ISSUE XIII : Tackling domain name disputes – A simpler way

Introduction

Cyber squatting is the act of unlawfully registering domain names that are identical or deceptively similar to organization’s or individual’s trademark and/or domain name. The effect of cyber squatting can be grave as it could not only cause monetary loss but also tarnish the reputation by misleading the public and consumers. In the present digital era, the rate of cyber squatting activities is on rise and it is becoming increasingly important for the bonafide owner to safeguard their domain names. The present bulletin discusses the dispute resolution mechanism for domain name disputes and analyses the manner in which effective reliefs can be sought against cyber squatting.

1. Uniform domain name dispute resolution policy (“UDRP”)

The Internet Cooperation for Assigned Names and Numbers (“ICANN”) is a non- profit organization incorporated on September 30, 1998, to administer the internet protocol addresses and to maintain the domain name space. Domain names are the address of the website by which it is located in the internet and, therefore, it becomes pertinent to prevent registering similar or deceptively similar domain names to safeguard the bona fide registrant and public. The main objective of ICANN is to ensure stable and secure internet operations and, therefore, UDRP was framed to deal with the disputes relating to (i) registration, and

(ii) use of domain names. The UDRP applies only to domain name disputes relating to Generic Top Level Domain Names (“gTLDs”). There are 18 gTLDs including .com, .edu, .aero, .biz, .org, .jobs, .mobi, .museum, .net, .tel, .travel, .info, .coop.etc.1

Under UDRP, the domain name disputes are resolved in a quicker and cost effective manner by way of arbitration. UDRP does not specifically ouster the jurisdiction of civil courts and, the complainants still have the recourse under both UDRP and civil proceedings.2 The question arises here is how the domain name registrant is binding by arbitration proceedings under UDRP? The person or organization seeking to register a gTLDs has to necessarily enter into an agreement with ICANN approved registrar wherein he agrees to submit himself to resolve any domain name disputes in accordance with UDRP. If the complaint is filed with civil court it shall be dealt under the Trade Marks Act, 1999 and the proceedings shall be conducted in accordance with the Civil Procedure Code, 1908. However, it is more advantageous to initiate arbitration proceedings under UNDRP for domain name dispute since the proceedings will be normally completed within 60 days from the date of receipt of the complaint3 and the official fee is fixed. Whereas, the civil proceedings is not time bound and relatively consume longer time period to decide the issue,

and the court fee to be paid varies with the jurisdiction of the court and value of the suit and is relatively higher.

2. Procedure for dispute resolution under UDRP

If a person or organization intends to settle the domain name dispute relating to gTLDs through UDRP, a complaint can be submitted with the ICANN approved dispute resolution service provider (“Provider”)4. There are four such Providers namely; World Intellectual Property Organization (“WIPO”), National Arbitration Forum, Asian Domain Name Dispute Resolution Center and Czech Arbitration Court Arbitration Center for Internet Disputes.5 The complaint should necessarily mention the following details (i) name, address and contact details of the complainant; (ii) the domain name in dispute; (iii) name, address & other details of the present registrant; (iv) name of the registrar with whom the disputed domain name is registered; (v) grounds of complaint; (vi) details of the trademark registration, if any; and (vii) relief. Upon receiving the complaint and requisite fee,6 the Provider forwards a copy to the respondent who is alleged to have cyber squatted the domain name and directs him to submit a reply within 21 days. Once the reply is received, the Provider appoints the arbitrators as per the recommendation of the complainant and the present registrant. If either party fails to submit their recommendation, the arbitrator is appointed from the list of arbitrators maintained by ICANN.

The arbitration proceeding is normally conducted through tele/video/web conference unless an exceptional requirement demands for a physical hearing. As per Rule 6 of the UDRP Rules, the arbitrator has the obligation to issue the award within 14 days from its appointment. Thereafter, the Provider communicates the award to the parties and to the concerned registrar and also informs the date within which the award has to be implemented. If the complainant is successful, the domain name is either cancelled or suspended or transferred in favor of the complainant. Under UDRP arbitration proceedings, the arbitrator itself sends the copy of the award to the concerned registrar as soon the same is passed and, further the award is also implemented after expiry of 10 working days from the date of receipt of the same. In case the registrar fails to implement the award within the said time period, a complaint can be filed with the ICANN based on which the registration of the registrar can be cancelled and also steps will be taken to implement the award. Further, there could also be a possibility where the present registrant does not follow the directions of the Provider and chooses not to file any reply. In that scenario, the Provider shall decide and pass the award based upon the complaint submitted by the complainant/aggrieved party. As per the statistics provided by the WIPO, since 1990 a total number of 25,594 domain name dispute cases have been decided by it until the year 2013. The said statistics itself would stand as an exemplarily proof that disputes are disposed off in a speedy manner initiated under UDRP.

3. “.in” Dispute resolution policy (“INDRP”)

INDRP applies only to India’s top level domain names including “.in”, “.co.in”, “.org.in”, “.ing.in.”7 The said top level domain names are administered by “.IN” registry which is an autonomous body under the National Internet Exchange of India (“NIXI”). NIXI is a non-profit company registered under section 25 of Companies Act, 1956 and its main responsibilities are (i) maintaining the “.in” domain names; (ii) ensuring the operational stability, reliability, and security of .in domain names. Therefore, INDRP was framed to resolve the “.in” related domain name disputes only. Similar to UDRP, the dispute resolution can also be conducted by way of arbitration procedure under INDRP. At the time of registration of the “.in” domain names, the domain name registrant has to sign an agreement with the registrar thereby agreeing to resolve the disputes arising over the domain name through arbitration conducted under the Arbitration and Conciliation Act, 1996 (“Arbitration Act”). If the registered “.in” domain name conflicts with any legitimate rights or interest, a complaint can be filed with “.IN” registry by paying the applicable fee to resolve the dispute. Rule 15 of INDRP rules provides the fee applicable for arbitration proceedings.8 The complaint ought to contain all information similar to UDRP as mentioned above. The arbitrator considering the grounds and supporting evidence submitted by both complainant and respondent passed the award, which is forwarded to the “.IN” registry. Thereafter, the “.IN” registry forwards a copy of the award to the concerned parties and also communicates the date of implementing the award.

Unlike UDRP, the INDRP does not provide any specific provisions permitting the complainant to resolve the disputes by approaching civil courts. Therefore, it raises a legal question whether the civil courts shall have the jurisdiction to deal with “.in” domain name disputes. In the case of Citi Corp and Another vs. Todi Investors and Another,9 the Delhi High Court held that the INDRP does not specifically ouster the jurisdiction of civil courts and the remedies mentioned under INDRP (i.e. arbitration) is merely an alternate manner of resolving disputes. Such alternates cannot derogate the remedies available under common law. Therefore, the civil courts in India shall have the jurisdiction to deal with “.in” domain name disputes.

4. Factors guiding the arbitration decisions

Both under UDRP10 and INDRP, the arbitral tribunal shall pass an award in favor of the complainant only if anyone of the following elements is proved with sufficient evidence;

  • the domain name is identical or confusingly similar to the trade mark/trade name of the complainant;
  • the domain name registrant has no legitimate rights or interests in respect of the domain name; and
  • the domain name registered is being used in “bad faith” by the present registrant.

The expression “bad faith” includes using the impugned domain name(s) with a view to sell, rent or transfer it to the complainant at high profits or to deceive the public with respect to the trade mark, or to simply prevent the registered trade mark of the complainant to reflect in corresponding domain name.

Conclusion

In light of the above, the dispute resolution mechanism under UNDRP and INDRP is speedy and effective; however, the remedies are limited to cancellation and transfer of domain name to the aggrieved party. Both UDRP and INDRP does not ouster the jurisdiction of civil court and, therefore, if the aggrieved party intends to seek for compensation then the complaint can be filed with the appropriate civil court as the remedies available under common law are exhaustive. If the complainant prefers to file a complaint before civil court, the jurisdiction of the court is decided as per section 134 of the Trade Marks Act, 1999 according to which the suit is instituted either at the place of the defendant or at the place where cause of action arises. But, if it is a registered trade mark then the suit can also be instituted at the place where the trade mark proprietor resides or carries on business.

Authored by:

Krishnakanth Balasubramani

  1. http://www.icann.org/registrar-reports/accredited-list.html – viewed on March 2, 2013
  2. http://www.icann.org/en/help/dndr/udrp/policy -viewed on March 2, 2013
  3. http://www.wipo.int/amc/en/domains/guide/index.html – viewed on March 2, 2013
  4. The list of ICANN approved registrar can be accessed at http://www.internic.net/regist.htm -viewed on March 2, 2013. The list of providers can be accessed at http://www.icann.org/en/help/dndr/udrp/providers -viewed on March 2, 2013
  5. http://www.icann.org/en/help/dndr/udrp/providers – viewed on March 2, 2013
  6. The arbitration fee is decided based upon the number of domain names in issue. The information on applicable fees can be accessed at www.wipo.int/amc/en/domains/fees/index.html.
  7. http://www.inregistry.in/- viewed on December 2, 2012.
  8. http://www.registry.in/INDRP%20Rules%20of%20Procedure – viewed on March 2, 2013
  9. 2006(33) PTC 631 (Del)
  10. As per http://www.icann.org/en/help/dndr/udrp/policy – viewed on March 2, 2013

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