THE DOMAIN NAME CHAOS- A LEGAL PERSPECTIVE

Transcription

1 THE DOMAIN NAME CHAOS- A LEGAL PERSPECTIVE By Christine Chiramel (Advocate) Associate, Vaish Associates Advocates, New Delhi, India, [email protected] ABSTRACT- Direct or indirect laws may be invoked to curb the menace of cyber squatting and domain name disputes through adjudication mechanisms in place but is our domestic and international legal system proficient enough to actually enforce the same efficiently? The arbitration panel decisions of ICANN approved WIPO Arbitration and Mediation Centre are not binding on national courts. Is the resource going to waste? KEYWORDS- Domain name disputes, Cyber squatting, ICCANN, WIPO Arbitration and Mediation Centre arbitration panel decisions, Passing off, Trademarks INTRODUCTION The virtual world is a complex parallel universe, where cyber squatting and domain name disputes have become a serious problem today due to the unlimited scope of the internet. The DNS 1st cum 1st served policy is a breeding ground for opportunists with neither trademark registration, nor any inherent rights to pirate or squat over domain names. Popular brand names are deliberately misspelled for the sole purpose of website traffic diversion. Initial interest confusion is created. Rival companies indulge in unfair competition. World over registries assigning domains may assign identical second level domains, so long as the TLD differs. Cyber squatters use these gaping holes in the system to blackmail and harass trademark owners into buying back what is rightfully their own. Direct or indirect laws may be invoked to curb this menace and adjudication mechanisms may be in place but is our domestic and international legal system proficient enough to actually enforce the same efficiently? INDIAN LEGISLATION Cyber squatting has been defined as an act of obtaining fraudulent registration with an intent to sell the domain name to the lawful owner of the name at a premium according to the court in Manish Vij v. Indra Chugh [AIR 2002 Del 243]. The Satyam Infoway Ltd v. Sifynet Solutions (P) Ltd [AIR 2004 SC 3540] case nailed the Indian domain name scenario way back in 2004 stating that-

2 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 extraterritorial 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. The Information Technology Act 2000 of India addresses numerous cybercrimes and has set up a special cyber crimes cell however the Act oddly ignores the problem of domain name disputes and cyber squatting. The only saving grace for victims of such offences is that domain names may be considered trademarks based on use and brand reputation and so fall under the Trade Marks Act However not all domain names are trademarks. Numerous cases including that of Yahoo, Rediff and Satyam have laid down the following guidelines- 1. The defendant should have sold/ offered its goods/ services in a manner that deceives the public into thinking that the goods/ services of the defendant are in fact the plaintiff s. 2. Misrepresentation by the defendant to the public should be established. 3. Loss/ likelihood of it should be established. In the above mentioned Satyam case the appellant registered several domain names like etc. in June 1999 through ICANN and WIPO, based on the word Sify, coined using elements of its corporate name, Satyam Infoway, which earned a wide reputation. The respondent registered and with ICANN is 2001 and 2002 respectively as it carried on business of internet marketing. On the respondent s demand to the appellant towards transfer of the domain name failing, the City Civil Court granted a temporary injunction against the respondent on the ground that the appellant was the prior user of the trade name Sify which had built up solid goodwill overtime in relation to the internet and computer services. On appeal the High Court held that the balance of convenience between both the parties should be considered and the respondent had invested huge sums of money in the business. It held that customers would not be misled or confused between the two parties as the two businesses were different altogether. On further appeal The Supreme Court found that both the lower courts agreed on the principles of passing off actions in connection with trademarks being applicable to

3 domain names. The Supreme Court held that in order to claim passing off and restrain the defendant from passing off its goods/ services to the public as that of the plaintiff s, the test of deceiving the public with respect to the identity of the manufacturer/ service provider, misrepresentation and loss or likelihood of it should be applied and established. The appellant s claim to being one of the largest internet service providers in India was not challenged and the words Sify and Siffy are both visually as well as phonetically similar to quite an extent, with or without the addition of net to siffy. The Supreme Court did not accept the respondent s explanation of the word Siffynet being derived from a combination of the first letter of the five promoters of the Respondent. The Court held that there was an overlap of identical or similar services by both parties and confusion was likely, unlike claimed by the defendant. As for the balance of convenience issue, the Court was convinced of the appellant s evidence of being the prior user and having a reputation with the public with regard to Sify. The respondent would not suffer much loss and could carry on its business under a different name. The Supreme Court ignored the High Court s finding that no prejudice would be caused to the appellant as it had another domain name, since this would be important only if the case was one where the right to use was co-equal to both parties. In this case, the respondent s adoption of the appellant s tradename was dishonest and so the High Court s decision was set aside while that of the City Civil Court was affirmed. Judicial case laws have acknowledged the domain name problem and have tried to address it with injunctions, domain name transfers and damages under the laws of passing off; however legislature regarding the same has gaping holes which need to be filled in with specific amendments. Other than the above mentioned civil remedies, the Trademarks Act 1999 provides criminal remedies for non bailable cognizable offences, being imprisonment up to 3 years and fine up to Rs. Two Lakhs, however the use of this provision for trademarks involved in domain name disputes is nonexistent. In fact this provision is barely even used in other trademark cases due to the requirement under the Act for an approval of the criminal complaint by the Trademarks Registrar. Such an administrative hurdle takes months to overcome leading to defeat of the entire exercise. The Copyright Act, 1957 is invoked at times and raids conducted, however domain name offences are still struggling for legislative clarity. Harassment, blackmail, misuse of domain space, illegal gain, riding on goodwill and initial interest confusion are part and parcel of most domain name and cyber squatting

4 disputes and require attention and action of the legislature, administrative bodies as well as the judiciary. Countries the world over are analyzing inevitable problems faced through the cyber world by changing and adapting their laws accordingly. The Anti Cybersquatting Consumer Protection Act of the United States is a prime example. In the Satyam case in India, it was observed that- since the internet allows for access without any geographical limitation, a domain name is potentially accessible irrespective of the geographical location of the consumers. National laws may 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 the World Intellectual Property Organization (WIPO) and the Internet Corporation for Assigned Names and Numbers (ICANN). If Indian law cannot prioritize the issue domestically, India ratified international law and procedure should be given it s due. INTERNATIONAL RULES AND PROCEDURES (A) Internet Corporation for Assigned Names and Numbers (ICANN) An international Non Profit Corporation, Internet Corporation for Assigned Names and Numbers (ICANN) formed in 1998 is the internet s naming system and technical coordinator, responsible for developing the policy for the internet s unique identifiers and addresses. ICANN oversees the distribution of unique technical identifiers which are used in the Internet s operations and also delegates Top-Level Domain names (such as.com,.info, etc) resulting in universal resolvability. In order to register a domain name, one must first contact the ICANN authorized administrator of the desired TLD through a service provider. As long as the desired name has not been assigned to any prior applicant, the requested name will be approved without any requirement towards proof of ownership, trademark registration or any other form of evidence. However once a domain name has been registered in the above manner, the same does not ensure trademark status. A domain name is not itself a trademark. In order to attain trademark status various factors such as date of use, distinctiveness of the domain name with respect to goods or services, manner of use etc. will contribute after ensuring that no-one prior existing identical/ deceptively similar trademark is being violated. ICANN has also provided guidelines for domain name registration, working towards bonafide registrations.

5 Since ICANN is the international core of the internet, it is but practical that it provide a dispute resolution mechanism for domain name disputes in association with The World Intellectual Property Organization (WIPO). The World Intellectual Property Organization has numerous countries as signatories and international dispute resolution is a workable solution. (B) Governmental Advisory Committee (GAC) ICANN s Organizational Structure includes a Governmental Advisory Committee (GAC) set up in 1999 accessible at gac.icann.org. The GAC has an open-ended membership driven policy, inviting nations the world over to partake in ICANN s policymaking activities. It includes Government representatives, public authorities, and several intergovernmental organizations. ICANN's activities and policies are considered by the Governmental Advisory Committee (GAC), pertaining to special government interests and implications in matters involving an interaction between ICANN's policies and national laws or international agreements. The GAC typically holds quarterly meetings in conjunction with ICANN meetings. Over 50 national governments, distinct economies, and multinational governmental organizations such as the ITU and the World Intellectual Property Organization (WIPO) currently attend the GAC on a regular basis. India is a member country represented by Mr. N. Ravi Shankar of the Ministry of Communications & IT. Dr. Govind and Mr. Ranjan Kumar of the Department of Information Technology, Ministry of Communications & IT of the Government of India head the GAC Secretariat aiming at increasing the influence of ICANN. (C) Uniform Domain Name Dispute Policy (UDRP) ICANN implemented the Uniform Domain Name Dispute Policy (UDRP) in 1999, which has been used to resolve more than 20,000 disputes over the rights to domain names. The UDRP is designed to be efficient and cost effective. In 2010 alone around 2696 cyber squatting cases were filed with the WIPO Arbitration and Mediation Centre under this Policy involving 4370 domain names across 57 countries, according to WIPO s official website. In cases of cyber squatting, cyber piracy or bad faith registration, the complaining party can invoke a special administrative procedure before the WIPO Administrative and

6 Mediation Centre to resolve the dispute. Under this procedure, neutral persons selected from panels established for that purpose would decide the dispute. The procedure takes approximately 45 days, costing about $1000 in fees to be paid to the entities providing the neutral persons and is handled mostly online. The Rules clearly lay down: - Under Rule 4(k) the parties to the dispute can also alternatively go before their domestic judicial courts to resolve the dispute or to contest the outcome of the WIPO Administrative Panel proceeding within 30 days of such impugned decision. Every ICANN accredited registrar has agreed to adhere to the dispute resolution policies that ICANN adopts under its established consensus procedures. - Administrative proceedings, fees, disputes/ litigation, remedies, availability of court proceedings, cancellations, transfers, changes, transfers during disputes and policy modifications are all clearly laid out. - They define various terms like complainant, ICANN, mutual jurisdiction, panel, panelist, party, policy, provider, registrar, registration agreement, respondent, reverse domain name hijacking and supplemental rules. - They lay down the method and the manner of communication as well as the form and format of a complaint. They specify when and how a complaint is to be notified and to inform the complainant and the respondent if the complaint is administratively deficient for the correction of which 5 days are given. - The time period to file a response to the complaint is 20 days of the date of commencement of the administrative proceeding. - Manner of appointing panelists for a dispute and in what manner the fees are to be paid by the parties are clearly explained. In all cases the fees are to be borne by the complainant except where the respondent has made a request for a three member panel in which case the fees shall be shared equally by both parties. - The parties are banned from communicating unilaterally with any panelist. The Rules are not to be amended without consent or prior notification of ICANN. Under Rule 4 the disputes are specified for which mandatory administrative proceedings are held. The proceedings are conducted before one of the administrative-disputeresolution service providers listed at

7 Rule 4 (a) mentions applicable disputes in the events wherein: 1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and 2. There are no rights or legitimate interests in respect of the domain name; and 3. The domain name has been registered and is being used in bad faith. Rule 4 (b) explains the evidence of registration and Bad Faith use. The WIPO Arbitration Rules are applicable to the arbitration proceedings wherein the powers of the tribunal, schedule of fees, conduct of proceedings, awards, costs etc. are expressly provided for. According to Article 46 of the Arbitration Rules interim measures of protection and security for claims and costs can also be granted by the arbitration panel for effective remedy. There are a number of cases before the WIPO Arbitration and Mediation Centre that show bad faith registrations such as: Benett & Coleman Ltd. v. Steven S. Lalwani, wherein the two domain names and were being used by the respondents 1998 onwards in bad faith to redirect Internet surfers to providing India related news and articles. Bennett Coleman and Co. Ltd., the complainant, publishes The Economic Times, and The Times of India, which are both widely read in India and also holds the domain names, and using them for the electronic publication of their respective newspapers. The complainant had already registered in India, the marks The Times of India and The Economic Times in 1943 and 1973 respectively. The complainant contended that the respondent had no right or legitimate interest in respect of domain names which were registered in bad faith in order to attract, for commercial gain, Internet users by creating confusion in their minds. Even though the respondent contended that the complainant had no relevant trademarks registered in USA and that there is no likelihood of confusion between the parties respective sites, the WIPO Panel found that the titles The Economic Times and The Times of India are used to identify the producer of the newspapers and sites and are not merely descriptive of content. The only difference between the domain names of either party is

8 incorporation of the article the in the beginning and so the public will be misled as the reputation of the complainant is substantial. The WIPO Panel thus ordered the transfer of both domain names back to the complainant. APPLICABILITY ANALYSIS UDRP: If a party initiates any legal proceedings while an administrative proceeding in respect of a domain name dispute that is the subject of the complaint is still pending, it is to promptly notify the Panel and the Provider. The Rules specify that in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision. Thus we see the UDRP as efficient machinery in place for domain name dispute settlement at an international level. The mechanism provides for either party to take the dispute to their own countries jurisdiction within 30 days of the arbitration decision of the WIPO Arbitration and Mediation Centre and this is the loop hole every respondent seeks. The fact that the arbitration decision is not binding and that many countries have their own hierarchy of courts that deal with or choose to ignore such disputes, makes the entire process quite inefficient and wasteful. National courts, including Indian courts are not bound to give relevance to the decisions of the WIPO Panel and Arbitration Centre and trademark owners are the ultimate victims. One of many examples of failure of the mechanism is the case of Maruti Udyog against Rao Tella, namely Maruti.com et al. v. Maruti Udyog Ltd. et al. [U.S. Dist. Ct. No. L ]. The Indian company Maruti Udyog won the complaint it made before the WIPO panel against the respondent who had registered the domain name marutiudyog.com in the United States. The respondent had been stamped as a cyber squatter 3 times by the WIPO panel in WIPO arbitration cases filed by Onida, Hero Honda and Maruti. Yet when the case went before the United States courts, the WIPO panel decisions were considered non binding. Even the United States Anti Cybersquatting Consumer Protection Act was said not to have applied as according to the court Maruti did not manufacture or sell cars in the United States and so were not entitled to protection under the Lanham Act. Unless governments world over make use of the international ICANN and WIPO mechanism by making their decisions binding, an efficient resource is going to waste. Complainants tend to approach domestic courts instead of using the ICANN machinery

9 without realizing that the WIPO procedure of ICANN is cost effective and has a faster disposal rate with matters disposed off within 45 days. The WIPO Arbitration panel can even pass interim measures to protect the injured party s interests at the very outset. It is interesting to note that even though the national court system does not consider WIPO Arbitration Panel decisions binding, they have made various findings and judicial decisions based on the ICANN s UDRP Policy. This shows that courts find the Policy to be a sound authority on domain name cyber squatting disputes. One of many examples is the case of Manish Vij v. Indra Chugh [AIR 2002 Del 243] where the plaintiff was the proprietor of the trademark and domain name dealing with second hand goods on the internet. Since kabadi means a person who buys second hand products and bazaar means a market where trading takes place the words suit the domain name indicating the nature of business on the website. The defendants on the other hand had been running the website a month after the plaintiff and claimed wider reputation amongst the public, than that of the plaintiff s site. The plaintiff referred to WIPO Uniform Dispute Resolution Policy, 1999, adopted by ICANN and argued that the registration of the domain name by the defendants was in bad faith. The Court after referring to Rules 4 (a) and 4(b), found that both parties had operated their websites within a month and while the plaintiff was unable to show the quantum of business carried out, it cant be said that the defendant had not incurred advertisement costs. It held that it was not possible to prove that the registration of the domain name was in bad faith. Kabadi- bazaar is a common term in the hindi language and so the plaintiffs domain name had not acquired secondary meaning. Thus the plaintiff s application was dismissed and the interim injunction order against the defendant was vacated. National courts can easily shift domain name cases towards ICANN which is an efficient alternate dispute resolution remedy easing the over burdened domestic court system of a country. INDRP: India has in a very limited way made some use of ICANN s UDRP Policy by implementing the.in Domain Name Dispute Resolution Policy (INDRP) on the same lines, however restricted to the.in registry disputes.

10 The National Centre for Software Technology is the sponsoring organization in India for the.in Registry, and the administrative contact for the same is the National Internet Exchange of India (NIXI). Under NIXI, the IN Registry functions as an autonomous body with primary responsibility for maintaining the.in country code top level domain for India. As per paragraph 10 of the INDRP Policy proceedings before an arbitration panel shall be limited to the cancellation or transfer of domain name registration to the Complainant. Under the INDRP rules an arbitration procedure has been provided for dispute resolution of.in cctld domain name disputes and the decision of the same is made binding under the Arbitration and Conciliation Act 1996 of India. Interim Relief is also available under Section 17 (1) of the Arbitration and Conciliation Act, 1996, at the request of either party to be ordered by the Arbitral Tribunal if considered necessary in respect of the subject matter of the dispute. The INDRP Rules of Procedure are available at and explain the entire procedure of arbitration including the manner of complaint, communication, time periods, relevant documents, schedule of fees being a maximum of Rs. 14,000, notification, appointment of panel etc. Rule 12 provides that In person hearing is only allowed in exceptional circumstances on the arbitrator s sole discretion. A list of authorized arbitrators being esteemed members of the intellectual property legal community have been listed out by the Registry for dispute resolution and are open to applications. An important case of the INDRP Arbitration Panel is that of Bloomberg Finance L.P., (BF) vs. Mr. Kanhan Vijay of The domain name in question is which was registered by the respondent. The complainant Bloomberg Finance L.P. was the registered proprietor of the services mark BLOOMBERG in India and abroad, with rights from 1986 as a trade mark, trade name and corporate identity establishing widespread reputation and goodwill. The complainant had registered various domain names under.in CCTLD incorporating "Bloomberg" as the name and is therefore the prior adopter, user and registrant. The respondent represented a firm Bloomberg Computers which had no association with the complainant Bloomberg Finance and had no reason to adopt or register as domain name subsequent in time to the complainants various domain registrations with the name Bloomberg. The respondent s bad faith intent was established by the Panel stating that there was a lack of due diligence or evidence on the part of the respondent towards their claims and that the domain was to be transferred to the complainant accordingly.

11 Conclusion The need of the hour is for India to amend its legislature so as to provide for cyber squatting and domain name related disputes in the Information Technology Act 2000 and the Cyber Appellate Tribunal should be used for such offences as well. All arbitration decisions of the WIPO Arbitration and Mediation Centre should be made binding in India under the Arbitration and Conciliation Act This amendment can be made in the Information Technology Act 2000 stating that WIPO decisions can go to appeal before the High Court just like other arbitration decision considered as decrees under the Arbitration Act and execution petitions can be filed to enforce them accordingly. This way ICAAN and WIPO decisions will ease the overburdened Indian court system. With regard to the.in registry the INDRP policy is already in place protecting the domain names through the arbitration procedure in force. This can thus be extended to all TLDs through the above mentioned amendments reaching a practical working solution. India should use the WIPO and ICANN mechanism of dispute resolution and set a precedent for other countries across the world. Further, ICANN s Governmental Advisory Committee (GAC) is a useful tool for national governments to understand, adopt and contribute towards ICANN policies pertaining to specific government interests. Governments must take a contributory proactive interest in the GAC, keeping the best interest of the national and global economy in mind. This is where India should step up its contributions, become a more active member of ICANN s initiatives and pave the way for a virtually sound cyber India. Article by: Christine Chiramel, Advocate, Delhi High Court Associate, Vaish Associates Advocates, New Delhi, India All rights reserved. The content of this article is intended to provide a general guide to the subject matter. Specialist professional advice should be sought about your specific circumstances. The views expressed in this article are of the author of this article. Specific Questions relating to this article should be addressed directly to the author.