Discussing the recent JioHotstar domain name controversy, Akshay Ajayakumar analysis the involved cybersquatting concerns. Akshay is a graduate of National Law University, Jodhpur, and has an LL.M in IP and Competition Law from the Munich Intellectual Property Law Center (MIPLC). He is currently a consultant for domain name disputes at Sim and San, Attorneys At Law. His previous post can be accessed here.

: A Clever Narrative for Cybersquatting

By Akshay Ajayakumar

Everyone is talking about the crafty app developer who purchased the domain name on 20 September 2023 betting on a Disney+ Hotstar and Jio merger, inspired by previous rebranding moves like JioSaavn. The developer hoped to flip it to fund his education at Cambridge University, eventually offering to sell it for £93,345. This post breaks down the cybersquatting at play here.

Cybersquatting and UDRP

Cybersquatting refers to the bad-faith domain name registration that violates trademark rights. The Uniform Domain-Name Dispute-Resolution Policy (UDRP) provides an easy solution for trademark owners to recover domain names registered in bad faith, without going to court. The UDRP is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) to resolve disputes over domain name registrations, particularly in cases of alleged bad faith or cybersquatting. The policy applies globally to generic top-level domains (gTLDs) like .com, .net, and .org, as well as some country code top-level domains (ccTLDs) that have adopted UDRP. Dispute resolution providers like the WIPO Arbitration and Mediation Center typically handle UDRP cases. For a successful UDRP claim, three conditions must be met:

• the domain name must be identical or confusingly similar to a trademark owned by the complainant, 
• the registrant must have no rights or legitimate interests in the domain, and
• the domain must be registered and used in bad faith.

Trademark Violation

The domain name is confusingly similar to trademarks owned by Reliance Industries Limited (JIO) and Star Television Productions Limited (HOTSTAR). Even though there is no formal trademark transfer between the company’s post-merger, Reliance can still rely solely on its JIO trademark to claim similarity, as demonstrated in previous UDRP cases like Decathlon SAS v. Nadia Michalski. In Decathlon SAS v. Nadia Michalski, the panel ordered the transfer of the domain name to the DECATHLON trademark owner, despite the lack of consent from the NIKE trademark owner and the panel said that “… neither the Policy nor the Rules expressly require the consent of a third party and previous panels have accepted complaints request that a domain name may be transferred to the complainant.” Alternatively, both companies could file a consolidated complaint under UDRP as they share a common grievance against the registrant(see WIPO Domain Name Decision: DAU2021-0022 for information about consolidation).

No Legitimate Interest in the Domain

The registrant fails to qualify for any defences under Paragraph 4(c) of the UDRP. He did not register the domain for legitimate business purposes but rather in anticipation of profiting from the merger, disqualifying him from the Bona Fide offering of goods or services defense. Additionally, the Registrant is not commonly known by the name “JioHotstar,” making the Commonly Known By The Domain Name defence invalid. Finally, the registrant’s intent to sell the domain for a significant profit excludes him from the Legitimate Non-commercial or Fair Use defence.

Bad Faith Registration

Under Paragraph 4(b) of the UDRP, registering a domain primarily to sell it to a trademark owner for more than out-of-pocket costs demonstrates bad faith. On his website, the registrant admits he bought the domain hoping to profit from the merger and fund his education, intending to sell it for far more than the registration cost. This clearly meets the UDRP’s bad-faith criteria.

Conclusion

The issue is a textbook example of cybersquatting, which UDRP was specifically designed to address. Despite the registrant’s “noble” claim of raising funds for education, the domain name was registered in bad faith, with the sole aim of profiting from the Jio-Hotstar merger. As similar cases have shown, clever narratives or justifications cannot override the legal framework designed to protect trademark owners. Reliance Industries will likely succeed in recovering the domain through UDRP action (if they go forward), reinforcing the effectiveness of the policy in combating cybersquatting. Ironically, the inspiration for domain name holder to purchase this domain name (“(t)his reminded me of when Jio acquired the music streaming service Saavn, they rebranded it to JioSaavn, and changed the domain from Saavn.com to JioSaavn.com”) was also a subject of a domain name dispute (see Case No. D2018-1481), evidencing how common cybersquatting is.