Domain Name Dispute Services - IPLF

Domain Name Dispute Services

With the rapid growth of the Internet in the past few decades, the concept of communication has changed entirely. We have entered an era where the Internet is the most common way of reaching out to people. In such an Internet age, domain names not only provide users a simpler way of remembering websites as compared to IP addresses, but can also play a huge role in generating business. Domain names have been given the status of a Trademark through various precedents, as these domain names serve the same purpose as that of Trademarks in terms of differentiating goods and services of an organization.

Domain names can be categorized in different levels of domains such as:

  1. Unsponsored top level domains such as .com, .org, .net, .biz, .info.
  2. Sponsored top level domains such as .coop, .museum, .arrow.
  3. Country code top level domains such as .in, .sg, .uk.

With an increasing importance of domain names, comes an increase in disputes associated with these domain names.

Our Services Include:

  • Complaint Drafting for Domain Dispute Proceedings at UDRP and INDRP.
  • Complaint Filing for Domain Dispute Proceedings at UDRP and INDRP.
  • Complete Litigation/ Arbitration Support for Domain Dispute Proceedings at UDRP and INDRP

What Is The Process?


Dispute Resolution through UDRP

UDRP relates to Uniform Domain Name Dispute Resolution Policy, which was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999.

Dispute Resolution through INDRP

For domain name dispute resolution in India “.IN Dispute Resolution Policy” (INDRP) was formulated by the “.IN” Registry, which is an autonomous body under the National Internet Exchange of India (NIXI). INDRP is available for any domain name dispute within “.IN ccTLD”. It has been formulated in line with internationally accepted guidelines, and with the relevant provisions of the Indian IT Act 2000.

Dispute Resolution by court proceedings

A party can even turn to a court of competent jurisdiction for domain name dispute resolution. There are generally two types of legal remedies in such disputes:

  • Cancellation of domain name
  • Transfer of domain name to Complainant

Timeline

Time taken for complaint drafting depends largely on complexities in subject matter covered. However, on an average, we conclude the process within 7 to 10 working days.

Details Required


Case Specific

FAQ

1 What is ICANN?

ICANN (Internet Corporation for Assigned Names and Numbers) is an internationally recognized non-profit corporation that helps keeping the Internet secure, stable and inter operable and promotes competition and develops policy on the Internet’s unique identifiers. ICANN is not responsible for controlling content on the Internet, stopping spam and it doesn’t deal with access to the Internet. Under UDRP, a complainant has to demonstrate three elements to obtain relief. These elements are:

  1. Respondent’s domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights: The domain name of the registrant in dispute must be identical or confusingly similar with a name, trade mark (whether registered or unregistered) or service mark of the claimant/complainant.
  2. Respondent has no right or legitimate interest in respect of the domain name: The registrant must have no legitimate rights or interests of its own in the disputed domain.
  3. Respondent’s domain name has been registered and is being used in bad faith.
2 Is the Registry and Registrar involved in Arbitration proceedings?

No, the Registry and the Registrars do not participate in the domain name dispute resolution proceedings in any capacity other than providing the information relevant to the registration and use of the domain name upon the request of the Arbitrator.

3 Can damages be awarded through UDRP proceedings?

No, monetary damages are not applied in UDRP domain name disputes.

4 Is remedy of Injunctive Relief available through UDRP proceedings?

No, injunctive relief is not available through UDRP domain name disputes.

5 How much is the cost involved in UDRP proceedings?

It depends on two criterions:

  1. The number of domains included in the dispute.
  2. The number of panelists (one or three): In the case of a single member panel, the fee, in full, is due from the complainant. Three members panel can be requested by complainant as well as respondent. If three members panel is requested by the complainant, the fee, in full, is due from the complainant. If three members panel is requested by the respondent, the fee is split equally between the complainant and the respondent.
6 Who can use UDRP Administrative Procedure?

Any person or company in the world can file a domain name complaint concerning a gTLD using the UDRP Administrative Procedure.

In case of a dispute involving a domain name registered in a ccTLD, the UDRP Administrative Procedure can also be used, provided that the concerned ccTLD registration authority adopted the UDRP Policy on a voluntary basis.

7 What types of disputes are covered by the UDRP Administrative Procedure?

According to Paragraph 4(a) oof the UDRP Policy, specifies the following kinds of disputes that is considered by the UDRP Administrative Procedure:

  1. The domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights.
  2. The domain name registrant has no rights or legitimate interests in respect of the domain name in question.
  3. The domain name has been registered and is being used in bad faith.
8 If I use the UDRP Administrative Procedure, can I still go to court?

Yes, Paragraph 4(k) of the UDRP Policy provides that the mandatory administrative proceeding requirement shall not prevent either the domain name registrant (Respondent) or the third party (Complainant) from submitting the dispute to a court of competent jurisdiction for independent resolution. It is possible for a party to start a lawsuit in court before an administrative proceeding is commenced. A party can also commence a lawsuit after the administrative proceeding is concluded if it is not satisfied with the outcome.

Paragraph 18 of the UDRP Rules sets out the action that an Administrative Panel may take if court proceedings are initiated prior to or during an administrative proceeding.

9 Can I use the UDRP Administrative Procedure for a dispute involving a Domain Name registered in a country code top level domain?

Yes, provided that the domain name Registration Agreement covering the domain name in issue specifically incorporates the UDRP Policy. This is the case for certain ccTLDs that have adopted the UDRP Policy on a voluntary basis.

10 Under UDRP, how can I obtain relief?

Under UDRP, a complainant has to demonstrate three elements in order to obtain relief. These elements are:

  1. Respondent’s domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights: The domain name of the registrant in dispute must be identical or confusingly similar with a name, trade mark (whether registered or unregistered) or service mark of the claimant/complainant.
  2. Respondent has no right or legitimate interest in respect of the domain name: The registrant must have no legitimate rights or interests of its own in the disputed domain.
  3. Respondent’s domain name has been registered and is being used in bad faith.
11 Can a Domain Name be transferred while a complaint filed under the INDRP is current?

The INDRP prohibits either the Registrant or the Registrar transferring a disputed domain name pending resolution of a Complaint under the INDRP.

12 Is there an appeal process under the INDRP?

Proceedings under the INDRP are conducted in accordance with the Arbitration and Conciliation Act, 1996, which also provides for appeal on the following grounds:

  1. A party was under some incapacity.
  2. The arbitration agreement is not valid under the law to which it is subject or, failing any indication as to the governing law, under the law for the time being in force.
  3. The party making the application was not given proper notice of the appointment of an arbitrator, or of the existence of arbitral proceedings, or was otherwise unable to present his case; or the arbitral award is in respect of a dispute that was not contemplated by, or does not fall within the terms of, the submission to arbitration, or it contains decisions on matters beyond the scope of the submission to arbitration.
13 Can I file a Suit for Trademark Infringement instead of a complaint under the INDRP? Are there any additional benefits in filing a law suit rather than a complaint under the INDRP?

A brand owner can always file a law suit for infringement of its registered trade mark. One benefit of doing so, is that the courts have the power to grant interim injunctions restraining the Defendant from using the mark either as a domain name or on a website. This remedy is particularly useful where the Defendant is using the mark both as a domain name and on products, or has threatened to do so, and immediate relief is needed.

On the other hand, arbitration proceedings under the INDRP are efficient and can lead to a speedy resolution, which includes transfer or cancellation of the domain name.