Cybersquatting and Domain Name Disputes

Under the Trademark Law

Bhavna Singh, LL.M. (IPR), II Year

NALSAR University of Law, Hyderabad

Table of Contents
Pg
Table of Cases
Introduction
Chapter 1 Fundamentals of Domain Name
Chapter 2 - What is Cybersquatting?
Chapter 3 Cybersquatting and Domain Names under the Trademark Law
Chapter 4 - ICANN dispute resolution policy
Chapter 5 Conclusion
Bibliography

ii
iii
1
8
13
22
30
v

Table of Cases
AT&T Knowledge Venture v. Rnetworld
Bennett Coleman & Co Ltd. v. Long Distance Telephone Company
Bennett Coleman & Co Ltd. v. Steven S Lalwani
Brookfield Communications, Inc. v. West Coast Entertainment Corp
Card service International Inc. v. McGee
Dr. Reddys Laboratories Limited v. Manu Kosuri
Harrods Ltd. v. UK Network Services Ltd
Hasbro, Inc. v. Clue Computing Inc
Intel Corporation v. Anil Handa
Intermatic v. Toeppen
Manish Vij v. Indra Chugh
Marks & Spencer v. One-in-a-Million
Maruti Udyog v. Maruti InfoTech
Panavision v. Toeppen
Prince Plc v. Prince Sportswear Group Inc
Rediff Communication v. Cyberbooth
Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd
Satyam Infoway v. Sifynet Solutions
Satyam Infoway v. Sifynet Solutions, AIR 2004 SC 3540
SBI Cards and Payment Services Private Ltd v. Domain Active Pty Ltd
Shell Oil Co. v. Commercial Petroleum Inc., 928 F.2d. 104, 107 (4th Cir. 1991)
Sportys Farm, LLC v. Sportsmans Market, Inc
Tata Sons Ltd v. Manu Kosuri
Titan Industries Ltd. v. Prashanth Koorapati
Virtual Works, Inc. v. Volkswagen of America, Inc
Yahoo Inc. v. Akash Arora

ii

Introduction
Research Objective:
The theme of the paper is Cybersquatting and Domain Name Disputes under the
Trademark Law. Cyber squatting cases have increased tremendously in the past few years
after the advent of the internet. There are so many instances of abusive domain name
registration and infringement of trademarks on the internet that law of trademark has
extended its purview to domain names as well. Most of the domain name disputes and
cybersquatting cases are dealt under the passing off when there are no specific provisions
on the issue.
The purpose of the paper is to analyze the issues of cybersquatting and domain
name disputes and the legal position under the trademark law for protection of
trademarks in the cyberspace.
Research Methodology:
Style of Writing:
The research paper is analytical in nature. The research paper deals with the
crucial aspects of the cybersquatting and domain name disputes. The legal position of
protection of trademarks from abusive domain name registration and infringement in
various jurisdictions and dispute resolution mechanism are discussed by way of case laws
in the paper.
Sources
Primary and Secondary sources of information have been utilized in the writing of
this research paper.

Mode of Citation:A uniform mode of citation has been followed throughout the paper.
Articles: - [Author], [Article], [Journal], [Volume number], [Year of publication],
[Page number].

iii

Books: - [Author], [Book], [Edition and Year of publication], [Publisher], [Place of

publication], [Page number].
Cases: - As per the citation method followed in the books reporting cases.
Websites: - [Title of the webpage], [Website address], [Date on which webpage was
accessed].
Research Scheme:
The research paper has been written in the form of chapters starting with
introduction part and summary of the conclusion will follow after entire discussion.

iv

Chapter 1 Fundamentals of Domain Name

Trade marks are signs, distinguishing the products of one marketer from similar products
of other marketers. They are badges indicating the origin of the marked products and
symbols of the goodwill that trade mark owners possess. Society needs trade marks
because they function as communicators. They enable consumers to distinguish between
products and allow marketers to offer products of diverse qualities at diverse prices.
Without trade marks the market economy based on choice would break down into a
number of single product markets. For each type of product there would be only one the
lowest marketable quality, at one the lowest possible-price. For the market to work
efficiently, though, the information carried by trade marks must be trustworthy. George
Akerlof has examined the collapse of markets where consumers do not trust the
information conveyed by marketers.1 Trade marks also need to be distinctive in order to
function as communicators. The closer they are to the marked product the less distinctive
they are and, as a result, less appropriate to function as distinguishing signs for that
product. A trade mark, like any other sign, has to signify something else rather than itself
in order to function as a trade mark.2
The use of a trademark benefits the merchant or manufacturer of a product as well as
consuming public. For the merchant or manufacturer, a trademark serves as an
advertising tool, facilitating repeat sales, and the successful marketing of new products. 3
Individual consumers rely on trademarks to distinguish among competing products and to
represent a certain level of quality that they have come to expect when purchasing
products or services with which a particular mark is used.4
As with other forms of intellectual property, trademark constitutes property rights
conferring upon the proprietor, the exclusive right to certain forms of use of the mark. 5
The traditional aim of trademark law is was to protect against consumer deception in the
1

G. Akerlof, The Market for Lemons: Quality Uncertainty and the Market Mechanism, (1970) 84/3
Quarterly Journal of Economics, p. 488
2
Spyros M. Maniatis, Trade Mark Law and Domain Names: Back to Basics, EIPR 2002, 24(8), 397-408
3
Shell Oil Co. v. Commercial Petroleum Inc., 928 F.2d. 104, 107 (4th Cir. 1991)
4
Michael E. Epstein, Intellectual Property, 5th ed., 1st Indian Rep. 2008, 7.01[C]
5
Ian J.Llyod, Information Technology Law, 5th ed., 2008, p. 427

1|Page

market place through the protection of the trade marks and badges of origin. Gradually,
property rights on the goodwill conveyed by the trade marks and, more recently on
trademarks as such have been recognized.6
With the developments in information technology, the business and trade have also
become technology oriented and have expanded their market by promoting themselves
through new technical advancement. The significance of the internet has augmented with
the online business transactions in trade and therefore, the trademarks are playing a vital
role in cyberspace for the business. Therefore, it is required for a business to protect its
trademarks and goodwill so as to retain customers and increase marketability online.
What are domain names?
An Internet domain name is a string of typographic characters used to describe the
location of a specific location online. Formally known as the Uniform Resource Locator
or URL, it is often considered to be the address of a certain Web site. Obtaining an
Internet domain name is a vital step for small businesses hoping to establish a presence
on the Internet.7 A domain name is, simply, the alphanumeric equivalent of an Internet
Protocol ("IP") number. The primary function of the DNS is to link or map these difficultto-remember IP numbers to their equivalent domain names, thus making the internet
more user-friendly; for example, www.soton.ac.uk/~library8 is easier to remember than
152.78.128.149. The IP number and the equivalent mapped domain name both identify
each computer site connected to the internet; no two organisations can have exactly the
same domain name.10

The Domain Name System (DNS) helps users to find their way around the Internet.
Every computer on the Internet has a unique address - just like a telephone number 6

S. M. Maniatis, Trade Mark Rights: A Justification Based on Property, [2002] I.P.Q. 123
http://definitions.uslegal.com/i/internet-domain-names/, accessed on August 28, 2009.
8
location of the University of Southampton Library website
9
The IP number for the University of Southampton Library website.
10
Caroline Wilson, Internationalized Domain Name Problems and Opportunities C.T.L.R. 2004, 10(7),
174-181
7

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which is a rather complicated string of numbers. It is called its IP address (IP stands for
Internet Protocol). IP Addresses are hard to remember. The DNS makes using the
Internet easier by allowing a familiar string of letters (the domain name) to be used
instead of the arcane IP address. So instead of typing 207.151.159.3, you can type
www.internic.net. It is a mnemonic device that makes addresses easier to remember.11
Internationalized Domain Names, or IDNs, are web addresses in your own language.
Many efforts are underway in the Internet community to make domain names available in
character sets other than ASCII. These internationalized domain name (IDN) efforts
were the subject of a 25 September 2000 resolution by the ICANN Board of Directors, in
which it recognized that it is important that the Internet evolve to be more accessible to
those who do not use the ASCII character set, but stressed that the internationalization
of the Internet's domain name system must be accomplished through standards that are
open, non-proprietary, and fully compatible with the Internets existing end-to-end model
and that preserve globally unique naming in a universally resolvable public name
space.12
A typical domain name consists of several parts. As an example, consider an auto parts
business with the domain www.spareparts.com. The letters www. before the domain
name mean that what follows describes the location of a site on the World Wide Web. The
last two or three letters of a domain name or URL are known as its top-level domain. The
top-level domain for the sample used earlier, www.spareparts.com is .com. Some of the
most common top-level domains include .com, which usually indicates a business or
commercial site; .org, which generally describes a nonprofit, charity, or cultural
organization site; .gov, which indicates a governmental site; and .net, which is most often
used by network-related businesses. Other common top-level domains are country codes,
like .us for United States and .au for Australia, etc. Small businesses can put as many subdomains as needed in front of their domain names. For example, the customer service
department of the aforementioned auto parts business might be designated as

11
12

http://www.icann.org/en/general/glossary.htm, accessed on August 19, 2009.

Ibid.

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www.service.spareparts.com13.
Top Level Domains (TLDs) are the names at the top of the DNS naming hierarchy. They
appear in domain names as the string of letters following the last (rightmost) ., such as
net in www.example.net. The administrator for a TLD controls what second-level
names are recognized in that TLD. The administrators of the root domain or root
zone control what TLDs are recognized by the DNS. Commonly used TLDs include
.com, .net, .edu, .jp, .de, etc. 14 There are mainly two types of TLDs:
a) Generic Top Level Domain gTLD
Most TLDs with three or more characters are referred to as generic TLDs, or gTLDs.
They can be subdivided into two types, sponsored TLDs (sTLDs) and unsponsored
TLDs (uTLDs). 15
In the 1980s, seven gTLDs (.com, .edu, .gov, .int, .mil, .net, and .org) were created.
Domain names may be registered in three of these (.com, .net, and .org) without
restriction; the other four have limited purposes. Over the next twelve years, various
discussions occurred concerning additional gTLDs, leading to the selection in November
2000 of seven new TLDs for introduction. These were introduced in 2001 and 2002. Four
of the new TLDs (.biz, .info, .name, and .pro) are unsponsored. The other three new
TLDs (.aero, .coop, and .museum) are sponsored.16

Generally speaking, an unsponsored TLD operates under policies established by the

global Internet community directly through the ICANN process, while a sponsored TLD
is a specialized TLD that has a sponsor representing the narrower community that is most
13

http://definitions.uslegal.com/i/internet-domain-names/, Supra n. 4
http://www.icann.org/en/general/glossary.htm, accessed on September 15, 2009.
15
Ibid.
16
Ibid.
14

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affected by the TLD. The sponsor thus carries out delegated policy-formulation
responsibilities over many matters concerning the TLD.17
A Sponsor is an organization to which is delegated some defined ongoing policyformulation authority regarding the manner in which a particular sponsored TLD is
operated. The sponsored TLD has a Charter, which defines the purpose for which the
sponsored TLD has been created and will be operated. The Sponsor is responsible for
developing policies on the delegated topics so that the TLD is operated for the benefit of
a defined group of stakeholders, known as the Sponsored TLD Community, that are most
directly interested in the operation of the TLD. The Sponsor also is responsible for
selecting the registry operator and to varying degrees for establishing the roles played by
registrars and their relationship with the registry operator. The Sponsor must exercise its
delegated authority according to fairness standards and in a manner that is representative
of the Sponsored TLD Community.18
b) Country Code Top Level Domain - CCTLD
Two letter domains, such as .uk (United Kingdom), .de (Germany) and .jp (Japan) (for
example), are called country code top level domains (ccTLDs) and correspond to a
country, territory, or other geographic location. The rules and policies for registering
domain names in the ccTLDs vary significantly and ccTLD registries limit use of the
ccTLD to citizens of the corresponding country. 19
Some ICANN-accredited registrars provide registration services in the ccTLDs in
addition to registering names in .biz, .com, .info, .name, .net and .org, however, ICANN
does not specifically accredit registrars to provide ccTLD registration services. 20
Therefore, we can say that domain names are like addresses of websites on the internet.
Net surfers and users find their desired website by way of domain names on the internet.
These domain names are based on nature and purpose of the website or organization in
whose name the domain name is created, e.g. a commercial business, non-profit
17

Supra n. 16.
Ibid.
19
Ibid.
20
Ibid.
18

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organization, educational institution etc. or, they are based on geographical location of
such the domain name user.
Disputes over rights to domain names, which serve a source- identifying function in
cyberspace, arise at the heart of this intersection between international trademark law and
the Internet. In an effort to reconcile the unique complexities presented by domain name
disputes, a host of vehicles have developed by which aggrieved parties may assert their
rights. With a few notable exceptions, these remedies may be obtained in one of two
forums-traditional litigation or private arbitration under the Uniform Domain Name
Dispute Resolution Policy (UDRP) promulgated by the Internet Corporation for Assigned
Names and Numbers (ICANN), the nonprofit organization that manages the DNS.21
Now the question comes to mind as to why domain names are of so much importance in
business and trade. The Honble Supreme Court referred to this issue of importance of
domain names in Sataym Infoway v. Siffynet Solutions22 as follows:
The original role of a domain name was no doubt to provide an address for computers
on the internet. But the internet has developed from a mere means of communication to a
mode of carrying on commercial activity. With the increase of commercial activity on the
internet, a domain name is also used as a business identifier. Therefore, the domain name
not only serves as an address for internet communication but also identifies the specific
internet site. In the commercial field, each domain name owner provides
information/services which are associated with such domain name. Thus a domain name
may pertain to provision of services within the meaning of Section 2(z). A domain name
is easy to remember and use, and is chosen as an instrument of commercial enterprise
not only because it facilitates the ability of consumers to navigate the Internet to find
websites they are looking for, but also at the same time, serves to identify and distinguish
the business itself, or its goods or services, and to specify its corresponding online
Internet location. Consequently a domain name as an address must, of necessity, be
21

Lisa M. Sharrock, The Future of Domain Name Dispute Resolution: Crafting Practical International
Legal Solutions from within the UDRP Framework, Duke Law Journal, Vol. 51, No. 2 (Nov., 2001), pp.
817-849
22
AIR 2004 SC 3540

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peculiar and unique and where a domain name is used in connection with a business, the
value of maintaining an exclusive identity becomes critical.
A Domain name serves the same purpose online, which a trademark serves in the offline
business transactions. It helps the customers identify the source of goods/services
provided by the owner of such goods and services. Therefore, Domain names are of
utmost importance in online businesses. They are important because of the following
reasons:
1. Promotion of business and building up of customer base online and offline by
way of advertising on the web.
2. Establishment of the credibility of the website and the business on the internet.
3. Easy access to customers and prospective customers.
Despite the financial value of domain names, registration of a sign as a domain name
does not imply that the holder of the domain name is granted an official right to use the
sign. Contrary to popular, non-legal, folklore because entities that reserve domain
names are registrars, not adjudicatory bodies by reserving a domain name a user does
not get any official right to use that domain name free from legal claims.23
Nevertheless, use of the term registration for domain names often leads to confusion
with the concept of registration, as in trade mark registration, which does confer
exclusive rights to use the protected sign as a trade mark.24

Chapter 2 - Cybersquatting and Domain Name Disputes

Registration of domain name is an easy and inexpensive process based on first come,
first served basis. Because of such policy of domain name registration, there are always
a large number of domain names which are actually or potentially associated with some
23
24

J. T. McCarthy, McCarthy on Trademarks and Unfair Competition. 4th ed. 2001, 25:73.3
Spyros M. Maniatis, Trade Mark Law and Domain Names: Back to Basics, EIPR 2002, 24(8), 397-408

7|Page

or the other trademarks.

Cybersquatting
The system of assigning the domain name was on first-come-first registered basis. It lead
to the reserving of many well known trade names, brand names, company names, etc. by
individuals/corporations other than the ones with a genuine interest in the domain name,
with a view to trafficking/doing business on the said domain name or offering the domain
name to the genuine buyer. Obtaining fraudulent registration with intent to sell the
domain name to the lawful owner of the name at premium is called Cybersquatting.
The Cyber squatters quickly sell the domain names to other non-related entities, thereby
enabling passing off25 and diluting of famous trademark or trade names.26
Cybersquatting can be defined as registration, use or trafficking in a domain name with
mala fide intent to make profit from the goodwill of the trademark belonging to the
owner of such trademark. The cyber squatter then offers to sell the domain name to the
owner of the trademark in name of which domain name is so registered for the purpose of
getting a price higher than the usual price of registration of such domain name.
This practice of abusive registration originated with growth of internet and e-commerce
and when the business entities were not so much aware of making online presence for
business and trade. Many companies had their trademarks as domain names registered in
name of third parties when they realized that they are required to register their trademarks
as domain names for their business.

Often, cyber squatters take such names and offer them for sale to the person or company
who should rightfully have the domain under trademark laws. They usually ask for a high
price, much greater than the actual cost of the domain when it was available. Some
cybersquatters put derogatory remarks on the registered domain about the person or
25

Passing off: A form of unfair trade practices in which one party seeks to profit from other partys
reputation.
26
Manish Vij v. Indra Chugh, AIR 2002 Delhi 243

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company it is meant to represent in an effort to encourage the subject in question to buy

the domain.27
As the commercial function of the Internet has grown, more legal disputes have arisen
because many private citizens and companies have rushed to get a spot in the cyber
world in order to exploit the potential of on-line commerce.28
The existence of domains without specific requirements for the registration brought a
policy of first come, first served. This has created many disputes with trade mark
owners because, since the 1990s, many speculators have started to register domain names
in order to resell them for a much higher price to trade mark owners and new businesses.
Problems arose with trade mark owners because of their entitlements to IP rights make
them feel ripped off by this new practice called cybersquatting 29. Thus, to date, anyone
who wishes to register a domain for the first time which is trade marked can do so;
whatever problems may arise will have to be faced later.30
The reason as to why there is such increase in such incidences is the growing importance
of domain names in this e-commerce trend. Domain names hold an elevated level of
importance for the reason that there can be only one user of a domain name unlike two or
more users of a same or similar trademark under the trademark law, for various classes of
goods/services or under honest concurrent use. The domain registration system follows
the first come, first served policy. So, once a person registers a domain name similar to
a trademark, any other person using a similar mark is denied registration of another
domain name similar to that trademark.
Under the trademark law a trademark can be used by one or more persons for various
27

http://knowledgerush.com/kr/encyclopedia/Cybersquatting/, accesses on August 28, 2009

James Marcovitz, Ronald@McDonalds.com -Owning a Bitchin Corporate Trademark as an Internet
Address-Infringement?, 17 (1995) Cardozo L. Rev. 85, p. 85
29
G. Kaufmann-Kohler and T. Schultz, Online Dispute Resolution: Challenges for Contemporary Justice,
2004 ed., p.36
30
Juan Pablo Cortes Dieguez, The UDRP Reviewed: The Need For A Uniform Policy, C.T.L.R. 2008,
14(6), 133-139
28

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classes or goods or services, if such use does not amount to infringement or causing
confusion or dilution. But such kind of provision is not applicable in case of domain
names. Only one user is allowed to use a particular domain name and any other
application for the same domain name is refused. This is the main reason as to why
trademark owners prefer to get their trademarks registered as their domain names for
business.
The cases of trademarks and domain names conflict mainly involve issues related to use
of the goodwill of a trademark by an infringer in the domain name to divert the customers
or potential customers of the owner of the trademark to a website not associated with that
trademark, or use of meta-tags resulting in dilution of trademark or unauthorized
registration of the trademark as domain name with the intent to extort money or to
prevent the owner from using the trademark.

Chapter 3 Cybersquatting and Domain Names under the Law of Trademarks

Cybersquatting in the United States

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In USA, cybersquatting has turned into a nuisance over all these years. The first case on
came to picture in 1994. The first cybersquatting case arose in 1994 in the United States
and cases have increased in number since then.
One of the leading cases in USA is of Dennis Toeppen, who registered most of the well
known trademarks in USA as domain names. Dennis Toeppen registered most of the well
known trademarks and was sued by the trademark owners. The two leading cases
involving Dennis Toeppen are Intermatic v. Toeppen31 and Panavision v Toeppen32. In
case of Intermatic v. Toeppen33, plaintiff owned the trademark Intermatic and had sued
Dennis Toeppen for trademark dilution. The court held Dennis Toeppen liable for
trademark dilution for the reason that registration of domain name intermatic.com by the
defendant had lessened the capacity of the plaintiff to indentify and distinguish its goods
and services on the internet.
In case of Panavision v Toeppen34, the court gave the judgment in favour of the plaintiff.
In this case Panavision had sued Toeppen against the registration of the domain names
panavision.com and panaflex.com. In this case, court was held that offer to sell a domain
name similar to a trademark to the owner of such trademark, amounted to commercial
use.
In Virtual Works, Inc. v. Volkswagen of America, Inc.35 (on dispute over the domain name
www.vw.net:), the Fourth Circuit Court of Appeals stated that mere resemblance of a
domain name to a famous trademark does not prove bad faith. There must be
circumstantial and direct evidence establishing the bad faith intent of the cybersquatter.

In case of Card service International Inc. v. McGee36, the Court was of the opinion that a
domain name is more than a mere internet address. It also identifies the internet site to
31

947 F. Supp.1227, 1230 (N.D. Ill. 1996)

141 F.3d 1316 (1998)
33
Supra n. 31
34
Supra n. 31
35
238 F.3d 262
36
50 F. Supp. 737 (E.D. Va. 1997)
32

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those who reach it, much like a persons name identifies a particular person, or, more
relevant to trademark disputes, a company's name identifies a specific company. 37
Accordingly, the Court was of the opinion that use of cardservice.com and Card
Service on the Caprock by McGee amounted to trademark infringement under the
Lanham Act and granted permanent injunction in favor of Card Service International.
In case of Brookfield Communications, Inc. v. West Coast Entertainment Corp. 38, the
Court of Appeals for 9th Circuit granted a preliminary injunction in favor of the plaintiff
against the defendant for use of domain namemoviebuff.com.
The plaintiff claimed that domain name of the defendant infringed their trademark
MovieBuff. The defendant argued that they had used the slogan The Movie Buff's
Movie Store as a service mark since 1986, and had registered the moviebuff.com
domain name in 1996, and claimed seniority in using the domain name. Court held that
the mere registration of the domain name, which was not ready for actual launching
until November 1998, did not establish West Coast's seniority. The Court held that
defendant would create a likelihood of consumer confusion by using the domain name as
well as the term moviebuff as a metatag, and they can be permitted to use the term with
a space inserted ("movie buff).39
With increase in instances of cybersquatting, it was required to provide some legal
remedy against cybersquatting. This led to the enactment of the Anti-Cybersquatting
Consumer Protection Act 1999 in USA.

The Anti-Cybersquatting Consumer Protection Act (ACPA), enacted on November 29,

1999, amends the Lanham Act by adding a new Section 43(d). The new section provides
trademark owners with a civil remedy against cybersquatting - the registering of others
trademarks as domain names and profiting from the sale of those domain names or traffic
37

Ibid.
174 F.3d 1036 (9th Cir. 1999)
39
Ibid.
38

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through the site.40 The ACPA renders one liable to the owner of a trademark who, with a
bad faith intent to profit from that mark, registers, traffics in or uses a domain name
that is either identical or confusingly similar to a distinctive mark or is identical,
confusingly similar or dilutive of a famous mark.41
In case of Sportys Farm, LLC vs. Sportsmans Market, Inc., 42 decided under the AntiCybersquatting Consumer Protection Act (ACPA), Sportsman's Market, a catalog
company used the logo and trademark Sportys to identify its catalogs. Omega
Engineering, also a catalog company which was selling scientific instruments, registered
the domain name sportys.com. Omegas owner was a pilot and was familiar with
Sportsmans catalogs and the Sportys trademark. After nine months from the registration
of the domain name, Omega transferred the domain name to a subsidiary named Sportys
Farm. The subsidiary was created by Omega for the purpose of growing and selling
Christmas trees. The court observed that Omega intended to enter into direct competition
with Sportsmans in the aviation consumer market and their primary aim was to prevent
Sportsman's from using the domain name sportys.com. The court found that Omega
had created the subsidiary for the purpose of finding use of the domain name so
registered for commercial purpose and to prevent the plaintiff from using the domain
name. But for the reason that the domain name was registered prior to ACPA, the court
refused to grant damages to the plaintiff.
U.S. courts have not been willing to invent a new type of dilution based on use of a trade
mark as a domain name. The general rule is that the holder of a famous mark is not
automatically entitled to use that mark as its domain name because trade mark law does
not support such a monopoly. Therefore an internet user who is the first to register a sign
as a domain name and has a bona fide legitimate reason for using the sign should be able
to make use of it as a domain name, irrespective of whether the same sign constitutes a
trade mark, provided that such use lies outside the boundaries of the trade mark right. The
request for a per se dilution finding has been rejected. A case involving Hasbro's famous
40

http://legal.web.aol.com/resources/legislation/cybersquat.html, accessed on October 6, 2009

http://www.internetlibrary.com/publications/anticybsquattSamson9-05_art.cfm, accessed on October 6,
2009
42
202 F.3d 489 (2d Cir. 2000)
41

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Clue trade mark is a good example of this approach emphasizing that the sweeping
consequences of a finding of per se dilution would disregard rigorous trade mark
enforcement requirements.43 Similarly, in Playboy Enterprises Inc. v. Netscape
Communications Corp.,44 a case involving non-Playboy sponsored adult banner
advertisement appearing whenever an internet user entered playboy or playmate as a
search term, Playboy failed to show a likelihood of success on the merits of its trade mark
action and to establish that it would suffer irreparable harm in the absence of an
interlocutory injunction.45
Mahindra & Mahindra (M&M) has recently won a cybersquatting case at the World
Intellectual Property Organization (WIPO) against a US-based person named Zach Segal,
who was using the name Mahindra in an Internet domain. The domain name Segal was
using was mahindraforum.com. But the Indian conglomerate contended that the name
is confusingly similar to its Mahindra trade mark and the person had no rights or
legitimate interests46.
Cybersquatting in India
There has been lot of instances of cybersquatting in the past few years in India. The
courts always deal with matters related to domain name dispute and cybersquatting. In
India one of the earliest judgments on cybersquatting was from the Bombay High Court
in case of Rediff Communication v. Cyberbooth 47. In this case the court was of the
opinion that the value and importance of a domain name is like a corporate asset of a
company. In this case the defendant had registered the domain name radiff.com which
was similar to rediff.com. The Court was of the opinion that internet domain names are of
importance and can be a valuable corporate asset and such domain name is more than an
Internet address and is entitled to protection equal to a trade mark. 48 The court gave the
decision in favor of the plaintiff.
43

Hasbro, Inc. v. Clue Computing Inc. 52 U.S.P.Q. 2d 1402 (D. Mass. 1999)
52 U.S.P.Q. 2d 1162 (C.D. Cal. 1999)
45
Spyros M. Maniatis, Trade Mark Law and Domain Names: Back to Basics, EIPR 2002, 24(8), 397-408
46
http://news.ciol.com/News/News-Reports/Mahindra-amp-Mahindra-wins-cybersquatting-case-inUS/19809123809/0/, accessed on October 6, 2009.
47
AIR 2000 Bom 27
48
Ibid
44

14 | P a g e

Another one of the earliest cases on cybersquatting was Yahoo Inc. v. Akash Arora.49 In
this case, the plaintiff filed a suit against the defendants seeking for a decree of
permanent injunction restraining the defendants from operating any business and/or
selling, offering for sale, advertising and in any manner dealing in any services or goods
on the Internet or otherwise under the trademark/domain name Yahooindia.Com or any
other mark/domain name which is identical with or deceptively similar to the plaintiff's
trademark Yahoo! The defendant argued that the trademark/domain name Yahoo! of
the plaintiff is not registered in India and therefore, there cannot be an action for
infringement of the registered mark. It was further argued that there could not be any
action of passing off as the services rendered both by the plaintiff and the defendants
cannot be said to be goods within the meaning of the Indian Trade Marks, 1958. The
defendant also contended that the word Yahoo! is a general dictionary word and is not
vented and, therefore, it could not have acquired any distinctiveness and since the
defendants have been using disclaimer, there could be no chance of any deception and
thus, no action of passing of is maintainable against the defendants.50
The court granted the injunction and it was held that the service rendered on internet has
also come to be recognized and accepted globally and the provider of the same could be
protected from passing off.

In India the issues of cybersquatting are mainly governed by principles of passing off. In
India there are no laws or statutes for prevention of cybersquatting. For this reason
principle of passing off is mainly applied by the courts in deciding cases of
cybersquatting.
Titan Industries Ltd. v. Prashanth Koorapati, the Delhi High Court granted an ex-parte adinterim injunction restraining the defendants for using the name Tanishq on the Internet
49
50

78 (1999) DLT 285

Ibid.

15 | P a g e

or otherwise and from committing any other act as is likely to lead to passing off of the
business and goods of the defendants as the business and goods of the plaintiff.
In case of Tata Sons Ltd v. Manu Kosuri, 51 the defendant misappropriated the plaintiff's
trademark TATA. The defendant registered it as a part of a series of domain names by
incorporating the well-known and famous trademark TATA. The Court after referring to
Rediff Communication v. Cyberbooth52 and Yahoo Inc. v. Akash Arora,53 held that
internet domain names were important and was valuable corporate asset and it was not an
internet address hence was entitled for protection equivalent to a trade mark.54
In case of Dr. Reddys Laboratories Limited v. Manu Kosuri55, the plaintiff Dr. Reddys
Laboratories filed an application for restraining the defendants who were in business of
registering domain names and offering them for sale to the owners, from using the trade
mark/domain name drreddyslab.com. the defendant had registered the domain
namedrreddyslab.com. The court took the view that domain names hold an important
position in e-commerce and held that the defendants were liable under passing off. The
court granted permanent injunction in favour of the plaintiff, preventing the defendant
from using the trade mark/domain name drreddyslab.com or any other mark/domain
name which is identical with or deceptively similar to the plaintiffs trade mark.

The Honble Supreme Court in Satyam Infoway v. Sifynet Solutions 56 was of the opinion
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 Trade
Marks 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.57
51

90(2001)DLT659; 2001 PTC 432

AIR 2000 Bom 27
53
78 (1999) DLT 285
54
Supra n. 47
55
2001(58)DRJ241
56
AIR 2004 SC 3540
57
Ibid.
52

16 | P a g e

In SBI Cards and Payment Services Private Ltd v Domain Active Pty Ltd, 58 SBI Card and
Payment Services Private Limited, the credit card firm of the State Bank of India (SBI),
won the case of cybersquatting against Domain Active Pty Limited, an Australian
company. The judgment was delivered by the administrative tribunal constituted by the
World Intellectual Property Organization (WIPO), Geneva.
In this case the plaintiff was a joint venture between GE Capital Services and the State
Bank of India. The plaintiff offered a range of credit cards and also had a number of city
affinity cards. The defendant registered a website called www.sbicards.com. The
plaintiff filed a complaint at the World Intellectual Property Organization, Geneva.
The WIPO Administrative Panel found that the defendants website could have attracted
attention from the public because of its affiliation with plaintiffs products and services.
There was also the intent of creating confusion with the product and services and the
trademark of the plaintiff as to the source and affiliation of the website of the defendant.
Therefore, the panel held that the defendant was liable registration of the domain name in
bad faith.
In case of Maruti Udyog v. Maruti InfoTech,59 complaint was filed with WIPO arbitration
and mediation centre over a dispute relating to the domain name www.maruti.org.
Maruti Udyog, the well known car manufacturer, owner of the trade mark Maruti
proved that the trademark was associated with its products and a person of average
intelligence and imperfect recollection would be led to believe that the domain name was
associated with them. The respondent intended to sell the domain name to the
complainant for monetary consideration. The panel therefore held that respondent
intended to make profit from the registration of the trademark of the complainant as a
domain name and was ordered to transfer the same to the complainant.
.

58
59

2005 (31) PTC 455

Case No. D2000-0520

17 | P a g e

In case of Intel Corporation v. Anil Handa 60, Intel Corporation filed an application
seeking an interim injunction against the defendants to prevent them from using the word
Intel as a part of their corporate name. The defendants are not using the word Intel as
their trademark or trade name. Intel Engineering Pvt. Limited and Intel Travels Pvt.
Limited were using the word Intel as a part of its corporate name. The defendant
argued that they were carrying on their business for a long time in India and the plaintiff
even after becoming aware of their existence, never complained to their corporate name
before. Further the business of the defendants was entirely different than that of the
plaintiff and therefore, there is no likelihood of confusion.
Injunction was refused to the plaintiff Intel Corporation on the ground that the defendants
were using the trademark Intel for over 15 years. The court observed when existence of
a prima facie case is established, the court has to consider other relevant factors, namely,
balance of convenience and irreparable injury. While considering the latter, conduct of
the parties becomes relevant. If a party has been acting in a particular manner for a long
time and has allowed the other to do likewise, the same would have to be weighed.61
Cybersquatting in Common Law
In Harrods Ltd. v UK Network Services Ltd., 62 the defendants registered the domain
name harrods.com with the intent to sell the same to the plaintiff Harrods. The plaintiff
sued the defendants for passing off, trade mark infringement and conspiracy. The Court
observed that the defendants made an attempt to make an illegitimate use of the
trademarks of the original owners by referring to various other trademarks which were
registered by the defendants as domain names and granted injunction in favour of the
plaintiff.
In Marks & Spencer vs. One-in-a-Million 63, the defendant had registered domain names
of the following companies
i) British Telecommunications plc,
60

2006 (33) PTC 553

Ibid.
62
Unreported 1996 (Ch D)
63
1998 FSR 265
61

18 | P a g e

ii) Virgin Enterprises Plc,

iii) J Sainsbury Plc,
iv) Marks and Spencer Plc, and
v) Ladbroke Group Plc.
There were five cases for passing off and trademark infringement which was heard by the
court collectively in this matter. The court was of the opinion that defendants activities
showed a deliberate practice of registering domain names which are resemble the name
well known trademarks and there was also intention to deceive the public by choosing
such domain name.
The history of the Defendants activities shows a deliberate practice followed over a
substantial period of time of registering domain names which are chosen to resemble the
names and marks of other people and are plainly intended to deceive. The threat of
passing off and trade mark infringement, and the likelihood of confusion arising from the
infringement of the mark are made out beyond argument in this case64
The High Court granted injunction for all the five cases. The defendants appealed against
the order but the Court of Appeals affirmed the original summary order of the High Court
and dismissed the appeal.

On issue of passing off, the lordship was of the opinion that courts have the jurisdiction
to grant relief by way of injunction in three types of cases. First, where there is passing
off established or it is threatened. Secondly, where the defendant is a joint tortfeasor with
another in passing off either actual or threatened and thirdly, where the defendant has
equipped himself with or intends to equip another with an instrument of fraud. This third
type is probably mere quia timet action.65
Similarity in the name used will intrinsically lead to passing off. In case of names, which
do not inherently lead to passing off, a lot of factors are required to be considered, which
64
65

Ibid.
[1998] FSR 265.

19 | P a g e

include similarity between the names at issue, nature of trade, intent of the defendant and
the circumstances of the case. Injunction is granted by the courts when the name is
adopted with intent to cause passing off, with the intent to use under a fraudulent
circumstances.66
In case of Prince Plc v. Prince Sportswear Group Inc., 67 both the parties had legitimate
interest in use the domain name in issue. The plaintiff, a computer services firm, based in
U.K. had registered the domain name prince.com in 1995. When the defendant tried to
register the same domain name in 1997, they found that it was registered by the plaintiff.
In 1995 the plaintiff registered the domain name prince.com with Network Solutions
Inc (InterNIC). The defendant sent a letter to the plaintiff, through their attorneys
asking the plaintiff to assign the domain name to the plaintiff and that use and registration
of PRINCE as a domain name by the plaintiff constituted infringement and dilution of
defendants rights in the trademark as well as unfair competition under the Lanham Act.
They asked the plaintiff to assign domain name in favour of the defendant to avoid
litigation.
Plaintiff filed a writ application seeking declarations that the registration and use of the
domain name prince.com by the plaintiff does not infringe the defendants UK
trademark and that the threat to initiate proceedings for infringement of the trademark
were unjustifiable, seeking an injunction against the defendant from further threats.
But the plaintiff did not succeed completely in their action. An inquiry as to damages was
refused to be granted by the judge in the absence of evidence of damage. Secondly, the
lordship refused the declaration that the plaintiffs registration and use of its domain
name does not infringe the defendants UK trademark. The burden of proof was on the
plaintiff for a declaration of non-infringement. But an injunction was issued against the
defendants, preventing them from continuing with the threats of infringement
proceedings against the plaintiff.

66
67

Ibid.
[1998] FSR 21

20 | P a g e

Chapter 4 - ICANN dispute resolution policy and WIPO

There is a distinction between a trademark and a domain name which is not relevant to
the nature of the right of an owner in connection with the domain name, but is material to
the scope of the protection available to the right. The distinction lies in the manner in
which the two operate. A trademark is protected by the laws of a country where such
trademark may be registered. Consequently, a trade mark may have multiple registrations
in many countries throughout the world. On the other hand, since the internet allows for
access without any geographical limitation, a domain name is potentially accessible
irrespective of the geographical location of the consumers. The outcome of this potential
for universal connectivity is not only that a domain name would require world wide
21 | P a g e

exclusivity but also that national laws might be inadequate to effectively protect a domain
name. The lacuna necessitated international regulation of the domain name system
(DNS). This international regulation was effected through WIPO and ICANN. India is
one of the 171 states of the world which are members of WIPO. WIPO was established as
a vehicle for promoting the protection, dissemination and use of intellectual property
throughout the world. Services provided by WIPO to its member states include the
provision of a forum for the development and implementation of intellectual property
policies internationally through treaties and other policy instruments.68
One of the most remarkable events in the past, particularly for solving international legal
problems originating through the nature of the borderless internet on the one hand and
intellectual property rights of some users on the other hand, was the foundation of the
ICANN (Internet Corporation for Assigned Names and Numbers) in 1998 as a worldwide
internet administration and the introduction of UDRP (Uniform Domain Name Dispute
Resolution Policy) in 1999 for effective and cost saving international domain name
disputes. The statistical data from ICANN show that UDRP is commonly used and has
been a success story in regard to the numbers of disputes which have been submitted for
decision by UDRP panels.69
On December 1, 1999 ICANN implemented UDRP (Uniform Domain Name Dispute
Resolution Policy) on the recommendation of WIPO. UDRP was designed to provide a
fast and inexpensive procedure used by trade mark holders around the world against
those who register internet domain names in bad faith and without rights or other rightful
interests. As trade mark litigation is an expensive, slow and, ultimately, a process with
rigorous standards of proof in regard to local jurisdiction, the UDRP provides a benefit to
trade mark owners and domain holders particularly in foreign countries who wish to push
their rights to domain names registered in the United States or through accredited
registrars in other countries. UDRP is described as an expedited administrative
proceeding whereby the holder of trade mark rights initiates a complaint by filing one
with an approved dispute resolution provider. The policy has been adopted by all
68

Satyam Infoway v. Sifynet Solutions, AIR 2004 SC 3540

Anri Engel, International Domain Name Disputes: Rules and Practice of the UDRP, E.I.P.R. 2003,
25(8), 351-365
69

22 | P a g e

accredited domain name registrars for gTLD and is incorporated into all registration
agreements set forth by ICANN. The scope of UDRP is limited and applies only to
Cybersquatting and similar abusive forms of domain name registration and also only to
domain names registered in the generic top-level domains (.com, .org, .info etc.), which
constitute the bulk of the domain names registered worldwide. For so-called country-code
top-level domain names (.uk, nl, .de etc.) the UDPR only applies if a country
administrator has voluntarily adopted it.70
ICANN has adopted the Uniform Domain Name Dispute Resolution Policy (UDNDRP or
UDRP), the policy for resolution of domain name disputes. This policy provides for
arbitration of the dispute instead of litigation in respect of domain name disputes. As per
this policy, any person (complainant) can bring an action on the grounds that:
(a) A domain name is identical or confusingly similar to a trademark or service mark
in respect of which the complainant has rights.
(b) The domain name owner has no rights or legitimate interests in the domain name,
and
(c) The domain name has been registered and is being used in bad faith.
But the complaint is required to prove all these elements if he wants his action to
succeed. If the abusive registration is proved, the domain name registration is cancelled
or transferred to the complainant but there are no financial remedies provided to him.
Uniform Domain Name Dispute Resolution Policy (UDRP)
UDRP is an online system for resolving complaints made by trademark owners about
domain names conflicting with their trademarks. It isn't a court nor is it an arbitration, but
the authority that established it in 1999 (ICANN) has the power to order the deletion or
transfer of domain names. ICANN requires the domain registrars in .biz, .com, .info, .org,
and .net to abide by the results of UDRP proceedings. They must cancel or transfer a
domain registration as a UDRP Panel directs. Domain holders agree to this procedure in
their domain registration contracts.
70

Ibid.

23 | P a g e

The UDRP Rules outline the process for filing a complaint (if you are a trademark owner)
and for responding to a complaint (if you are the domain name holder). The Policy and
the Rules also explain some of the basics of the proceedings, such as how to choose a
Provider, how Panels make their decisions, how the parties are notified of the outcome,
language to be used in the proceeding, the availability and effect of court proceedings,
and the types of remedies available.
The dispute resolution Panel is does not apply laws of any particular country, but it is a
body of rules which are developed for the purpose of dispute settlement in respect of
domain names.
The validity of UDRP is not easy to define, because UDRP is not an arbitration policy
and it does not have any binding effect except on the register of the domain names. It is
incorporated by reference in the agreement of the registrant with ICANN. It is required to
include the terms of UDRP in the agreements with the registrants for the purpose of
receiving ICANN accreditations. This means that UDRP is a legally qualified specific
contract term.

UDRP procedure is a faster, cheaper, and easy alternative to challenging the domain
name registration in courts of law as it takes a long time and the complex procedures
grant relief to the plaintiff with delay which can result in damage to the business and
goodwill of the plaintiff. UDRP does not prohibit any trademark owner or a domain name
holder from going to court before or during or after the UDRP proceedings.
Complainant/Respondent is required to inform the Panel if they have taken any court
action so the Panel can decide as to whether to continue with the proceedings or to postpone it.
WIPO Arbitration and Mediation Center Decisions on Domain Names

24 | P a g e

World Intellectual Property Organization is the principal domain name dispute resolution
service provider under the UDRP and is accredited by ICANN. WIPO provided qualified
panelist, thorough and expeditious administrative procedures, and overall impartiality and
credibility. A domain name case filed with WIPO is normally concluded within two
months, using on-line procedures, and a minimal fee is charged. Only extra-ordinary
cases are heard in person.71
In Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd. 72, the domain names at issue were
relojesrolex.com and erolexwatches.com. Complainant was the respondent registered
the domain namesrelojesrolex.com and erolexwatches.com. The complainant when
came to know this, sent a letter to the respondent on November 1, 1999, demanding it to
cease and desist all infringing uses of the Rolex trademark, and consent to the deletion
or transfer of the Domain Names to Rolex.73
But the respondent did not respond letter. Instead, shortly thereafter, they registered
another domain name incorporating the Rolex trademark, on November 11, 1999. In
March 2000, Complainant sent a second letter to respondent, again demanding that it
cease and desist all infringing uses of the Rolex trademark, and to consent to the
deletion or transfer of the domain names. Complainant filed a complaint and contended
that they had the registrations of the trademark Rolex, that trademark registrations were
valid and subsisting, and that they served as prima facie evidence of its ownership and the
validity of the Rolex mark.
Complainant argued that the respondents domain names were confusingly similar to the
complainant's trademark and that the respondents had no rights or legitimate interests in
the domain names. Complainant further submitted that respondent registered and was
using the domain names in bad faith
.

71

http://www.wipo.int/amc/en/center/faq/domains.html#7, accessed on October 18, 2009

Case No. D2001-0398
73
Ibid.
72

25 | P a g e

The Respondent contended that the domain names were not identical or confusingly
similar to the trademark of the complainant and that they had rights to or legitimate
interests in the domain names because they were conducting a legitimate, consumer
advocacy enterprise of benefit to the general public, and they never demonstrated any ill
will or were engaged in unfair competition with complainant. Respondent further argued
that any use of the domain names that did not compete with or disparaged the business
interests of Complainant was legitimate.
But the Panel held that respondents domain names were confusingly similar to
Complainants registered trademark; and that respondent had no rights or legitimate
interest in the domain names; and held respondent responsible for registering and using
the domain names in bad faith. The Panel was of the opinion that the owner of the
registered trademark does not have to show likelihood of confusion, as that term is
used in trademark infringement jurisprudence, to establish that a domain name
incorporating a trademark in its entirety is identical or confusingly similar. The question
of identity and confusing similarity is evaluated solely based on a comparison between
the complainants trademark and the alphanumeric string constituting the domain name at
issue74
In Bennett Coleman & Co Ltd. v. Steven S Lalwani and Bennett Coleman & Co Ltd. v.
Long Distance Telephone Company75 (combined), the arbitration panel of WIPO gave the
decision in favour of the plaintiff, asking the respondent to transfer the domain name to
the

plaintiff.

In

this

case,

the

respondent

had

registered

domain

names

www.theeconomictimes.com and www.thetimesofindia.com in the United States,

which are the trademarks of the plaintiff. These two domain names were similar to the
names of the Plaintiffs websites www.economictimes.com and www.timesofindia.com
and the respondents websites using the domain names similar to the plaintiff, redirected
the users to a different website www.indiaheadlines.com which provided India related
news. The WIPO judgment recognized the fact that the complainant had a very
substantial reputation in their newspaper titles arising from their daily use in hard copy
74
75

Ibid.
Case No. D2000-0014 and 2000-0015

26 | P a g e

and electronic publication. In India itself, wrongfully adopting the titles so as to mislead
the public as to the source of publications or information services would in all likelihood
amount to the tort of passing off. The reputation was the result of actual use and was the
crux of the complaint. The panel held that the respondent had no rights or legitimate
interest in the domain names and the registration was done in bad faith, in an intentional
attempt for commercial gain and to attract internet users by creating a likelihood of
confusion with the complainants marks as to the source, sponsorships, affiliation or
endorsement of those web sites and the services on them76.
In case of AT&T Knowledge Venture v. Rnetworld 77, AT&T Corp filed a complaint
against Rnetworld for registration of domain name atnt-sbc.com. AT&T Corp. is a
leading provider of telecommunication products and services under the brand name
AT&T and many of the AT&T marks have also been registered as trademarks and service
marks in the United States and other countries around the world.

AT&T Corp. merged with SBC in 2005. Following the merger, AT&T Corp. transferred
its trademark rights to the Complainant, AT&T Knowledge Venture II, L.P. (a subsidiary
of AT&T) after the merger. After the merger, the following domain names att-sbc.com,
attsbc.com and sbc.com were registered by AT&T.
The domain name in dispute atnt-sbc.com was registered by respondent. AT&T Corp.
sent a letter to Respondent asking them to cease and desist from using the domain name
in future. But the respondent refused to reply, failing which AT&T filed this case against
them.
Complainant stated that the respondent registered the domain name in bad faith, in an
attempt to take advantage of AT&Ts famous trademarks and to profit from the merger of
76

77

Ibid.
Case No. D2007-0035

27 | P a g e

two companies AT&T Corp. and SBC Communications Inc. It was further contended that
the domain name atnt-sbc.com was virtually identical and confusingly similar to the
domain names used by AT&T to offer products and services to its customers and the
respondent had no rights or legitimate interest in the domain name registered by the
respondent. The complainant submitted that the registration of the domain name in
dispute was an example of merger cybersquatting. The respondent did not reply to the
contentions of the complainant.
The WIPO Panel found that the domain name in dispute was virtually identical and
confusingly similar to Complainants official, legal and world-famous marks and domain
names and that Internet users attempting to locate information regarding AT&T would
likely be confused into believing that the web page associated with the domain name in
dispute, as well those pages that link from the web page are sponsored by or connected
with AT&T.78
The Panel further observed that the Respondent was not AT&Ts licensee in any respect,
nor was the Respondent authorized to use AT&Ts marks. AT&T had not endorsed,
sanctioned, or sponsored Respondents use of its marks. Respondent did not own any
registered or common law marks containing the terms AT&T, ATT, ATNT, SBC, or any
similar derivation. Respondent had not been commonly known by the contested domain
name, nor did Respondent run any enterprise commonly and legitimately known by the
contested domain name.79
Therefore, the Panel held that the registration of the domain name atnt-sbc.com by the
Respondent was mala fide, with intent to unfairly and illegally exploit that domain name
to his advantage at the expense of AT&T. The respondent was ordered to transfer the
same to the complainant.
Recently, Balenciaga is a fashion house founded by Cristobel Balenciaga, a Spanish
designer. Christian Dior himself referred to Balenciaga as "the master of us all. Being
78
79

Case No. D2007-0035

Ibid.

28 | P a g e

the complainant in this case, the fashion house submitted a complaint with the WIPO
Arbitration

and

Mediation

Center

requesting

the

domain

name

balenciagahandbags.com to be transferred to them. The company owns many

trademark registrations all around the world for "Balenciaga". Therefore it is more than
obvious that the disputed domain name is confusingly similar to their company.
What makes you wonder about the intentions the respondent had when registering the
domain name is the fact that he was involved in other UDRP decisions in which he has
been found to have acted in bad faith. Moreover the Panel thought the respondent
registered the domain name to divert users seeking information about Balenciaga's
products. Therefore, the WIPO Panel concluded that the respondent registered the
disputed domain name in bad faith and ordered it to transfer the usage rights to
Balenciaga.80

Chapter 5 - Conclusion
Cybersquatting is increasingly being viewed as an important issue in the legal setup.
Courts have responded by recognizing the rights of trademark owners in cyberspace.
The requirement of consumers to get information about the origin and quality of
goods and services is fulfilled by a trademark whereas in cyberspace, domain names
serve the same purpose. Domain names are similar to trademarks in the cyberspace.
Now, when the trademark owner owns the domain name as well, there is no confusion
about the goods/services, but chaos arises when the trademark owner and the domain
name registrant are two different parties. The reason behind such an occurrence could
be either
(a) When one party is misusing the domain name, or
(b) When both parties are concurrent users.
80

http://www.domainnews.com/en/balenciaga-wins-domain-name-dispute.html, accessed on October 18,

2009

29 | P a g e

The trademark law has broadened its scope to encompass domain name issues including
cybersquatting. However, the open question is whether the law will eventually give
property rights to trademark owners in domain names or the ability to exclude others
from using their domain name. If the trademark law is broadened to give extensive rights
to trademark owners this can opens a can of worms by assigning them rights which they
might not be entitled to. There can be issues of threat of legal proceedings for
infringement or reverse domain name hijacking by a trademark owner to other honest
concurrent users of a similar trademarks and the domain name associated with such
trademarks.
In extending the coverage of trademark laws to domain name and cybersquatting areas,
there are two major points to consider:
a. Domain names are unique globally and were allotted in a first come first serve basis by
domain registrars. Traditional economic validation for trademark law rests on the premise
that there are indefinite numbers of marks available and there can be more than one
owner of a trademark or marks similar to such trademark. However, there are only a
limited number of domain names available; and
b. Trademark laws are territorial in nature while domain name issues are to be addressed
with global impact in mind. This approach to the domain names may seem to promote
protection of rights large companies or big businesses who want more rights in every
possible variation in their name. The requirement to prove the valid ownership of
trademark or connection with domain name or the legitimate interest in the domain name
at times can be easily exploited by the big market players. The interests of small business
and entrepreneurs can be greatly affected if they are honest users of such domain names
and similar trademarks.
It is understood that goodwill and reputation of a trademark is required to be protected
online and so as the need to protect the consumers from falling in the trap of
misrepresentations and frauds on the world web. But at the same time, consideration is to
be given to the fact that there can be an honest owner of a domain name related to ones
30 | P a g e

trade and he might not be financially capable of sustaining a trademark infringement

battle with a multinational over the domain rights. So, the requirement of the criteria of
legitimate interest or right in the domain names is required to be applied carefully so as to
ensure that an honest owner is not deprived of his domain name and the right to use the
same putting his goodwill and reputation at threat for the convenience of another.

31 | P a g e

Bibliography
Books:
G. Kaufmann-Kohler and T. Schultz, Online Dispute Resolution: Challenges for
Contemporary Justice, 2004 ed., The Hague: Kluwer Law International
Ian J. Llyod, Information Technology Law 5th ed. 2008, Oxford University Press
J. T. McCarthy, McCarthy on Trademarks and Unfair Competition, 4th ed. 2001, West
Publishing
Michael A. Epstein, Intellectual Property, 5th ed., 1st Indian Rep. 2008, Aspen
Publishers
Articles:
Anri Engel, International Domain Name Disputes: Rules and Practice of the UDRP,
E.I.P.R. 2003, 25(8), 351-365
Caroline Wilson, Internationalized Domain Name Problems and Opportunities C.T.L.R.
2004, 10(7), 174-181
G. Akerlof, The Market for Lemons: Quality Uncertainty and the Market Mechanism,
(1970) 84/3 Quarterly Journal of Economics
James Marcovitz, Ronald@McDonalds.com -Owning a Bitchin Corporate Trademark
as an Internet Address--Infringement?, 17 (1995) Cardozo L. Rev. 85
Juan Pablo Cortes Dieguez, The UDRP Reviewed: The Need For A Uniform Policy,
C.T.L.R. 2008, 14(6), 133-139
Lisa M. Sharrock, The Future of Domain Name Dispute Resolution: Crafting Practical
International Legal Solutions from within the UDRP Framework, Duke Law Journal,
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Websites:
http://definitions.uslegal.com/i/internet-domain-names/
http://www.domainnews.com/en/balenciaga-wins-domain-name-dispute.html
http://www.icann.org/en/general/glossary.htm
http://indlaw.com
http://www.internetlibrary.com/publications/anticybsquattSamson9-05_art.cfm
http://knowledgerush.com/kr/encyclopedia/cybersquatting/
http://legal.web.aol.com/resources/legislation/cybersquat.html
http://manupatra.com
http://news.ciol.com/News/News-Reports/Mahindra-amp-Mahindra-wins-cybersquattingcase-in-US/19809123809/0/
http://westlaw.com
http://www.wipo.int/amc/en/center/faq/domains.html#7
http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0271.html

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