Kat friend Mervyn Cheong discusses a recent decision from Singapore that considered the interesting legal question of the relationship between cybersquatting and contract enforceability.

Can a finding of cybersquatting impact the enforceability of a contract? In a case of first impression in Singapore, the Singapore High Court has answered "yes", holding that the plaintiff would be precluded by public policy considerations from enforcing an agreement to transfer a registered domain name to the defendant.

Background

The plaintiff, 3 Corporate Services Pte Ltd (“3CS”), is a Singapore incorporated company that provides management consultancy services and the management of web portals. The defendant, Grabtaxi Holdings Pte Ltd (“Grabtaxi”), is part of a group of companies engaged in the business of providing ride-hailing and logistics services under the name GRAB.

The case was commenced by 3CS as a straightforward claim in contract. They asserted that Grabtaxi had agreed to pay them a sum of USD250, 000 to purchase the domain name “grab.co.id” (“Domain Name”) and that there was a Letter of Offer that evidenced the agreement. Grabtaxi breached the agreement when they failed to make payment.

As its primary point in defence, Grabtaxi countered that there was no binding agreement because one of the preconditions in the Letter of Offer was not satisfied. Subsequent to the circulation of the Letter of Offer, Grabtaxi found evidence that 3CS did not own the Domain Name (the Domain Name was owned by another corporate entity, which shared a common shareholder with 3CS).

In addition, Grabtaxi asserted that 3CS was engaged in cybersquatting and that such conduct is contrary to public policy; consequently, any agreement between Grabtaxi and 3CS was unenforceable. In support, Grabtaxi adduced evidence, including testimony from an expert on what constitutes cybersquatting and registrations of other domain names, such as “amyswinehouse.com.sg” and “gooogle.com.sg” by 3CS or its shareholder, which had no connection to 3CS’s business.

At trial, 3CS adduced evidence to show that they were involved in “domain investing” which is acceptable. They also asserted that cybersquatting, in any case, is not illegal in Singapore.

The court’s findings

The court found that there was no binding agreement. It accepted Grabtaxi’s evidence that 3CS was not the registered owner of the Domain Name and so one of the preconditions in the Letter of Offer was not satisfied. With its decision on this point, the court could have already dismissed 3CS’s claim and need not consider the other points raised in Grabtaxi’s defence. However, since the parties had both provided substantial submissions on the issue of cybersquatting, the court also set out its decision on this issue.

The court ruled that the plaintiff was a cybersquatter. The court noted that 3CS’s shareholder had registered 1,232 domain names indiscriminately and thus did not believe that 3CS was a domain investor. The court also observed that the misspelling of registered domain names, such as “gooogle.com.sg”, showed traits of a typosquatter.

While the court did not offer a definition of cybersquatting, it relied on three English cases that considered claims of passing off and trademark infringement concerning cybersquatting. In particular, the court cited the holding in Global Projects Management Ltd v Citigroup Inc and others as to what cybersquatting is:

Persons with no connection with a well-known business name would find some permutation containing the name and a suffix, but where that particular permutation had not been registered by the real owner of the business. The person concerned would then register that permutation himself and try to make money through being bought out by the true owner.

The court also considered the Final Report of the WIPO Internet Domain Name Process, “The Management of Internet Names and Addresses: Intellectual Property Issues”, which stated that cybersquatting is:

the term most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks and service marks.

The plaintiff argued in its closing submissions that it would not be appropriate for the court to establish cybersquatting as a new head of public policy at common law, especially when the legislature had not considered the matter.

The court rejected this argument, noting that:

… in the current world where the reach of the Internet is so wide, and the use of Internet websites is so pervasive, the abusive and/or illegal usage of domain names needs to be controlled and/or curbed. The court takes judicial notice of the fact that the world wide web was invented by Tim Berners-Lee back in 1989; he wrote the first web browser in 1990. … in 1997, the web browser was only in its infancy. The use of the internet has expanded exponentially since with its attendant abuse. Such abuse must be arrested.

Thoughts on the case

It seems that an aggrieved person in Singapore can now rely on passing off or trademark infringement to seek recourse against a cybersquatter. While no definition for "cybersquatter" was offered, the court paid close attention to whether the registrant had any legitimate interest in, or connection with, the domain name that it had registered.

Still, since the court had decided, as a primary issue, that there was no valid agreement between the parties, this is the rationale for the outcome of the case. Thus, the court’s ruling on cybersquatting, and its effect on the enforceability of the agreement, are merely obiter dicta under Singapore’s common law system, which, as such, are not strictly speaking binding as precedent. Nevertheless, the case does give some guidance as to the court’s view that cybersquatting is objectionable.

In a press statement issued today, the World Intellectual Property Organization (WIPO) expressed its anxiety about current trends in cybersquatting.

Right: Cybersquatter, by Justin Bua (available here)

The flier for the press release reads, in relevant part:

"Against the background of an unprecedented number of cybersquatting cases in 2007, the evolving nature of the domain name registration system (DNS) is causing growing concern for trademark owners around the world. Last year, a record 2,156 complaints alleging cybersquatting – or the abusive registration of trademarks on the Internet - were filed with the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center (Center), representing an 18% increase over 2006 and a 48% increase over 2005 in the number of generic and country code Top Level Domain (gTLDs and ccTLDs) disputes".

The IPKat isn't surprised at the trend: he believes it's far worse than WIPO's statistics suggest, since (i) where cybersquatters use sites actively it becomes realistic to pursue them through the courts and secure damages or an account of profits and (ii) where cybersquatters don't use sites actively, reputable traders have to be quite selective as to which ones they proceed against before WIPO, national equivalents or anyone else because of the huge toll in terms of time, money and effort. Merpel adds, the proliferation of pathetic and nearly meaningless top level domains doesn't help either. Who was it that urged the creation of .biz, .name and .info? It surely wasn't reputable business, was it?

Very long list of serious and not-so-serious top level domains here

The IPKat offers a copy of Elle Todd's excellent Gringras: the Law of the Internet (details here) to the best suggestions for truly silly top level domains. Please send your entries here and be patient if you don't get a swift acknowledgement. Closing date: Friday 4 April.

The Times reports that The Dyslexic Domain Name Company has settled a dispute with Microsoft, concerning a number of domain names it has registered consisting of typos of various trade marks. Clive Gringrass, who wrote the article, and is Microsoft's UK representative on this matter writes:

"Trade mark legislation around the world and, in particular, the UK’s Trade Marks Act (1994) makes clear that these registrations are an infringement. Each of the registered domain names is identical - or as near as makes no legal difference - to the registered trade mark. The domain name – or “sign” - is then used in the course of trade to sell advertisements. This is flagrant trade mark infringement".

The IPKat hates to say it, but he thinks this might be right. Although his gut instinct was that any site clearly won't be that of the trade mark owner and so no confusion (unless we go down the initial interest confusion route), he thinks this is probably the elusive example of a mark which is different to the earlier mark, but in a way that consumers won't notice (otherwise they wouldn't have typed it by mistake), rendering it deemed to be identical under the LTJ Diffusion test. Two outstanding issues though: what are the goods/services for which it is being used? Is there trade mark use, sorry, make that is there use which harms one of the mark's functions, including the essential function?