Cyberlaw India

THE ECONOMIC TIMES DOMAIN NAME VICTORY

SOME CYBERLAW PERSPECTIVES

Pavan Duggal

Cyberlaw Consultant
President, Cyberlaws.Net

The Economic Times has won the first ever legal victory of a domain name by any Indian company. In the process, The Economic Times has also created history and has secured a unique place in the annals of Indian Cyber law.

www.the economictimes.com has been the first domain name which has been acquired by any Indian company after the Uniform Domain Names Dispute Resolution Policy of Internet Corporation for Assigned Names and Numbers (ICANN) has come into force.

The Economic Times is the nation’s most prestigious and widely read financial newspaper which has set benchmark standards for the entire financial newspaper industry.

On 11 March, 2000 panelist W.R. Cornish of the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center delivered the administrative panel decision in the cases entitled “Bennett Coleman & Co Ltd Vs. Steven S Lalwani” and “Bennett Coleman & Co. Ltd Vs. Long Distance Telephone Company”. In both the cases, Bennett Coleman & Co. Ltd. was the complainant before the WIPO Arbitration and Mediation Center. The facts arising out of the said issue were that Bennett Coleman and Co. Ltd being the complainant, publishes The Economic Times, which has average daily circulation of 350,100, and “The Times of India”, which has a daily circulation of 2,522,488. Further Bennett Coleman & Co. is engaging in certain supplemental activities in the entertainment industry, using the brand “Times”. Since 1996, the complainant has held the domain names, www.economictimes.com and www.timesofindia.com, using them for the electronic publication of their respective newspapers.

The complainant had registered in India the mark, “The Economic Times” for newspapers, journals, magazines, books and other literary works on March 28,1973, and the mark, “The Times of India” for the same products on July 30 1943.

However, in 1998, Steven S. Lalwani, 16 Victoria Terrace, Upper Montclair, NJ 07043, USA registered the domain name www.theeconomictimes.com with Network Solutions. It may be pertinent to note that the domain name www.thetimesofindia.com was also registered with Network Solutions by Long Distance Telephone Company, having the same address of Steven S. Lalwani, being 16 Victoria Terrace, Upper Montclair, NJ 07043, USA. The said domain names were duly registered by Network Solutions, the then sole registrar for TLDs (Top Level Domains) as the same were available to be registered on a first-come-first served basis. Needless to mention, Network Solutions does not prescribe any restrictions on the registration of the domain names.

Thereafter, Steven S. Lalwani and Long Distance Telephone Co., being a front of Lalwani, built up their websites on the two domain names which redirected Internet users and netizens to www.indiaheadlines.com which provides India related news and articles. The effect of this was that any netizen legitimately wanting to go the site of The Economic Times and The Times of India would type the said names in his browser and he would be redirected to the site of www.indiaheadlines.com . This redirectional exercise adopted by Lalwani caused tremendous harm and damage to The Economic Times and The Times of India apart from misleading bonafide and genuine netizens.

All this continued in 1998 and 1999 and despite numerous efforts, no wise counsel prevailed upon Lalwani to desist from doing his redirectional work. This was also the time when the practice of Cybersquatting was at its most prevalent best. [Cybersquatting is the practice by means of which a person or legal entity books up the trade mark, business name or service mark of another as his own domain name for the purpose of holding on to it and thereafter selling the same domain name to the other person for valuable premium and consideration.]

To take an actual example, the domain name www.microsoft.org was registered by one Mr. Amit Mehrotra who had neither any business nor any trade mark of the said name but the said domain name was registered by Amit Mehrotra with Network Solutions because it was available and Amit Mehrotra was the first person to ask for it, having pipped Microsoft Corporation Ltd to the post in the race to the said domain name. (It is a different thing altogether that the said domain name has been restored by WIPO to Microsoft by means of its decision dated 10.4.2000).

The problem of Cybersquatting became such a hot issue that world wide, various efforts were being made to find an effective solution to control the problem. Finally, the US Government paved the way for the establishment of the Internet Corporation for Assigned Names and Numbers (ICANN) which is now the global body managing the Internet. ICANN approved the Uniform Domain Name Dispute Resolution Policy. Under the said policy, ICANN has approved service providers who actually do the domain name dispute resolution under its own guidelines. The said policy came into effect in the end of December 1999.

Under the said Uniform Domain Name Dispute Resolution Policy, the complainant Bennett Coleman & Co. Ltd filed the two cases concerning the domain names www.theeconomictimes.com and www.thetimesofindia.com before the WIPO Arbitration and Mediation Center on 27th January 2000. Both the said complaints were duly consolidated. The said complaint was hotly contested by the respondent Steven S. Lalwani.

By means of a detailed and well reasoned judgment, the WIPO Arbitration and Mediation Center delivered its ruling that the respondent’s domain name www.theeconomictimes.com should be transferred to the complainant Bennett Coleman & Co. Ltd. Thus, The Economic Times created history in the annals of Cyberlaw in India by being the first Indian domain name which was directed to be transferred in the name of complainant under the new ICANN domain name dispute policy. In the connected case, WIPO further directed that the domain name www.thetimesofindia.com be also transferred to Bennett Coleman & Co Ltd.

Basic Principles

The importance of the domain name victory of The Economic Times in Indian Cyberlaw is because the said judgement laid down some important principles of Cyberlaw relating to domain names. These concrete principles will further guide the development of the law against Cybersquatting.

The judgement creates a precedent by establishing the principles that daily usage of newspaper titles/marks in hardcopy and electronic publication leads to a substantial reputation which can not be allowed to be hijacked in Cyberspace by a squatter.
The decision grants judicial recognition to the principle of presumption at the time of the registration of the domain name. The moment any one registers a domain name which has the trade mark or other mark of any other legal entity, it shall be presumed that the said person must have been fully aware of the said mark at the time when he applied for the registration of the domain name. Surely, such a principle does have some exceptions but, broadly speaking, the presumption test applied by the WIPO Center will serve the purpose.
Another test given by The WIPO Center in holding the registration and use of domain names as being in bad faith is the test of the site being a “postal address” to other sites. The normal corollary of the same is that the web site being a “postal address” to other sites, would be presumed to be doing so in order to take advantage of the very considerable reputation in the domain names in dispute by misleading Internet users into believing that the site in question is associated with the site after of the famous mark /trade name of another.

At this juncture it shall be pertinent to examine the reasonings given in the historic judgement. The first issue raised by the respondents was that the WIPO Arbitration and Mediation Center has no jurisdiction under the ICANN Policy and Rules to consider the said cases because the domain names in contention were allotted before the Dispute Settlement Procedure was brought into effect. The WIPO Center refuted this argument of the respondents by holding that the registration agreement of a domain name holder applies not only to initial registration but also to the maintenance and renewal of domain names which, in turn, provides for the incorporation of terms and conditions from time to time and as such the same admits the introduction of the Uniform Domain Name Dispute Resolution Policy duly approved by ICANN and associated rules and supplementary rules into existing agreements. As the WIPO Center’s panel was duly constituted in accordance with the said policy, the objection relating to the lack of jurisdiction was rightly overruled.

On merits, the WIPO Centre’s panel found that the complainant’s essential complaint is based upon the large circulations of its financial newspaper “The Economic Times” and its general newspaper “The Times of India”. It was also contended by the complainant that the respondent have no right or legitimate interest in respect of domain name which were registered in bad faith in order to attract, for commercial gain, Internet users by creating confusion in their minds. The respondent mainly contended that the complainant had no relevant trade marks registered in USA and that there is no likelihood of confusion between the parties’ respective sites and the respondents have built up their brand name recognition, awareness and goodwill under the said domain names.

Judgement

The WIPO Center held that the titles “The Economic Times” and “The Times of India” are used to identify the producer of the newspapers and sites and are not merely descriptive of content. The center further held that the only difference between the respondent’s domain names and complainant’s domain names is incorporation of the definite article the in the beginning. The judgement held “The Complainant’s hard-copy newspapers used the definite article in accordance with common practice for press publishing. The Respondents’ names are thus exactly the same as the Complainant’s hard-copy titles. The Respondents must have been aware of this identity at the time when it applied for registration of their domain names. They do not allege that they then had existing businesses in supplying Indian news which went under the names or titles in issue. While they may have since built their own reputation with some of those persons who visit their sites, it is highly unlikely that all visitors act on that reputation. It is inevitable that many will go to the site by virtue of their knowledge of the Complainant’s reputation and their belief that the service on the sites is provided by or in association with the Complainant. It is no sufficient answer to suggest that any misleading first impression will be dispelled by the different design of the web site. This will happen only where the visitor already knows the form and appearance of the Complainant’s own sites and it is not reasonable to suppose that this will be so in all or even the majority of cases. This impression is fortified by the fact that the Respondent’s sites appear to act as “postal addresses” to other sites. The necessary implication is that they were named in order to take advantage of the Complainant’s very considerable reputation in the two titles of its publications by misleading Internet users into believing that the Respondent’s sites came from or were associated with the Complainant.”

It was rightly held that as the essence of Internet is in its world wide access, consideration of the propriety of domain names registrations cannot be confined to comparisons with trade mark registrations or other rights in the country in which the site is hosted. The judgement made it clear that the complainant have a very substantial reputation in their newspaper titles arising from their daily use in hard copy and electronic publication. Accordingly, the WIPO Center Panel held the respondents adopted in their domain names the very identical marks in which the complainant has rights and the respondents have no rights or legitmate interest in respect of the domain names. It was also categorically held that the registration and use of the domain names by the respondents is in bad faith in the sense that their use amounted to an attempt intentionally to attract, for commercial gain, Internet users to their web sites by creating a likelihood of confusion with the complainant’s marks as to the source, sponsorships, affiliation or endorsement of those web sites and the services on them.

All said and done, the said ruling in favour of The Economic Times and The Times of India is based upon the latest trends in the evolving Cyberlaw against Cyber squatting. Till date, numerous Cybersquatting instances in India have emerged and the only remedy existing under the civil law prevailing for the time being in India, was to file a suit of passing off and infringement of trade marks action along with consequential relief of declaration and injunction. The new method of domain names disputes resolution, very successfully demonstrated in practical sense by ICANN, now affords a quicker and inexpensive method for resolving domain names disputes in India.