References -
1. Wipo
2. Legal Position of Cybersquatting in India By Hemant Bhadana
As an E-Commerce business, it is important to protect your IP rights on
the Internet.This can be done in a number of ways. Always clearly identify
your content, either with a copyright notice or some other indication of
ownership. You may wish to simply tell users what they can and cannot do
with your content. Never distribute or permit downloads of third
party content that does not belong to your company and put in
place programs to make sure that your employees understand
your company policies in this regard.
⁃ 1st Case Details -Metallica v NapsterOffence: Direct Infringement
location: San Francisco, USAJudge: Marilyn PatelLaw Broken: 1992
Audio Home recording Act( The Audio Home Recording Act (AHRA) is an
amendment to the United States’ 1976 copyright law to stop music piracy.
Created in 1992, this act was designed to protect copyright holders and
their copyrighted materials, and also to open the market to
noncommercial users. Because of the lost royalties that would otherwise
be paid to music organizations for their copyrighted digital products, this
act requires manufacturers of digital copying products and software to
pay royalty taxes on both the devices and the media purchased by the
consumer. The AHRA permits users to record first-generation music
(music previously recorded), but under the act second-generation copies
are forbidden. Copyright holders are prohibited from suing consumers for
copyright infringement when users record music in their homes for
noncommercial use. AHRA also requires that digital recording devices be
equipped with a serial copy management system (SCMS).Infringement
type: Direct and Contributory
⁃ Background on Napster: Peer to Peer File Sharing
Napster facilitates transmission of MP3 files by peer to peer file
sharing.
• Makes MP3 music files stored on individual computer hard drives
available for copying by other Napster users.
• Allows searching for MP3 music files stored on other users’
computers.
• Facilitates transfer of exact copies of the contents of other users’
MP3 files from one computer to another via the Internet.
⁃ Brief : The Napster case in the United States put an international
spotlight on unauthorized downloading of music files. The case, which
resulted in the court issuing a permanent injunction preventing Napster
from operating its file sharing system, was a contributory infringement
case because the claim was that Napster facilitated illegal copying by
users of the system, not that Napster copied the files itself. Other cases
will continue to test the law in this area, and there may be different issues
and different results in different jurisdictions, but the lesson of Napster is
that it is important for an E-Commerce company to make sure it has a
clear policy against unauthorized copying of files, or any actions that
encourage or facilitate such copying. In 1998, Congress passed the
Digital Media Copyright Act (DMCA) under heavy lobbying by Recording
Industry Association of America (RIAA). This act was the foundation of
Judge Marilyn Patel’s ruling that Napster did in fact violate the law, and
this I cannot argue against. According to the act, and the intent behind
the act, Napster is illegal.
Uniform Domain Name Dispute Resolution Policy (UDRP) is an
internet-based system that resolves complaints made by owners of
trademark when facing trademark conflict. Being neither a court nor an
arbitration authority it controls deletion/ transfer of domain names.
⁃ According to the policy, a complainant can bring action on grounds
including a domain name being identical/ confusingly similar to a
trademark/ service mark, domain name owner has no rights/ legitimate
interests in the same or the domain name so registered is being used in
bad faith.
⁃ After the approval of all these stipulations the registration is proved,
or domain registration cancelled/ transferred to complainant. However, no
financial remedies are a part of the UDRP mechanism.
⁃ WIPO is the most important dispute-resolution service provider
under the UDRP, accredited to ICANN for domain names. It provides
skilled panelists, thorough administrative procedures and complete
credence. It takes about two months for a WIPO case to be resolved, with
a small fee to be made. A case with higher complexity may be heard in
person.
⁃ A person may complain before the administration dispute
resolution service providers listed by ICANN under Rule 4 (a) that:
(i) A domain name is "identical or confusingly similar to a trade mark or
service mark" in which the complainant has rights; and(ii) The domain
name owner/registrant has no right or legitimate interest in respect of the
domain name; and(iii) A domain name has been registered and is being
used in bad faith.
⁃ 2nd Case details-
⁃ CASE FACTSYahoo Incorporation is the owner of the well known
trade mark, Yahoo and of the domain name Yahoo.com; both the
trademark and the domain name acquired a distinctive name, good will
and reputation. Yahoo.com had been registered by Yahoo Inc with
Network Solution Inc since 1995 and offers a whole range of web based
services. The trade mark Yahoo had been registered or was close to being
registered in 69 countries. Yahoo Inc had not registered its domain name
in India.Akash Arora started to offer web-based services similar to those
offered by Yahoo.com under the name of Yahoo India. Yahoo Inc had sued
Akash Arora for using a trade mark deceptively similar to its own and
passing off his services as those offered by Yahoo Inc.
⁃ ISSUE: Whether the act of Akash Arora in registering the domain
name Yahoo India, to offer services similar to those offered by Yahoo Inc,
is an infringement of the trade mark of Yahoo Inc and amounts to passing-
off under the relevant sections of the Trade and Merchandise Marks Act?
⁃ ANALYSIS:Yahoo Inc contended that Akash Arora adopted the
domain name of Yahoo to offer services similar to those of Yahoo Inc and
had attempted to cash in on the good will generated by Yahoo Inc.
Therefore, Yahoo Inc. argued that Akash is liable for passing off. As the
two trade marks/domain names ‘Yahoo!’ and ‘Yahoo India!’ were almost
similar and the latter offered services similar to those offered by the
former and as the latter passed them off as being offered by Yahoo Inc.,
the court held Akash liable for passing off and restrained him from using
the deceptively similar domain name.The decision of the court in this case
is based on the rationale that where the value of a name lies solely in its
resemblance to the name or trade mark of another organization, the
public is likely to be deceived by the use of such name and such act would
amount to passing off.
⁃ RULE OF LAWWhen a defendant does business under a name
which is sufficiently close to the name under which the plaintiff is trading
and that name has acquired a reputation and the public at large is likely
to be misled that the defendant’s business is the business of the plaintiff,
or is a branch or department of the plaintiff, the defendant is liable for an
action in passing off. The court referred to the case of Monetary Over seas
v. Montari Industries Ltd.; 1996 PTC 42 where it was said that, “When a
defendant does business under a name which is sufficiently close to the
name under which the plaintiff is trading and that name has acquired a
reputation and the public at large is likely to be misled that the
defendant’s business is the business of the plaintiff, or is a branch or
department of the plaintiff, the defendant is liable for an action in passing
off.”Injunction was granted in favour of the Plaintiff (Yahoo Inc.)
⁃ Distinct from many developed countries, India has no Domain Name
Protection Law and cybersquatting cases are dealt under Trade Mark Act,
1999.
⁃ In India, victims are provided with various option to combat
Cybersquatting. These are the available options • By sending cease-
and-desist letters to the Cybersquatters. • Initiation of arbitration
proceedings under ICANN’S rules.• Option for a trial in a state or federal
court.
https://blog.ipleaders.in/laws-tackling-cyber-squatters-cyber-squatting/
https://www.theverge.com/2015/4/13/8399099/metallica-sued-napster-15-years-ago-today
https://www.wipo.int/sme/en/e_commerce/internet_content.htm
