An organisation/entity/individual may, with a view of taking advantage of a well-known trademark, use that trademark for its own web site in such a manner so as to induce a customer/surfer/ netizen to believe that there is a direct nexus between the website holder and the trademark, when in fact there is no such connection. This kind of activity is comparable to trademark infringement and has come to be commonly known as "cybersquatting." It is similar to passing off actions in trademark cases.

WIPO Uniform Domain Name Dispute Resolution Policy:

The World Intellectual Property Organisation (WIPO) Arbitration and Mediation Center deals with domain name disputes under the new Uniform Dispute Resolution Policy applicable to generic top-level domain names adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999. The WIPO Center’s Domain Name Dispute Resolution service has been established specifically to administer domain name disputes with the availability of electronic case filing facilities and a well developed case administration system. It provides a streamlined, cost-effective and swift procedure to review the claims before it. Generally the cases are expected to be decided within 45 days after filing!

First Cybersquatting Case (Word Wrestling Federation case):

The first cybersquatting case under the WIPO was decided on January 14 this year.

The US based World Wrestling Federation (WWF) brought a suit against a California resident who registered the domain name worldwrestlingfederation.com and offered to sell it to WWF at a huge dividend a few days later. The WWF alleged that the domain name in question was registered in bad faith by the registrant in violation of WWF’s trademark.

It was held that the domain name registered by the respondent was ‘identical or confusingly similar’ to the trademark of WWF and the respondent had no legitimate rights or interests in the domain name. Therefore the respondent was ordered to transfer the registration of the domain name to the complainant, WWF.

Recent Indian Cases:

‘Tata.org’ Case

The Advanced Information Technology Association, Mumbai registered the domain name www.tata.org three years back. Tata Sons Ltd. filed their complaint with WIPO Arbitration and Mediation Centre on February 19, 2000 under the Uniform Domain Name Dispute Resolution Policy, Rules and supplemental rules made thereunder. The respondent was duly served by email, fax and by courier service. The respondent did not choose to contest the complaint and as such the respondent was proceeded ex-parte.

On April 4, 2000, it was held that registering such a domain name amounted to bad faith registration and the Centre decided that the domain name "tata.org" that was being hoarded by the respondent should be transferred to the complainant, Tata Sons Ltd.

Mahindra & Mahindra Case

One Mr. Ajay Kumar registered three domain names: mahindra.org, mahindra.net and mahindra.com. The specific goods that were covered by these registrations included motor vehicles and in particular tractors. The Indian Company, Mahindra & Mahindra proceeded against Mr. Ajay Kumar under the auspices of WIPO.

It was decided that the complainant Indian Company that is a well-known manufacturer and exporter of motor vehicles was entitled to the domain names. As of now, the domain names mahindra.org and mahindra.net will be transferred. The third domain name dispute is still pending.

Indiainfospace.com case

A resident of Bhopal State in India registered the domain name Indiainfospace.com. The US based company, Infospace.com which offers various commercial services to on-line customers filed a complaint against the website holder with the WIPO.

The WIPO administrative panel decided that the addition of the word "India" would only induce users to believe that the site was an Indian affiliate of the US based company. It was therefore considered to be a bad faith registration and the domain name was transferred to the US company.

Conclusion:

The active involvement of WIPO in resolving disputes regarding domain names has played a vital role in evolving concrete principles in this field. Not only is the dispute resolution mechanism, cost-effective, but at the same time speedy (45 days) and avoids the delays that may be caused by pursuing ordinary litigation procedures. This is just one of the solutions to the many complexities concerning the Internet.

* The articles or opinions expressed in the articles must not be construed as any legal advice.