CHANAKYA NATIONAL LAW UNIVERSITY,

PATNA

Project on :-
CYBER LAW
PROTECTION OF DOMAIN NAME VIS--VIS TRADEMARK

Submitted To:
Mr. KUMAR GAURAV

(Faculty of cyber
law)

Submitted By:
Rohit kr. Gaurav

Roll No: 787

5th Year,

9th Semester

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 ACKNOWLEDGEMENT

The present project on the Protection of domain name vis--vis

trade mark has been able to get its final shape with the support and
help of people from various quarters. My sincere thanks go to all the
members without whom the study could not have come to its
present state. I am proud to acknowledge gratitude to the
individuals during my study and without whom the study may not be
completed. I have taken this opportunity to thank those who
genuinely helped me.

With immense pleasure, I express my deepest sense of gratitude to

Mr. kumar gaurav, Faculty for jurisprudence, Chanakya National Law
University for helping me in my project. I am also thankful to the
whole Chanakya National Law University family that provided me all
the material I required for the project. Not to forget thanking to my
parents without the co-operation of which completion of this project
would not had been possible.

I have made every effort to acknowledge credits, but I apologize in

advance for any omission that may have inadvertently taken place.

Last but not least I would like to thank Almighty whose blessing
helped me to complete the project.

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 RESEARCH METHODOLOGY

Method of Research:

The researcher has adopted a purely doctrinal method of research. The

researcher has made extensive use of the library at the Chanakya National
Law University and also the internet sources.

Aims and Objectives:

The aim of the project is to present a detailed study on protection of domain

name vis--vis trademark

Scope and Limitations:

Though this is an immense project and pages can be written over the topic
but because of certain restrictions and limitations I was not able to deal with
the topic in great detail.

Sources of Data:

The following secondary sources of data have been used in the project-

1. Cases

2. Books

Method of Writing:

The method of writing followed in the course of this research paper is

primarily analytical.

Mode of Citation:

The researcher has followed a uniform mode of citation throughout the

course of this research paper.

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 TABLE OF CONTENTS

Introduction
What is Domain Name?
Importance of Domain Name
Cyber-Squatting
Domain Name Registration
Infringement of Trademark as Domain Name
Diversion of Traffic
String Conflicts
Protection under Trademark Law
Remedy of Passing of
Remedy under Section 103 & 104
Trademark Protection Under International Law
Paris Convention
TRIPSAgreement
Trademark Law Treaty
Uniform Dispute Resolution Policy (UDRP)
Indian Cases Reaching UDRP
Provision Under United States of America
Conclusion

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 A. INTRODUCTION

In the current age, the internet has become a part and parcel of the life of

almost every individual in the developed nations and is on the way of

assuming a similar position in respect of developing nations. The modern

communication techniques that are available through the internet and the

large number of people who access it throughout the world as a market. In

this scenario, an entitys trademark assumes immense importance. It helps

an entity build up its identity over the World Wide Web. With the advent of

the internet, the world today is witnessing a revolutionary change in the field

of communications. Out of nowhere, the internet seems to have exploded on

the forefront of several commercial establishments, organizations,

governments and institutions. Everybody, who is somebody, seems to have

something to do with the internet. Flashing an internet address has become

a sine qua non for almost every organization. It goes without saying that as

the awareness of the internet grows, the number of websites grow

correspondingly. Such growth of web sites, has also given rise to a new era of

disputes- i.e. domain disputes.1

B. WHAT IS DOMAIN NAME?

In the new e-economy, it is vital that prior to entering into any sort of

business activity a company, must be traceable relatively easily on the

1 Sanjay Bhatta, Domain names, cyber squatting and trademarks in India- A legal perspective.
at http:// www.indiainfo.com

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Internet, i.e. it must have an address in cyberspace. This would require its

registration under a particular domain name.2 A domain name is a

hierarchically structured character string that serves as an Internet address.

The real Internet Protocol (IP) address is a string of numbers that is difficult

to use and remember (e.g., 128.82.75.52). Internet users rely on domain

names, which take the form of memorable and sometimes catchy words, to

stand in their place.3 The domain name at the extreme right is called the Top

Level Domain (TLD) and any domain to the left of the TLD and separated by

a dot is the Second Level Domain (SLD). A domain to the left of the SLD is

known as the Sub-domain (SD). The sub-domain, Second Level Domain and

the Top Level Domain put together comprise a Domain Name. Thus,

suppose in the domain name law.microworld.com, .com is the TLD,

microworld is the SLD and law is the SD. 4 There are two types of Top Level

Domain Names, Generic and Geographic. Generic domain names are unique

to the entire world. Generic Domain Names are for example .com, .edu,

.org, .net, .gov, etc. Geographical Top Level Domains are for example, .in,

.fr, .aus, .uk, etc.

B.1- IMPORTANCE OF DOMAIN NAME

2 Nandan Kamath, Law relating to Computers Internet & E-Commerce at p. 167.

3 Karnika Seth, Cyber Laws in the Information Technology Age at p. 372.

4 Amita Verma, Cyber Crimes and Law at p. 266-267.

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The dominant purpose of the domain name is simply to provide an easy

method for remembering anothers electronic address. Domain names are an

important commodity, especially since users interested in communicating

with a particular organization or retrieving information about its products

must do so without recourse to any centralized, complete directory. This

makes short, easy to remember names of paramount value in choosing an

address.5 Moreover domain names are valuable corporate assets, as they

facilitate communication with a customer base as in case MTV Networks,

and Redif Communications, and once a company has registered a domain

name, it amounts to reserving a significant part of cyber space for that

company.

B.2- Cyber- Squatting

Cyber-squatting is a form of speculation where a domain name is registered

with the intention of selling of the same. Cyber-squatting is the practice by

means of which a person or legal entity books up the trade mark, business

name or service mark of another as his own domain name for the purpose of

holding on to it and thereafter selling the same domain name for the purpose

of holding on to it and thereafter selling the same domain name to the other

person for valuable premium and consideration. Cyber squatters book up

domain names of important brands in the hope of earning quick millions.6

5 Andre Brunel, Billions Registered, But No Rules: The Scope of Trademark Protection for Domain
Names, J. Proprietary Rts., Mar 1995, at p.2.

6 Ibid at p.271.

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B.3- Domain Registration

Domain administration is done by the National Centre for software

Technology,7 Mumbai which runs the Indian Domain Registration Service.

Domain Name registration requests are entertained by NCST only if the

organization has a valid IP address or has applied for one. 8 The domain may

be registered electronically. The application form, on receipt, is circulated

within a review group and the applicant will be contacted for clarifications/

name clashes, if any. If there are none, then the applicant will be allocated

the desired domain name and intimated. Upon registration, the registrant is

required to run a DNS server. Registration is very important to check the

problem of cyber squatting. It can be dealt by means of regulations to ensure

that in particular country only the owner of a trademark can register it as a

domain name. For example, if Nick-Bakers is registered as a trademark in

India, only the owners of that trademark should be allowed to register the

domain name NickBakers.co.in. As regards the .com TLD, any prospective

registrant must show that he possesses a trademark in that name, or has

some sort of a justifiable connection, entitling him to that name.9

C- INFRINGEMENT OF TRADEMARK AS A DOMAIN NAME

A domain name is not itself a trademark. A trademark is a right, granted

7 Hereinafter called as NCST.

8 Nandan Kamath, Law relating to Computers Internet & E-Commerce at p. 172.

9 Nandan Kamath, Law relating to Computers Internet & E-Commerce at p. 188

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under law, to use a mark in commerce to represent a product (or a business,

in the case of a trade name). A domain name is a word or phrase registered

in the domain name registration system. A domain name may be a

companys expression of its trademark. The use of a trademark in a domain

name, for instance, is the equivalent of using the trademark on a billboard,

or in advertising. Infringememt refers to a dispute where the original

registrant intentionally trades of the resemblance between the domain

name and another famous trademark. A registered trademark will be

infringed if a person in the course of trade, in relation to the same goods for

which the mark is registered, uses without authority the same mark or a

deceptively similar mark.10 Section 29 lays down the various cases in which

a person will be said to have infringed another persons trademark. The

ingredient that is common to all the cases is the use of the trademark in the

course of trade and in relation to goods or services. Thereafter, the

registrant tries to encash on the reputation of the trademark holder by

running a business similar to that of the trademark holder. In such cases, the

use of the domain name (mark) would be illegal under the existing

trademark law, regardless of whether the infringement occurred as an

internet domain or in other context. Section 135,11 prescribes reliefs such as

injunction & damages in case of infringement of trademark. The standard

factors, which determine infringement under the traditional trademarks law

10 Section 29, Trademarks Act, 1999.

11 Trademarks Act, 1999.

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are:

The strength of the trademark

The deceptive similarity between the plaintifs and the defendants

mark,
The likelihood of confusion in the minds of the public, etc.,
Would apply in cases of infringement of domain names also

C.1- Diversion of Traffic- These sort of conflicts involve cases where the

claimant is the owner of a trademark which a competitor is using as a

domain name, without such competitor having any inherent right to the

name.12 In such cases, as a general rule, traditional trademark law would

apply, since one of the parties is efectively infringing on the use of the mark

by the other. A typical example of such a dispute would be a case where a

person registers a domain name reebuk.com in order to divert domain

name traffic from reebok.com.13

C.2 String Conflicts- String Conflicts or twins are the most complex aspect

of domain name disputes. String Conflicts involve cases where both parties

have trademark, either relating to the same product in diferent countries, or

to diferent products in the same country. If both parties now want to register

the trademark as a domain name, then a conflict arises which is almost

irresolvable. The conflict arises because there can be only one domain name

of a particular word. And to grant preference to one party over the other

12 Princeton Review management Corp v. Stanley H.Kaplan Educational Centre Ltd. 94 Civ.
1604(SNDY 1994)

13 Nandan Kamath, Law relating to Computers Internet & E-Commerce at p. 188

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would also be unfair. The common law principle of passing of also does not

have any relevance in such cases.

D- PROTECTION UNDER TRADEMARK LAW

Trademarks have had a prominent place in history, emerging with the

development of international trade and evolving into one of the principal

arms of intellectual property.14 In India the Law governing protection of

trademarks is Trade Marks Act 1999. It defines trademark as a mark which

includes a device, brand, heading, label, ticket, name, signature, word, letter,

numerical, shape of goods etc. 15 Trademarks are marks which businesses

use to identify the products to consumers. Conventionally, this involves

things such as logos, key sounds, symbols and words. Recently, however,

trademarks have become a topic of specific attention in the context of

todays online environment. Areas such as Internet domain names,

hyperlinks and keywords searches have forced us to rethink what trademark

is and how it should be enforced. 16 Domain name disputes are relatively

unheard of in the Indian Courts. There have been hardly a handful of

reported decisions regarding domain name disputes and the case law has

still not developed in India. However, with the use of the internet catching up

14 Introduction to Trademark Law and Practice: the basic concepts, WIPO, Geneva, 1993, p.5.

15 Section 2(1)(m), Trademarks Act 1999.

16 Karnika Seth, Cyber Laws in the Information Technology Age at p. 372.

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at an amazing pace in the country, the Indian courts would surely be faced

with domain name disputes in times to come.

D.1- Remedy Of Passing Of- Passing of is a form of tort. No man is entitled

to represent his goods as being the goods of another man, and no man is

permitted to use any mark, sign or symbol, device, or other means, whereby,

without making a direct false representation himself to a purchaser who

purchases from him, he enables such purchaser to tell a lie or to make a

false representation to somebody else who is the ultimate customer. 17 It is

asn actionable wrong for any person to pass of his goods or business as and

for the goods or business of another person by whatever means that result

may be achieved.18 Fraudulent intention is not necessary to constitute

passing of. In fact today it is applied to many forms of unfair competition

where the activities of one person cause damage or injury to the goodwill

associated with the activities of another person or group of persons. The

essential characteristics which must be present in order to create a valid

cause of action for passing of are:19

Misrepresentation,
Made by a person in the course of trade,
To prospective customers of his or ultimate customers of goods or

services supplied by him,

17 Singer v. Loog (1881) 18 Ch D 395.

18 P.Narayanan, Intellectual Property Law, 3rd ed, p. 212.

19 Erven Warnick v. Towend [1980] RPC 31 at 93 (HL)

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 Which is calculated to injure the business or goodwill of another trader,

and
Which causes damage to a business or goodwill of the trader by whom

the action is brought or goodwill of the trader by whom the action is

brought or will probably do so.

Section 135 deals with reliefs which are available in an action for passing

of or infringement. It includes-

An injunction subject to terms,

Either damages or an account of profits at the option of the

plaintifs, and
An order for delivery-up of the ofending labels and marks for

destruction or erasure.

One of the famous cases based on this remedy is the One in a million case. 20

In this case the UK based, One in a Million Ltd, and its sister company, Junic,

registered domain names with NSI 21 and Nominet.22 Registered domain

names included those of well-known commercial companies, trademarks or

other famous names, like marksandspencer.com, cellnet.net etc. One in a

Million then negotiated resale of the domain names with the owners of the

trademarks or tradenames. The court in United Kingdom held that it was an

act of passing of and granted an injunction to prevent the cyber squatting of

20 Marks & Spencer plc v. One in a Million case 1998 FSR 265

21 USA administrator of Generic TLDs

22 Administrator of the .uk geographical top level domain names.

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domain names involving well-known brands such as Salisbury, Mark &

Spencer.

Another case of Juris inc,23 where Juris, Inc, owner of a federal trademark

registration of JURIS for its legal time and billing software products, had been

forced to choose the domain jurisinc.com after leaving its first choice

juris.com, which had already been assigned to The Comp Examiner Agency.

When Juris, Inc. accused Comp Examiner, which used the domain for a legal

information website, went to court seeking cancellation of Jurisincs JURIS

trademark registration on grounds of genericness; Juris,Inc then

counterclaimed for trademark infringement and dilution. The court granted

Juris, Inc a preliminary injunction which not only precluded Comp Examiner

from using the domain juris.com, but also from using juris in its domain

name or any confusingly similar variation. Juris,Inc. now owns both domains,

and operates under the domain juris.com.

Another most important case in this regard has been the yahoo case, 24

wherein the Internet search engine, yahoo Inc sued and internet pirate who

had copied the domain name yahooindia.com and also used yahooindia as

a trademark with similar literary work on its website and ofered directory

services with information specific to India and was passing itself as the

extension of yahoo. The High Court of Delhi granted an injunction restraining

23 Comp Examiner Agency, Inc v. Juris ,Inc, 1996.

24 Yahooinc v. Akash Arora (1999) PTC 201.

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him from using yahoo either as a part of his domain name or as trademark or

from copying any of the contents of the Plaintifs website that infringe

yahoos copyrights. The court categorically ruled that trademark applies with

equal force on internet as it does in a physical world. The potential of harm is

far greater on the Internet because of his wide access and reach and

therefore trademark protection principles equally apply to online world.

D.2- Remedy under Section 103 & 104- Under section 103,25 a person is

liable for falsification of trademark. A person is said to falsify a trademark if

he makes a trademark without the assent of the proprietor. To constitute

falsification it is sufficient if the ofender makes a mark deceptively similar to

the genuine trade mark, or if he carries out alterations, additions or

efacement in the genuine trademark. A trademark so falsified is called a

false trademark.26 In a case of falsification of trademark it is therefore

necessary to prove the existence of a genuine trademark, whether registered

or unregistered, belonging to some person. Any person who falsifies a

trademark is punishable with imprisonment which may extend from six

months to three years fine which may vary from fifty thousand to two lacs.

And if any person sells or lets for hires any services to which any false

trademark or false trade description is applied shall be punishable with

imprisonment of six months which may extend to three years and fine of

rupees fifty thousand which may extend to two lac rupees. For every
25 Trademarks Act 1999.

26 P.Narayanan, Intellectual Property Law, 3rd ed, p. 238.

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subsequent ofence the term of imprisonment will vary from one year to

three years and the amount of fine may vary from one lac to three lacs

rupees.

E. TRADEMARK PROTECTION UNDER INTERNATIONAL LAW

The international intellectual property system has traditionally provided for

the protection of rights across diferent languages and diferent character

scripts, most particularly in the field of trademark law, as part of the wider

concept of protection against unfair competition. The principal international

agreements and instruments that address the protection of trademarks are

the Paris Convention for the Protection of Industrial Property, the Agreement

on Trade-Related Aspects of Intellectual Property Rights (the TRIPS

Agreement), the Trademark Law Treaty (TLT) and the Madrid Agreement

Concerning the International Registration of Marks and related Protocol, as

described below. In addition, the WIPO Joint Recommendation Concerning

Well-Known Marks provides guidelines for the protection of well-known marks

at an international level. Their provisions are designed to avoid conflicts

between trade and service marks across diferent languages, and to provide

specifically for registration and protection of marks, their translations and

transliterations.27

E.1- PARIS CONVENTION

The Paris Convention for the Protection of Industrial Property (1883), to which

27 See generally, Stephen P. Ladas, Patents, Trademarks and Related Rights: National and International
Protection, (Harvard University Press, 1975).

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162 States are party,16 applies to the protection of industrial property,

including marks and the repression of unfair competition, and deals with

national treatment, right of priority and common rules. The Paris Convention

does not regulate the conditions for the filing and registration of marks,

which are to be determined by each contracting State in accordance with its

domestic law. Where a mark has been duly registered in its country of origin,

it must, on request, be accepted for filing and protected in its original form in

the other contracting States. Nevertheless, registration may be refused in

defined cases; such as when the mark would infringe acquired rights of third

parties, when it lacks distinctive character, is contrary to morality or public

order, or is of such a nature to deceive the public. Most broadly, the Paris

Convention, requires contracting States to provide efective protection

against acts of unfair competition, including to prohibit:

all acts of such a nature to create confusion by any means whatever,

with the establishment, the goods, or the industrial or commercial

activity of a competitor.

In particular, each contracting State must refuse registration and prohibit

the use of well-known marks, in accordance with the Paris Convention,

which provides, inter alia:

The countries of the Union undertake, ex officio if their legislation so

permits, or at the request of an interested party, to refuse or to cancel the

registration, and to prohibit the use of a trademark which constitutes a

reproduction, an imitation, or a translation, liable to create confusion, of a

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mark considered by the competent authority of the country of registration

or use to be well known in that country as being already the mark of a

person entitled to the benefits of this Convention and used for identical or

similar goods. These provisions shall also apply when the essential part of

the mark constitutes a reproduction of any such well-known mark or an

imitation liable to create confusion therewith.

E.2- TRIPS Agreement

The Agreement on Trade-Related Aspects of Intellectual Property Rights

(TRIPS Agreement), was concluded in the 1986-94 Uruguay Round of the

World Trade Organization (WTO). The TRIPS Agreement seeks to establish

common international rules for the protection of intellectual property, and

facilitates settlement of trade disputes between Members over intellectual

property rights using the WTOs dispute settlement system. As described by

the WTO, the TRIPS Agreement covers five broad issues: (i) how basic

principles of the trading system and other international intellectual property

agreements should be applied, (ii) how to give adequate protection to

intellectual property rights, (iii) how countries should enforce those rights

adequately in their own territories, (iv) how to settle disputes on intellectual

property between Members of the WTO , and (v) special transitional

arrangements during the period when the new system is being introduced.28

Section 2 of the TRIPS Agreement deals with trademarks, of which Article 15

specifies the subject matter protectable as a trademark and provides, inter

28 See the WTOs web site on the TRIPS Agreement at
http://www.wto.org/english/thewto_e/whatis_e/tif_e/agrm6_e.htm

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alia:

1. Any sign, or any combination of signs, capable of distinguishing the

goods or services of one undertaking from those of other undertakings,

shall be capable of constituting a trademark.

The TRIPS Agreement, Article 16, specifies the rights conferred by such

protection, and incorporates and extends the protection granted to

trademarks under Article 6 of the Paris Convention to service marks. 29

Further, Article 16(2) makes special provision for the protection of well-

known marks, providing guidance to Members in determining what

constitutes a well-known mark, inter alia:

2. In determining whether a trademark is well-known, Members shall take

account of the knowledge in the Member concerned which has been

obtained as a result of the promotion of the trademark. 30 Finally, Article

16(3) extends the special protection granted to well-known marks against

use in relation to goods and services which are not similar to those in

respect of which the trademark is registered, provided that the use of the

trademark in that context would indicate a connection with the registered

trademark owner and provided that the trademark owners interests would

be likely to be damaged by such use. This provision may be described as

the dilution protection principle, because it follows the lines of the

29 The TRIPS Agreement, Article 2(1), provides that In respect of Parts II, III and IV of this Agreement,
Members shall comply with Articles 1 through 12, and Article 19 of the Paris Convention (1967).

30 TRIPS Agreement, Article 16(2).

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recognized principle of dilution, in certain legal systems. Under United

States law, dilution protection is recognized in the Federal Trademark

Dilution Act of 1995, codified as Section 43(c) of the Lanham Act.

E.3- Trademark Law Treaty

The Trademark Law Treaty (TLT) aims to simplify and harmonize procedures

of national and regional trademark registration systems. The TLT is mainly

concerned with three phases of procedure before a trademark office:

application for registration, changes after registration and renewal. In each

phase, the TLT specifies what the trademark office can and cannot require

from the applicant or owner. The TLT also goes toward harmonizing

trademark office practice in dealing with multilingual trademark applications.

The Trademark Law Treaty, Article 3(1)(a) provides, inter alia:

Any Contracting Party may require that an application contain some or

all of the following indications or elements:

(xiii) a transliteration of the mark or of certain parts of the

mark;

(xiv) a translation of the mark or of certain parts of the mark.

G. THE UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

(UDRP)

The Uniform Domain Name Dispute Resolution Policy, adopted by the

Internet Corporation for Assigned Names and Numbers (ICANN) on August

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26, 1999,31 followed the publication of the Report of the first WIPO Internet

Domain Name Process.32 The UDRP, which entered into force for the gTLDs

(.com, .net and .org) from December 1, 1999, was implemented to address

conflicts between all Internet domain names registered in those gTLDs and

trademarks or service marks. It operates as a mandatory procedure to which

each applicant for a domain name registration in .com, .org and .net is

required to submit, in the event that a complaint is lodged in respect of the

applicants registration. The UDRP establishes a dispute-resolution procedure

under which a complainant can seek the transfer or cancellation of a domain

name registration in .com, .net or .org on the basis that, in accordance with

paragraph 4(a):

i. the domain name is identical or confusingly similar to a trademark in

which the complainant has rights; and

ii. the domain name holder has no rights or legitimate interests in

respect of the domain name; and

iii. the domain name has been registered and is being used in bad

faith.33

The UDRP, paragraph 4(b) then describes circumstances which the

complainant may describe to provide evidence of the registration and use of

31 See http://www.icann.org/udrp/udrp-policy-24oct99.htm.

32 The Report of the first WIPO Internet Domain Name Process, The Management of Internet Names
and Addresses: Intellectual Property Issues, is available at http://wipo2.wipo.int/process1/.

33 See UDRP, paragraph 4(a) at http://www.icann.org/udrp/udrp-policy-24oct99.htm.

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the domain name in bad faith. The respondent, on its part, may counter the

complaint by asserting its rights to and legitimate interests in the domain

name, in accordance with paragraph 4(c). ICANN has accredited four

dispute-resolution service providers to administer disputes brought under

the UDRP: the WIPO Arbitration and Mediation Center, the National

Arbitration Forum, e-Resolution and the CPR Institute for Dispute Resolution.

Registrars accredited by ICANN to accept domain name registrations in

.com, .net or .org are obliged to implement the results of panel decisions

pursuant to the UDRP. Since its inception, a total of 8262 domain names

have been subject of cases filed under the UDRP, of which more than 3260

gTLD cases (covering more than 6,000 separate domain names) were filed

with the WIPO Arbitration and Mediation Center. Of the total cases filed with

the WIPO Center, approximately 87% refer to domain names in the .com

gTLD, 18% in the .net TLD and 10% in the .org TLD. Of these cases, 90%

have been resolved to date, in an average of 50 days and at a filing cost of

US$1,500. The geographical spread of these cases covers parties from 91

countries.

G.1- Indian Cases Reaching UDRP

In Castrol limited case,34 the complainant (involved in production and

distribution of automatic lubricants) who held rights in the registered trade-

mark CASTROL in India and around the world and operated the web site

www.castrol.com alleged that the respindents domain name

34 Castrol Limited v. Shrinivas Ganediwal Case No. D2002-0881.

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<castrolindia.com>, which included the term Castrol was confusingly

similar to its trade-mark. The panel concluded that the respondent had no

legitimate interest in the confusingly similar disputed domain name which

had been registered in bad faith and ordered that the domain be transferred

to complainant.

In IIT Bombay case,35 the Domain name in dispute was <iitpowai.com>

registered with the respondent which was confusingly identical to the

complainants distinctive service mark IIT which had gained immense

goodwill and reputation for its superb academic education. The Panel

decided that the Respondent should transfer the domain name as he had no

rights or legitimate interests in respect of the said domain and because it

had been registered and was being used in bad faith.

In NIIT case,36 the Complainant was engaged in the business of imparting

education in Information Technology under the trademark NIIT which was

a coined mark and had no obvious meaning and had developed computer

software with names such as NIITePortal, NIITeMart and NIITeService, etc.

The Panel found that the respondents inactive domain name myniit.com

was confusingly similar to that of Complainants and that the respondents

domain name had been registered in bad faith. Accordingly the Panel

required that the registration of the domain name myniit.com be

transferred to the Complainant.

35 IIT Bombay, Powai v. Indsoft Case NO. D2002-0078.

36 NIIT Ltd v. Parthasarathy Venkatram Case No. D2000-0497.

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In Microsoft Corporation case,37 the WIPO panel found that the domain name

microsoft.org registered by respondent was identical and confusingly

similar to the trademark MICROSOFT in which the complainant had rights

and respondent had no legitimate interest and that the respondents

domain name had been registered and was being used in bad faith.

G. PROVISION UNDER LAWS OF UNITED STATES OF AMERICA

USA has been a pioneer in the field of preventing cyber squatting. At present

there are Anti-dilution laws and Anti-Cyber squatting laws to tackle such

problem. Doctrine of dilution is well known and for this The Federal Anti-

Dilution Act which is incorporated in the form of Lanham Act defines the term

dilution. It means the lessening of the capacity of a famous mark to identify

and distinguish goods or services, regardless of the presence or absence of,

competition between the owner of the famous mark and other parties or

likelihood of confusion, mistake, or deception. 38 Further the US Congress, in

1999 enacted the Anti-Cyber Squatting Consumer Protection Act, to outlaw

cyber squatting. It amends Section 43 of Lanham Act and the section has

been named as Prevention of Cyber-piracy. Under section 43, a person shall

be liable in a civil action by the owner of a mark, if he has a bad faith intent

to profit from that mark or registers, traffics in, or uses a domain name which

at the time of registration of the domain name, is identical or confusingly

37 Microsoft Corporation v. Amit Mehrotra Case No. D2000-0053, Adm. Panel

Decision, Wipo Arb. And Med. Centre.

38 Section1127, The Federal Anti-Dilution Act.

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similar to that work. In order to succeed in a dilution action, a plaintif must

establish that its mark is famous as defined by s.43(c). 39 The principle of

dilution also has broader application, for example, under European

Community law, the principle of dilution is recognized in the European

Community Trademark Directive (1989) and the European Community

Trademark Regulation (1993). Thus in USA both the laws have come forward

to rescue aggrieved trademark owners. But in India there is no parallel law to

USA in Preventing Cyber Squatting.

Conclusion

Protection of Intellectual property is crucial for the success of e-commerce.

The traditional laws for protecting intellectual property have been applied

also in cyberspace. However, due to inherent nature of the internet, several

pertinent issues have emerged such as the principles to determine

jurisdiction, recognizing the hybrid varieties of online infringements,

resolving conflict of laws issues which apply equally in cyberspace. Scholars

have advocated a combined approach of sociological, technological and legal

initiatives and measures to protect the infringement of Intellectual property

in cyberspace. The legal enforcement of infringement of Intellectual property

rights in cyberspace is a very challenging area. Nevertheless, it is a

challenge of the digital era, which we need to take in the interest of and

39 The Court, in the United States case of Panavision International v.

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furtherance of the emerging e-information society. The future of protection of

e-IPR is indeed promising as cyber laws are evolving to further the interests

of our emerging e-information society.

BIBLIOGRAPHY

Nandan Kamath, Law relating to Computers Internet & E-Commerce.

Karnika Seth, Cyber Laws in the Information Technology Age.

Amita Verma, Cyber Crimes and Law.

P.Narayanan, Intellectual Property Law, 3rd ed.

Rodney Rider, Guide to Cyber Laws.

Mr. Vakul Sharma, Handbook of Cyber Laws.

Justice Yatinder Singh, Cyber Laws.

Internet Websites

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 www.indiainfo.com

www.wto.org

www.icann.org

www.wipo.org

www.google.com

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