In this digital era, practically everyone’s life revolves around the Internet. The Internet has become a platform for businesses in terms of interacting with the rest of the globe. Domain names are the foundation upon which E-commerce has been built. Initially, domain names were intended to serve as addresses. However, there are a growing number of examples of Cybersquatting or the unauthorized registration of domain names.
This article will focus on the concept of Cybersquatting and what can be done in order to protect one’s domain name that has been used in an unauthorized way.
What is Cybersquatting, and how it occurs?
Cybersquatting is an act of registering and using Internet domain names that are identical or similar to trademarks, service marks, corporate names, or personal names without permission. It is considered to be one of the types of trademark infringement concerning the domain name. The person involved in this act usually purchases and utilizes domain names in bad faith to profit from the trademark owner’s goodwill. It occurs when someone registers a domain name without intending to use it.
Domain name applicants are not required to furnish any formal papers or certificates before the registration authorities proving their ownership of the domain name they wish to register. Moreover, as there is no link between registering a domain name and registering a trademark, cybersquatting cases are rising. Let’s understand this with the help of an example; suppose ABC is a reputed brand name in the market. Still, ABC has not yet developed a website, and a cyber squatter may purchase ABC.com to sell the domain to ABC for a profit later on or use the domain name to make revenue by way of advertising and to prevent the real owner from using such domain name and promoting their genuine products online.
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Let’s discuss one of the landmark judgement on domain name piracy and infringement of trademark, decided by the United States District Court (Central District of California) in 2000.
NISSAN MOTOR CO., LTD.; NISSAN NORTH AMERICA, INC., v. NISSAN COMPUTER CORPORATION, is one of the landmark judgement in this respect.
Facts of the case:
- The plaintiff Nissan Motor Co., Ltd., is a major Japanese automobile manufacturer. Nissan North America, Inc., a subsidiary of Nissan, promotes and distributes Nissan automobiles in the United States.
- Nissan Motor Co. owns many registered trademarks, including the name “Nissan” in relation to automobiles and other vehicles, and Nissan North America is the only licensee.
- Nissan Computer Corporation, a computer sales and servicing firm based in North Carolina is the defendant. Since 1980, Mr Nissan has exploited his surname in several commercial ventures. The defendant registered its Nissan Computer logo as a trademark with the state of North Carolina in 1995.
- In May 1994 and March 1996, the defendant registered the Internet domain names “nissan.com” and “nissan.net,” respectively. The defendant ran websites using such domain names for numerous years, delivering computer-related information and services.
- Later in 1999, the defendant changed the content of its “nissan.com” website. The website’s URL was “nissan.com,” and it included a “Nissan Computer” symbol that looked very similar to the plaintiffs’.
- The parties met in October 1999 to discuss the probable transfer of the nissan.com domain name. During these conversations, Mr Nissan revealed that he would not sell the domain name for less than several million dollars and proposed a monthly payment plan for the rest of his life.
- On December 10, 1999, the plaintiffs filed a suit in this Court, alleging: trademark dilution law as per the law of the state; (2) trademark infringement; (3) domain name piracy; (4) false designation of origin; and (5) state law unfair competition.
Judgement of Court
After considering the arguments made by both parties, the Court ordered the following directions to be followed by the defendant immediately:
- place a large caption identifying the nissan.com and nissan.net websites as Nissan Computer Corporation-affiliated in the upper portion of the initial web page of each website;
- prominently display a disclaimer in the upper portion of the first web page of the nissan.com and nissan.net websites informing visitors that the nissan.com and nissan.net websites are not affiliated with the plaintiffs and directing visitors to Nissan North America’s website; and
iii. refrain from displaying automobile-related information, advertisements, promotions, or Internet links on the nissan.com and nissan.net websites, except as mentioned above.
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Regulatory authority on Domain name in UAE
For UAE, the country code top-level domain (ccTLD) is .ae (dot ae). The .ae DA (dot ae DA) is the UAE’s regulatory and operating body for .ae domain names. This body was established by the Telecommunications Regulatory Authority (TRA) in 2007. When you purchase a domain name, the registrar is the person that sells it to you, which is generally a web hosting firm. The regulatory authority, i.e., TRA in the UAE, provides your domain name to the registrar. The .ae DA is in charge of establishing and implementing policies related to the functioning of the. ae ccTLD and also assists in resolving the issues which are relating to Domain name.
What to do if you are a victim of Cybersquatting?
If you are a victim of Cybersquatting, you have two options:
- Filing a lawsuit in civil court on the grounds of infringement, or
- Filing a complaint under the Uniform Domain Name Dispute Resolution Policy (“UDRP”).
1. Filing Lawsuit in Civil Suit:
A civil lawsuit can be filed in Court against the holder of the domain name, requesting the Court to pass an order for the removal of the domain name or to transfer such domain name to the trademark owner.
2. Filing a complaint Uniform Domain Name Dispute Resolution Policy:
Under this policy, disputes purported to arise as a result of abusive domain name registrations such as Cybersquatting may be resolved through speedy administrative processes initiated by the owners of the trademark. To use the policy, a trademark owner must either:
- file a complaint against the domain-name holder in a court of competent jurisdiction, or
- submit a complaint to an authorized dispute-resolution service provider such as The Arab
Center for Dispute Resolution (ACDR), in situations of unlawful registration.
Also read about: Infringement of Intellectual Property
The purpose of this article is to provide a general overview of cybersquatting and domain name trademark infringement. Regarding your personal situation, you can seek expert guidance. HHS lawyers and legal consultants are specialized in dealing with the registration, infringement and other related issues of the trademark. Our trademark attorneys have clear and realistic solutions for protecting your intellectual property.
To know more about Cybersquatting and the protection of domain name, don’t hesitate to contact us for further consultation for domain name disputes and trademark law.
References:
1. [1] 89 F.Supp.2d 1154 (2000), available at http://www.internetlibrary.com/pdf/Nissan-Motors-Nissan-Computer-Dist-Crt-Prelim-InjunctI.pdf
2. https://www.icann.org/resources/pages/help/dndr/udrp-en
