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 this age of the Internet, domain names not only provide users with 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 since these domain names serve the same purpose as that of Trademarks in terms of differentiating the goods and services of an organization.
Domain names can be categorized in different levels of domains such as:
- Unsponsored top-level domains such as .com, .org, .net, .biz, .info.
- Sponsored top level domains such as .coop, .museum, .arrow.
- Country code top level domains such as .in, .sg, .uk.
With the 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
1. 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.
2. 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.
3. 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
- Impugned domain name
- Domain name of the Petitioner
- Details/evidence of the Petitioner
1. What is ICANN?
ICANN (Internet Corporation for Assigned Names and Numbers) is an internationally recognized non-profit corporation that helps to keep the Internet secure, stable and interoperable 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:
- 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, trademark (whether registered or unregistered) or service mark of the claimant/complainant.
- 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.
- When the Respondent’s domain which is registered is not used in good faith.
2. Are 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 the 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 criteria:
- The number of domains included in the dispute.
- 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 the complainant as well as the 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 the UDRP Administrative Procedure?
A UDRP Administrative Procedure could be filed by any person or company in the world that has a concern. 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 adopts the UDRP Policy on a voluntary basis.
7. What types of disputes are covered by the UDRP Administrative Procedure?
Paragraph 4(a) of the UDRP Policy specifies the following kinds of disputes that are considered by the UDRP Administrative Procedure:
- If the registered domain name is identical or deceptively similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights.
- If the registered domain name has no rights or legitimate interests in respect of the domain name in question.
- If 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, according to Paragraph 4(k) of the UDRP Policy, provides that merely because the mandatory administrative proceeding is used, this shall not, in any way, prevent either the domain name registrant or the interested third party from submitting the dispute to a court of competent jurisdiction for independent resolution.
9. Can I use the UDRP Administrative Procedure for a dispute involving a Domain Name registered in a country code top-level domain?
Yes, one can use the UDRP Administrative procedure for a dispute involving a domain name registered in a country code top-level domain; however, in such a case it is essential to check that the domain name Registration Agreement covering the domain name in issue exclusively incorporates the UDRP Policy.
10. Under UDRP, how can I obtain relief?
In order to obtain relief under UDRP, a complainant has to demonstrate three elements. These elements are:
- Respondent’s domain name is undistinguishable or somewhat similar to a name, trademark, or service mark, and the complainant has some vested rights in it. The domain name of the registrant in dispute must be undistinguishable or somewhat similar to a name, trademark (Either registered or unregistered) or service mark of the claimant/complainant.
- There exists no right or legitimate interest of the Respondent in respect of the domain name: There exists no legitimate interest or rights of the registrant in the disputed domain.
- The domain name of the Respondent has been registered and used in bad faith.
11. Can a Domain Name be transferred while a complaint filed under the INDRP is current?
The registrant or the Registrar cannot transfer a disputed domain name pending resolution of a Complaint under INDRP.
12. Is there an appeal process under the INDRP?
Proceedings are conducted as per the Arbitration and Conciliation Act, 1996, under the INDRP. The following grounds are provided in case of an appeal:
- The party was incapacitated.
- The Arbitration Agreement is not justifiable 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.
- Proper notice of appointment of an arbitrator was not given to the party making the application, or of the existence arbitral proceedings, or was unable to present his case; or the arbitral award is in case of a dispute that was not regarded by or is not considered 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 lawsuit rather than a complaint under the INDRP?
A lawsuit can always be filed by a brand owner for infringement of its registered trademark. One of the advantages of doing so is that the courts have the power to grant interim injunctions restraining the Defendants from availing the mark either as a domain name or on a website. This remedy is particularly helpful where the Defendant is using the mark as a domain name as well as on products, or has threatened to do so, and quick relief is needed.
However, on the other side, arbitration proceedings under the INDRP are efficient and can lead to a prompt resolution, which includes transfer or cancellation of the domain name.