“JioHotstar” – An enterprising case of Cybersquatting

Introduction

One of the most discussed media and entertainment industry developments since early 2023 is the merger of the media assets of Reliance Industries’ (“RIL”; including JioCinema) with Disney India’s (“Disney”; including Disney+Hotstar)¹. The deal has continued to make headlines, with the latest being a series of developments in an enterprising case of ‘cybersquatting’ on the “JioHotstar.com” domain². In this #TreelifeInsights piece, we break down the core legal issues surrounding this JioHotstar dispute: what cybersquatting is, why it is considered an infringement of intellectual property rights, and what the legal ramifications of the developer’s actions are.  

Timeline

1. 2022 – Disney loses digital streaming rights for Indian Premier League to RIL’s Viacom18. Disney sees loss of subscriber revenue.
2. February 2024 – Disney and Viacom18 sign contracts; Viacom18 and Star India to be integrated into a JV reportedly valued at INR 70,352 crores (post money).
3. August 2024 – Competition Commission of India and NCLT approve the USD 8.5 billion merger.
4. October 2024 – Anonymous Delhi-based app developer reveals registration of “Jiohotstar.com” domain name; offers to sell to RIL in exchange for higher education funding. RIL responds threatening legal action. 
5. October 26, 2024 – Reports emerge that domain name has been sold to a UAE-based sibling duo involved in social work.
6. November 11, 2024 – UAE siblings reveal their refusal of sale of domain name; offers to legally transfer to RIL for free.

Legal Backdrop: Intellectual Property Rights

In order to better understand the implications of this ‘cybersquatting’, it is critical to recognise the intellectual property rights (‘IPR’) in question:

• Intellectual Property Rights (‘IPR’): legal right of ownership over the creation, invention, design, etc. of intangible property resulting from human creativity. A critical element to the protection of IPR is restraining other persons from using the protected material without the prior permission of the owner.
• Trademarks: a form of intellectual property referring to names, signs, or words that are a distinctive identifier for a particular brand in the market, protected in Indian law by Trade Marks Act 1999. 
• Domain names included in IPR: in today’s digital world, a web address that helps customers easily find the business/organization online – a domain – is also considered a brand that should be registered as a trademark to prevent misuse.
• Value: trademarks are a great marketing tool that make the brand recognizable to the consumers, and directly correlates to an increase in the financial resources of the business. 
• Consequences: breach of IPR can lead to monetary loss, reputational damage, operational disruptions or even loss of market access for a business. Infringement therefore attracts significant criminal and civil liability, as a means to dissuade unauthorized use and protect such IPR owners.

In this regard, the positions adopted by RIL and the developer are briefly set out below: 

What is Cybersquatting?

‘Cybersquatting’ or digital squatting refers to the action of individuals who register domain names closely resembling established brands, often with the intent to sell for profit or otherwise leverage for personal gain. Cybersquatting can take the following forms:

• Typo squatting/URL hijacking: Domains are purchased with a typographical error in the name of a well-known brand, with the intent to divert the target audience when they misspell a domain name. This could occur with an error as simple as “gooogle.com” instead of “google.com”.
• Identity Theft: Existing brand’s website is copied with the intent to confuse the target consumer. 
• Name Jacking: Impersonation of a celebrity/famous public figure on the internet (includes creating fake websites/accounts on social media claiming to be such public figure). 
• ‘Reverse’ Cybersquatting: False claim of ownership over a trademark/domain name and accusing the domain owner of cybersquatting. 

Cybersquatting can be used as a form of extortion, an attempt to take over business from a rival, or even to mislead/scam consumers, but there is no law in India that specifically addresses such acts of cybersquatting. Since domains are considered ‘trademarks’ under the law, use of a similar or identical domain would render an individual liable for trademark infringement³, in addition to any other liabilities that may be applicable from the perspective of consumer protection laws.   

Legal Treatment of Cybersquatting

Cybersquatting rose as an issue as more and more businesses began to realize the value of their online presence in the market. As the digital age unfolded, the Internet Corporation of Assigned Names and Numbers (ICANN) was founded in 1998 as a non-profit corporation based out of the United States with global participation. In 1999, the ICANN adopted the Uniform Domain Name Dispute Resolution Policy (UDRP) to set out parameters in which top level domain disputes are resolved through arbitration. It is important to note that the remedies available under UDRP are only cancellation or transfer of the disputed domain name and do not envisage monetary compensation for any loss suffered. This was ratified in India through the .IN Domain Name Dispute Resolution Policy (INDRP) which is available to all domains registered with .in or .bharat.

Procedure under ICANN/UDRP

1. File a Complaint: Approach a provider organization like the World Intellectual Property Organization (WIPO), Asian Domain Name Dispute Resolution Centre (ADNDRC), or the Arab Center for Dispute Resolution (ACDR). Complaints must demonstrate certain key elements.
2. Submissions: The respondent is notified of the complaint and UDRP proceedings initiated. Respondents are given 20 days to submit a response to the complaint defending their actions.
3. Ruling: A panel with 1 or 3 members is appointed to review the submissions and evaluate the complaint. The panel renders a decision within 14 days of the response submission deadline.
4. Implementation and Judicial Recourse: 10 day period is given to the losing party to seek judicial relief in the competent courts. The Registrar of ICANN will implement the panel’s decision on expiry of this period. Either party can seek to challenge the decision in a court of competent relief. The panel’s decision remains binding until overturned by a court order. 

Key Elements to a Successful Complaint of Cybersquatting

• Identical or Confusingly Similar Domain Name: The disputed domain name should be identical or confusingly similar to an established trademark or service mark to which the complainant has legal right of ownership;
• Lack of Legitimate Interest: The registrant of the domain name (i.e., the alleged squatter) should have no legitimate interest or right in the domain name; and 
• Bad Faith: The disputed domain name should be registered and being used in bad faith. 

Factors influencing the UNDRP Panel Review

• Disrupt Competitors: Intent of registrant was to disrupt the business of a competitor; 
• Sale/Transfer to Owner: Intent is to resell, transfer, rent or otherwise give right of use to the owner of the trademark; 
• Disrupt Reflection of Trademark: Intent is to disrupt the owner from reflecting their trademark in a corresponding domain name and whether a pattern of such conduct is observed by the domain name owner;
• Commercial Gain through Confusion: Intent is to attract internet users to the registrant’s website for commercial gain by capitalizing on the likelihood of confusion with the complainant’s trademark.

Remedies under Indian Law

As held by the Honorable Supreme Court of India, disputes on domain names are legally protected to the extent possible under the laws relating to passing off even if the operation of the Indian Trade Marks Act, 1999 is not extraterritorial (i.e., capable of application abroad). Thus, complainants of cybersquatting can pursue the standard reliefs available under the Trade Mark Act, 1999:

• Remedy for Infringement: Available only when the trademark is registered; 
• Remedy for Passing Off: Available even without registration of the trademark.

Notable Examples of Cybersquatting in India

With the evolution of the digital age, India has seen some notable judicial precedents that have shaped how cybersquatting is legally addressed:

Disputing Parties	Issue	Outcome of Dispute
Plaintiff: Yahoo!, Inc. v Defendant: Akash Arora4 Notable for: considered the first case of cybersquatting in India.	Defendant was using the domain name “YahooIndia.com” for internet-related services, with similar content and color scheme to “Yahoo.com”. As the registered owner of the “Yahoo.com” trademark, the plaintiffs sought restraining the defendant from using any deceptively similar trademark/ domain name.	The Court observed the degree of similarity of marks was vital for a passing off claim, and that in this case there is every possibility of the likelihood of confusion and deception being caused, leading a consumer to believe the two domains belong to the same owner, the plaintiffs.
Plaintiff: Aqua Minerals Limited v Defendants: Mr. Pramod Borse & Anr.5 Notable for: infringement of plaintiff’s registered trademark “Bisleri”.	Defendants registered the domain “www.bisleri.com” in their name and faced action for infringement of trademark claimed by the plaintiff, owner of registered trademark “Bisleri”.	The conduct of the defendants in quoting an exorbitant amount to sell the domain name to the trademark owner was held to be evidence of bad faith, and the defendants were held to have infringed the trademark. The plaintiff was allowed to seek transfer of the domain to their name.
Plaintiff: Sbicards.comvDefendants: Domain Active Property Ltd.6 Notable for: international dispute with an Australian entity.	The defendants had registered the domain name “sbicards.com” with the intent to sell for profit to the State Bank of India subsidiary at a later date.	Acknowledging the defendants’ business of purchase and sale of domain names through its website, WIPO ordered transfer of the domain to the plaintiffs.
Plaintiff: Kalyan Jewellers India Ltd.v Defendants: Antony Adams & Ors.7 Notable for: infringement of plaintiff’s registered trademarks “Kalyan”, “Kalyan Jewelers”.	Defendants registered the domain “www.kalyanjewlers.com” in their name and faced action for infringement of trademark claimed by the plaintiff, owner of registered trademark “Kalyan” and “Kalyan Jewelers”.	Initially advised by the WIPO to establish bad faith, the plaintiff filed a suit before Madras High Court, which held that there was an infringement of registered trademarks and restrained the defendant from using the same.
Plaintiff: Bundl Technologies Private LimitedvDefendants: Aanit Awattam alias Aanit Gupta & Ors.8 Notable for: infringement of Swiggy trademark	Plaintiff alleged infringement of registered trademark Swiggy, where the defendants were deceptively collecting money from consumers under the false pretext of bringing them on board the Swiggy Instamart platform.	Finding an infringement of trademark, GoDaddy.com LLC, a defendant, was additionally restrained from registering any domain with “Swiggy” in the name, but this was recalled by the Bombay High Court on the grounds that disallowing such registration would amount to a global temporary injunction, instead directing GoDaddy to inform the plaintiff where any application for such registration of domain name was received.

The JioHotstar Case

The registration of the domain name “JioHotstar” by the unnamed developer amounts to a textbook case of cybersquatting, for which relief can be pursued by RIL and/or Star Television Productions Limited (respectively, the registered owners of “Jio” and “Hotstar” trademarks), either under Trade Marks Act, 1999 or through ICANN/UDRP, relying on the following factors: 

• Confusing Similarity: The domain name is confusingly similar to the registered trademarks owned by RIL and Star respectively. Though the formal transfer of trademark has not happened, RIL can still rely solely on the Jio trademark to claim similarity of the mark⁹. A joint application can also be filed by RIL and Star, as this domain registration would amount to infringement of two separate registered marks; 
• Lack of Legitimate Interest: The message posted by the developer on the domain webpage makes it clear that there is no legitimate interest in the domain name to be held by the developer. There is no common reference in public to him by the brand name “JioHotstar” and his clear intent to sell the name for profit evidences a lack of legitimate interest; 
• Bad Faith Registration: The transparent intent of the developer to sell the name to profit from the merger and fund his education (i.e., personal gain) evidences a bad faith registration. This is further bolstered by his statement recalling the rebranding of music platform Saavn to ‘JioSaavn’ post the acquisition by RIL’s Jio, which motivated the application for and registration of the domain name¹⁰. Bad faith is also recognised within the UDRP itself, when the purpose of the domain name registration is to gain valuable consideration in excess of documented out of pocket costs related directly to the domain name¹¹.

Conclusion

Given the intent behind such domain registrations arousing JioHotstar controversy, cybersquatting typically targets established, reputed brands. In fact, the domain name “JioSaavn.com” was itself the subject of a domain name  dispute for cybersquatting in 2018¹². Though the merger had swiftly navigated regulatory challenges including conditional approval from the Competition Commission of India and clearances from the National Company Law Tribunal and the Ministry of Information and Broadcasting, the domain registration in an unrelated third party’s name serves to showcase the impact that issues such as cybersquatting can have on large scale mergers and acquisitions. The “noble” intent of the developer to use this registration to fund his education aside, the intent is still to leverage the registration for personal gain, thereby satisfying the conditions under law to establish bad faith registration and consequently, cybersquatting that amounts to an infringement of IPR. Interestingly, the domain registration has seemingly been transferred and the webpage now reflects the social service mission of two children in the UAE¹³. Given the now cross border nature of the dispute and the fact that Trade Marks Act, 1999 cannot be applied extraterritorially, the recourse available to RIL and/or Star to gain ownership of this domain would now be through the UDRP and prescribed dispute resolution mechanisms thereunder. However, in light of latest reports that the UAE siblings have offered to legally transfer the registration to RIL for free, it remains to be seen how this dispute will unfold.

NOTE: 

Recently, the domain “Jiostar.com” went live with a teaser message, “coming soon,” sparking speculation that it could be the official platform for Reliance Industries’ streaming services following the Reliance-Disney merger. While there is no official confirmation, many believe this new domain may replace or supplement “JioHotstar.com” in the wake of the cybersquatting issue.

FAQs on the JioHotstar Cybersquatting Case

1. What is cybersquatting?
Cybersquatting, also known as domain squatting, is the act of registering, selling, or using a domain name with the intent of profiting from the trademark of another person or business. Typically, cybersquatters aim to sell the domain to the rightful trademark owner or use it to redirect traffic for personal gain.

2. What does cybersquatting mean in the context of domain names?
In domain name cybersquatting, individuals register domains that closely resemble well-known brands, trademarks, or business names. This practice is intended to leverage the established brand’s reputation, either for financial gain or to redirect web traffic.

3. Are there examples of cybersquatting in India?
Yes, cybersquatting cases in India include notable legal battles such as Yahoo! v. Akash Arora, where the defendant registered the domain “YahooIndia.com,” and Bisleri v. Mr. Pramod Borse, involving the domain “Bisleri.com.” The recent JioHotstar domain row is another example, highlighting cybersquatting practices and legal implications.

4. What happened in the JioHotstar domain case?
An anonymous app developer registered “JioHotstar.com” shortly after news of the Reliance-Disney merger. The developer initially intended to sell the domain to Reliance Industries to fund his education, which led to claims of cybersquatting and trademark infringement.

5. Why is the JioHotstar domain considered a case of cybersquatting?
The JioHotstar domain is deemed cybersquatting because it combines two well-known trademarks, “Jio” and “Hotstar,” for potential personal gain, evidenced by the developer’s offer to sell the domain to Reliance. This action reflects typical cybersquatting behavior under both Indian law and international dispute resolution standards.

6. How does Indian law address cybersquatting?
Although India lacks specific cybersquatting laws, such cases can be pursued under the Trade Marks Act, 1999. The Act offers remedies for trademark infringement and passing off, both of which can apply in cybersquatting disputes.

7. What legal recourse is available for cybersquatting cases in India?
Victims of cybersquatting can file a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) through ICANN or under the .IN Domain Name Dispute Resolution Policy (INDRP) if the domain is registered with .in. In addition, they may pursue action under the Trade Marks Act, 1999, for trademark infringement or passing off.

8. Why is the JioHotstar domain case significant?
The JioHotstar domain row is a high-profile example of cybersquatting involving established brands. This case underscores the importance of protecting trademarks in India, particularly in the context of large mergers and acquisitions, as well as the challenges of cross-border cybersquatting disputes.

9. What are the steps to resolve a cybersquatting dispute under the UDRP?
To resolve a cybersquatting case, a complainant files a complaint with an organization like WIPO. The process includes notifying the domain owner, reviewing submissions, and having a panel render a decision. Remedies include transferring or canceling the domain but not monetary compensation.

10. How did the JioHotstar domain row end?
Initially, the domain was offered for sale by the developer, but later it was transferred to two UAE-based siblings. Given the now cross border nature of the dispute and the fact that Trade Marks Act, 1999 cannot be applied extraterritorially, the recourse available to RIL and/or Star to gain ownership of this domain would now be through the UDRP and prescribed dispute resolution mechanisms thereunder. However, in light of latest reports that the UAE siblings have offered to legally transfer the registration to RIL for free, it remains to be seen how this dispute will unfold.

References:

1. [1] https://economictimes.indiatimes.com/industry/media/entertainment/media/reliance-disney-media-giant-may-be-born-in-november/articleshow/114477261.cms?from=mdr
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2. [2] https://www.business-standard.com/companies/news/delhi-techie-snags-jiohotstar-domain-asks-reliance-to-fund-cambridge-dream-124102400446_1.html
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3. [3] Under Section 29 of the Trade Marks Act, 1999.
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4. [4] 1999 ALR 620
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5. [5] 2001 SCC OnLine Del 444
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6. [6] WIPO Case No. D2005 0271
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7. [7] C.S. No. 335 of 2020
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8. [8] IA (Lodging) No. 38837 of 2022 in IA (Lodging) no. 26556 of 2022 in Commercial IP Suit (Lodging) No. 26549 of 2022
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9. [9] This argument has been successfully put forth by Decathlon SAS in previous UDRP case, where the domain name “decathlon-nike.com” was ordered to be transferred to Decathlon trademark owner despite a lack of consent from Nike, as there was no provision in the policy or rules requiring a third party consent [Decathlon SAS v Nadia Michalski Case No. D2014-1996, available here: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2014-1996].
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10. [10] https://economictimes.indiatimes.com/news/new-updates/cant-stand-against-reliance-app-maker-who-demanded-rs-1-crore-for-jiohotstar-com-domain-name-seeks-legal-help/articleshow/114543044.cms?from=mdr
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11.  [11] Paragraph 4(b)(i) of the UDRP (accessible here: https://www.icann.org/resources/pages/policy-2024-02-21-en)
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12.  [12] WIPO Case No. D2018-1481 
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13. [13] https://www.hindustantimes.com/entertainment/web-series/techies-message-asking-reliance-1-crore-for-jiohotstar-domain-mysteriously-vanishes-uae-siblings-now-own-the-website-101729919899425.html
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