Cybersquatters sapped of strength

India

In an attempt to keep pace with the impact of the internet revolution on traditional IP rights, the Indian courts have been expanding the traditional principles of trademark law to protect the rights that owners may claim in domain names.

The first case to deal with this issue in India was in the 1999 case of Yahoo Inc v Akash Arora where the High Court of Delhi restrained the defendant from using the domain name 'yahooindia.com', on the basis that trademark law applies with equal force to the Internet.

More recently, SAP AG of Germany, the leading global provider of specialized computer software, successfully sued three cybersquatters in the Indian courts, restraining them from using and dealing in infringing domain names incorporating the trademark SAP. One such case was against Davinder Pal Singh Bhatia. SAP AG followed up the court action with a reference to the World Intellectual Property Organization under the Uniform Dispute Resolution Policy (UDRP), seeking transfer/cancellation of the impugned domain names.

In both proceedings, SAP AG submitted that the trademark SAP was an abbreviation of the German words systeme anwendungen produkte (system application products) and it had been using the abbreviation since 1972 both as a trademark and as a corporate name. Consequently, the trademark had become associated with SAP AG and enjoyed a worldwide reputation. SAP AG's enormous presence was also evidenced by its popular web site www.sap.com.

Bhatia registered the domain names 'sapmaster.com' and 'sapwizard.com', and thereafter offered them for sale to SAP AG. Faced with Bhatia's persistent e-mails, the German company discussed the purchase of the domain names for $21,000 and $17,000 respectively. Subsequently, however, the company instituted legal proceedings against Bhatia before the Delhi High Court and obtained an ex parte injunction to restrain him from dealing in the names in any way.

Meanwhile, in the proceedings filed before the World Intellectual Property Organization, SAP AG was held to have satisfied the three requirements under the UDRP, namely:

  • It had an exclusive proprietary right to 'sapmaster.com' and 'sapwizard.com';

  • The impugned domain names are confusingly similar to the trademark SAP; and

  • The registration was obtained in bad faith since Bhatia approached SAP AG to sell the names.

In the light of these findings, the panel decided that the domain names should be transferred to the German software company.

Latha R, J Sagar Associates, New Delhi

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