What’s In A Name?
In today’s date, domain names are considered as investment options like cryptocurrency, and the profit-bearers are those first come, first served. However, there are instances where such trademarked owners fail to establish their entity in the cyber space under the desired name procured ‘by the book’. In Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., the Supreme Court observed that a domain name is not merely a way of navigating the internet, but a way of distinguishing a business and allowing it to carve a unique identity for itself. Thus, when anticipating a merger between two industry giants, some may opt to profit by trading in the company’s stocks. Others buy the domain name which the newly formed company is likely to want and sell it to the company for an exorbitant amount. This practice is known as cybersquatting. This is what a Delhi techie did with the Jio-Hotstar domain name before the foreseen merger between Jio and Disney+ Hotstar had fully materialized, appealing to Jio to fund his education in return for the name. The developer has since ostensibly sold the domain name to a pair of UAE based siblings who intend to use the domain name for educational purposes.
The Evolution Of Cybersquatting
Yahoo!, Inc. v. Akash Arora found itself to be the first victim of cybersquatting, thus pleading for justice to be served. The defendant had purchased the domain name Yahooindia.com, challenged by the tech company on the grounds that Yahoo! and Yahooindia were deceptively similar. Trademarks and domain names are not mutually exclusive, and it would be easy for a user to believe Yahooindia was the India-specific website for the search engine. An injunction for the Yahooindia domain owners from operating a business or selling, advertising any goods or services was granted on the grounds that the similarity between the names would amount to ‘passing off’ – an action that finds it origins in commercial goodwill, to protect business reputations. This definition of cyber-squatting however, is limited. There has been no attempt of using the Jio Hotstar domain name for passing off other services under the goodwill of the corporate behemoths. Merely an injunction disallowing use of the domain name for commercial use by another party would suffice if Reliance had an interest in the name.
In Tata Sky Ltd. v. Sachin Cody, Tata Sky argued against cybersquatting on the grounds that the defendant had no “justifiable reason for adopting and registering a domain name which uses the logo of the plaintiff – Tata Sky in combination with the words Plus and HD which represent the services that have been introduced by the plaintiff as part of its business.” Tata Sky argued that purchasing the domain name was cybersquatting by way of “registering, trafficking in, or using domain names dishonestly with an intent to profit from the goodwill of a well-known and famous trademark and by infringement of copyright.” The court in this matter, granted not an injunction from usage, but an order to transfer the domain name to Tata Sky.
Uniform Domain Name Resolution Policy (UDPR), & Other Resolution Mechanisms
The United States for these reasons has passed the Anti-cybersquatting Consumer Protection Act (ACPA) along with amendments to its Trademark Act. There is no equivalent law in India that protects trademark holders from these practices specifically – what can be relied on is the World Intellectual Property Organization’s legal framework, UDPR, which resolves disputes arising from wrongful registration of domain names. The disputes covered under this must be of the kind where:
(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
(iii) the domain name has been registered and is being used in bad faith
Bad faith conduct may be acquiring a domain name primarily for the purpose of transferring the domain name registration to the owner of the trademark, or to disrupt the business of the owner of the trademark – conduct akin to the web developer acquiring the Jio Hotstar domain name.
Under the auspices of non-profit organization National Internet Exchange of India (NIXI), the .IN Domain Name Dispute Resolution Policy (INDRP) arbitrates disputes concerning domain names ending in .in or .bharat under the Arbitration and Conciliation Act. In Adobe Inc. v Seeds Provider, a dispute which arose under the aforesaid policy, it was observed that where the defendant is evidently aware of a subsisting trademark, passive holding of a domain name with no intent to use it for genuine commercial activity amounts to bad faith holding of a name.
Conclusion
The circumstances and the letter to Reliance executives clearly demonstrate the web developer’s knowledge that Reliance may have an interest in the domain name, and the acquisition was mala fide with an aim to transfer it to Reliance, and disrupt Jio Hotstar until payment. The acquisition of the mark to run an inspirational website may still be a trademark violation considering Reliance’s interest in Jio, and be a bad faith acquisition considering the business of Reliance is still disrupted. The recent development of the Dubai-based siblings offering Reliance the domain for free may be a loop to avoid a massive legal battle, thus allowing readers to know where to place their reliance.
Authors: Shalini Bajpai, Malaika Karia & Suhani Sanghvi