All
registrars under ICANN must follow the Uniform
Domain Name Dispute Resolution Policy. Under the policy, most types of
trademark-based domain name disputes must be resolved by agreement, court
action, or arbitration before a Registrar will cancel, suspend or transfer a
domain name.
There are three requirements that need to be proved by an aggrieved
trademark owner against an erring domain name registrant, also known as cyber squatting. The first is that the
domain name should be identical or confusingly similar to the owner’s
trademark; second is that the erring registrant does not have a legitimate
right to use the same and third is that the domain name is being registered and
used in bad faith. The question
whether the domain name is identical or confusingly similar is a question of
fact. Aural similarity is enough to prove infringement, like in the case of
Rediff and Radiff. The infringing domain name is not legitimate when the
registration has primarily been done to disrupt the owner’s business and
without any bona fide use. The most widespread instance of registration and use
in bad faith is when customers get attracted to the violative trademark on
account of confusion, thereby causing loss to the trademark owner and
unconscionable gain to the registrant. The three common consequences of the
proceedings are cancellation, transferring and sustaining the trademark (in
case the action fails). The infringing domain name may be removed or
transferred to the original owner (HarryPotterinHollywood.com and
HarryPotterFilm.org were be transferred to Time Warner's as the rightful
owner). In a famous case the WIPO
Arbitration and Mediation Center ruled that the website named Madonna.com was
registered and being used in bad faith since it would tarnish the reputation of
famous pop singer Madonna.[1]
In November, 1997, five companies[2] sued entrepreneurs Richard Conway and Julian
Nicholson, who registered the famous British company names as domains for
resale.[3]
The first case in India on cyber squatting was Yahoo Inc. v
Akash Arora and Anr., 1999 PTC (19) 201 in which the defendant had launched a
site YahooIndia.com similar to the world-famous Yahoo Inc. He was held liable
for passing off and restrained from using the domain name in future.
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