• How-to

Cybersquatting in the phenomenon of registering a domain name that rightfully belongs to another person for the purposes of exploiting the commercial capabilities of the domain name. Typically, domain names are issued on a first-come-first-serve basis and given the inherent nature of this model, the domain name registrars and registries do not look at the antecedents, the capacity or legitimate rights to a party’s right to register a domain name. This allows people to register domain names which are rightfully not theirs and then try to sell them for a monetary consideration or sell them to competition.

Cybersquatting, as a phenomenon, began in the early ’90s and demonstrated in no uncertain terms the commercial value of domain names. From the earliest cases pertaining to MTV.com, where the said domain was cybersquatted by a radio RJ, who later on went on to sell the domain name to MTV for an undisclosed sum to more recent cases in India, cybersquatting is a real problem. By the time it was mid ’90s we saw a phenomenon where many people were willing to buy and sell domain names, corporates who were willing to spend millions of rupees to get these domain names and unfortunately if you were a victim of cybersquatted domain name, there was virtually no other remedy. If you did not want to pay, the domain name was not yours and it could be used against your interests on the internet.

In 1998 Internet Corporation for Assigned Names and Numbers (ICANN) came into existence and by late 1999 they came up with a mechanism on how to deal with cybersquatters. A new policy was formed, named Uniform Domain-Name Dispute-Resolution Policy (often referred to as the “UDRP”).

This policy provided limited grounds under which you could get your domain name back. Broadly speaking, there are three main grounds:
1. You have to prove you have legitimate rights to the said domain name. This can be in the form of trademark, copyright, prior usage or anything which demonstrates you are running a business under the said domain name. This rule was aimed at the trademark lobby and provides limited rights to trademark holders.

2. The opposite party has no legitimate right or interest in the domain name.

3. The domain name has been registered or is being used in bad faith.

UDRP has till date been the most successful policy of internet to tackle cybersquatting. Today, World Intellectual Property Organization (WIPO), a specialized agency of the United Nations in arbitration and mediation, is the leading decision maker in cybersquatting cases running to thousands. Over the years the jurisprudence on the issue of bad faith registration and use of domain name has evolved. The jurisprudence now clearly stipulates that if you offer a domain name for sale it is deemed to be bad faith registration. Similarly if you put up any domain name for sale, it is an evidence of bad faith registration.

Further, if you get monetary benefit from a domain name or use it to cause impediment to its rightful owner or you have registered it to deprive a legitimate entity from holding the same, it is a case of bad faith registration.

After UDRP came into existence in 1999, cybersquatting as a phenomenon has virtually receded to the background. These are online arbitrations and typically take about two to two and a half months to be adjudged. One has the option of deciding the case by a single arbitrator for which one has to pay a fee of Rs.67,500 or ask for a three-member arbitration panel for which one has to pay Rs.2.02 lakh.

All filings are electronically done and a hard copy is sent to the secretariat in Geneva which scrutinizes the forms for any discrepancies and sends its reply to the complainant. Prior to sending the case to the arbitrator the notice would have already gone to the respondent. When the complainant appears before the arbitrator, the matter is ripe for a decision. Once a decision is granted by the arbitrator, it has the element of finality.

If a domain name is given to the complainant there is a time limit given to the respondent that if he feels aggrieved he can move to a court of competent jurisdiction. If he does this and informs ICANN within 10 working days, the award is not implemented and the matter is kept in abeyance.

Alternatively, if the aggrieved party chooses not to appeal, then ICANN, given its control over routers, automatically goes ahead and makes changes at the technical backend, with the result that the award is instantaneously implemented.

To approach WIPO you do not need a lawyer and can on your own draft the compliant and send it across. However, it is always advisable to have it done through lawyer because the if you complaint through a lawyer who puts forwards arguments in a way which meets all the relevant parameters for the arbitrators, the chances of success becomes a lot higher. It is a limited policy and if the parameters are met the arbitrator has no discretion not to award the domain name.

Case in point
In the famous case of Maruti Udyog Ltd .v. maruti.com, the respondent had produced evidence that the domain name ‘maruti.com’ was registered on the name of his nephew, Tella Maruti Shrinivas and was not for commercial use nor was there any tarnishing of the complainant’s trademark. On re-litigation it was found that the birth certificate of Tella Maruti Shrinivas was a forgery and the person is fictitious, proving that the domain name was originally registered in bad faith and commercial use was being made of it, diverting the complainant’s customers and infringing on Maruti Udyog’s trademark.

©Entrepreneur August 2011

Pawan Duggal is an advocate at the Supreme Court of India and Member, WIPO Panel of Neutrals.

Tags:
business, cybersquatting, domain, ICANN, policies, right, WIPO