named as one such party that had adopted the 'Yahoo!' trademark and domain name. One argument put forth was that the plaintiff's domain name, "Yahoo!," is not used in connection with goods but rather with services, and that because of Sections 27(2) and 29 of the Trade Mark Merchandise Act (hereinafter "the Act"), the plaintiff cannot plead for action of passing off in connection with such services. The learned counsel used Section 2(5), Sections 27,29, and Section 30 of the Act to buttress his argument that only products are eligible to be the subject of a passing off or infringement action. Admittedly, this is not a trademark infringement case, but rather a passing off issue.
Passing off is a fairly defined area of law. The theory behind the lawsuit is that no one has the right to conduct business in a way that may mislead customers into thinking they're dealing with the owner of another company, or that he has any affiliation with the company in question. Passing off actions are also recognised as a common law remedy. As acknowledged by Section 27(2) and Section 106 of the Trade and Merchandise Marks Act, 1958, activities of passing off are governed by common law rules. This annotated version of P. Narayanan's widely cited Trademarks and Passing Off: A Treatise on the Law of Trademarks and Passing Off may be consulted for further information.
That treatise, in its fourth edition, states at paragraph 25.102 as follows: "The general principles of the law applicable to cases where a person uses a name or Intends to use a name which is likely to deceive and divert the business of the plaintiff to the defendant or cause confusion between the two businesses are analogous to the principles which are applicable to ordinary cases of passing off relating to sale of goods."
Reference may be made to the decision of this Court in Monetary Overseas Vs. Montari Industries Ltd ; reported in 1996 PTC 142, and the court, in issuing an injunction against the defendant, reasoned as follows: "When a defendant does business under a name which is sufficiently close to the name under which the plaintiff is trading, and that name has acquired a reputation, and the public at large is likely to be misled that the defendant's business is the business of the plaintiff, or is a branch or department of the plaintiff."
Disputes resulting from technical progress are outside the scope of the law. Although the Indian judiciary has occasionally taken the lead in settling domain name disputes under the Trademark Act 1999, there is no unique legislation pertaining to domain names in India, nor is there a particular provision dealing to domain names in current law. Due to the international reach of the internet, bad faith domain name registration can lead to infringement of a trademark in one country even if the trademark itself was registered in a different country. A disagreement of this nature would raise the question of which law would be used to resolve it and which court would have jurisdiction over the matter. The court is attempting to resolve trademark law domain name disputes.
In case of Yahoo Inc vs. Akash Arora, By awarding injunctions for passing off, the court has introduced the topic of domain names into trademark law. Considering that domain name-related provisions are lacking from the Trademark Act of 1999. Although the Indian judiciary is addressing some domain name disputes using the Trademark Act, the lack of a comprehensive law in this area has left the problem unresolved. "Reverse domain name hijacking" is a newer issue that has arisen. An act of bad faith domain name hijacking occurs when a trademark holder attempts to acquire ownership of a domain name from a party that has not violated any trademark laws and that
has a genuine interest in the domain name. Here, the would-be registrar knows full well that the current registrant has a rightful claim to the disputed domain name. But even now, he has resorted to harassing the domain name proprietor through the judicial system in bad faith. The law also fails to adequately deal with this type of issue.
The transnational nature of domain name conflicts has revealed the insufficiency of provisions in domestic legislation to deal with them. As a result, the Internet Corporation for Assigned Names and Numbers (ICANN) and the World Intellectual Property Organization (hereinafter referred to as WIPO) have developed a policy for resolving disputes involving domain names; this policy is known as the Uniform Domain Name Dispute Resolution Policy (UDRP) (hereafter referred to as UDRP). The Uniform Domain Name Resolution Policy (UDRP) establishes required administrative processes (akin to arbitration) for resolving disputes with domain names. Although the UDRP is widely used to resolve domain name disputes, it does have significant limitations.
The major areas of concern are the narrow scope of application, the limited remedies, the potential for bias towards complainants, forum shopping, the short time gap resulting in hasty decisions without proper reasons, the potential violation of due process, and the possibility of conflicting decisions by Panels. Consequently, trademark owners are drawn to lawsuits brought under domestic law. Lastly, there is a lack of thoroughness in the current system for resolving disputes involving domain names and trademarks. Domain name-trademark issues are outside the scope of both required administrative processes under UDRP and judicial litigation under local legislation.
In another case the defendant registered many domain names using the Tata name in a separate instance. The court ruled that domain names are just as significant as physical addresses since they serve as brand identifiers for businesses. (Tata Sons Ltd v. Monu Kasuri & others 2001 PTC 432).
The World Intellectual Property Organization (WIPO) administrative panel heard a case involving cybersquatting that was filed by SBI Card and Payment Services Private Limited, a joint venture between GE Capital Services, the largest issuer of private label credit cards in the world, and the State Bank of India (SBI), the largest Indian bank. The domain name www.sbicards.com was registered by Domain Active Pty Limited, a company based in Australia.
The administrative panel decided that the Australian company registered the disputed domain name in bad faith since it was likely to mislead consumers looking for products or services from SBI Cards.
In Bennett Coleman & Co Ltd. v. Steven S Lalwani and Bennett Coleman & Co Ltd. v. Long Distance Telephone Company, The arbitrators ruled in the plaintiff's favour. The respondent here had used American networking services to register the domain names www.theeconomictimes.com and www.timesofindia.com. The titles of the Defendant's websites, www.economictimes.com and www.timesoftimes.com, sound quite similar to these two. Furthermore, the respondent's websites employing the disputed domain names divert visitors to another website, www.indiaheadlines.com, which features news from India.
In Satyam Infoway Ltd. v Sifynet Solutions, Similar to the Plaintiff's domain name, www.sifynet.com, the Respondent registered the domain names www.siffynet.com and www.siffynet.net. Satyam (Plaintiff) had an image in the industry and had registered the term Sifynet and numerous other names with ICANN and WIPO. The complainant, using parts from its company name Satyam Infoway, created the word Sify, which has now gained widespread recognition and goodwill in the industry. After much debate, the Supreme Court finally settled on the following: "domain names are commercial identifiers, serving to identify and differentiate the firm itself or its goods and services and to define the appropriate online address." The court further noted that a domain name had all the hallmarks of a trademark and that Passing off can be discovered in cases involving domain names. The court ruled in the plaintiff's favour. In a passing off case, the defendant is ordered to stop misrepresenting the complainant's products or services as their own. It's a move that will protect the public and the complainant's reputation. Cybersquatting cases in India are determined under the passing off doctrine. Cybersquatting is not prohibited under Indian law.
Due to this, domain names are subject to the interpretation of the Passing Off principle by the courts..
Conclusion And Suggestions
According to an examination of several procedures to resolving domain name conflicts, two methods have emerged: the formal legal or court procedure and regulatory authority dispute settlement. According to the UDRP or a similarly modelled version of it, the vast majority of governments have adopted some form of UDRP enforcement. Others have reacted relatively sluggishly to the problem of cybersquatting by implementing trademark laws in an incorrect manner. Reforming the legislation to address domain name disputes includes the following ideas:
First-come, first-served registration policies are the most contentious aspects of domain name registration. Registration of a domain name is a little price to pay for the potential financial harm or lawsuit expenses. The common procedure of registries is to examine the availability of second level domain (SLD)/top level domain (TLD) combination and ensure that no duplicate domain names are allocated, unlike trademarks registries, which undergo a complete investigation process to discover probable conflicts. The legitimate owner of the trademark can therefore be denied the opportunity to register the trademark in the same second-level domain by a third party who has no link at all to the trademark. Additionally, between 50,000 and 100,000 new domain names are registered each week, increasing the likelihood of domain name conflicts. Because a domain name can be held by a single individual, the domain name will go to the first person who applies. Consequently, no other searches are conducted to see if the domain name is being used for something else, like a trade name or something similar. To lessen the likelihood of domain name disputes, streamlining the registration process may be an effective way to combat this problem. As part of a thorough review, the authority should request proof of the applicant's legal right to use the requested domain name (such as an article of incorporation or some other legitimate certificate), and then award registration on a first-come, first-served basis. The registrar should also be held accountable for domain name disputes, according to the legislation. By using this method, the registrar will register domain names with greater care. If a dispute arises, the domain name should be held until a final decision is rendered for a period of time, such as a year at a time for example.
A trademark, on the other hand, has a specific geographic location, whereas a domain name exists in a virtual realm where there is no such limit. Non-governmental organisations (Neutronics) typically administer domain names, which are registered on a first-come, first-served basis and
offer a unique and global presence on the internet. Trademarks on the other hand are administered by a public governmental authority (either national or regional) on a territorial basis, which gives the trademark holder rights that can only be exercised within a territory. Trademarks and domain names, on the other hand, operate in two distinct arenas. Trademark and Domain Name Disputes necessitate separate and distinct regulations because there is no relationship between the two. Domain name disputes can be brought under unfair commercial practises law to resolve them. Because cybersquatters with bad faith intentions are registering well-known trademarks in order to profit from it and create consumer confusion by making them believe that certain goods and services belong to that very well-known company, the domain name disputes are taking the form of unfair trade practises.
The legal system and the regulatory system should work together to resolve these issues, rather than compete with one other. Uniformity in laws dealing with domain name and trademark issues is critical.
Increasing the quality of existing alternative disputes The ability to successfully resolve disputes is critical to achieving success. Having a neutral third-party arbitrator can assist the parties involved in a dispute resolve their differences more effectively. When compared to going to court, it is usually faster and less expensive. Instead of years in court, it can be resolved in weeks or months with the proper application of this technique. Make it easier for the parties (rather than their attorneys or the court) to have a role in the outcome and save money by allowing them an opportunity to present their side of the story and have a say in how the case is resolved. Instead than focusing solely on the parties' legal rights and responsibilities, it encourages the parties to come up with creative and flexible solutions by examining what each of them wants to achieve and reducing the stress of court appearances, time, and money.
Unfair business practises in domain names must be punishable by law. Typographically incorrect domains are being registered by cyber squatters looking to profit or damage the reputation of a well-known trademark. When cybersquatters register a domain name with the intent of using it for a pornographic website, this can lead to criminal charges.