PROTECTION OF DOMAIN NAME Viz-Viz TRADEMARK LAWHarjot Singh Gill UILS 1|Pa ge ACKNOWLEGDEMENT I am grateful to our Lecturer Dr. Jasmeet Gulati for inculcating the concepts of the subject Cyber Law. I am grateful to staff of Library for rendering cooperation. And I am highly grateful to my parents for their constant support towards my studies. Harjot Singh Gill Roll No. 30. 2|Pa ge List of Authorities Case Laws MTV Networks, Inc v. Curry 867 F.Supp , 202 SDNY 1994. Rediff Comm. Ltd. V. Cyberbooth & anthr AIR 2000 Bom 27. Princeton Review management Corp v. Stanley H.Kaplan Educational Centre Ltd. 94 Civ. 1604(SNDY 1994) y y y y Comp Examiner Agency, Inc v. Juris ,Inc, 1996. Yahooinc v. Akash Arora (1999) PTC 201. NIIT Ltd v. Parthasarathy Venkatram Case No. D2000-0497. Microsoft Corporation v. Amit Mehrotra Case No. D2000 -0053, Adm. Panel Decision, Wipo Arb. And Med. Centre. y y Castrol Limited v. Shrinivas Ganediwal Case No. D2002 -0881. IIT Bombay, Powai v. Indsoft Case NO. D2002-0078. y y y Commentaries, Journals & Books y y y y y y y 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 3|Pa ge 1989 Trademark Law Treaty (TLT). 1999 The Federal Anti-Dilution Act.com www.y y y y y www.icann. European Union Trademark Directive.wto.org www. 4|Pa ge . Conventions & Statutes y y y y y y y Trips Agreement Paris Convention Trademarks Act.org www.org www.wipo.google. 1999( India) Anti-Cyber Squatting Consumer Protection Act.indiainfo.com Agreements. 12 Remedy under Section 103 & 104 --------------------.9 Diversion of Traffic-------------------------------------------------.19 y Uniform Dispute Resolution Policy (UDRP) ----------------------------.11 Remedy of Passing off ----------------------------------.22 Conclusion ----------------------------------------------------------------------.6 y y Importance of Domain Name------------------------------------.TABLE OF CONTENTS Introduction -------------------------------------------------------------------.15 Paris Convention----------------------------------------------------.23 5|Pa ge .8 Domain Name Registration---------------------------------------.11 y Protection under Trademark Law ---------------------------------------. 6 What is Domain Name? ----------------------------------------------------.17 Trademark Law Treaty--------------------------------------------..14 y Trademark Protection Under International Law ----------------------.16 TRIPSAgreement----------------------------------------------------.8 y Infringement of Trademark as Domain Name-------------------------.7 Cyber-Squatting-----------------------------------------------------.Pg No.21 y y Provision Under United States of America -----------------------------.10 String Conflicts------------------------------------------------------.19 Indian Cases Reaching UDRP ------------------------------------. 6|Pa ge 1 .. ³ Law relating to Computers Internet & E-Commerce´ at p. it must have an address in cyberspace.³ Domain names. cyber squatting and trademarks in India. domain disputes. governments and institutions. an entity s trademark assumes immense importance. Internet users rely on domain names. With the advent of the internet. 128. Such growth of web sites.indiainfo. Everybody. In this scenario. 167.i. seems to have something to do with the internet. 1 B.e.com 2 Nandan Kamath. organizations. it is vital that prior to entering into any sort of business activity a company. It goes without saying that as the awareness of the internet grows. WHAT IS DOMAIN NAME? In the new e-economy.g. at http:// www. Flashing an internet address has become a sine qua non for almost every organization. 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. who is somebody. This would require its registration under a particular domain name. the number of websites grow correspondingly. The real Internet Protocol (IP) address is a string of numbers that is difficult to use and remember (e.52). must be traceable relatively easily on the Internet.82.e. Out of nowhere. 2 A domain name is a hierarchically structured character string that serves as an Internet address. the world today is witnessing a revolutionary change in the field of communications. 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.A. has also given rise to a new era of disputes. the internet seems to have exploded on the forefront of several commercial establishments. which take the form of Sanjay Bhatta.75. It helps an entity build up its identity over the World Wide Web. i.A legal perspective´. INTRODUCTION In the current age. to stand in their place. . ³ Billions Registered.2.in 10. This makes short. 4 3 7|Pa ge . etc. A domain to the left of the SLD is known as the Sub-domain (SD). Generic domain names are unique to the entire world. But No Rules: The Scope of Trademark Protection for Domain Names´. J. Mar 1995. . microworld is the SLD and law is the SD.com .edu6. Second Level Domain and the Top Level Domain put together comprise a Domain Name . 14 Moreover domain names are valuable corporate assets. .uk 13.com5. ³ Cyber Laws in the Information Technology Age´ at p. µCyber Crimes and Law´ at p. . Amita Verma. 10 For India 11 For France 12 For Australia 13 For United Kingdom 14 Andre Brunel.. Proprietary Rts. The sub-domain. . B.gov9. especially since users interested in communicating with a particular organization or retrieving information about its products must do so without recourse to any centralized. as they Karnika Seth. 372.net 8. . . . .fr11. 4 There are two types of Top Level Domain Names. etc. 5 For commercial use 6 For educational institutions 7 For non-profit organisation 8 For network Providers 9 For Government organizations. 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).org 7. complete directory. Domain names are an important commodity.1.microworld.aus 12. Generic and Geographic. 266-267.memorable and sometimes catchy words. Geographical Top Level Domains are for example. suppose in the domain name law.com is the TLD. Thus. easy to remember names of paramount value in choosing an address. Generic Domain Names are for example .IMPORTANCE OF DOMAIN NAME The dominant purpose of the domain name is simply to provide an easy method for remembering another s electronic address. at p. ernet. This Form is to be filled up and mailed to domainreg@sangam. 202 SDNY 1994. if any. 19 Mumbai which runs the Indian Domain Registration Service. 19 Hereinafter called as NCST. Ltd.15 and Rediff Communications. 17 Cyber squatters book up domain names of important brands in the hope of earning quick millions. Curry 867 F. 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.271.in 8|Pa ge . 17 Amita Verma. Cyber -squatting is the practice by means of which a person or legal entity books up the trade mark. 18 B. Cyberbooth & anthr AIR 2000 Bom 27.ncst.ernet.3. Domain Name registration requests are entertained by NCST only if the organization has a valid IP address or has applied for one. then the applicant will be allocated the desired domain name and 15 16 MTV Networks. ³ Law relating to Computers Internet & E-Commerce´ at p.2.Supp. V. 16 and once a company has registered a domain name. B. is circulated within a review group and the applicant will be contacted for clarifications/ name clashes.in. µCyber Crimes and Law´ at p.270 18 Ibid at p.Cyber. 21 To register a domain one may obtain the form electronically from URLs http:// soochak. 20 The domain may be registered electronically.Domain Registration Domain administration is done by the National Centre for software Technology. Rediff Comm. 21 The application form. 172. If there are none. Inc v. on receipt. 20 Nandan Kamath. it amounts to reserving a significant part of cyber space for that company.ncst.facilitate communication with a customer base as in case MTV Networks.Squatting Cyber-squatting is a form of speculation where a domain name is registered with the intention of selling off the same. is the equivalent of using the trademark on a billboard. Trademarks Act. for instance. As regards the . 1999.INFRINGEMENT OF TRADEMARK AS A DOMAIN NAME A domain name is not itself a trademark. in the case of a trade name). or in advertising. entitling him to that name. uses without authority the same mark or a deceptively similar mark.com TLD. For example. Nandan Kamath. A domain name may be a company s expression of its trademark. ³ Law relating to Computers Internet & E-Commerce´ at p. 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. Upon registration.24 Section 29 lays down the various cases in which a person will be said to have infringed another person s trademark. the registrant is required to run a DNS server. any prospective registrant must show that he possesses a trademark in that name.in . A trademark is a right. 22 Registration is very important to check the problem of cyber squatting. to use a mark in commerce to represent a product (or a business. granted under law. Thereafter. 188 24 Section 29. A registered trademark will be infringed if a person in the course of trade. only the owners of that trademark should be allowed to register the domain name NickBakers. if Nick-Bakers is registered as a trademark in India. Infringememt refers to a dispute where the original registrant intentionally trades off the resemblance between the domain name and another famous trademark. The use of a trademark in a domain name. 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. or has some sort of a justifiable connection. the registrant tries to encash on the reputation of the trademark holder by 22 23 At least a 64 Kbps leased data circuit. 23 C. in relation to the same goods for which the mark is registered. A domain name is a word or phrase registered in the domain name registration system.co.intimated. 9|Pa ge . 27 C. as a general rule. 188 10 | P a g e .Diversion of Traffic. then a conflict arises which is almost irresolvable.. since one of the parties is effectively infringing on the use of the mark by the other.These sort of conflicts involve cases where the claimant is the owner of a trademark which a competitor is using as a domain name.String Conflicts or twins are the most complex aspect of domain name disputes. The standard factors. ³ Law relating to Computers Internet & E-Commerce´ at p. The conflict arises because there can be only one domain name of a 25 26 Trademarks Act. 94 Civ. Would apply in cases of infringement of domain names also C.com . without such competitor having any inherent right to the name. or to different products in the same country .running a business similar to that of the trademark holder. In such cases. etc.Kaplan Educational Centre Ltd.1. The likelihood of confusion in the minds of the public.26 In such cases.25 prescribes reliefs such as injunction & damages in case of infringement of trademark. Section 135. regardless of whether the infringement occurred as an internet domain or in other context. either rela ting to the same product in different countries. Princeton Review management Corp v.com in order to divert domain name traffic from reebok. which determine infringement under the traditional trademarks law are: y y y y The strength of the trademark The deceptive similarity between the plaintiff s and the defendant s mark. String Conflicts involve cases where both parties have trademark. traditional trademark law would apply.2 String Conflicts. If both parties now want to register the trademark as a domain name. 1999. 1604(SNDY 1994) 27 Nandan Kamath. the use of the domain name (mark) would be illegal under the existing trademark law. A typical example of such a dispute would be a case where a person registers a domain name reebuk. Stanley H. 29 Trademarks are marks which businesses use to identify the products to consumers. without making a direct false representation himself to a purchaser who purchases from him. hyperlinks and keywords searches have forced us to rethink what trademark is and how it should be enforced. 30 Karnika Seth. word. however. There have been hardly a handful of reported decisions regarding domain name disputes and the case law has still not developed in India. Areas such as Internet domain names. sign or symbol. whereby.PROTECTION UNDER TRADEMARK LAW Trademarks have had a prominent place in history. Trademarks Act 1999. label. name. 1993. heading. brand. The common law principle of passing off also does not have any relevance in such cases. emerging with the development of international trade and evolving into one of the principal arms of intellectual property.Passing off is a form of tort.particular word. trademarks have become a topic of specific attention in the context of today s online environment. ³ Cyber Laws in the Information Technology Age´ at p. p. Recently. and no man is permitted to use any mark. letter. this involves things suc h as logos. the Indian courts would surely be faced with domain name disputes in times to come.5. key sounds.1. numerical. Geneva. or other means. Conventionally. symbols and words. with the use of the internet catching up at an amazing pace in the country. However. ticket. D.Remedy Of Passing Off. 28 In India the Law governing protection of trademarks is Trade Marks Act 1999. 30 Domain name disputes are relatively unheard of in the Indian Courts. 29 11 | P a g e . D. signature. device. he enables such purchase r to tell a lie or to 28 Introduction to Trademark Law and Practice: the basic concepts. And to grant preference to one party over the other would also be unfair. WIPO. It defines trademark as a mark which includes a device. No man is entitled to repre sent his goods as being the goods of another man. Section 2(1)(m). 372. shape of goods etc. 32 Fraudulent intention is not necessary to constitute passing off. p. y y Which is calculated to injure the business or goodwill of another trader. Section 135 deals with reliefs which are available in an action for passing off or infringement.Narayanan. 31 32 y y y y y y Singer v. Either damages or an account of profits at the option of the plaintiffs. The essential characteristics which must be present in order to create a valid cause of action for passing off are: 33 Misrepresentation. 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. To prospective customers of his or ultimate customers of goods or services supplied by him. Loog (1881) 18 Ch D 395. 212. Towend [1980] RPC 31 at 93 (HL) 12 | P a g e . P. Made by a person in the course of trade. 31 It is asn actionable wrong for any person to pass off his goods or business as and for the goods or business of another person by whatever means that result may be achieved. 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. It includesAn injunction subject to terms. 3rd ed. 33 Erven Warnick v. ³ Intellectual Property Law´.make a false representation to somebody else who is the ultimate customer. and An order for delivery-up of the offending labels and marks for destruction or erasure. When Juris. 35 13 | P a g e .com . accused Comp Examiner. Inc. registere d domain names with NSI 35 and Nominet. which had already been assigned to The Comp Examiner Agency. Junic. now owns both domains. but also from using juris in its domain name or any confusingly similar variation. One in a Million case 1998 FSR 265 USA administrator of Generic TLD¶s 36 Administrator of the µ. and operates under the domain juris. Juris. trademarks or other famous names. went to court seeking cancellation of Jurisinc s JURIS trademark registration on grounds of genericness. The court granted Juris.net etc.com and also used yahooindia as a trademark with similar literary work on its 34 Marks & Spencer plc v.Inc. like marksandspencer. yahoo Inc sued and internet pirate who had copied the domain na me yahooindia. 34 In this case the UK based.com . Inc a preliminary injunction which not only precluded Comp Examiner from using the domain juris. 36 Registered domain names included those of well-known commercial companies. Another case of Juris inc. Akash Arora (1999) PTC 201.uk¶ geographical top level domain names. which used the domain for a legal information website. 37 where Juris. Inc. had been forced to choose the domain jurisinc.Inc.One of the famous cases based on this remedy is the One in a million case.com . and its sister company. One in a Million then negotiated resale of the domain names with the owners of the trademarks or tradenames. owner of a federal trademark registration of JURIS for its legal time and billing software products. 38 Yahooinc v. Inc v. 37 Comp Examiner Agency. 1996.com after leaving its first choice juris. Juris .Inc then co unterclaimed for trademark infringement and dilution. Juris. 38 wherein the Internet search engine. Another most important case in this regard has been the yahoo case. The court in United Kingdom held that it was an act of passing off and granted an injunction to prevent the cyber squatting of domain names involving well known brands such as Salisbury. cellnet.com. Mark & Spencer. One in a Million Ltd. whether registered or unregistered. Trademarks Act 1999. ³ Intellectual Property Law´. 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. P. 41 For every subsequent offence 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. 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. A person is said to falsify a trademark if he makes a trademark without the assent of the proprietor. Trademarks Act 1999. 14 | P a g e .Remedy under Section 103 & 104 . 238. belonging to some person. The High Court of Delhi granted an inj unction restraining him from using yahoo either as a part of his domain name or as trademark or from copying any of the contents of the Plaintiff s website that infringe yahoo s copyrights. TRADEMARK PROTECTION UNDER INTERNATIONAL LAW 39 40 Trademarks Act 1999. 42 Section 105. The court categorically ruled that trademark applies with equal force on internet as it does in a physical world.website and offered directory services with information specific to India and was passing itself as the extension of yahoo.2. 42 E.40 In a case of falsification of trademark it is therefore necessary to prove the existence of a genuine trademark. additions or effacement in the genuine trademark. p.Under section 103. To constitute falsification it is sufficient if the offender makes a mark deceptively similar to the genuine trade mark. And if any person sells or lets for hires any services to which any false trademark o r 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. or if he carries out alterations. A trademark so falsified is called a false trademark. 41 Section 104.Narayanan.39 a person is liable for falsification of trademark. 3rd ed. D. Their provisions are designed to avoid conflicts between trade and service marks across different languages. Stephen P. which are to be determined by each contracting State in accordance with its domestic law.PARIS CONVENTION The Paris Convention for the Protection of Industrial Property (1883). 44to which 162 States are party. right of priority and common rules. In addition. 43 E. it must. the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement). as described below. most particularly in the field of trademark law. on request. 1969). The principal international agreements and instruments that address the protection of trademarks are the Paris Convention for the Protection of Industrial Property. The Paris Convention does not regulate the conditions for the filing and registration of marks. the Trademark Law Treaty (TLT) and the Madrid Agreement Concerning the International Registration of Marks and related Protocol. Bodenhausen. 1975). 1883. the WIPO Joint Recommendation Concerning Well-Known Marks provides guidelines for the protection of well-known marks at an international level. and to provide specifically for registration and protection of marks. Where a mark has been duly registered in its country of origin. 15 | P a g e . their translations and transliterations. (Harvard University Press. Trademarks and Related Rights: National and International Protection¶. and deals with national treatment.16 applies to the protection of industrial property. See Professor J.H. 44 Paris Convention for the Protection of Industrial Property of March 20.1. Guide to the Application of the Paris Convention for the Protection of Industrial Property.The international intellectual property system has traditionally provided for the protection of rights across different languages and different character scripts. be accepted for filing and protected in its original form in the other contracting 43 See generally. including marks and the repression of unfair competition. at pages 89-93 (BIRPI. µPatents. as part of the wider concept of protection against unfair competition.C. Ladas. pages 3 -8. 2000). and to prohibit the use of a trademark which constitutes a reproduction. is contrary to morality or public order. in accordance with the Paris Convention. E. For discussion of protection of famous and well-known marks generally. such as when the mark would infringe acquired rights of third parties. at Chapter 1. 47 For further discussion of the Paris Convention and protection of well -known marks. ex officio if their legislation so permits. see Frederick W.H. requires contracting States to provide effective protection against acts of unfair competition.C. an imitation.TRIPS Agreement The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). each contracting State must refuse registration and prohibit the use of well known marks. 46 which provides. or the industrial or commercial activity of a competitor . 46 45 16 | P a g e .2. Paris Convention Article 6. registration may be refused in defined cases. (Butterworths. the Paris Convention. to refuse or to cancel the registration. (BIRPI. or is of such a nature to deceive the public. the goods. Paris Convention. Bodenhausen. 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 cr eate confusion therewith. See also Christopher Heath and KungChung Liu. 45 In particular. inter alia: The countries of the Union undertake. The 47 Article 10. see Professor J. of a 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. 1997). when it lacks distinctive character . including to prohibit: all acts of such a nature to create confusion by any means whatever. Famous and Well-Known Marks: An International Analysis. Guide to the Application of the Paris Convention for the Protection of Industrial Property. Most broadly. liable to create confusion. Nevertheless. with the establishment. Mostert. The Protection of Well-Known Marks in Asia. eds. or at the request of an interested party..States. or a translation. 1969). (Kluwer Law International. was concluded in the 1986-94 Uruguay Round of the World Trade Organization (WTO). and (v) special transitional arrangements during the period when the new system is being introduced.htm 49 The TRIPS Agreement. capable of distinguishing the goods or services of one undertaking from those of other undertakings. The TRIPS Agreement. Article 2(1). Members shall take account of the knowledge in the Member concerned which has been obtained as a result of the 48 See the WTO¶s web site on the TRIPS Agreement at http://www. In determining whether a trademark is well-known. and incorporates and extends the protection granted to trademarks under Article 6 of the Paris Convention to service marks. inter alia: 2. III and IV of this Agreement. Article 16(2) makes special provision for the protection of well-known marks. Members shall comply with Articles 1 through 12. 48 Section 2 of the TRIPS Agreement deals with trademarks. As described by the WTO. specifies the rights conferred by such protection. and Article 19 of the Paris Convention (1967). provides that ³In respect of Parts II. inter alia: 1. (iv) how to settle disputes on intellectual property between Members of the WTO . of which Article 15 specifies the subject matter protectable as a trademark and provides.´ 17 | P a g e . Any sign. (iii) how countries should e nforce those rights adequately in their own territories.org/english/thewto_e/whatis_e/tif_e/agrm6_e. the TRIPS Agreement covers five broad issues: (i) how basic principles of the trading system and other international intellectual property agreements should be applied. providing guidance to Members in determining what constitutes a well-known mark. (ii) how to give adequate protection to intellectual property rights. 49 Further. shall be capable of constituting a trademark. Article 16. or any combination of signs.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 WTO s dispute settlement system.wto. dilution protection is recognized in the Federal Trademark Dilution Act of 1995. The TLT is mainly concerned with three phases of procedure before a trademark office: application for registration. THE UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (UDRP) The Uniform Domain Name Dispute Resolution Policy.Trademark Law Treaty The Trademark Law Treaty (TLT) aims to simplify and harmonize procedures of national and regional trademark registration systems.3. In each phase. Article 3(1)(a) provides. (xiv) a translation of the mark or of certain parts of the mark. changes after registration and renewal. 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. 18 | P a g e . Article 16(2). The Trademark Law Treaty.promotion of the trademark. This provision may be described as the dilution protection principle . the TLT specifies what the trademark office can and cannot require from the applicant or owner. codified as Section 43(c) of the Lanham Act. provided that the use of the trademark in that context would indicate a connection with the registered trademark owner and provided that the trademark owner s interests would be likely to be damaged by such use. in certain legal systems. 50 Finally. Under United States law. The TLT also goes toward harmonizing trademark office practice in dealing with multilingual trademark applications. 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. adopted by the Internet Corporation 50 TRIPS Agreement. because it follows the lines of the recognized principle of dilution. G. E. the domain name holder has no rights or legitimate interests in respect of the domain name. in the event that a complaint is lodged in respect of the applicant s registration. e - See http://www. paragraph 4(a) at http://www. was implemented to address conflicts between all Internet domain names registered in those gTLDs and trademarks or service marks. in accordance with paragraph 4(c). The Management of Internet Names and Addresses: Intellectual Property Issues.org and .net and . .net or . The UDRP establishes a dispute-resolution procedure under which a complainant c an seek the transfer or cancellation of a domain name registration in .org/udrp/udrp-policy-24oct99. 1999.com.for Assigned Names and Numbers (ICANN) on August 26.com. paragraph 4(b) then describes circumstances which the complainant may describe to provide evidence of the registration and use of the domain name in bad faith. 52 The UDRP. and ii. The Report of the first WIPO Internet Domain Name Process. the National Arbitration Forum.org/udrp/udrp-policy-24oct99. . It operates as a mandatory procedure to which each applicant for a domain name registration in . 53 The UDRP. ICANN has accredited four dispute-resolution service providers to administer disputes brought under the UDRP: the WIPO Arbitration and Mediation Center.org) from December 1.wipo.net is required to submit.htm. which entered into force for the gTLDs (. 1999. and iii. may counter the complaint by asserting its rights to and legitimate interests in the domain name. The respondent. the domain name has been registered and is being used in bad faith. in accordance with paragraph 4(a): i. 51 followed the publication of the Report of the first WIPO Internet Domain Name Process. . 53 See UDRP.icann.com.org on the basis that.htm.int/process1/. the domain name is identical or confusingly similar to a trademark in which the complainant has rights. is available at http://wipo2. on its part.icann. 52 51 19 | P a g e . org TLD. in an average of 50 days and at a filing cost of US$1. 54 Registrars accredited by ICANN to accept domain name registrations in .htm. Of these cases.org/udrp/proceedingsstat. D2002 -0881. D2002 -0078. Of the total cases filed with the WIPO Center.com alleged that the respindent s domain name <castrolindia.htm. 20 | P a g e . The panel concluded that the respondent had no legitimate interest in the confusingly similar disputed domain name which had be en registered in bad faith and ordered that the domain be transferred to complainant.net TLD and 10% in the . 56 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. approximately 87% refer to domain names in the . which included the term Castrol was confusingly similar to its trade-mark.castrol. 90% have been resolved to date.net or . 2001) at http://www.Indian Cases Reaching UDRP In Castrol limited case.icann. In IIT Bombay case.000 separate domain names) were filed with the WIPO Arbitration and Mediation Center. Shrinivas Ganediwal Case No. 18% in the . Powai v. 57 IIT Bombay.1.org/udrp/approved- See ICANN¶s µStatistical Summary of Proceedings Under Uniform Domain Name Dispute Resolution Policy¶ (as at November 29. .org are obliged to implement the results of panel decisions pursuant to the UDRP. Indsoft Case NO. a total of 8262 domain names have been subject of cases filed under the UDRP. G.com> registered with the respondent which was confusingly identical to the complainant s distinctive service mark IIT 54 For a list of ICANN see accredited dispute resolution serviceproviders. The geographical spread of these cases covers parties from 91 countries. providers. 56 Castrol Limited v.500. Since its inception.icann.Resolution and the CPR Institute for Dispute Resolution. 55of which more than 3260 gTLD cases (covering more than 6. 57 the Domain name in dispute was <iitpowai.com>. 55 http://www.com gTLD.com. etc.com be transferred to the Complainant. Doctrine of dilution is well known and for this The Federal Anti-Dilution Act which is incorpor ated 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. In Microsoft Corporation case. D2000 -0053.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 respondent s domain name had been registered and was being used in bad faith. Amit Mehrotra Case No. D2000-0497. Panel Decision. At present there are Anti dilution laws and Anti-Cyber squatting laws to tackle such problem.58 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. 21 | P a g e .com was confusingly similar to that of Complainant s and that the respondent s domain name had been registered in bad faith. 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. Microsoft Corporation v.which had gained immense goodwill and reputation for its superb academic education. Adm. regardless of the presence or absence of. In NIIT case. PROVISION UNDER LAWS OF UNITED STATES OF AMERICA USA has been a pioneer in the field of preventing cyber squatting. And Med. G. Accordingly the Panel required that the registration of the domain name myniit. The Panel found that the respondent s inactive domain name myniit. Centre. Parthasarathy Venkatram Case No. Wipo Arb. 59 the WIPO panel found that the domain name microsoft. 58 59 NIIT Ltd v. in the United States case of Panavision International v. The Court. Under section 43.3d 1316. The Federal Anti-Dilution Act. is identical or confusingly similar to that work. or deception. But in India there is no parallel law to USA in Preventing Cyber Squatting. 22 | P a g e . Conclusion 60 61 Section1127. a person shall be liable in a civil action by the owner of a mark. in 1999 enacted the Anti -Cyber Squatting Consumer Protection Act. if he has a bad faith intent to profit from that mark or registers. interpreted the FTDA as it applies to the Internet. 60 Further the US Congress. It amends Section 43 of Lanham Act and the section has been named as Prevention of Cyber-piracy. for example. The Court states (at page 23) that:³In order to prove a violation of the Federal Trademark Dilution Act. (141 F. 1324 (9th Cir.43(c). traffics in. Toeppen. H. to outlaw cyber squatting. the principle of dilution is recognized in the European Community Trademark Directive (1989) and the European Community Trademark Regulation (1993). a plaintiff must establish that its mark is famous as defined by s.(3) the defendant¶s use began after the mark became famous. and (4) the defendant¶s use of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and distinguish goods and services 62 Article 5(1)(b) of the European Community Trademark Directive provides that the trademark owner has a right to object to the use of identical or similar marks for identical or similar goods if such use would lead to confusion. a plaintiff must show that (1) the mark is famous. 62Thus in USA both the laws have come forward to rescue aggrieved trademark owners. under E uropean Community law. 61 The principle of dilution also has broader application. In order to succeed in a dilution action.competition between the owner of the famous mark and other parties or likelihood of confusion. 1998)). mistake. (2) the defendant is making a commercial use of the mark in commerce. or uses a domain name which at the time of registration of the domain name. several pertinent issues have emerged such as the principles to determine jurisdiction . resolving conflict of laws issues which apply equally in cyberspace. However. recognizing the hybrid varieties of online infringements. it is a challenge of the digital era. The traditional laws for protecting intellectual property have been applied also in cybers pace. technological and legal initiatives and measures to protect the infringement of Intellectual property in cyberspace. due to inherent nature of the internet. 23 | P a g e . The legal enforcement of infringement of Intellectual proper ty rights in cyberspace is a very challenging area. which we need to take in the interest of and furtherance of the emerging e-information society. Scholars have advocated a combined approach of sociological. Nevertheless. The future of protection of e-IPR is indeed promising as cyber laws are evolving to further the interests of our emerging einformation society.Protection of Intellectual property is crucial for the success of e -commerce. 24 | P a g e . 25 | P a g e . 26 | P a g e . 27 | P a g e . 28 | P a g e . 29 | P a g e . 30 | P a g e .