The rise of internet domain name disputes has presented unprecedented legal challenges, compelling courts across various jurisdictions to repeatedly address and resolve novel issues. In the process, several new legal concepts have emerged, significantly enriching trademark jurisprudence. Some of the most notable concepts are discussed below.
Cyberquatting refers to the bad-faith registration of a domain name that is identical or confusingly similar to another party’s trademark or trade name, with the primary intention of selling it to the rightful trademark owner for profit. Cybersquatters are also known as cyber pirates or domain name grabbers.
In India, there is no specific legislation that directly addresses cybersquatting. In contrast, the United States enacted the Federal Trademark Dilution Act, 1995, which aimed to protect famous trademarks and curb deceptive internet practices. Later, the Anticybersquatting Consumer Protection Act (ACPA), enacted as part of the Consolidated Appropriations Act, 2000, directly addressed cybersquatting by imposing civil liability on individuals who, with bad-faith intent to profit, register or use domain names that are:
(a) Identical or confusingly similar to a distinctive trademark
(b) Dilutive of a famous trademark at the time of registration
(c) Identical or confusingly similar to a famous trademark
In K.C.P.L. Inc. v. Nash, 49 U.S.P.Q.2d 1584 (S.D.N.Y. 1998), the defendant had developed an operational website providing information services before offering the domain name for sale. The court held that the offer to sell the domain name did not constitute cybersquatting, as there was no evidence of bad-faith intent.
Reverse domain name hijacking occurs when a trademark owner attempts to wrongfully deprive a legitimate domain name registrant of their domain. Such actions may not always involve bad faith. In many cases, the domain name holder may have a legitimate interest—such as concurrent use of a trademark or independent rights associated with the domain name.
The World Wide Web hosts vast amounts of information distributed across countless websites. When users do not know a website’s domain name, they rely on search engines by entering keywords—often trademarks or trade names.
Search engines use automated programs known as spiders or crawlers to index websites by analyzing visible text, titles, URLs, and metatags. If a keyword appears in a website’s metatags, search engines may rank that site higher in search results, increasing its visibility. This practice has raised legal concerns when trademarks are used in metatags without authorization.
Search engines generate revenue by selling advertising rights to specific keywords through a system commonly referred to as keyword buying. Advertisements—often in the form of banners—are displayed when users search for those keywords.
In Playboy Enterprises, Inc. v. Netscape Communications Corp., the plaintiff alleged trademark infringement based on the use of the terms “Playboy” and “Playmate” as keywords sold to advertisers. The court held that such use did not constitute trademark use and was protected under the doctrine of fair use, as the search engine did not display or market the keywords in their trademark form.
Hyperlinks are the foundational navigational tools of the World Wide Web, allowing users to move directly from one website to another. However, hyperlinking has raised legal concerns in certain jurisdictions.
In Germany, courts have held website owners responsible for links to external websites that violate German law—even if those websites are hosted outside Germany. Additionally, courts have ruled that competitors linking to another company’s homepage without clear disclosure may violate German competition law.
The internet enables transactions without requiring parties to disclose their identity or physical location. Parties may reside in different countries or continents, and websites can be accessed globally. These complexities challenge traditional jurisdictional principles, which were historically limited by national borders and physical presence.
To address these issues and ensure consistency while avoiding forum shopping, the Internet Corporation for Assigned Names and Numbers (ICANN) adopted the Uniform Domain Name Dispute Resolution Policy (UDRP).
The exponential growth of electronic commerce has transformed business methods and market structures worldwide. In India, e-commerce has expanded rapidly since 1999. Increased competition, the preference for easily memorable domain names, and the growing importance of online business presence have collectively contributed to numerous disputes between trademark holders and domain name registrants.
The advent of the internet has significantly impacted both substantive and procedural legal doctrines. While courts’ jurisdiction remains territorially confined, online activities transcend borders, creating ongoing challenges for the application of traditional jurisdictional principles.