Although cybersquatting – the act of registering or buying the domain name of an existing brand to profit from the trademark – has existed since the 1990s, India lacks specific laws to tackle such crimes. Utsav Mukherjee, founder of the Law Offices of Utsav Mukherjee, shared with India Business Law Journal his strategies to navigate this evolving landscape.
Q1. What laws and regulations exist to prevent cybersquatting in India?
The law in India is clear. The best way to safeguard your IP in a domain name is to register the words comprising the domain name as a trademark. A cybersquatter is someone who adopts a domain name, with the intent of not using it, and profiting from its sale. Cybersquatting is also a form of IP infringement if the disputed domain name is the same or similar to another entity’s trade name or trademark.
Multiple remedies are available. The first is to send a strategised legal notice. If the squatter comes forward for negotiations, we often resolve the issue amicably. If it remains unresolved, file a civil suit for trademark infringement and passing off. Get an injunction, or a stay order, preventing the use of the infringing domain, even before trial. Many times, after getting an injunction order, the parties settle the matter through mediation, which is an effective remedy.
Other mechanisms are available. If the dispute is for a ‘.in’ domain, a complaint can be filed with the National Internet Exchange of India (NIXI). For a ‘.com’ domain name, file a complaint with the World Intellectual Property Organisation (WIPO). Both the WIPO and NIXI use arbitration to resolve domain disputes.
Q2. What are some of the common challenges faced by companies over cybersquatters?
The most common challenge is that even before the company has started using a certain word as its trademark, a cybersquatter has registered that word as a domain name. When the company approaches the cybersquatter asking to transfer the domain, claiming it as their registered intellectual property, the cybersquatter would argue that at the time of registration, the company had not started using the words that constitute the domain name in their business, or as part of their trade name, and had not registered them as trademarks.
The recent issue faced by Reliance over the JioHotstar domain name, is a good example. A cybersquatter had registered it well in advance, anticipating there would be a merger between Reliance and Disney+ [involving the former’s Jio brands and the latter’s Hotstar entities], and they may want this domain name.
Another challenge is tracing the cybersquatter. Cybersquatters may register the domain names using fake names or entities. While dealing with cybersquatting for a client, I found the contact number after an extensive search, and had to personally call him to verify that he had registered the domain name. In more complex situations, I prefer a professional investigator.
Q3. How have courts responded and what have been the prevailing judgments?
Courts in India and around the world recognise cybersquatting or trademark squatting as a legal wrong. The courts recognise that this is illegal and therefore pass injunction orders against squatters in favour of genuine users. One of the earliest cases in India was Yahoo! Inc v Ashok Arora. The court granted an injunction in favour of Yahoo!, as the defendant had registered the domain name ‘yahooindia.com’ in bad faith. In Adobe Inc v Namase Patel and Ors, Delhi High Court imposed damages of INR20 million (USD240,000) on the defendant, a cybersquatter and repeat offender. Canva, the publishing and design tool company, filed cases with the WIPO and recovered 174 domain names from cybersquatters.
Q4. What are some key steps companies can take to protect themselves from cybersquatters?
Companies must apply for registration of the domain name decided as a trademark, even before they register it. If a cybersquatter adopts the company’s registered trademark as a domain name, then it is a clear-cut case of trademark infringement and cybersquatting.
Companies must have its trademark registered in all the countries that it is carrying out business in. Recently, when I issued a legal notice on behalf of a client … we warned the cybersquatter of legal action across multiple jurisdictions, as my client had registered the trademark in more than 20 countries. This turned the tide in our favour.
