julia-roberts_by_indioConcerned with the menacing rise of celebrity domain squatting cases, FoxMandal technology law head Salman Waris asks whether the current laws are an adequate deterrent to cyber squatting.

While Hollywood actress Julia Roberts (pictured left) was busy adopting an Indian name for herself and her children during her September tour to India last year, little did she realize that someone in a Pataudi village Ashram was working on the internet for the acquisition of her online name - www.juliaroberts.in - in the Indian webspace.

Even though Roberts may not be so excited about her Christian name, it seems there are many waiting to grab the opportunity to make a quick buck on the internet using her name to sell anything from paparazzi snapshots to morphed video sex clips of the actress.

However, Roberts is not new to such a trend which is popularly referred as ‘celebrity domain name squatting’. She successfully got a similar squatter evicted from her internet domain www.juliaroberts.com in 2001 on the grounds that the web address had been registered in bad faith and the squatter had no rights or legitimate interest in the name.  

The menace of celebrity domain name squatting is growing in the west where internet domains relating to popular international celebrities have been registered from time to time by unauthorised persons for misuse either in the form of routing internet traffic or making quick money by auctioning them.

Bollywood celebrities too have fallen victim to this internet malice with even big stars not owning their own domain names. Several celebrity web domains have already been bought by someone who may extract his or her pound of flesh.

Domain squatting is an old game. Most Bollywood film stars are unaware that their names have been hijacked or that sites in their names can be potentially misused for pornography.

According to the latest World Intellectual Property Organisation (WIPO) Domain Name Dispute Resolution Statistics there has been a drastic increase in the number of cyber squatting dispute cases in the last few years. In 2008 alone WIPO received as many as 2329 complaints while this number was just 1100 in 2003.

Law and Policy

The international domain name regulatory authority called Internet Corporation for Assigned Names and Numbers (ICANN) adopted the Uniform Domain Name Dispute Resolution Policy (UDRP) following the domain name case of Mcdonalds.com that came to light in 1994.

The policy formulated thereafter provided for incorporation of terms and conditions into the registration agreement concerning disputes between the registrant and any party other than the registrar over registration and the use of a registered Internet domain name. According to this policy, the registration of a domain name is considered abusive when all the following conditions are met:

(i)    the domain name is identical or misleadingly similar to a trade or service mark in which the complainant has rights;  
(ii)    the holder of the domain name has no rights or legitimate interests in respect of the domain name; and
(iii)    the domain name has been registered in bad faith.
In India, anyone interested in registration of .IN domain name has been allowed to do so since early 2005. Registration is open to parties inside and outside of India without restriction and of late the scourge of cyber-squatting has seen on a steady rise especially after the expiry of the sunrise period in January 2005. With domain name prices falling to as low as Rs 200, squatters seem to be on a domain buying spree.

‘IN’ is India's top-level domain on the internet. Like .COM, .IN can be used for                      e-mail, web sites and other applications. But unlike other domains, .IN is a unique symbol of India and its role in the world. INRegistry is the official .IN registry. It was appointed by the Government of India to operate under the authority of the National Internet Exchange of India (NIXI).

The Department of Information Technology (DIT) in association with the Internet Service Providers Association of India (ISPAI) has promoted the National Internet Exchange of India (NIXI) as a not-for-profit company under Section 25 of the Indian Companies Act 1956 with the objective of facilitating improved internet services in the country.

NIXI aims to ensure that the internet traffic which originates within India and also has destination in India remains within the country, resulting in improved traffic latency, reduced cost and better security.

The Ministry of Communications and Information Technology through the Department of Information Technology has implemented the ‘New Policy for .IN Internet Domain Name Registration & National Internet Exchange’ with effect from 1 January 2005. This policy basically governs the registration and administration of .IN domain names in India.

.IN Domain Name Dispute Resolution Policy (‘Policy’) and the dispute resolution mechanism are based on the internationally accepted UDRP as prescribed by ICANN and sets out the terms and conditions to resolve a dispute between the registrant and the complainant, arising out of the registration and use of the .in Internet Domain Name.

Any person who considers that a registered domain name conflicts with his legitimate rights or interests may file a complaint to the .IN Registry on the following premises:
  1. the registrant's domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights;
  2. the registrant has no rights or legitimate interests in respect of the domain name; and
  3. the registrant's domain name has been registered or is being used in bad faith.
The registrant is required to submit to a mandatory arbitration proceeding in the event of a complaint before the .IN Registry in accordance with the policy and rules framed there under.

The remedies available to the complainant pursuant to any proceeding before an arbitrator shall be limited to requiring the cancellation of the registrant's domain name or the transfer of the registrant's domain name registration to the complainant.

The courts in India have upheld passing off actions and also granted injunctions in cases of confusing similar names. For example, the website using the domain name ‘Naukari.com’ was held to be confusingly similar to that of the plaintiff, ‘naukri.com’, with a different spelling variant establishing prima facie inference of bad faith.

In Yahoo Inc Vs Akash Arora, yahoo acted against Akash Arora for passing off its sources on the internet by adopting the domain name ‘yahooindia.com’. The court held that although internet users were technically educated and literate, this factor would not reduce the risk of confusion. The very fact that a person who intends to visit the internet site of yahoo may reach another site owing to similarity in the domain names was sufficient to grant injunction.

One of the major drawbacks of the UDRP system - as opposed to court proceedings which may go to the extent of awarding damages - is the fact that relief is limited to either getting the domain name struck off or transferred. Besides, the Information Technology Act 2000 also does not have any specific provision dealing with the menace of cyber squatting.

FoxMandal_Salman-Waris_thHowever, the recently introduced provisions under section 66D of the Information Technology (Amendment) Act 2008 that provides punishment for cheating and personating by means of any communication device or computer, maybe indirectly interpreted to cover certain issues relating to cyber squatting.

In the long run, it is the awareness about such issues and developing a general culture of valuing one’s intellectual property on the internet which will help reduce cases of cyber squatting.

Salman Waris (pictured) heads FoxMandal Little's technology, media and telecommunications (TMT) practice in Delhi.

Photo by indio

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Like +0 Object -0 Anonymous guest 07 Jul 10, 21:46
Nice article. For a change LI wakes up to the fact that there are other kinds of laws in this world apart from corporate and business laws.
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Like +0 Object -0 Anonymous guest 08 Jul 10, 04:56
LI let's now have an article by Som Mandal on why he supports foreign law firms. If you give publicity to Lalit Bhasin then it's only fair you air the views of other law firm owners if you claim to be neutral on the issue.
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Like +0 Object -0 legaldrift 08 Jul 10, 07:23
The article is a perfect blend of coherency and information. Must say a well drafted piece of work.
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Like +0 Object -0 Anonymous guest 08 Jul 10, 08:48
Mr Waris if you are reading I will be happy if could kindly answer my doubts. Why do you refer to the law of passing off and not the trademarks act? Can't a domain name be registered as a trademark? Thank you.
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Like +0 Object -0 neocog 08 Jul 10, 15:06
If NIXI operates under the UDRP policy and refers disputes to mandatory arbitration proceedings, then what is the need for application of the Trademark law/IT law.
Proceedings under section 66D of the IT Act (as amended) that provides punishment for requires a much higher standard and it is based upon dishonest intentions/cheating by impersonation. A person who registers one website thinking about the possibility of arbitrage certainly does not rise up to the standard of a person whose business is to register websites and live off the proceeds of arbitrage.
My concern is that the provisions of the IT Act might be misused in taking away the freedom of an individual.

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Like +0 Object -0 Anonymous guest 08 Jul 10, 22:53
"then what is the need for application of the Trademark law"

yes but that's not my question. Cana domain name be a regd trademark? It can have important consequences if it can be.
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Like +0 Object -0 Anonymous guest 09 Jul 10, 10:21
Contrary to what the author claims. The UDRP is working well. There are several cases with celebrity complainants.
The UDRP is fast and effective. There is no need to change.
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Like +0 Object -0 LocalLoop 09 Jul 10, 23:55
Many thanks for your comments.

The reference to passing off was with specific regard to the cases discussed. Domain names is registrable as a trademark or service mark only if it ‘functions as a source identifier’. The mark as depicted must be presented in a manner that will be perceived by potential purchasers as indicating source and not as merely an informational indication of the domain name address used to access a web site. See US Case In re Eilberg, 49 USPQ2d 1955 (TTAB 1998) and also more recent Indian case (India TV) Independent News Service Pvt Limited Vs.: India Broadcast Live LLC and Ors.2007(35)PTC177(Del. Hence provisions of the Trademarks Act can be invoked, if the owner so desires, my reference to passing off action did not intend to convey that this was the only remedy available. Nevertheless thanks for raising the point as this may help provide a better picture to other readers.

I also agree with the concerns raised by Neocog about the misuse of the IT Act my objective here was to highlight the current situation and the law and also emphasize on the need to spread awareness about the issue of cyber squatting in general and celebrity domain squatting in particular. But thanks again for the observations, they raise valid concerns and add value to the discussion.

#7 Anonymous guest, The UDRP is working well, I agree, as is evident from the title itself this article aims to highlight and create awareness about the increase in celebrity domain squatting in the “.IN” extension. With the recent domain squatting cases involving bollywood stars like Amitabh Bachchan, Susmita Sen and several others, confirming that the trend is no longer limited to Hollywood stars.

The only drawback of the UDRP system is the lack of a deterrent effect, since it does not provide for any penalties. Though, sometime back in a case NIXI has taken the landmark step to award damages in favour of one of our clients.
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Like +0 Object -0 Anonymous guest 14 Jul 10, 10:05
In India 97% people do not understand English.please answer present legal system is for whom ?
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