Whose Site Is it Anyway?

A few weeks ago, news broke that liquor baron Vijay  Mallyahad grabbed obvious site names of rival Manu Chhabria–manuchhabria.net,mrchhabria.com and directorsspecial.com. In cyber world, this is a case ofsquatting.

Another report said that unscrupulous persons had even bookeddomain names representing governments–governmentofindia.com,delhigovernment.net and tamilnadugovernment.com to name a few.

Cybersquatters generally grab an available Internet domainname of obvious value, hold and re-sell it to the highest bidder. Ends thatpeople go to earn quick money–an Australian even changed his name to avoid acyber squatting eviction lawsuit. Doc Seagle, who registered the domain Oxford-University.comin December 1998 is now legally called Oxford University.

A well-formulated law on cyber squatting can be a solution.Dewang Mehta, president, Nasscom, says, "It is a complex subject–itcertainly can be enforced for trademark violations but becomes difficult incases which involve personal names. Therefore, a need for arbitration. Also, aglobal law is required, otherwise it becomes difficult to implement."

Scouting for solutions

Worldwide,this issue is being addressed both by the Internet Corporation for AssignedNames and Numbers (ICANN) and the Geneva-based World Intellectual PropertyOrganization (WIPO). Effective measures are evolving–ICANN set up a workinggroup in September 1999 to prevent registration of domain names "in badfaith" representing well-known organizations, and WIPO looks at cases thatviolate copyright.

In Brazil, Internet registrars have taken the initiative toregulate the sale of domain names, by creating a ‘black list’. The listconsists of famous trademarks that cannot be registered as domain names withoutthe permission of the mark owner.

Setting up of dispute resolution service providers (by ICANN)–Nasscombecame one on August 15, 2000–is another measure against cyber squatting. Thiswas a result of rules drafted by ICANN, backed by America Online andregister.com and voluntarily adopted by 20 domain name registrars. Allregistrars in the .com, .net, and .org top-level domains would follow theUniform Domain-Name Dispute Resolution Policy (UDRP). Under the policy, most ofthe trademark-based domain name disputes will be resolved by agreement, courtaction, or arbitration before a registrar, who can cancel, suspend, or transfera domain name. The trademark owner will need to initiate the dispute by filing acomplaint with an approved dispute-resolution service provider. The number ofdomain name cases filed with WIPO, worldwide, had zoomed from a mere 28 inJanuary this year to 188 in July.

Anti-squat drive

The ultimate responsibility to police a trademark or servicemark resides with the mark owner. As Michael D Palage, chairman, Working GroupB, famous trademark protection, ICANN, says, "Although registries andregistrars are not required to police a mark owner’s rights, they shouldrefrain from activities that knowingly facilitate infringements. The currentrequirements that ICANN accredited registrars are required to adhere to,pre-payment, compliance with the UDRP and verification of faulty registrant databrought to their attention, are reasonable means toward assisting the trademarkcommunity in policing and protecting their marks."

There are also global domain name watch services that monitornames being registered in the country code and generic top level domains.

Grey areas remain though, particularly with regard topersonal names. Palage says, "Personal names are indeed a complex problem.Initially, UDRP was streamlined to handle abusive domain name registrationinvolving trademarks. However, one can see a push to expand the scope of UDRP tohandle other non-trademark issues such as abusive registrations involvingpersonal names and government agencies."

But this is likely to be a slow process, as many competinginterests will be at stake. Working Group B too, has left that up to theindividual registries to incorporate in their registry bid–till the groupreaches a consensus on the exact safeguard mechanism for protecting trademarkinterests.

Bijesh Kamath

in New Delhi