Commercial opportunities and ancillary frauds walk hand in hand and online business is not an exception to the foregoing. The term squatting denotes unlawfully occupying any property without permission. Nowadays, the term is widely used to refer to domain name disputes. Cybersquatting implies a situation when one’s trademark(s) or business name(s) are registered or used as internet domains by another person with the mal-intention of earning more profit. The used names are generally same, similar or confusingly similar to the original ones.
One instance of cybersquatting can be given thus: Mr. X is a lawyer. He always takes help of Alexa (a smart speaker with a voice-controlled intelligent personal assistant service) for silly internet searches. He has asked Alexa to go to Microsoft.com but Alexa took him to MikeRowesoft.com which is a web designing business platform. He again instructed Alexa slowly and clearly but as these two websites sound similar, Alexa made the same mistake again! Sounds bizarre, right?
It is to be noted that the abovementioned example is not made up. MikeRowesoft.com was registered by a Canadian teenage named Mike Rowe who claimed that the website contains his name (MikeRowe) and he thought it would be fun if he adds the word “soft” at the end. It will not be out of place to note that, he claimed $10,000 from Microsoft for bringing down this website.
Apart from this one instance, there are thousands of instances where well-known names and famous trademarks have been (mis)used in bad faith. The famous British public service broadcaster “BBC” had to fight a legal battle in order to get back its right to the URL “bbcnews.com” after it was cybersquatted. The famous online auction and shopping site eBay discovered more than 1000 similar or confusing domain names to its address and recovered 1,153 domain names by initiating legal action(s) against the cybersquatted domains. eBay’s legal fight is still considered as one of the largest WIPO cybersquatting disputes. The number of cybersquatting cases is higher than one can imagine and every year the number is soaring up. In 2017, the WIPO Arbitration and Mediation Center received 3,074 domain name dispute cases under the “Uniform Domain Name Dispute Resolution Policy (UDNDRP)” while in 2018, the number became 3,447.
The offence of cybersquatting has been taken seriously by the USA, and thus, it has enacted the Anti-cybersquatting Consumer Protection Act (ACPA), 1999 where it defines cybersquatting as “registering, trafficking in, or using a domain name with bad faith to profit from the goodwill of a trademark belonging to someone else”. There is an overarching international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN) which has adopted the “Uniform Domain Name Dispute Resolution Policy (UDNDRP)” for resolving domain name disputes.
Can someone claim a squatted domain back? Yes, one can! For a victim of cybersquatting from Bangladesh or any common law country, the best advice is to bring an action under the ICANN complaint procedure. However, a very recent case under the ICANN namely Quality Nonsense Limited v Jerry Sandusky (Claim No. FA1604001668646) confirms that in order to get a domain name cancelled or transferred, a complainant must prove three elements conjunctively i.e. (a) the domain name has to be identical or confusingly similar to a trademark or service mark; (b) respondent has no rights or legitimate interests on the domain name; and (c) the domain name has been registered and is being used in bad faith. Proving all these elements conjunctively might be troublesome.
Therefore, it is always better to prevent domain disputes than to recover domains. If someone is planning to thrive in online business and doesn’t have a trademark registered on the brand’s name, he/she should get it done immediately. To avoid falling a prey to domain squatting, one may consider any one or more than one of the following advices: (a) before starting business, one may register desired domain name; (b) one may consider buying similar or confusing domain names as well as necessary multiple extensions; (c) some business entities provide domain ownership protection services; availing such services can also be considered; (d) while developing a website, if help from any other person or website development firm is taken, one should make sure that all the legal records are registered in one’s own name; (e) a domain renewal deadline is crucial and should always be duly met; (f) most importantly, legal right on the name has to be created. Therefore, one should always consider registering trademark on the desired domain name.
When it comes to online businesses, marketing or services, importance of a secured domain name is immense. Throughout the web network, one’s business is identified by the domain name one uses. As domain names are registered internationally and cybersquatters are technologically smarter than most of us, there is always a good chance of being a victim of cybersquatting if the business name is kept unprotected. A competitor may register the same or similar domain of a well-known trademark for making profit by selling counterfeited products or committing frauds. To sustain in global business, one must make sure that the strategies are protecting one’s intellectual property rights well.
The writer is Advocate, Supreme Court of Bangladesh.