This article is written by Annu Gond, Pt.Som Chandra Dwivedi Vidhi Mahavidyalaya, Prayagraj(U.P.), B.A.LL.B, 5th year during her internship at Ledroit India
List of topics covered in this article
- A brief overview
•What is INDRP?
•What is WIPO?
- Introduction
- Role of INDRP/WIPO Arbitration
- Different ways in which domain is infringed
- Domain name disputes
- Case laws
- Conclusion
Brief Overview
A domain name dispute arises when two or more parties claim the right to register the same domain name.These disputes are often a form of cybercrime known as cybersquatting, where a person registers a domain name in bad faith to profit from another’s trademark, such as by selling the domain to the trademark owner for an inflated price.
Disputes can also involve other issues, such as creating a likelihood of confusion with a complainant’s brand.
A Domain Name Dispute may arise when there is infringing, conflicting and/or unauthorised use of a domain name on part of an individual. In order to successfully establish a Domain Name Dispute, the Complainant is required to satisfy the criteria laid down in the various dispute resolution policies.
What is INDRP?
(.IN Domain Name Dispute Resolution Policy).
There has been a steady and rapid increase in the number of domain name disputes in the country. To regulate these disputes, the .IN registry formulated a policy named the INDRP in 2006.
What is WIPO?
(World Intellectual Property Organization).
WIPO, the World Intellectual Property Organization, is a specialized agency of the United Nations that acts as a global forum for intellectual property (IP) services, policy, information, and cooperation. Its main goal is to promote and protect intellectual property throughout the world to encourage creative activity and economic development
Introduction
A Domain Name is a word or a combination of words which help identify a website’s association with another individual. Domain names are used to locate a website and are popularly known as Uniform Resource Locator (URL). The Internet Domain Name is very important for every business that wants to establish their name globally. Domain Names consist of two parts, top-level and second-level domain names. These are easily identifiable, for e.g. www.google.com, here ‘com’ is the top-level domain and ‘google’ is the second-level domain. Any individual can purchase a Domain Name from a certified Registrar for a limited amount of time which can be renewed by the registrant upon its expiry.
Domain Names can be registered and protected as trademarks as long as it meets the requirements of a trademark under the Trade Marks Act 1999. Domain Names that are registered trademarks are universally protected primarily by the Internet Corporation for Assigned Names and Numbers (ICANN). Resultantly, in case of any abusive registrations or infringement of existing rights, an individual has the option to file a Domain Name Dispute complaint under the Uniform Domain Name Dispute Resolution Policy (at the international level) or under the .IN Domain Name Dispute Resolution Policy (at the national level).
Domain Name Disputes can be resolved using various mechanisms. Proceedings before the Uniform Domain Name Dispute Resolution Policy (UDRP) or .IN Domain Name Dispute Resolution Policy (INDRP) are governed by arbitral proceedings. The former provides for the Complainant to choose the arbitrator from a list of providers, the arbitration proceedings are conducted under the provisions of the India’s Arbitration and Conciliation Act, 1996. Alternatively, the Complainant can also resort to civil remedies i.e. by filing an infringement suit before a commercial court.
The domain name dispute is resolved under the Trade Marks Act, 1999 and proceedings are conducted in accordance with the Civil Procedure Code, 1908. Moreover, the Complainant can opt for out of court settlement as well, avoiding litigation costs and prolonged pendency of the dispute. Evidently, the Complainants are free to choose their dispute resolution mechanism.
The IN Domain Name Dispute Resolution Policy (INDRP) is India’s specific framework for resolving disputes concerning domain names ending in .in or .bharat. While the INDRP was drafted in line with guidelines from the World Intellectual Property Organization (WIPO), it operates as a domestic mandatory arbitration system overseen by the National Internet Exchange of India (NIXI), not WIPO itself.
Role of INDRP Arbitration
The INDRP’s main role is to offer a faster, less expensive, and expert-driven alternative to traditional court litigation for trademark owners whose rights are infringed by abusive domain name registrations (cybersquatting) in the Indian country code top-level domain (ccTLD) space.
Key aspects:–
•Mandatory Proceeding: By registering a .in domain name, the registrant automatically agrees to submit to mandatory arbitration if a complaint is filed.
•Legal Framework: The arbitration is conducted by an arbitrator appointed by NIXI from its empanelled list, in accordance with the Indian Arbitration and Conciliation Act, 1996.
•Grounds for Complaint: A complainant (usually a trademark owner) must prove three things:
The domain name is identical or confusingly similar to their name, trademark, or service mark rights.
The registrant has no rights or legitimate interests in the domain name.
The domain name was registered or is being used in bad faith (e.g., primarily to sell it to the trademark owner for a profit, or to intentionally attract users by creating confusion.)
Role of WIPO’s arbitration
WIPO’s connection to the INDRP is primarily as a model and an international authority on intellectual property (IP) dispute resolution, rather than an administering body for .in cases:
•Policy Guidelines: The INDRP was formulated using WIPO’s recommendations and the model of the internationally recognized Uniform Domain Name Dispute Resolution Policy (UDRP).
•UDRP Administrator: The WIPO Arbitration and Mediation Center is one of the leading ICANN-approved providers for resolving disputes concerning generic top-level domains (gTLDs like .com, .net, .org), and some other country codes that have adopted the UDRP.
•Expertise and Training: WIPO provides expertise, resources, and training in IP-related alternative dispute resolution (ADR) and maintains a large database of qualified arbitrators and mediators globally.
Different ways in which domain is infringed
There are three different ways in which a Domain Name is infringed:
- Cyber-Squatting: Cyber-squatting is carried out through Domain Name Parking, or when an individual registers a Domain Name with no intention of carrying out any legitimate commercial or non-commercial activities. It is commonly done by Registrants in order to sell the domain name further to its authorised user at exorbitant rates.
- Linking & Framing: Linking & Framing is when a user clicks on a text hyperlink that takes them to a different website. This website is similar to a well-known company, and is created solely to deceive the consumers into believing that their domain name bares association with successful business entities that have a strong online presence.
- Meta Tagging: Meta Tagging is when words and tags are used to manipulate search engines into displaying the infringed website. They work similar to Hashtags that are used on social media websites to increase visibility.
Domain Name Disputes
Some very much advertised instances of these sorts of domain names debates are:-
- Candyland.com:- Hasbro and an adult entertainment provider wanted the candyland.com domain name and Hasbro was very late to register for the domain name but after that,they filed a case, and then Hasbro got the domain name of candylan.com.
- mcdonalds.com :- This domain name was taken by a writer from a wired magazine who was composing a story on the estimation of domain names. In this article, the writer mentioned that individuals get in touch with him at ronald@mcdonalds.com with recommendations of how to manage the domain. In return for restoring the domain name to McDonald’s, the creator persuaded the organization to make a beneficent commitment.
- Microsoft.com:- The organization zero. Micro software got an enlistment for microsoft.com with a zero instead of the second ‘o’, however,the enrollment was suspended after Microsoft documented a dissent. At the point when the domain name went relinquished for non-installment of expenses, the domain name was gotten by another person: vision enterprises of Roanoke,TX
- mtv.com:- The MTV domain name was initially taken by MTV video racer Adam Curry. Despite the fact that MTV initially demonstrated little enthusiasm for the domain name of the internet, when Adam Curry left MTV the organization needed to control the domain name.After a government court activity was brought,the question privately addressed any outstanding issues.
- peta.org:- an association entitled “individual eating tasty animals” acquired the peta.org domain name, a lot to the sickening of the better known people for the ethical treatment of animals. This domain name was suspended, yet as of May 2000, the domain name was as yet enlisted for the sake of people eating tasty animals.
- roadrunner.com:- when network solutions Inc.took steps to suspend the roadrunner.com domain name after a dissent by Warner brothers, the New Mexico internet got to the supplier who was utilizing the domain name recorded suit to forestall the suspension. Despite the fact that the entrance supplier had the option to forestall the suspension, a joint endeavor organisation including Time Warner, MediaOne, Microsoft,Compaq and Advan6/Newhouse, in the end , got the domain name.
- taiwan.com:- the territory China news association Xinhua was permitted to enroll the domain name taiwan.com, much to the appeal of the legislature of Taiwan.
Case laws:-
Tata motors limited vs. Amit Badyani, INDRP/1020
Facts:- the respondent registered the domain name HARRIER.IN similar to the complainant’s harrier mark.
Issue:- the complainant (tata motors) argued that the respondent was using the mark to utilize the goodwill of the complainant and capitalize on the confusion to customers due to the similarity of his domain name with the complainant’s mark .
Provisions:- As per the grounds mentioned in paragraph 4 of the INDRP, the complainant has to establish that the respondent has been using an identical domain name in bad faith with no legitimate interest in the name. According to paragraph 6 of the INDRP, if the respondent has been using the domain name for a Bonafide offering of goods and services under the domain name and is known by internet users by that name(i.e; HARRIER.IN) then it can be said to have a legitimate interest and rights in the disputed domain name.
Held:- It was held by the arbitrator that the respondent was engaged in the Bonafide distribution of goods and services related to computer software under the name HARRIER before receiving the dispute notice and had registered the domain name HARRIER.IN much prior to the complainant. The complaint was dismissed.
Analysis:- proving identical or confusing similarity of a domain name with your mark is insufficient to take down the disputed domain name.Two other grounds mentioned in the paragraph of the INDRP Policy also need to be proved,i.e; bad faith and no legitimate interest in the name. If an individual is carrying on his genuine business and providing goods and services through the disputed domain name, it cannot be said that he is operating under bad faith or without any legitimate interest in the domain name.
Maruti suzuki ltd vs. Nitin bhamri INDRP/136,
Facts:- the respondent registered a domain name ‘marutisuzukieeco.co.in’ similar to the trademark of the complainant, MARUTI SUZUKI.
Issue;- the complainant (Maruti Suzuki) argued that, due to the deceptive similarity of the disputed domain name with the complainant’s Maruti Suzuki mark, it would cause confusion in the minds of innocent internet users and will divert customers from the complainant’s website.
Provisions:- the complainant satisfied all the 3 grounds for the filing of a complaint (i.e., identical/confusing similarity, bad faith no legitimate rights or interest) as stated in paragraph 4 of the INDRP Policy and provided evidence of its more than 100 registered trademarks all.over the World.
Held:- it was observed by the arbitrator that slight character changes made by the respondent to the complainant’s mark ‘Maruti Suzuki’ are insufficient to avoid confusing similarity.
The arbitrator held that by registering the disputed domain name, the respondent has intentionally attempted to attract internet users to the respondent’s website or other online locations by creating the likelihood of confusion with the complainant’s trade name or trademark as to the source, sponsorship, affiliation,or endorsement of the respondent’s website or online location.
Analysis:- it is a clear-cut case of cybersquatting where the respondent surrendered the domain name following an INDRP complaint by the complainant. The disputed domain name incorporates the complainant’s mark in its entirety, which lands us to only one possible conclusion: the respondent wanted to capitalize on the goodwill of the complainant’s Maruti Suzuki mark. Here, the fact that the respondent was unaware of the complainant’s famous and well-known Maruti Suzuki mark is inconceivable.
Conclusion
The conclusion is that both INDRP (for .in domains) and WIPO arbitration (for generic top-level domains under the UDRP) are crucial, cost-effective, and time-efficient alternatives to traditional court litigation for resolving domain name disputes.
Both INDRP and WIPO arbitration serve as essential tools for intellectual property protection in the digital realm by providing specialized and efficient dispute resolution.
They are critical because traditional court litigation is often impractical for domain name disputes due to the global nature of the internet and the low cost of domain registration compared to legal fees.
The success of these policies is demonstrated by the fact that they have proven to be effective in resolving numerous disputes, often with decisions resulting in the transfer of the domain name to the legitimate trademark owner.
