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Trade mark Act Definitions

(e) Certification trade mark means a mark capable of distinguishing the goods or
services in connection with which it is used in the course of trade which are certified by the
proprietor of the mark in respect of origin, material, mode of manufacture of goods or
performance of services, quality, accuracy or other characteristics from goods or services not
so certified and registrable as such under Chapter IX in respect of those goods or services in
the name, as proprietor of the certification trade mark, of that person;
(g) Collective mark means a trade mark distinguishing the goods or services of
members of an association of persons (not being a partnership within the meaning of the
Indian Partnership Act, 1932) which is the proprietor of the mark from those of others;
(9 of 1932)
(h) deceptively similarA mark shall be deemed to be deceptively similar to another
mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;
(i) false trade description means
(I) a trade description which is untrue or misleading in a material respect as regards the
goods or services to which it is applied; or
(II) any alteration of a trade description as regards the goods or services to which it is
applied, whether by way of addition, effacement or otherwise, where that alteration makes the
description untrue or misleading in a material respect; or
(III) any trade description which denotes or implies that there are contained, as regards
the goods to which it is applied, more yards or metres than there are contained therein
standard yards or standard metres; or
(IV) any marks or arrangement or combination thereof when applied
(a) to goods in such a manner as to be likely to lead persons to believe that the goods
are the manufacture or merchandise of some person other than the person whose merchandise
or manufacture they really are;
(b) in relation to services in such a manner as to be likely to lead persons to believe that the
services are provided or rendered by some person other than the person, whose services they
really are; or
(V) any false name or initials of a person applied to goods or services in such manner
as if such name or initials were a trade description in any case where the name or initials
(a) is or are not a trade mark or part of a trade mark; and
(b) is or are identical with or deceptively similar to the name or initials of a person
carrying on business in connection with goods or services of the same description or both and
who has not authorised the use of such name or initials; and
(c) is or are either the name or initials of a fictitious person or some person not bona
fide carrying on business in connection with such goods or services,
and the fact that a trade description is a trade mark or part of a trade mark shall not prevent
such trade description being a false trade description within the meaning of this Act;
(z) service means service of any description which is made available to potential
users and includes the provision of services in connection with business of any industrial or
commercial matters such as banking, communication, education, financing, insurance, chit
funds, real estate, transport, storage, material treatment, processing, supply of electrical or
other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of

news or information and advertising;


(za) trade description means any description, statement or other indication, direct or
indirect,
(i) as to the number, quantity, measure, guage or weight of any goods; or
(ii) as to the standard of quality of any goods or services according to a classification
commonly used or recognised in the trade; or
(iii) as to fitness for the purpose, strength, performance or behaviour of any goods,
being drug as defined in the Drugs and Cosmetics Act, 1940, or food as defined in the
Prevention of Food Adulteration Act, 1954; or
(iv) as to the place or country in which or the time at which any goods or services were
made, produced or provided, as the case may be; or
(v) as to the name and address or other indication of the identity of the manufacturer or
of the person providing the services or of the person for whom the goods are manufactured or
services are provided; or
(vi) as to the mode of manufacture or producing any goods or providing services; or
(vii) as to the material of which any goods are composed; or
(viii) as to any goods being the subject of an existing patent, privilege or copyright, and
includes
(a) any description as to the use of any mark which according to the custom of the trade
is commonly taken to be an indication of any of the above matters;
(b) the description as to any imported goods contained in any bill of entry or shipping
bill;
(c) any other description which is likely to be misunderstood or mistaken for all or any
of the said matters;
(zb) trade mark means a mark capable of being represented graphically and which is
capable of distinguishing the goods or services of one person from those of others and may
include shape of goods, their packaging and combination of colours; and
(i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark
used in relation to goods or services for the purpose of indicating or so as to indicate a
connection in the course of trade between the goods or services, as the case may be, and some
person having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in
relation to goods or services for the purpose of indicating or so to indicate a connection in the
course of trade between the goods or services, as the case may be, and some person having the
right, either as proprietor or by way of permitted user, to use the mark whether with or
without any indication of the identity of that person, and includes a certification trade mark or
collective mark;
(zg) well-known trade mark, in relation to any goods or services, means a mark
which has become so to the substantial segment of the public which uses such goods or
receives such services that the use of such mark in relation to other goods or services would
be likely to be taken as indicating a connection in the course of trade or rendering of services
between those goods or services and a person using the mark in relation to the first-mentioned
goods or services.
Chapter II

The Register and Conditions for Registration


Appointment of Registrar and Other Officers
3.(1) The Central Government may, by notification in the Official Gazette, appoint a
person to be known as the Controller General of Patents, Designs and Trade Marks, who shall
be the Registrar of Trade Marks for the purposes of this Act.
(2) The Central Government may appoint such other officers with such designations as
it thinks fit for the purpose of discharging, under the superintendence and direction of the
Registrar, such functions of the Registrar under this Act as he may from time to time
authorise them to discharge.
Power of Registrar to Withdraw or Transfer Cases, etc.
4. Without prejudice to the generality of the provisions of sub-section (2) of section 3,
the Registrar may, by order in writing and for reasons to be recorded therein, withdraw any
matter pending before an officer appointed under the said sub-section (2) and deal with such
matter himself either de novo or from the stage it was so withdrawn or transfer the same to
another officer so appointed who may, subject to special directions in the order of transfer,
proceed with the matter either de novo or from the stage it was so transferred.
Trade Marks Registry and Offices Thereof
5.(1) For the purposes of this Act, there shall be a trade marks registry and the Trade
Marks Registry established under the Trade and Merchandise Marks Act, 1958 shall be the
Trade Marks Registry under this Act.
(43 of 1958)
(2) The head office of the Trade Marks Registry shall be at such place as the Central
Government may specify, and for the purpose of facilitating the registration of trade marks,
there may be established at such places as the Central Government may think fit branch
offices of the Trade Marks Registry.
(3) The Central Government may, by notification in the Official Gazette, define the
territorial limits within which an office of the Trade Marks Registry may exercise its
functions.
(4) There shall be a seal of the Trade Marks Registry.
The Register of Trade Marks
6.(1) For the purposes of this Act, a record called the Register of Trade Marks shall
be kept at the Head Office of the Trade Marks Registry, wherein shall be entered all registered
trade marks with the names, addresses and description of the proprietors, notifications of
assignment and transmissions, the names, addresses and descriptions of registered users,
conditions, limitations and such other matter relating to registered trade marks as may be
prescribed.
(2) Notwithstanding anything contained in sub-section (1), it shall be lawful for the
Registrar to keep the records wholly or partly in computer floppies diskettes or in any other
electronic form subject to such safeguards as may be prescribed.
(3) Where such register is maintained wholly or partly on computer under
sub-section (2) any reference in this Act to entry in the Register shall be construed as the
reference to any entry as maintained on computer or in any other electronic form.

(4) No notice of any trust, express or implied or constructive, shall be entered in the

register and no such notice shall be receivable by the Registrar.


(5) The register shall be kept under the control and management of the Registrar.
(6) There shall be kept at each branch office of the Trade Marks Registry a copy of the
register and such of the other documents mentioned in section 148 as the Central Government
may, by notification in the Official Gazette, direct.
(7) The Register of Trade Marks, both Part A and Part B, existing at the
commencement of this Act, shall be incorporated in and form part of the register under this
Act.
Classification of Goods and Services
7.(1) The Registrar shall classify goods and services, as far as may be, in accordance
with the International classification of goods and services for the purposes of registration of
trade marks.
(2) Any question arising as to the class within which any goods or services falls shall
be determined by the Registrar whose decision shall be final.
Publication of Alphabetical Index
8.(1) The Registrar may publish in the prescribed manner an alphabetical index of
classification of goods and services referred to in section 7.
(2) Where any goods or services are not specified in the alphabetical index of goods
and services published under sub-section (1), the classification of goods or services shall be
determined by the Registrar in accordance with sub-section (2) of section 7.
Absolute Grounds for Refusal of Registration
9.(1) The trade marks
(a) which are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to
designate the kind, quality, quantity, intended purpose, values, geographical origin or the time
of production of the goods or rendering of the service or other characteristics of the goods or
service;
(c) which consist exclusively of marks or indications which have become customary in
the current language or in the bona fide and established practices of the trade,
shall not be registered:
Provided that a trade mark shall not be refused registration if before the date of
application for registration it has acquired a distinctive character as a result of the use made of
it or is a well known trade mark.
(2) A mark shall not be registered as a trade mark if
(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of
any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use)
Act, 1950.
(12 of 1950)
(3) A mark shall not be registered as a trade mark if it consists exclusively of
(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.

ExplanationFor the purposes of this section, the nature of goods or services in


relation to which the trade mark is used or proposed to be used shall not be a ground for
refusal of registration.

Chapter III
Procedure for and Duration of Registration
Application for Registration
18.(1) Any person claiming to be the proprietor of a trade mark used or proposed to
be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the
prescribed manner for the registration of his trade mark.
(2) A single application may be made for registration of a trade mark for different
classes of goods and services and fee payable therefor shall be in respect of each such class of
goods or services.
(3) Every application under sub-section (1) shall be filed in the office of the Trade
Marks Registry within whose territorial limits the principal place of business in India of the
applicant or in the case of joint applicants the principal place of business in India of the
applicant whose name is first mentioned in the application as having a place of business in
India, is situated:
Provided that where the applicant or any of the joint applicants does not carry on
business in India, the application shall be filed in the Office of the Trade Marks Registry
within whose territorial limits the place mentioned in the address for service in India as
disclosed in the application, is situated.
(4) Subject to the provisions of this Act, the Registrar may refuse the application or
may accept it absolutely or subject to such amendments, modifications, conditions or
limitations, if any, as he may think fit.
(5) In the case of a refusal or conditional acceptance of an application, the Registrar
shall record in writing the grounds for such refusal or conditional acceptance and the
materials used by him in arriving at his decision.
Withdrawal of Acceptance
19. Where, after the acceptance of an application for registration of a trade mark but
before its registration, the Registrar is satisfied
(a) that the application has been accepted in error; or
(b) that in the circumstances of the case the trade mark should not be registered or
should be registered subject to conditions or limitations or to conditions additional to or
different from the conditions or limitations subject to which the application has been
accepted,
the Registrar may, after hearing the applicant, if he so desires, withdraw the acceptance and
proceed as if the application had not been accepted.
Advertisement of Application
20.(1) When an application for registration of a trade mark has been accepted,
whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may
be after acceptance, cause the application as accepted together with the conditions or
limitations, if any, subject to which it has been accepted, to be advertised in the prescribed
manner.

Provided that the Registrar may cause the application to be advertised before acceptance
if it relates to a trade mark to which sub-section (1) of section 9 and sub-sections (1) and (2)
of section 11 apply, or in any other case where it appears to him that it is expedient by reason
of any exceptional circumstances so to do.
(2) Where
(a) an application has been advertised before acceptance under sub-section (1); or
(b) after advertisement of an application,
(i) an error in the application has been corrected; or
(ii) the application has been permitted to be amended under section 22,
the Registrar may in his discretion cause the application to be advertised again or in any case
falling under clause (b) may, instead of causing the application to be advertised again, notify
in the prescribed manner the correction or amendment made in the application.
Opposition to Registration
21.(1) Any person may, within three months from the date of the advertisement or
re-advertisement of an application for registration or within such further period, not exceeding
one month in the aggregate, as the Registrar, on application made to him in the prescribed
manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed
manner to the Registrar, of opposition to the registration.
(2) The Registrar shall serve a copy of the notice on the applicant for registration and,
within two months from the receipt by the applicant of such copy of the notice of opposition,
the applicant shall send to the Registrar in the prescribed manner a counter statement of the
grounds on which he relies for his application, and if he does not do so he shall be deemed to
have abandoned his application.
(3) If the applicant sends such counter statement, the Registrar shall serve a copy
thereof on the person giving notice of opposition.
(4) Any evidence upon which the opponent and the applicant may rely shall be
submitted in the prescribed manner and within the prescribed time to the Registrar, and the
Registrar shall give an opportunity to them to be heard, if they so desire.
(5) The Registrar shall, after hearing the parties, if so required, and considering the
evidence, decide whether and subject to what conditions or limitations, if any, the registration
is to be permitted, and may take into account a ground of objection whether relied upon by the
opponent or not.
(6) Where a person giving notice of opposition or an applicant sending a
counter-statement after receipt of a copy of such notice neither resides nor carries on business
in India, the Registrar may require him to give security for the costs of proceedings before
him, and in default of such security being duly given, may treat the opposition or application,
as the case may be, as abandoned.
(7) The Registrar may, on request, permit correction of any error in, or any amendment
of, a notice of opposition or a counter-statement on such terms as he thinks just.
Correction and Amendment
22. The Registrar may, on such terms as he thinks just, at any time, whether before or
after acceptance of an application for registration under section 18, permit the correction of
any error in or in connection with the application or permit an amendment of the application:
Provided that if an amendment is made to a single application referred to in
sub-section (2) of section 18 involving division of such application into two or more

applications, the date of making of the initial application shall be deemed to be the date of
making of the divided application so divided.
Registration
23.(1) Subject to the provisions of section 19, when an application for registration of
a trade mark has been accepted and either
(a) the application has not been opposed and the time for notice of opposition has
expired; or
(b) the application has been opposed and the opposition has been decided in favour of
the applicant,
the Registrar shall, unless the Central Government otherwise directs, register the said trade
mark and the trade mark when registered shall be registered as of the date of the making of
the said application and that date shall, subject to the provisions of section 154, be deemed to
be the date of registration.
(2) On the registration of a trade mark, the Registrar shall issue to the applicant a
certificate in the prescribed form of the registration thereof, sealed with the seal of the Trade
Marks Registry.
(3) Where registration of a trade mark is not completed within twelve months from the
date of the application by reason of default on the part of the applicant, the Registrar may,
after giving notice to the applicant in the prescribed manner, treat the application as
abandoned unless it is completed within the time specified in that behalf in the notice.
(4) The Registrar may amend the register or a certificate of registration for the purpose
of correcting a clerical error or an obvious mistake.
Jointly Owned Trade Marks
24.(1) Save as provided in sub-section (2), nothing in this Act shall authorise the
registration of two or more persons who use a trade mark independently, or propose so to use
it, as joint proprietors thereof.
(2) Where the relations between two or more persons interested in a trade mark are
such that no one of them is entitled as between himself and the other or others of them to use
it except
(a) on behalf of both or all of them; or
(b) in relation to an article or service with which both or all of them are connected in
the course of trade,
those persons may be registered as joint proprietors of the trade mark, and this Act shall have
effect in relation to any rights to the use of the trade mark vested in those persons as if those
rights had been vested in a single person.
Duration, Renewal, Removal and Restoration of Registration
25.(1) The registration of a trade mark, after the commencement of this Act, shall be
for a period of ten years, but may be renewed from time to time in accordance with the
provisions of this section.
(2) The Registrar shall, on application made by the registered proprietor of a trade mark
in the prescribed manner and within the prescribed period and subject to payment of the
prescribed fee, renew the registration of the trade mark for a period of ten years from the date
of expiration of the original registration or of the last renewal of registration, as the case may
be (which date is in this section referred to as the expiration of the last registration).
(3) At the prescribed time before the expiration of the last registration of a trade mark
the Registrar shall send notice in the prescribed manner to the registered proprietor of the date

of expiration and the conditions as to payment of fees and otherwise upon which a renewal of
registration may be obtained, and, if at the expiration of the time prescribed in that behalf
those conditions have not been duly complied with the Registrar may remove the trade mark
from the register:
Provided that the Registrar shall not remove the trade mark from the register if an
application is made in the prescribed form and the prescribed fee and surcharge is paid within
six months from the expiration of the last registration of the trade mark and shall renew the
registration of the trade mark for a period of ten years under sub-section (2).
(4) Where a trade mark has been removed from the register for non-payment of the
prescribed fee, the Registrar shall, after six months and within one year from the expiration of
the last registration of the trade mark, on receipt of an application in the prescribed form and
on payment of the prescribed fee, if satisfied that it is just so to do, restore the trade mark to
the register and renew the registration of the trade mark either generally or subject to such
conditions or limitations as he thinks fit to impose, for a period of ten years from the
expiration of the last registration.
Effect of Removal from Register for Failure to Pay Fee for Renewal
26. Where a trade mark has been removed from the register for failure to pay the fee for
renewal, it shall nevertheless, for the purpose of any application for the registration of another
trade mark during one year, next after the date of the removal, be deemed to be a trade mark
already on the register, unless the tribunal is satisfied either
(a) that there has been no bona fide trade use of the trade mark which has been
removed during the two years immediately preceding its removal; or
(b) that no deception or confusion would be likely to arise from the use of the trade
mark which is the subject of the application for registration by reason of any previous use of
the trade mark which has been removed.
Chapter VI
Use of Trade Marks and Registered Users
Proposed use of Trade Mark by Company to Be Formed etc.
46.(1) No application for the registration of a trade mark in respect of any goods or
services shall be refused nor shall permission for such registration be withheld, on the ground
only that it appears that the applicant does not use or propose to use the trade mark if the
Registrar is satisfied that
(a) a company is about to be formed and registered under the Companies Act, 1956 and
that the applicant intends to assign the trade mark to that company with a view to the use
thereof in relation to those goods or services by the company, or
(1 of 1956)
(b) the proprietor intends it to be used by a person, as a registered user after the
registration of the trade mark.
(2) The provisions of section 47 shall have effect, in relation to a trade mark registered
under the powers conferred by this sub-section, as if for the reference, in clause (a) of
sub-section (1) of that section, to the intention on the part of an applicant for registration that
a trade mark should be used by him there were substituted a reference to the intention on his
part that it should be used by the company or registered user concerned.
(3) The tribunal may, in a case to which sub-section (1) applies, require the applicant to
give security for the costs of any proceedings relating to any opposition or appeal, and in

default of such security being duly given, may treat the application as abandoned.
(4) Where in a case to which sub-section(1) applies, a trade mark in respect of any
goods or services is registered in the name of an applicant who, relies on intention to assign
the trade mark to a company, then, unless within such period as may be prescribed or within
such further period not exceeding six months as the Registrar may, on application being made
to him in the prescribed manner, allow, the company has been registered as the proprietor of
the trade mark in respect of those goods or services, the registration shall cease to have effect
in respect thereof at the expiration of that period and the Registrar shall amend the register
accordingly.
Removal from Register and Imposition of Limitations
on Ground of Non Use
47.(1) A registered trade mark may be taken off the register in respect of the goods
or services in respect of which it is registered on application made in the prescribed manner to
the Registrar or the Appellate Board by any person aggrieved on the ground either
(a) that the trade mark was registered without any bona fide intention on the part of the
applicant for registration that it should be used in relation to those goods or services by him
or, in a case to which the provisions of section 46 apply, by the company concerned or the
registered user, as the case may be, and that there has, in fact, been no bona fide use of the
trade mark in relation to those goods or services by any proprietor thereof for the time being
up to a date three months before the date of the application; or
(b) that up to a date three months before the date of the application, a continuous period
of five years from the date on which the trade mark is actually entered in the register or longer
had elapsed during which the trade mark was registered and during which there was no bona
fide use thereof in relation to those goods or services by any proprietor thereof for the time
being:
Provided that except where the applicant has been permitted under section 12 to register
an identical or nearly resembling trade mark in respect of the goods or services in question, or
where the tribunal is of opinion that he might properly be permitted so to register such a trade
mark, the tribunal may refuse an application under clause (a) or clause (b) in relation to any
goods or services, if it is shown that there has been, before the relevant date or during the
relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof
for the time being in relation to
(i) goods or services of the same description, or
(ii) goods or services associated with those goods or services of that description being
goods or services, as the case may be, in respect of which that trade mark is registered.
(2) Where in relation to any goods or services in respect of which a trade mark is
registered
(a) the circumstances referred to in clause (b) of sub-section (1) are shown to exist so
far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in
a particular place in India (otherwise than for export from India), or in relation to goods to be
exported to a particular market outside India; or in relation to services for use or available for
acceptance in a particular place in India or for use in a particular market outside India; and
(b) a person has been permitted under section 12 to register an identical or nearly
resembling trade mark in respect of those goods, under a registration extending to use in
relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so

exported, or in relation to services for use or available for acceptance in that place or for use
in that country, or the tribunal is of opinion that he might properly be permitted so to register
such a trade mark.
on application by that person in the prescribed manner to the Appellate Board or to the
Registrar, the tribunal may impose on the registration of the first mentioned trade mark such
limitations as it thinks proper for securing that that registration shall cease to extend to such
use.
(3) As applicant shall not be entitled to rely for the purpose of clause (b) of
sub-section (1) or for the purposes of sub-section (2) on any non-use of a trade mark which is
shown to have been due to special circumstances in the trade, which includes restrictions on
the use of the trade mark in India imposed by any law or regulation and not to any intention to
abandon or not to use the trade mark in relation to goods or services to which the application
relates.
Registered User
48.(1) Subject to the provisions of section 49, a person other than the registered
proprietor of a trade mark may be registered as a registered user thereof in respect of any or
all of the goods or services in respect of which the trade mark is registered.
(2) The permitted use of a trade mark shall be deemed to be used by the proprietor
thereof, and shall be deemed not to be used by a person other than the proprietor, for the
purposes of section 47 or for any other purpose for which such use is material under this Act
or any other law.
Registration as Registered User
49.(1) Where it is proposed that a person should be registered as a registered user of
a trade mark, the registered proprietor and the proposed registered user shall jointly apply in
writing to the Registrar in the prescribed manner, and every such application shall be
accompanied by
(a) the agreement in writing or a duly authenticated copy thereof, entered into between
the registered proprietor and the proposed registered user with respect to the permitted use of
the trade mark; and
(b) an affidavit made by the registered proprietor or by some person authorised to the
satisfaction of the Registrar to act on his behalf,
(i) giving particulars of the relationship, existing or proposed, between the registered
proprietor and the proposed registered user, including particulars showing the degree of
control by the proprietor over the permitted use which their relationship will confer and
whether it is a term of their relationship that the proposed registered user shall be the sole
registered user or that there shall be any other restriction as to persons for whose registration
as registered users application may be made;
(ii) stating the goods or services in respect of which registration is proposed;
(iii) stating the conditions or restrictions, if any, proposed with respect to the
characteristics of the goods or services, to the mode or place of permitted use, or to any other
matter;
(iv) stating whether the permitted use is to be for a period or without limit of period,
and, if for a period, the duration thereof, and
(c) such further documents or other evidence as may be required by the Registrar or as
may be prescribed.

(2) When the requirements of sub-section (1) have been complied with, the Registrar
shall register the proposed registered user in respect of the goods or services as to which he is
so satisfied.
(3) The Registrar shall issue notice in the prescribed manner of the registration of a
person as a registered user, to other registered users of the trade mark, if any.
(4) The Registrar shall, if so requested by the applicant, take steps for securing that
information given for the purposes of an application under this section (other than matters
entered in the register) is not disclosed to rivals in trade.
Power of Registrar for Variation or Cancellation of
Registration as Registered User
50.(1) Without prejudice to the provisions of section 57, the registration of a person
as registered user
(a) may be varied by the Registrar as regards the goods or services in respect of which
it has effect on the application in writing in the prescribed manner of the registered proprietor
of the trade mark;
(b) may be cancelled by the Registrar on the application in writing in the prescribed
manner of the registered proprietor or of the registered user or of any other registered user of
the trade mark;
(c) may be cancelled by the Registrar on the application in writing in the prescribed
manner of any person on any of the following grounds, namely:
(i) that the registered user has used the trade mark otherwise than in accordance with
the agreement under clause (a) of sub-section (1) of section 49 or in such way as to cause or
to be likely to cause, deception or confusion;
(ii) that the proprietor or the registered user misrepresented, or failed to disclose, some
fact material to the application for registration which if accurately represented or disclosed
would not have justified the registration of the registered user;
(iii) that the circumstances have changed since the date of registration in such a way
that at the date of such application for cancellation they would not have justified registration
of the registered user;
(iv) that the registration ought not to have been effected having regard to rights vested
in the applicant by virtue of a contract in the performance of which he is interested;
(d) may be cancelled by the Registrar on his own motion or on the application in
writing in the prescribed manner by any person, on the ground that any stipulation in the
agreement between the registered proprietor and the registered user regarding the quality of
the goods or services in relation to which the trade mark is to be used is either not being
enforced or is not being complied with;
(e) may be cancelled by the Registrar in respect of any goods or services in relation to
which the trade mark is no longer registered.
(2) The Registrar shall issue notice in the prescribed manner in respect of every
application under this section to the registered proprietor and each registered user (not being
the applicant) of the trade mark.
(3) The procedure for cancelling a registration shall be such as may be prescribed;
Provided that before cancelling of registration, the registered proprietor shall be given a
reasonable opportunity of being heard.
Power of Registrar to Call for Information Relating to

Agreement in Respect of Registered Users


51.(1) The Registrar may at any time during the continuance of the registration of the
registered user, by notice in writing, require the registered proprietor to confirm to him within
one month that the agreement filed under clause (a) of sub-section (1) of section 49 continues
to be in force.
(2) If the registered proprietor fails to furnish the confirmation within one month as
required under sub-section (1), the registered user shall cease to be the registered user on the
day immediately after the expiry of the said period and the Registrar shall notify the same.
Right of Registered User to Take Proceedings Against Infringement
52.(1) Subject to any agreement subsisting between the parties, a registered user may
institute proceedings for infringement in his own name as if he were the registered proprietor,
making the registered proprietor a defendant and the rights and obligations of such registered
user in such case being concurrent with those of the registered proprietor.
(2) Notwithstanding anything contained in any other law, a registered proprietor so
added as defendant shall not be liable for any costs unless he enters an appearance and takes
part in the proceedings.
No Right of Permitted User to Take Proceeding Against Infringement
53. A person referred to in sub-clause (ii) of clause (r) of sub-section (1) of section 2
shall have no right to institute any proceeding for any infringement.
Registered User not to Have Right of Assignment of Transmission
54. Nothing in this Act shall confer on a registered user of a trade mark any assignable
or transmissible right to the use thereof.
Explanation I.The right of a registered user of a trade mark shall not be deemed to
have been assigned or transmitted within the meaning of this section in the following cases,
namely:
(a) where the registered user being an individual enters into a partnership with any
other person for carrying on the business concerned; but in any such case the firm may use
the trade mark, if otherwise in force, only for so long as the registered user is a member of the
firm;
(b) where the registered user being a firm subsequently undergoes a change in its
constitution; but in any case the reconstituted firm may use the trade mark, if otherwise in
force, only for so long as any partner of the original firm at the time of its registration as
registered user, continues to be a partner of the reconstituted firm.
Explanation II.For the purposes of Explanation I, firm has the same meaning as in
the Indian Partnership Act, 1932.
(9 of 1932)
User of One of Associated or Substantially Identical
Trade Marks Equivalent to Use of Another
55.(1) Where under the provisions of this Act, use of a registered trade mark is
required to be proved for any purpose, the tribunal may, if and, so far as it shall think right,
accept use of a registered associated trade mark, or of the trade mark with additions or
alterations not substantially affecting its identity, as an equivalent for the use required to be
proved.
(2) The use of the whole of a registered trade mark shall, for the purpose of this Act, be
deemed to be also use of any trade mark being a part thereof and registered in accordance
with sub-section (1) of section 15 in the name of the same proprietor.

(3) Notwithstanding anything in section 32, the use of part of the registered trade mark
in sub-section (2) shall not be conclusive as to its evidence of distinctiveness for any purpose
under this Act.
Use of Trade Mark for Export Trade and Use
When Form of Trade Connection Changes
56.(1) The application in India of trade mark to goods to be exported from India or in
relation to services for use outside India and any other act done in India in relation to goods to
be so exported or services so rendered outside India which, if done in relation to goods to be
sold or services provided or otherwise traded in within India would constitute use of a trade
mark therein, shall be deemed to constitute use of the trade mark in relation to those goods or
services for any purpose for which such use is material under this Act or any other law.
(2) The use of a registered trade mark in relation to goods or services between which
and the person using the mark any form of connection in the course of trade subsists shall not
be deemed to be likely to cause deception or confusion on the ground only that the mark has
been or is used in relation to goods or services between which and the said person or a
predecessor in title of that person a different form of connection in the course of trade
subsisted or subsists.
Chapter XI
Appellate Board
Establishment of Appellate Board
83. The Central Government shall, by notification in the Official Gazette, establish an
Appellate Board to be known as the Intellectual Property Appellate Board to exercise the
jurisdiction, powers and authority conferred on it by or under this Act.
Composition of Appellate Board
84.(1) The Appellate Board shall consist of a Chairman, Vice-Chairman and such
number of other Members, as the Central Government may deem fit and, subject to the other
provisions of this Act, the jurisdiction, powers and authority of the Appellate Board may be
exercised by Benches thereof.
(2) Subject to the other provisions of this Act, a Bench shall consist of one Judicial
Member and one Technical Member and shall sit at such place as the Central Government
may, by notification in the Official Gazette, specify.
(3) Notwithstanding anything contained in sub-section (2), the Chairman
(a) may, in addition to discharging the functions of the Judicial Member or Technical
Member of the Bench to which he is appointed, discharge the functions of the Judicial
Member or, as the case may be, the Technical Member, of any other Bench;
(b) may transfer a Member from one Bench to another Bench;
(c) may authorise the Vice-Chairman, the Judicial Member or the Technical Member
appointed to one Bench to discharge also the functions of the Judicial Member or the
Technical Member, as the case may be, of another Bench.
(4) Where any Benches are constituted, the Central Government may, from time to
time, by notification, make provisions as to the distribution of the business of the Appellate
Board amongst the Benches and specify the matters which may be dealt with by each Bench.
(5) If any question arises as to whether any matter falls within the purview of the
business allocated to a Bench, the decision of the Chairman shall be final.
Explanation.For the removal of doubts, it is hereby declared that the expression

matter includes an appeal under section 91.


(6) If the Members of a Bench differ in opinion on any point, they shall state the point
or points on which they differ, and make a reference to the Chairman who shall either hear the
point or points himself or refer the case for hearing on such point or points by one or more of
the other Members and such point or points shall be decided according to the opinion of the
majority of the Members who have heard the case, including those who first heard it.
Qualifications for Appointment as Chairman,
Vice Chairman, or Other Members
85.(1) A person shall not be qualified for appointment as the Chairman unless he
(a) is, or has been, a Jude of a High Court; or
(b) has, for at least two years, held the office of a Vice Chairman.
(2) A person shall not be qualified for appointment as the Vice Chairman, unless he
(a) has, for at least two years, held the office of a Judicial Member or a Technical
Member; or
(b) has been a member of the Indian Legal Service and has held a post in Grade I of
that service or any higher post for at least five years.
(3) A person shall not be qualified for appointment as a Judicial Member, unless he
(a) has been a member of the Indian Legal Service and has held the post in Grade I of
that service for at least three years; or
(b) has, for at least ten years, held a civil judicial office.
(4) A person shall not be qualified for appointment as a Technical Member, unless
he
(a) has, for at least ten years, exercised functions of a tribunal under this Act or under
the Trade and Merchandise Marks Act, 1958, or both, and has held a post not lower than the
post of a Joint Registrar for at least five years; or
(43 of 1958)
(b) has, for at least ten years, been an advocate of a proven specialised experience in
trade mark law.
(5) Subject to the provisions of sub-section(6), the Chairman, Vice Chairman and every
other Member shall be appointed by the President of India.
(6) No appointment of a person as the Chairman shall be made except after consultation
with the Chief Justice of India.
Term of Office of Chairman, Vice chairman and Other Members
86. The Chairman, Vice Chairman or other Members shall hold office as such for a
term of five years from the date on which he enters upon his office or until he attains,
(a) in the case of Chairman and Vice-Chairman, the age of sixty five years; and
(b) in the case of a Member, the age of sixty two years.
Whichever is earlier.
Vice-Chairman or Senior-Most Member to Act as
Chairman or Discharge his Functions in Certain Circumstances
87.(1) In the event of or any vacancy in the office of the Chairman by reasons of his
death, resignation or otherwise, the Vice Chairman and in his absence the senior most
Member shall act as Chairman until the date on which a new Chairman, appointed in
accordance with the provisions of this Act to fill such vacancy, enters upon his office.
(2) When the Chairman is unable to discharge his functions owing to his absence,

illness or any other cause, the Vice Chairman and in his absence the senior-most Member
shall discharge the functions of the Chairman until the date on which the Chairman resumes
his duty.
Salaries, Allowances and Other Terms and Conditions of Service
of Chairman, Vice Chairman and Other Members
88.(1) The salaries and allowances payable to, and other terms and conditions of
service (including pension, gratuity and other retirement benefits), of the Chairman, Vice
Chairman and other Members shall be such as may be prescribed.
(2) Notwithstanding anything contained in sub-section (1), a person who, immediately
before the date of assuming office as the Chairman, Vice Chairman or other Member was in
service of Government, shall be deemed to have retired from service on the date on which he
enters upon office as the Chairman, Vice Chairman or other Member.
Resignation and Removal
89.(1) The Chairman, Vice chairman or any other Member may, by notice in writing
under his hand addressed to the President of India, resign his office:
Provided that the Chairman, Vice Chairman or any other Member shall, unless he is
permitted by the President of India to relinquish his office sooner, continue to hold office until
the expiry of three months from the date of receipt of such notice or until a person duly
appointed as his successor enters upon his office or until the expiry of his term of office,
whichever is earlier.
(2) The Chairman, Vice Chairman or any other Member shall not be removed from his
office except by an order made by the President of India on the ground of proved
misbehaviour or incapacity after an inquiry made by a Judge of the Supreme Court in which
the Chairman, Vice Chairman or other Member had been informed of the charges against him
and given a reasonable opportunity of being heard in respect of those charges.
(3) The Central Government may, by rules, regulate the procedure for the investigation
of misbehaviour or incapacity of the Chairman, Vice Chairman or other Member referred to in
sub-section (2).
Staff of Appellate Board
90.(1) The Central Government shall determine the nature and categories of the
officers and other employees required to assist the Appellate Board in the discharge of its
functions and provide the Appellate Board with such officers and other employees as it may
think fit.
(2) The salaries and allowances and conditions of service of the officers and other
employees of the Appellate Board shall be such as may be prescribed.
(3) The officers and other employees of the Appellate Board shall discharge their
functions under the general superintendence of the Chairman in the manner as may be
prescribed.
Appeals to Appellate Board
91.(1) Any person aggrieved by an order or decision of the Registrar under this Act,
or the rules made thereunder may prefer an appeal to the Appellate Board within three months
from the date on which the order or decision sought to be appealed against is communicated
to such person preferring the appeal.
(2) No appeal shall be admitted if it is preferred after the expiry of the period specified
under sub-section (1):
Provided that an appeal may be admitted after the expiry of the period specified

therefor, if the appellant satisfies the Appellate Board that he had sufficient cause for not
preferring the appeal within the specified period.
(3) An appeal to the Appellate Board shall be in the prescribed form and shall be
verified in the prescribed manner and shall be accompanied by a copy of the order or decision
appealed against and by such fees as may be prescribed.
Procedure and Powers of Appellate Board
92.(1) The Appellate Board shall not be bound by the procedure laid down in the
Code of Civil Procedure, 1908 but shall be guided by principles of natural justice and subject
to the provisions of this Act and the rules made thereunder, the Appellate Board shall have
powers to regulate its own procedure including the fixing of places and times of its hearing.
(5 of 1908)
(2) The Appellate Board shall have, for the purpose of discharging its functions under
this Act, the same powers as are vested in a civil court under the Code of Civil Procedure,
1908 while trying a suit in respect of the following matters, namely:
(5 of 1908)
(a) Receiving evidence;
(b) Issuing commissions for examination of witnesses;
(c) requisitioning any public record; and
(d) any other matter which may be prescribed.
(3) Any proceeding before the Appellate Board shall be deemed to be a judicial
proceeding within the meaning of sections 193 and 228, and for the purpose of section 196, of
the Indian Penal Code, and the Appellate Board shall be deemed to be a civil court for all the
purposes of section 195 and Chapter XXVI of the Code of Criminal Procedure, 1973.
(45 of 1860 & 2 of 1974)
Bar of Jurisdiction of Courts, etc.
93. No court or other authority shall have or, be entitled to, exercise any jurisdiction,
powers or authority in relation to the matters referred to in sub-section (1) of section 91.
Bar to Appear Before Appellate Board
94. On ceasing to hold office, the Chairman, Vice-Chairman or other Members shall
not appear before the Appellate Board or the Registrar.
Conditions as to Making of Interim Orders
95. Notwithstanding anything contained in any other provisions of this Act or in any
other law for the time being in force, no interim order (whether by way of injunction or stay
or any other manner) shall be made on, or in any proceedings relating to, an appeal unless
(a) Copies of such appeal and of all documents in support of the plea for such interim
order are furnished to the party against whom such appeal is made or proposed to be made;
and
(b) opportunity is given to such party to be heard in the matter.
Power of Chairman to Transfer Cases from one Bench to Another
96. On the application of any of the parties and after notice to the parties, and after
hearing such of them as he may desire to be heard, or on his own motion without such notice,
the Chairman may transfer any case pending before one Bench, for disposal, to any other
Bench.
Procedure for Application for Rectification, etc. Before Appellate Board
97.(1) An application for rectification of the register made to the Appellate Board

under section 57 shall be in such form as may be prescribed.


(2) A certified copy of every order or judgement of the Appellate Board relating to a
registered trade mark under this Act shall be communicated to the Registrar by the Board and
the Registrar shall give effect to the order of the Board and shall, when so directed, amend the
entries in, or rectify, the register in accordance with such order.
Appearance of Registrar in Legal Proceedings
98.(1) The Registrar shall have the right to appear and be heard
(a) in any legal proceedings before the Appellate Board in which the relief sought
includes alteration or rectification of the register or in which any question relating to the
practice of the Trade Marks Registry is raised;
(b) in any appeal to the Board from an order of the Registrar on an application for
registration of a trade mark
(i) which is not opposed, and the application is either refused by the Registrar or is
accepted by him subject to any amendments, modifications, conditions or limitations, or
(ii) which has been opposed and the Registrar considers that his appearance is
necessary in the public interest,
and the Registrar shall appear in any case if so directed by the Board.
(2) Unless the Appellate Board otherwise directs, the Registrar may, in lieu of
appearing, submit a statement in writing signed by him, giving such particulars as he thinks
proper of the proceedings before him relating to the matter in issue or of the grounds of any
decision given by him affecting it, or of the practice of the Trade Marks Registry in like cases,
or of other matters relevant to the issues and within his knowledge as Registrar, and such
statement shall be evidence in the proceeding.
Costs of Registrar in Proceedings Before Appellate Board
99. In all proceedings under this Act before the Appellate Board the costs of the
Registrar shall be in the discretion of the Board, but the Registrar shall not be ordered to pay
the costs of any of the parties.
Transfer of Pending Proceedings to Appellate Board
100. All cases of appeals against any order of decision of the Registrar and all cases
pertaining to rectification of register, pending before any High Court, shall be transferred to
the Appellate Board from the date as notified by the Central Government in the Official
Gazette and the Appellate Board may proceed with the matter either de novo or from the stage
it was so transferred.
Chapter XII
Offences, Penalties and Procedure
Meaning of Applying Trademarks and Trade Descriptions
101.(1) A person shall be deemed to apply a trade mark or mark or trade description
to goods or services who
(a) applies it to the goods themselves or uses it in relation to services; or
(b) applies it to any package in or with which the goods are sold, or exposed for sale, or
had in possession for sale or for any purpose of trade or manufacture; or
(c) places, encloses or annexes any goods which are sold, exposed for sale or had in
possession for sale or for any purpose of trade or manufacture, in or with any package or other
thing to which a trade mark or mark or trade description has been applied; or
(d) uses a trade mark or mark or trade description in any manner reasonably likely to

lead to the belief that the goods or services in connection with which it is used are designated
or described by that trade mark or mark or trade description; or
(e) in relation to the goods or services uses a trade mark or trade description in any
sign, advertisement, invoice, catalogue, business letter, business paper, price list or other
commercial document and goods are delivered or services are rendered to a person in
pursuance of a request or order made by reference to the trade mark or trade description as so
used.
(2) A trade mark or mark or trade description shall be deemed to be applied to goods
whether it is woven in, impressed on, or otherwise worked into, or annexed or affixed to, the
goods or to any package or other thing.
Suit for Infringement, etc. to Be Instituted Before District Court
134.(1) No suit
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is
identical with or deceptively similar to the plaintiffs trade mark, whether registered or
unregistered,
shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
For the purpose of clauses (a) and (b) of sub-section (1), a District Court having
jurisdiction shall, notwithstanding anything contained in the Code of Civil Procedure,1908
or any other law for the time being in force, include a District Court within the local limits of
whose jurisdiction , at the time of the institution of the suit or other proceeding, the person
instituting the suit or proceeding, or, where there are more than one such persons any of them,
actually and voluntarily resides or carries on business or personally works for gain.
(5 of 1908)
Explanation.For the purposes of sub-section (2), person includes the registered
proprietor and the registered user.
Relief in Suits for Infringement or for Passing Off
135.(1) The relief which a court may grant in any suit for infringement or for passing
off referred to in section 134 includes injunction (subject to such terms, if any, as the court
thinks fit) and at the option of the plaintiff, either damages or an account of profits, together
with or without any order for the delivery-up of the infringing labels and marks for
destruction or erasure.
(2) The order of injunction under sub-section (1) may include an ex parte injunction or
any interlocutory order for any of the following mattes, namely:
(a) for discovery of documents;
(b) preserving of infringing goods, documents or other evidence which are related to
the subject-matter of the suit;
(c) restraining the defendant from disposing of or dealing with his assets in a manner
which may adversely affect plaintiffs ability to recover damages, costs or other pecuniary
remedies which may be finally awarded to the plaintiff.
(3) Notwithstanding anything contained in sub-section (1), the court shall not grant
relief by way of damages (other than nominal damages) or on account of profits in any case
(a) where in a suit for infringement of a trade mark, the infringement complained of is
in relation to a certification trade mark or collective mark; or

(b) where in a suit for infringement the defendant satisfies the court
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is
identical with or deceptively similar to the plaintiffs trade mark, whether registered or
unregistered,
shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
For the purpose of clauses (a) and (b) of sub-section (1), a District Court having
jurisdiction shall, notwithstanding anything contained in the Code of Civil Procedure,1908
or any other law for the time being in force, include a District Court within the local limits of
whose jurisdiction , at the time of the institution of the suit or other proceeding, the person
instituting the suit or proceeding, or, where there are more than one such persons any of them,
actually and voluntarily resides or carries on business or personally works for gain.
(5 of 1908)
Explanation.For the purposes of sub-section (2), person includes the registered
proprietor and the registered user.
Relief in Suits for Infringement or for Passing Off
135.(1) The relief which a court may grant in any suit for infringement or for passing
off referred to in section 134 includes injunction (subject to such terms, if any, as the court
thinks fit) and at the option of the plaintiff, either damages or an account of profits, together
with or without any order for the delivery-up of the infringing labels and marks for
destruction or erasure.
(2) The order of injunction under sub-section (1) may include an ex parte injunction or
any interlocutory order for any of the following mattes, namely:
(a) for discovery of documents;
(b) preserving of infringing goods, documents or other evidence which are related to
the subject-matter of the suit;
(c) restraining the defendant from disposing of or dealing with his assets in a manner
which may adversely affect plaintiffs ability to recover damages, costs or other pecuniary
remedies which may be finally awarded to the plaintiff.
(3) Notwithstanding anything contained in sub-section (1), the court shall not grant
relief by way of damages (other than nominal damages) or on account of profits in any case
(a) where in a suit for infringement of a trade mark, the infringement complained of is
in relation to a certification trade mark or collective mark; or
(b) where in a suit for infringement the defendant satisfies the court
(i) that at the time he commenced to use the trade mark complained of in the suit he
was unaware and had no reasonable ground for believing that the trade mark of the plaintiff
was on the register or that the plaintiff was a registered user using by way of permitted use;
and
(ii) that when he became aware of the existence and nature of the plaintiffs right in the
trade mark, he forthwith ceased to use the trade mark in relation to goods or services in
respect of which it was registered,; or
(c) where in a suit for passing off, the defendant satisfies the court
(i) that at the time he commenced to use the trade mark complained of in the suit, he
was unaware and had no reasonable ground for believing that the trade mark of the plaintiff
was in use; and

(ii) that when he became aware of the existence and nature of the plaintiffs trade mark
he forthwith ceased to use the trade mark complained of.
Agents
145. Where, by or under this Act, any act, other than the making of an affidavit, is
required to be done before the Registrar by any person, the act may, subject to the rules made
in this behalf, be done instead of by that person himself, by a person duly authorised in the
prescribed manner, who is
(a) a legal practitioner, or
(b) a person registered in the prescribed manner as a trade marks agent, or
(c) a person in the sole and regular employment of the principal.
Marks Registered by an Agent or Representative Without Authority
146. If an agent or a representative of the proprietor of a registered trade mark, without
authority uses or attempts to register or registers the mark in his own name, the proprietor
shall be entitled to oppose the registration applied for or secure its cancellation or rectification
of the register so as to bring him as the registered proprietor of the said mark by assignment in
his favour:
Provided that such action shall be taken within three years of the registered proprietor of
the trade mark becoming aware of the conduct of the agent or representative.
Indexes
147.There shall be kept under the direction and supervision of the Registrar
(a) an index of registered trade marks:
(b) an index of trade marks in respect of which applications for registration are
pending;
(c) an index of the names of the proprietors of registered trade marks; and
(d) an index of the names of registered users.
Documents Open to Public Inspection
148.(1) Save as otherwise provided in sub-section (4) of section 49,
(a) the register and any document upon which any entry in the register is based;
(b) every notice of opposition to the registration of a trade mark application for
rectification before the Registrar, counter-statement thereto, and any affidavit or document
filed by the parties in any proceedings before the Registrar;
(c) all regulations deposited under section 63 or section74, and all applications under
section 66 or section 77 for varying such regulations;
(d) the indexes mentioned in section 147; and
(e) such other documents as the Central Government may, by notification in the
Official Gazette, specify,
shall, subject to such conditions as may be prescribed, be open to public inspection at the
Trade Marks Registry:
Provided that when such register is maintained wholly or partly on computer, the
inspection of such register under this section shall be made by inspecting the computer print
out of the relevant entry in the register so maintained on computer.
(2) Any person may, on an application to the Registrar and on payment of such fees as
may be prescribed, obtain a certified copy of any entry in the register or any document
referred to in sub-section (1).

What is Cybersquatting?
Cybersquatting is the practice of registering an Internet domain name that is likely to be wanted
by another person, business, or organization in the hope that it can be sold to them for a profit. It
involves the registration of trademarks and trade names as domain names by third parties, who
do not possess rights in such names. Simply put, cybersquatters (or bad faith imitators) register
trade-marks, trade names, business names and so on, belonging to third parties with the common
motive of trading on the reputation and goodwill of such third parties by either confusing
customers or potential customers, and at times, to even sell the domain name to the rightful
owner at a profit.
What is a Domain Name?
Every resource on the Internet, such as a web page or a file of information has its own address
known as Uniform Resource Locator URL. A domain name is part of this address which is
assigned to each computer or service on the Internet. Domain name system maps names to a
series of number or IP address. These numbers are then linked with an easily read and
remembered address - the domain name. The domain name need not change if the computer or
service changes, whereas the series of numbers will. The domain name is intended to be more
meaningful to human beings than the series of numbers. The numbers referred to above are
linked with the domain name "rs. internic.net". People who are using the domain name can
therefore choose an easily remembered, and importantly, easily recognizable names in
cyberspace.
The Internet Corporation of Assigned Names and Numbers (ICANN) is responsible for the
administration of top level domain names. In assigning a domain, NSI uses a multi level system,
including a top level domain (TLD) such as .com and .net which are considered worldwide
generic. First step to acquire a domain name is to contact the administrator of the TLD and if the
identical requested domain name is not already assigned, the name will be then approved by the
administrator. That allocation of IP addresses and domain names worldwide is done centrally.
There is a specific registration process involved. The IANA is the central internet authority that
allocates IP addresses and domain names through the INTERNIC1
Laws in India
Unlike many developed countries, in India we have no Domain Name Protection Law and
cyber squatting cases are decided under Trade Mark Act, 1999.
That although the Indian Courts have drawn the distinction between trade mark and domain
name; wherein the Hon'ble Supreme Court in Satyam Infoway Ltd vs Sifynet Solutions Pvt Ltd;
AIR 2004SC3540 has observed that the
"distinction lies in the manner in which the two operate. A trademark is protected by the laws of
a country where such trademark may be registered. Consequently, a trade mark may have
multiple registrations in many countries throughout the world. On the other hand, since the
internet allows for access without any geographical limitation, a domain name is potentially
accessible irrespective of the geographical location of the consumers. The outcome of this
potential for universal connectivity is not only that a domain name would require worldwide
exclusivity but also that national laws might be inadequate to effectively protect a domain name".
The Indian Courts though have recognized the lacuna, however, in the absence of a explicit

legislation, courts apply provisions of the Trade Marks Act to such disputes. The Court in Case
(Supra) further observed that
"As far as India is concerned, there is no legislation which explicitly refers to dispute resolution
in connection with domain names. But although the operation of the Trade Marks Act, 1999 itself
is not extra territorial and may not allow for adequate protection of domain names, this does not
mean that domain names are not to be legally protected to the extent possible under the laws
relating to passing off".
Dispute Resolution
Dispute involving bad faith registrations are typically resolved using the Uniform Domain Name
Dispute Resolution Policy (UDRP) process developed by the ICANN. Under UDRP, WIPO is
the leading ICANN accredited domain name dispute resolution service provider and was
established as a vehicle for promoting the protection, dissemination, and the use of intellectual
property throughout the world. India is one of the 171 states of the world which are members of
WIPO.
A person may complain before the administration dispute resolution service providers listed by
ICANN under Rule 4 (a) that:
(i) A domain name is "identical or confusingly similar to a trade mark or service mark" in which
the complainant has rights; and
(ii) The domain name owner/registrant has no right or legitimate interest in respect of the domain
name; and
(iii) A domain name has been registered and is being used in bad faith.
Rule 4 (b) has listed, by way of illustration, the following four circumstances as evidence of
registration and the use of a domain name in bad faith:
(i) Circumstances indicating that the domain name owner/registrant has registered or acquired
the domain name primarily for the purpose of selling, renting or otherwise transferring the
domain name registration to the complainant who is the owner of the trade mark or service mark;
or to a competitor of that complainant for valuable consideration in excess of its documented out
of pocket costs, directly related to the domain name; or
(ii) The domain name owner/registrant has registered the domain name in order to prevent the
owner of the trade mark or service mark from reflecting the mark in a corresponding domain
name, provided that it has engaged in a pattern of such conduct; or
(iii) The domain name owner/registrant has registered the domain name primarily for the purpose
of disrupting the business of a competitor; or
(iv) By using the domain name, the domain name owner/registrant has intentionally attempted to
attract, for commercial gain internet users to its web site or other online location by creating a
likely hood of confusion with the complainants mark as to the source, sponsorship, affiliation, or
endorsement of the domain name owner/ registrant web site or location or of a product or service
on its web site or location.
India has also established its own registry by the name INRegistry under the authority of
National Internet Exchange of India (NIXI), wherein the dispute related to the domain name are
resolved under the .IN Dispute Resolution Policy (INDRP). The Policy has been formulated in
line with internationally accepted guidelines, and with the relevant provisions of the Indian

Information Technology Act 2000.


Under InRegistry, disputes are resolved under .IN Domain Name Dispute Resolution Policy
(INDRP) and INDRP Rules of Procedure. These rules describe how to file a complaint, fees,
communications and the procedure involved.
Role of Judiciary
Though domain names are not defined under any Indian law or are covered under any special
enactment, the Courts in India has applied Trade Marks Act, 1999 to such cases.
Like in other cases under Trademarks Act, 1999 two kind of reliefs are available:
1. Remedy of infringement
2. Remedy of passing off
Remedy of Infringement: Trade mark Act permits owner of the trade mark to avail the remedy of
infringement only when the trade mark is registered. Remedy of Passing off: No registration of
the trade mark is required in case the owner inteeds to avail the relief under passing off.
The first case that came up before the Indian Courts was Yahoo! Inc. v. Akash Arora nad
Anothers [1999 II AD (Delhi)]; in which an attempt was made to use the domain name
<yahooindia.com> for Internet related services as against domain name i.e. <yahoo.com>, The
Court observed that usually the degree of the similarity of the marks is vitally important and
significant in an action for passing off for in such a case there is every possibility and likelihood
of confusion and deception being caused. When both the domain names are considered, it is
crystal clear that the two names being almost identical or similar in nature, there is every
possibility of an Internet user being confused and deceived in believing that both the domain
names belong to one common source and connection, although the two belongs to two different
concerns.
In Tata Sons Limited and Anr Vs fashion ID Limited (2005) 140 PLR 12; the Hon'ble High
Court of Delhi Court held that "The use of the same or similar domain name may lead to a
diversion of users which could result from such users mistakenly accessing one domain name
instead of another. This may occur in e-commerce with its rapid progress and instant (and the
erotically limitless) accessibility to users and potential customers and particularly so in areas of
specific overlap. Ordinary consumers/users seeking to locate the functions available under one
domain name may be confused if they accidentally arrived at a different but similar web site
which offers no such services. Such users could well conclude that the first domain name owner
had mis-represented its goods or services through its promotional activities and the first domain
owner would thereby lose their customer. It is apparent therefore that a domain name may have
all the characteristics of a trademark and could found an action for passing off"
In Dr Reddy's Laboratories Limited Vs Manu Kosuri and Anr 2001 (58) DRJ241 Hon'ble High
Court of Delhi Court held that "It is a settled legal position that when a defendant does business
under a name which is sufficiently close to the name under which the plaintiff is trading and that
name has acquired a reputation the public at large is likely to be misled that the defendant's
business is the business of the plaintiff or is a branch or department of the plaintiff, the defendant
is liable for an action in passing off and it is always not necessary that there must be in existence
goods of the plaintiff with which the defendant seeks to confuse his own domain name passing
off may occur in cases where the plaintiffs do not in fact deal with the offending goods. When
the plaintiffs and defendants are engaged in common or overlapping fields of activity, the

competition would take place and there is grave and immense possibility for confusion and
deception. The domain name serve same function as the trademark and is not a mere address or
like finding number of the Internet and, Therefore, plaintiff is entitled to equal protection as trade
mark. The domain name is more than a mere Internet address for it also identifies the Internet
site to those who reach it. In an Internet service, a particular Internet site could be reached by
anyone anywhere in the world who proposes to visit the said Internet site. In a matter where
services rendered through the domain name in the Internet, a very alert vigil is necessary and a
strict view needs to be taken for its easy access and reach by anyone from any corner of the
world. The trademarks/domain name 'DR. REDDY'S' of the plaintiff and 'drreddyslab.com' of the
defendants are almost similar except for use of the suffix 'lab.com' in the defendants domain use.
The degree of the similarity of the marks usually is vitally important and significant in an action
for passing off as in such a case, there is every possibility and likelihood of confusion and
deception being caused. Considering both the domains' name, it is clear that two names being
almost identical or similar in nature, there is every possibility of an Internet user being confused
and deceived in believing that both the domain names belong to plaintiff although the two
domain names belong to two different concerns".
In Aqua Minerals Limited Vs Mr Pramod Borse & Anr; AIR2001Delhi 467 the Hon'ble High
Court of Dehi Court has held that Unless and until a person has a credible Explanation as to why
did he choose a particular name for registration as a domain name or for that purpose as a trade
name which was already in long and prior existence and had established its goodwill and
reputation there is no other inference to be drawn than that the said person wanted to trade in the
name of the trade name he had picked up for registration or as a domain name because of its
being an established name with widespread reputation and goodwill achieved at huge cost and
expenses involved in the advertisement.
In Nestle India Limited Vs Mood Hospitality Pvt Limited; 2010 (42) PTC 514 (Del) the Hon'ble
High Court of Dehi Court has held that in case of interim relief/injunction test of prima facie
case as traditionally understood has been replaced, at least in trade mark matters, by the test of
comparative strengths of the rival cases. This is also in keeping with the requirements of the said
Act inasmuch as it not only describes what amounts to infringement (see: Section 29) but it also
makes provision for what does not amount to infringement (see: Section 30)......Thus, apart from
examining the case in the context of Section 29 of the said Act only from the standpoint of the
respondent/ plaintiff, it was also incumbent upon the learned Single Judge to consider the relative
or comparative strength of the appellant's/defendant's case both under Section 29 and Section 30
(2) (a) of the said Act.
Domain Name Registration Process
In order to reserve a domain, a registrant must register it with one of almost a thousand ICANNaccredited registrars. The registrar will check if the domain is available and create a WHOIS
record with the registrants information. It is also possible to register domains through a
registrars resellers.
A registrant is the person or organization who has registered the domain name. In order to do so,
the registrant will usually apply online to a domain registrar or one of their resellers. The
registrant is bound by the terms and conditions of the registrar with which it registers its domain
name, for instance adhering to a certain code of conduct or indemnifying the registrar and
registry against any legal or civil action taken as a result of use of the domain name. Registrants
have certain responsibilities that are incorporated into these terms and conditions like payment of

registration fees and submission and timely update of accurate data.


In addition to registering the name, registrants also need to have their domains listed on name
servers in order to have that domain reachable on the Internet. A registrant is responsible for
procuring or hosting his or her own name server if the registrar does not offer this service or he
or she has opted out of the registrars service.
Registrars are organizations accredited by ICANN and certified by the registry operators to sell
domains. They are bound by the Registrar Accreditation Agreement (RAA) with ICANN - and
by their agreements with the registry operators. The RAA sets out responsibilities for the
registrar including maintenance of WHOIS data, submission of data to domain registries,
facilitating public WHOIS queries, ensuring registrants details are escrowed, and complying with
RAA conditions relating to the conclusion of the registration period.
Some registrants may opt to register through a reseller. These are affiliated or under contract
with registrars, and usually offer other services such as web hosting, email mailboxes etc.
Resellers are bound by their agreements with the registrar(s) whose services they sell; they are
not accredited by ICANN. However, the registrar for whom they are re-selling will still be the
sponsor for the domain name registration and accountable for the domains sold by the reseller.
While registrars are contracted to conduct the day-to-day business of selling domain name
registrations, registry operators are responsible for maintaining the registry for each TLD. The
responsibilities of the registry operator include accepting registration requests (whether from
registrars or directly from registrants), maintaining a database of the necessary registration data
and providing name servers to publish the zone file data (i.e. information about the location of a
domain) throughout the Internet.
The Internet Corporation for Assigned Names and Numbers (ICANN) is the international nonprofit corporation that oversees the assignment of both IP addresses and domain names. It has
responsibility for managing root server and TLD name system management and has contractual
agreements with both registries and registrars that provide the foundation for the WHOIS system.
A. Scope of the Uniform Domain Name Dispute Resolution Policy
What is the Uniform Domain Name Dispute Resolution Policy?
The Uniform Domain Name Dispute Resolution Policy (the UDRP Policy) sets out the legal
framework for the resolution of disputes between a domain name registrant and a third party (i.e.,
a party other than the registrar) over the abusive registration and use of an Internet domain name
in the generic top level domains or gTLDs (e.g., .biz, .com, .info, .mobi, .name, .net, .org), and
those country code top level domains or ccTLDs that have adopted the UDRP Policy on a
voluntary basis. At its meetings on August 25 and 26, 1999 in Santiago, Chile, the ICANN Board
of Directors adopted the UDRP Policy, based largely on the recommendations contained in the
Report of the WIPO Internet Domain Name Process, as well as comments submitted by registrars
and other interested parties. All ICANN-accredited registrars that are authorized to register
names in the gTLDs and the ccTLDs that have adopted the Policy have agreed to abide by and
implement it for those domains. Any person or entity wishing to register a domain name in the
gTLDs and ccTLDs in question is required to consent to the terms and conditions of the UDRP
Policy.

On October 24, 1999, the ICANN Board adopted a set of Rules for Uniform Domain Name
Dispute Resolution Policy (the UDRP Rules) setting out the procedures and other requirements
for each stage of the dispute resolution administrative procedure. The procedure is administered
by dispute resolution service providers accredited by ICANN. The WIPO Arbitration and
Mediation Center (WIPO Center) is such a dispute resolution service provider.
The WIPO Center acted as technical advisors to the ICANN drafting committee charged with
finalizing the UDRP Policy and Rules. It has developed WIPO Supplemental Rules for Uniform
Domain Name Dispute Resolution Policy which supplement the UDRP Policy and Rules.
Who can use the 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. This information is contained in the overview of all
ccTLDs for which WIPO provides dispute resolution services.
What types of disputes are covered by the UDRP Administrative Procedure?
According to Paragraph 4(a) of the UDRP Policy, the UDRP Administrative Procedure is only
available for disputes concerning an alleged abusive registration of a domain name; that is,
which meet the following criteria:
(i) 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; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name
in question; and
(iii) the domain name has been registered and is being used in bad faith
What circumstances are evidence that a domain name has been registered and is being used
in bad faith?
Paragraph 4(b) of the UDRP Policy sets out the following examples of circumstances that will be
considered by an Administrative Panel to be evidence of the bad faith registration and use of a
domain name:
(i) Circumstances indicating that the domain name was registered or acquired primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of the domain name registrant's out-of-pocket
costs directly related to the domain name; or
(ii) The domain name was registered in order to prevent the owner of the trademark or service
mark from reflecting the mark in a corresponding domain name, provided that the domain name
registrant has engaged in a pattern of such conduct; or
(iii) The domain name was registered primarily for the purpose of disrupting the business of a
competitor; or
(iv) By using the domain name, the domain name registrant intentionally attempted to attract for

financial gain, Internet users to the registrant's website or other on-line location, by creating a
likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or
endorsement of the registrant's website or location or of a product or service on the registrant's
website or location.
The above examples are not exclusive and other circumstances may exist that demonstrate the
registration and use of a domain name in bad faith.
What are the advantages of the UDRP Administrative Procedure?
The main advantage of the UDRP Administrative Procedure is that it typically provides a faster
and cheaper way to resolve a dispute regarding the registration and use of an Internet domain
name than going to court. In addition, the procedures are considerably more informal than
litigation and the decision-makers are experts in such areas as international trademark law,
domain name issues, electronic commerce, the Internet and dispute resolution. It is also
international in scope: it provides a single mechanism for resolving a domain name dispute
regardless of where the registrar or the domain name holder or the complainant are located.
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 what action an Administrative Panel may take if court
proceedings are initiated prior to or during an administrative proceeding.
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.
Can I use the UDRP Administrative Procedure to bring a case against the registrar with
which I have registered the domain name?
No. The UDRP Administrative Procedure is only available to resolve disputes between a third
party alleging an abusive registration of a domain name (see above) and the domain name
registrant.
Can I, as a domain name holder, use the UDRP Administrative Procedure to bring a case
against someone who has threatened to sue me and take away my domain name?
No. The UDRP Administrative Procedure is only available to resolve disputes brought or
commenced by a third party alleging an abusive registration of a domain name against a domain
name registrant.
B. Overview of the UDRP Administrative Procedure
What are the various stages in the UDRP Administrative Procedure?

The five basic stages in a UDRP Administrative Procedure are:


(1) The filing of a Complaint with an ICANN-accredited dispute resolution service provider
chosen by the Complainant, such as the WIPO Center;
(2) The filing of a Response by the person or entity against whom the Complaint was made;
(3) The appointment by the chosen dispute resolution service provider of an Administrative Panel
of one or three persons who will decide the dispute;
(4) The issuance of the Administrative Panel's decision and the notification of all relevant parties;
and
(5) The implementation of the Administrative Panel's decision by the registrar(s) concerned
should there be a decision that the domain name(s) in question be cancelled or transferred.
A more detailed description of the UDRP Administrative Procedure is available (Word or pdf).
How long does the UDRP Administrative Procedure take?
The Administrative Procedure normally should be completed within 60 days of the date the
WIPO Center receives the Complaint.
How much does the UDRP Administrative Procedure cost?
For a case filed with the WIPO Center involving between 1 and 5 domain names that is to be
decided by a single Panelist, the fee is USD1500. For a case that is to be decided by 3 Panelists,
the fee is USD4000.
For a case involving between 6 and 10 domain names that is to be decided by a single Panelist,
the fee is USD2000 and USD5000 for a case that is to be decided by 3 Panelists.
It is the parties that decide whether the case is to proceed before 1 or 3 Panelists.
The Complainant is responsible for paying the total fees. The only time the Respondent has to
share in the fees is when the Respondent chooses to have the case decided by 3 Panelists and the
Complainant had chosen a single Panelist.
The fees described above do not include any payment that might have to be made to a lawyer
representing a party in the administrative proceeding.
Please consult the WIPO Center's Schedule of Fees for further details.
Is the UDRP Administrative Procedure confidential?
Following the formal commencement of an administrative proceeding, the WIPO Center
publishes on its website the domain name(s) in issue, the date of the formal commencement of
the administrative proceeding and the status of the case. The WIPO Center also makes available
on its website the decisions rendered under the UDRP Policy in accordance with Paragraph 16 of
the UDRP Rules, by case number or by topic through a searchable Index.
The WIPO Center will normally not disclose any other information about the proceedings.
In what language is the UDRP Administrative Procedure conducted?
According to Paragraph 11 of the UDRP Rules, unless the parties to an administrative proceeding
agree otherwise, or the Registration Agreement that relates to the domain name in question
specifies otherwise, the language of the administrative proceeding will normally be the language
of the relevant Registration Agreement. The Administrative Panel, however, has the discretion to

designate a different language, taking into consideration the circumstances of the administrative
proceeding (e.g., the nationality of the parties, the language of the documentation). The
Administrative Panel also has the authority to order parties to translate documents that are not in
the language of the administrative proceeding.
Are in-person hearings required in the UDRP Administrative Procedure?
Paragraph 13 of the UDRP Rules makes it clear that there shall be no in-person hearings
(including hearings by teleconference, videoconference, and web conference), unless the
Administrative Panel determines, only as an exceptional matter, that a hearing is necessary in
order for it to make its decision.
C. Preparing and Filing a Complaint
To which dispute resolution service provider do I submit my Complaint?
The Complaint may be submitted to any accredited dispute resolution service provider. For the
gTLDs, these providers are accredited by ICANN. For the ccTLDs to which the UDRP Policy
applies, they are accredited by the administration of the ccTLD in question. Not only must the
Complaint conform to the requirements specified in the UDRP Rules, but also to those specified
in the chosen Provider's supplemental rules, if any.
The WIPO Center was the first provider to be accredited by ICANN and the first to receive cases
under the UDRP Policy. Its expertise to administer domain name disputes stems from its
involvement in the international process conducted by WIPO at the request of its member States
which led to the UDRP Policy and Rules. The WIPO Center also has specialist knowledge in
intellectual property and considerable experience in dispute resolution administration generally.
Is there a standard form in which a Complaint should be submitted?
While there is no standard ICANN form, the WIPO Center has prepared a model Complaint and
filing guidelines which parties may wish to consult. This model has been prepared by the WIPO
Center and is intended to serve as a guide for filing a Complaint under the UDRP Policy with the
WIPO Center. Its use as a basis for the preparation of a party's complaint does not preclude the
possibility of that Complaint being found deficient following the WIPO Center's formalities
compliance review, nor does reliance on the model guarantee a Complainant's success on the
merits.
How do I submit a Complaint?
A complaint must be submitted in electronic form in accordance with paragraph 3(b) of the
UDRP Rules and 12(a) of the WIPO Supplemental Rules. In order to facilitate electronic filing,
the WIPO Center offers the following options:

download and complete the model Complaint as a Word document to submit as an email
attachment to domain.disputes@wipo.int; or

complete and submit directly online to the Center an electronic form of the model
Complaint.

Please consult the filing guidelines for further information.


In what language should the Complaint be made?

Unless the Complainant and the Respondent agree otherwise, or if specified otherwise in the
Registration Agreement, the Complaint must normally be in the same language as the
Registration Agreement. The Administrative Panel can order any attachments not in the same
language as the Registration Agreement to be translated in full or in part by and at the cost of the
submitting party.
Does the Complaint have to be prepared and submitted by a lawyer?
While the assistance of a lawyer may be helpful, there is no requirement that the Complaint be
prepared or submitted by a lawyer.
What information should be included in the Complaint?
The information that must be included in the Complaint is described in Paragraph 3 of the UDRP
Rules. In addition, the WIPO Center has prepared a model Complaint and filing guidelines which
serve as a checklist of elements to include in a Complaint. In order to assist parties in preparing
their submissions, the WIPO Center also makes available an online Index of decisions rendered
under the UDRP Policy, as well as a jurisprudential Overview.
Can a Complaint include more than one domain name?
Under Paragraph 3(c) of the UDRP Rules, the Complaint may relate to more than one domain
name, so long as the person or entity that is the registrant of the domain names specified in the
Complaint is the same.
Does the Complaint have to be certified or notarized?
No.
Do any payments have to be made when filing the Complaint?
Yes. The appropriate fee specified in the WIPO Center's Schedule of Fees must be submitted
together with the Complaint, using one of the methods described.
Is the Complainant required to send a copy of the Complaint to the Respondent?
Further to updated UDRP Rules in effect as of July 31, 2015, a copy of the Complaint should be
sent only to the WIPO Center at domain.disputes@wipo.int, and the concerned Registrar(s).
Which contact details should be used when sending the Complaint to the concerned
Registrar(s) and what communication methods should be used?
In addition to submitting the Complaint to the WIPO Center, the WIPO Supplemental Rules
require that a copy of the Complaint be sent to the concerned registrar(s). The Complainant
should also notify the WIPO Center that the Complaint has in fact been sent to the concerned
registrar(s). Certain registrars have established specific contact details that should be used for
these purposes, which may be obtained by contacting the registrar(s) in question.
Where can I get information about who is the registrant of a domain name?
Certain registration information can be obtained for domain names registered in the gTLDs by
conducting a "Whois" search, in particular at http://www.internic.net/whois.html. For ccTLDs, or
for additional information, the concerned registrar's Whois service may be used (accessed via the
registrar's website).

D. Preparing and Filing a Response


Is the filing of a Response mandatory?
Under the terms of the agreement which the domain name registrant entered into when
registering the domain name, the registrant must submit to the administrative proceeding. The
Respondent has 20 days from the date of commencement of the administrative proceeding to
submit a Response.
How many days does a Respondent have to file a Response?
According to Paragraph 5(a) of the UDRP Rules, the Respondent must file its Response within
20 days of the commencement of the administrative proceeding. An administrative proceeding is
deemed to have formally commenced once the dispute resolution service provider has formally
notified the Complaint in accordance with Paragraph 2(a) of the UDRP Rules.
What happens if a Response is not filed or not filed on time?
If the Respondent does not file its Response (including any payment that may be required) by the
applicable deadline, the Respondent will be considered in default. Despite the Respondent's
default, the WIPO Center will proceed to appoint the Administrative Panel. The Panel will be
informed of the Respondent's default. It will decide the dispute based on the information
available to it and may draw such inferences as it deems appropriate from the Respondent's
failure to submit a timely Response.
Is there a standard form in which a Response should be submitted?
In addition to a model Response, the WIPO Center has prepared filing guidelines which parties
may wish to consult for guidance. The use of the model Response and filing guidelines as a basis
for the preparation of a party's Response does not guarantee a Respondent's success on the
merits.
When submitting a Response electronically, what format should be used?
In order to facilitate the electronic submission of a Response, the WIPO Center offers the
following options:

download and complete the model Response as a Word document to submit as an email
attachment to domain.disputes@wipo.int; or

complete and submit directly online to the Center an electronic form of the model
Response

In what language should the Response be made?


Unless the Complainant and the Respondent agree otherwise, or if specified otherwise in the
Registration Agreement, the Response must normally be in the same language as the Registration
Agreement. The Administrative Panel can order any attachments not in the same language as the
Registration Agreement to be translated in full or in part by and at the cost of the submitting
party.
Does the Response have to be submitted by a lawyer?
While the assistance of a lawyer may be helpful, there is no requirement that the Response be
prepared or submitted by a lawyer.
What information should be included in the Response?

The information that must be included in the Response is described in Paragraph 5 of the UDRP
Rules. In addition, the WIPO Center has prepared a model Response and filing guidelines which
serves as a checklist of the elements to include in the Response. In order to assist parties in
preparing their submissions, the WIPO Center also makes available an online Index of decisions
rendered under the UDRP Policy, as well as a jurisprudential Overview.
In preparing my Response, how do I demonstrate my rights to and legitimate interests in
the domain name that is the subject of the Complaint?
Paragraph 4(c) of the UDRP Policy states that any of the following circumstances, in particular
but without limitation, if found by the Administrative Panel to be proved based on its evaluation
of all evidence presented, shall demonstrate the domain name registrant's rights or legitimate
interests to the domain name for the purposes of Paragraph 4(a)(ii) of the Policy:
(i) before any notice to the domain name registrant of the dispute, the registrant's use of, or
demonstrable preparations to use, the domain name or a name corresponding to the domain name
in connection with a bona fide offering of goods or services; or
(ii) the domain name registrant (as an individual, business, or other organization) has been
commonly known by the domain name, even if the registrant has acquired no trademark or
service mark rights; or
(iii) the domain name registrant is making a legitimate non-commercial or fair use of the domain
name, without intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue.
Does the Response have to be certified or notarized?
No.
Do any fees have to be paid when filing a Response?
The only time a fee has to be paid by the Respondent is when the Complainant chooses to have
the case decided by a single Panelist, but the Respondent prefers to have the case decided by
three Panelists. In such cases, the applicable fee is shared equally between the Complainant and
the Respondent. The Respondent must submit its payment together with its Response. If it does
not, the Respondent will be considered in default and the Center may disregard the Respondent's
designation of the number of Panelists.
How do I submit a Response?
Under the UDRP Rules, a Response must be submitted electronically.
In order to facilitate filing, the WIPO Center offers the following options:

Download and complete the model Response as a Word document to submit as an email
attachment to domain.disputes@wipo.int; or

Complete and submit directly online to the Center as an electronic form of the model
esponse.

Which contact details should be used when sending the Response to the Complainant and
what communication methods should be used?
The Response should be submitted electronically including all annexes to the Complainant and
to the Center.

Does the Response have to be sent to the registrar(s)?


No.
E. The Role of the Administrative Panel
What is an Administrative Panel?
An Administrative Panel is composed of one or three independent and impartial persons
appointed by the dispute resolution service provider that is selected to administer the dispute in
accordance with the UDRP Policy and Rules. The Administrative Panel is independent of the
dispute resolution service provider, ICANN, the concerned registrar(s) and the parties.
Who are the Panelists?
The persons appearing on the WIPO Center's list of Domain Name Panelists have been selected
on the basis of their well-established reputation for their impartiality, sound judgment and
experience as decision-makers, as well as their substantive experience in the areas of
international trademark law, electronic commerce and Internet-related issues. The WIPO Center's
list is international, consisting of some 400 Panelists from over 50 countries, many of whom are
multi-lingual.
When is the Administrative Panel appointed?
The Administrative Panel is appointed after the filing of the Response, if one is made, or
following the due date on which the Response should have been filed. In the case of a Single
Panelist administrative proceeding, the WIPO Center will work to appoint the Administrative
Panel within 5 days of the filing of the Response or the Response due date. In the case of a threeperson Administrative Panel, normally the WIPO Center will appoint the Panel within 15 days of
the filing of the Response or the Response due date.
How is an Administrative Panel appointed?
An Administrative Panel is appointed by the WIPO Center as follows:
(i) If both the Complainant and Respondent indicate that they wish the dispute to be decided by a
single Panelist, the Panelist will be appointed by the WIPO Center from its list of Domain Name
Panelists.
(ii) If the Complainant designates 3 Panelists and the Respondent designates 1 Panelist, or viceversa, then the WIPO Center will appoint a three-person Administrative Panel. In so doing, the
WIPO Center will try to appoint one of the candidates nominated by the Complainant and one of
the candidates nominated by the Respondent. If it is unable to do so, the Center will make an
appropriate appointment from its list of Domain Name Panelists. The third Panelist, or Presiding
Panelist, will be appointed on the basis of preferences indicated by the parties from among a list
of 5 candidates that will have been provided to them by the WIPO Center. (If it is the Respondent
that chooses a three-member Panel, the Respondent is required to pay half of the applicable fees;
in all other situations, the fees are paid by the Complainant.)
(iii) If no Response is filed by the Respondent, then the WIPO Center will appoint the
Administrative Panel in accordance with the number of panelists designated by the Complainant
(i.e. 1 or 3). If the Complainant designated a three-member panel, the Center will try to appoint
one of the candidates nominated by the Complainant, failing which it will make the appointment

from its published list. It will make the appointment of the other two Panelists from its list of
Domain Name Panelists.
F. The Administrative Panel Decision
What decisions can the Administrative Panel take?
Only three types of decisions can be made by the Administrative Panel:
(i) Decide in favor of the person or entity that filed the Complaint and order that the disputed
domain name(s) be transferred to that person or entity;
(ii) Decide in favor of the person or entity that filed the Complaint and order that the disputed
domain name(s) be cancelled;
(iii) Decide in favor of the domain name registrant (i.e., deny the requested remedy). In this
regard, if the Panel concludes that the dispute is not within the scope of Paragraph 4(a) of the
UDRP Policy, it must specify this in its decision. Also, if after considering the submissions of the
parties, the Panel finds that the Complaint was brought in bad faith, the Panel is required to
declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the
administrative proceeding.
Can the Administrative Panel award any monetary amounts?
No. The Administrative Panel cannot award money judgments nor lawyers' costs.
How long does it take to get a decision?
Paragraph 15(b) of the UDRP Rules provides that, in the absence of exceptional circumstances,
the Administrative Panel shall forward its decision on the Complaint to the WIPO Center within
fourteen days of its appointment.
How is an Administrative Panel decision implemented?
An Administrative Panel decision is implemented by the registrar with which the contested
domain name is registered at the time the decision is rendered.
In accordance with Paragraph 4(k) of the UDRP Policy, the registrar is required to implement the
Panel's decision 10 business days after it receives notification of the decision from the dispute
resolution service provider, except if the registrar receives proper information from the domain
name registrant (Respondent) in that 10-day period that it is challenging the decision in court
(see below).
Each registrar establishes its own guidelines concerning the implementation of the transfer or
cancellation of a domain name registration pursuant to an Administrative Panel's decision.
Is it possible to challenge an Administrative Panel decision?
Yes. Paragraph 4(k) of the Policy allows a domain name registrant that loses in the
Administrative Proceeding to challenge the Administrative Panel's decision by filing a lawsuit in
certain courts. As noted above, the concerned registrar(s) will implement the Panel's decision 10
business days after it receives notification of the decision from the dispute resolution service
provider, unless it receives from the registrant during that 10-day period official documentation
(such as a copy of a complaint, file-stamped by the clerk of the court) that the registrant has
commenced a lawsuit against the Complainant in a jurisdiction to which the Complainant has

submitted under Paragraph 3(b)(xiii) of the UDRP Rules, i.e., a "Mutual Jurisdiction" (see
below).
The concerned registrar will then take no further action until it receives:
(i) Satisfactory evidence of a resolution of the dispute between the parties; or
(ii) Satisfactory evidence that the domain name registrant's lawsuit has been dismissed or
withdrawn; or
(iii) A copy of an order from the court in which the lawsuit was filed dismissing the lawsuit or
ordering that the domain name registrant has no right to continue to use the domain name.
What is meant by "Mutual Jurisdiction"?
The Mutual Jurisdiction is defined in the UDRP Rules as a court jurisdiction at the location of
either (a) the principal office of the registrar (provided that the domain name registrant has
submitted in the Registration Agreement to that jurisdiction for court adjudication of disputes
concerning or arising from the use of the domain name) or (b) the domain name registrant's
address as shown for the registration of the domain name in the concerned registrar's WHOIS
database at the time the Complaint is submitted to a dispute resolution service provider.
Are the Administrative Panel's decisions available to the public?
Yes. According to Paragraph 16(b) of the Rules, except where an Administrative Panel decides
otherwise in exceptional circumstances, a dispute resolution service provider is required to
publish all decisions in full on the Internet. WIPO Administrative Panel decisions can be
accessed through the WIPO Center's website. An online Index of the decisions by domain name
category, procedural, or substantive issue is also available. The Center also makes available a
jurisprudential Overview.
What happens if the parties come to an agreement over their dispute during the
proceedings?
Further to updated UDRP Rules in effect as of July 31, 2015, (see paragraph 17), a UDRP
proceeding may be suspended to implement a settlement agreement between the Parties. Further
to the WIPO Supplemental Rules in effect as of July 31, 2015 if the parties agree on a settlement
before Panel appointment, they should notify the WIPO Center of such settlement by submitting
the Standard Settlement Form. An email version of the Centers Standard Settlement Form is
also available upon request. In the event of a settlement, if an Administrative Panel has not yet
been appointed, the Complainant will be entitled to a partial refund of its filing fee.
G. The Role of the Registrar
What is the registrar's role in the administrative proceeding?
Except as decribed below, the registrar does not and will not participate in the administration or
conduct of the administrative proceeding. The WIPO Center has prepared a flowchart (word or
pdf) illustrating the basic interactions between the WIPO Center and a registrar in the course of a
case.
The registrar's role in the administrative proceeding is as follows:
(i) To provide requested information to the WIPO Center, including confirming that the disputed
domain name is registered with it, that it is registered by the person or entity identified as the

Respondent in the Complaint, providing the Respondent's contact details and, when necessary,
the Registration Agreement and associated documents;
(ii) To prevent the transfer to a third party of a domain name registration after an Administrative
Proceeding has commenced; and
(iii) To implement the Administrative Panel's decision.
H. The Role of the WIPO Arbitration and Mediation Center
What is the role of the WIPO Arbitration and Mediation Center in an administrative
proceeding?
The WIPO Center's role is to administer the proceedings, which includes verifying that the
Complaint satisfies the formal requirements of the UDRP Policy and Rules and WIPO
Supplemental Rules, co-ordinating with the concerned registrar(s) to verify that the named
Respondent is the actual registrant of the domain name(s) in issue, checking the Respondent's
contact details, notifying the Complaint to the Respondent, sending out case-related notifications,
appointing the Administrative Panel and otherwise ensuring that the administrative proceeding
runs smoothly and expeditiously.
The Center is independent and impartial. It does not decide the dispute between the parties. As an
administrative body, it can provide general information on the procedural aspects of the UDRP
Policy and Rules and WIPO Supplemental Rules, but cannot give any views about the strengths
and weaknesses of a party's case.
What is a Case Administrator?
The WIPO Case Administrator is principally responsible for managing the case procedures,
including all administrative matters relating to the dispute and communications with the
Administrative Panel. The Case Administrator may provide administrative assistance to the
Panel, but has no substantive decision authority.
WIPO Case Administrators often have legal backgrounds, speak several languages and are
experienced in international dispute resolution and domain name issues.
What is the Formalities Compliance Review?
The Formalities Compliance Review is a check by the WIPO Center of the Complaint to ensure
that it satisfies all of the formal requirements set out in the UDRP Policy and Rules and WIPO
Supplemental Rules. Examples of the items checked by the Center include: whether the
Complaint includes the Complaint Transmittal Coversheet; generally, whether the Complaint
includes all of the items listed in Paragraph 3(b) of the UDRP Rules; and whether payment has
been made in the correct amount.
Uniform Domain Name Dispute Resolution Policy
(As Approved by ICANN on October 24, 1999)
1. Purpose. This Uniform Domain Name Dispute Resolution Policy (the "Policy") has been
adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"), is
incorporated by reference into your Registration Agreement, and sets forth the terms and
conditions in connection with a dispute between you and any party other than us (the registrar)

over the registration and use of an Internet domain name registered by you. Proceedings under
Paragraph 4 of this Policy will be conducted according to the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules of Procedure"), which are available at
http://www.icann.org/en/dndr/udrp/uniform-rules.htm, and the selected administrative-disputeresolution service provider's supplemental rules.
2. Your Representations. By applying to register a domain name, or by asking us to maintain or
renew a domain name registration, you hereby represent and warrant to us that (a) the statements
that you made in your Registration Agreement are complete and accurate; (b) to your knowledge,
the registration of the domain name will not infringe upon or otherwise violate the rights of any
third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you
will not knowingly use the domain name in violation of any applicable laws or regulations. It is
your responsibility to determine whether your domain name registration infringes or violates
someone else's rights.
3. Cancellations, Transfers, and Changes. We will cancel, transfer or otherwise make changes
to domain name registrations under the following circumstances:
a. subject to the provisions of Paragraph 8, our receipt of written or appropriate electronic
instructions from you or your authorized agent to take such action;
b. our receipt of an order from a court or arbitral tribunal, in each case of competent
jurisdiction, requiring such action; and/or
c. our receipt of a decision of an Administrative Panel requiring such action in any
administrative proceeding to which you were a party and which was conducted under this
Policy or a later version of this Policy adopted by ICANN. (See Paragraph 4(i) and (k)
below.)
We may also cancel, transfer or otherwise make changes to a domain name registration in
accordance with the terms of your Registration Agreement or other legal requirements.
4. Mandatory Administrative Proceeding.
This Paragraph sets forth the type of disputes for which you are required to submit to a
mandatory administrative proceeding. These proceedings will be conducted before one of the
administrative-dispute-resolution
service
providers
listed
at
www.icann.org/en/dndr/udrp/approved-providers.htm (each, a "Provider").
a. Applicable Disputes. You are required to submit to a mandatory administrative
proceeding in the event that a third party (a "complainant") asserts to the applicable
Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service
mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three
elements are present.
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)
(iii), the following circumstances, in particular but without limitation, if found by the

Panel to be present, shall be evidence of the registration and use of a domain name in bad
faith:
(i) circumstances indicating that you have registered or you have acquired the
domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the owner of
the trademark or service mark or to a competitor of that complainant, for valuable
consideration in excess of your documented out-of-pocket costs directly related to
the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting
the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or other on-line location, by
creating a likelihood of confusion with the complainant's mark as to the source,
sponsorship, affiliation, or endorsement of your web site or location or of a
product or service on your web site or location.
c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name
in Responding to a Complaint. When you receive a complaint, you should refer to
Paragraph 5 of the Rules of Procedure in determining how your response should be
prepared. Any of the following circumstances, in particular but without limitation, if
found by the Panel to be proved based on its evaluation of all evidence presented, shall
demonstrate your rights or legitimate interests to the domain name for purposes of
Paragraph 4(a)(ii):
i) before any notice to you of the dispute, your use of, or demonstrable preparations to
use, the domain name or a name corresponding to the domain name in connection with a
bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known
by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the trademark
or service mark at issue.
d. Selection of Provider. The complainant shall select the Provider from among those approved
by ICANN by submitting the complaint to that Provider. The selected Provider will administer
the proceeding, except in cases of consolidation as described in Paragraph 4(f).
e. Initiation of Proceeding and Process and Appointment of Administrative Panel. The
Rules of Procedure state the process for initiating and conducting a proceeding and for
appointing the panel that will decide the dispute (the "Administrative Panel").
. Consolidation. In the event of multiple disputes between you and a complainant, either you or
the complainant may petition to consolidate the disputes before a single Administrative Panel.
This petition shall be made to the first Administrative Panel appointed to hear a pending dispute

between the parties. This Administrative Panel may consolidate before it any or all such disputes
in its sole discretion, provided that the disputes being consolidated are governed by this Policy or
a later version of this Policy adopted by ICANN.
g. Fees. All fees charged by a Provider in connection with any dispute before an Administrative
Panel pursuant to this Policy shall be paid by the complainant, except in cases where you elect to
expand the Administrative Panel from one to three panelists as provided in Paragraph 5(b)(iv) of
the Rules of Procedure, in which case all fees will be split evenly by you and the complainant.
h. Our Involvement in Administrative Proceedings. We do not, and will not, participate in the
administration or conduct of any proceeding before an Administrative Panel. In addition, we will
not be liable as a result of any decisions rendered by the Administrative Panel.
i. Remedies. The remedies available to a complainant pursuant to any proceeding before an
Administrative Panel shall be limited to requiring the cancellation of your domain name or the
transfer of your domain name registration to the complainant.
j. Notification and Publication. The Provider shall notify us of any decision made by an
Administrative Panel with respect to a domain name you have registered with us. All decisions
under this Policy will be published in full over the Internet, except when an Administrative Panel
determines in an exceptional case to redact portions of its decision.
k. Availability of Court Proceedings. The mandatory administrative proceeding requirements
set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the
dispute to a court of competent jurisdiction for independent resolution before such mandatory
administrative proceeding is commenced or after such proceeding is concluded. If an
Administrative Panel decides that your domain name registration should be canceled or
transferred, we will wait ten (10) business days (as observed in
the location of our principal office) after we are informed by the applicable Provider of
the Administrative Panel's decision before implementing that decision. We will then
implement the decision unless we have received from you during that ten (10) business
day period official documentation (such as a copy of a complaint, file-stamped by the
clerk of the court) that you have commenced a lawsuit against the complainant in a
jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the
Rules of Procedure. (In general, that jurisdiction is either the location of our principal
office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii)
of the Rules of Procedure for details.) If we receive such documentation within the ten
(10) business day period, we will not implement the Administrative Panel's decision, and
we will take no further action, until we receive (i) evidence satisfactory to us of a
resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been
dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your
lawsuit or ordering that you do not have the right to continue to use your domain name.
5. All Other Disputes and Litigation. All other disputes between you and any party other than
us regarding your domain name registration that are not brought pursuant to the mandatory
administrative proceeding provisions of Paragraph 4 shall be resolved between you and such
other party through any court, arbitration or other proceeding that may be available.
6. Our Involvement in Disputes. We will not participate in any way in any dispute between you
and any party other than us regarding the registration and use of your domain name. You shall
not name us as a party or otherwise include us in any such proceeding. In the event that we are

named as a party in any such proceeding, we reserve the right to raise any and all defenses
deemed appropriate, and to take any other action necessary to defend ourselves.
7. Maintaining the Status Quo. We will not cancel, transfer, activate, deactivate, or otherwise
change the status of any domain name registration under this Policy except as provided in
Paragraph 3 above.
. Transfers During a Dispute.
a. Transfers of a Domain Name to a New Holder. You may not transfer your domain
name registration to another holder (i) during a pending administrative proceeding
brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed
in the location of our principal place of business) after such proceeding is concluded; or
(ii) during a pending court proceeding or arbitration commenced regarding your domain
name unless the party to whom the domain name registration is being transferred agrees,
in writing, to be bound by the decision of the court or arbitrator. We reserve the right to
cancel any transfer of a domain name registration to another holder that is made in
violation of this subparagraph.
b. Changing Registrars. You may not transfer your domain name registration to another
registrar during a pending administrative proceeding brought pursuant to Paragraph 4 or
for a period of fifteen (15) business days (as observed in the location of our principal
place of business) after such proceeding is concluded. You may transfer administration of
your domain name registration to another registrar during a pending court action or
arbitration, provided that the domain name you have registered with us shall continue to
be subject to the proceedings commenced against you in accordance with the terms of
this Policy. In the event that you transfer a domain name registration to us during the
pendency of a court action or arbitration, such dispute shall remain subject to the domain
name dispute policy of the registrar from which the domain name registration was
transferred.
9. Policy Modifications. We reserve the right to modify this Policy at any time with the
permission of ICANN. We will post our revised Policy at <URL> at least thirty (30) calendar
days before it becomes effective. Unless this Policy has already been invoked by the submission
of a complaint to a Provider, in which event the version of the Policy in effect at the time it was
invoked will apply to you until the dispute is over, all such changes will be binding upon you
with respect to any domain name registration dispute, whether the dispute arose before, on or
after the effective date of our change. In the event that you object to a change in this Policy, your
sole remedy is to cancel your domain name registration with us, provided that you will not be
entitled to a refund of any fees you paid to us. The revised Policy will apply to you until you
cancel your domain name registration

Administrative proceedings for the resolution of disputes under the Uniform Dispute Resolution
Policy adopted by ICANN shall be governed by these Rules and also the Supplemental Rules of
the Provider administering the proceedings, as posted on its web site. To the extent that the
Supplemental Rules of any Provider conflict with these Rules, these Rules supersede.

Definitions
In these Rules:
Complainant means the party initiating a complaint concerning a domain-name
registration.
ICANN refers to the Internet Corporation for Assigned Names and Numbers.
Mutual Jurisdiction means a court jurisdiction at the location of either (a) the
principal office of the Registrar (provided the domain-name holder has submitted in
its Registration Agreement to that jurisdiction for court adjudication of disputes
concerning or arising from the use of the domain name) or (b) the domain-name
holder's address as shown for the registration of the domain name in Registrar's
Whois database at the time the complaint is submitted to the Provider.
Panel means an administrative panel appointed by a Provider to decide a complaint
concerning a domain-name registration.
Panelist means an individual appointed by a Provider to be a member of a Panel.
Party means a Complainant or a Respondent.
Policy means the Uniform Domain Name Dispute Resolution Policy that is
incorporated by reference and made a part of the Registration Agreement.
Provider means a dispute-resolution service provider approved by ICANN. A list of
such
Providers
appears
at
http://www.icann.org/en/dndr/udrp/approvedproviders.htm.
Registrar means the entity with which the Respondent has registered a domain name
that is the subject of a complaint.
Registration Agreement means the agreement between a Registrar and a domainname holder.
Respondent means the holder of a domain-name registration against which a
complaint is initiated.
Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to
deprive a registered domain-name holder of a domain name.
Supplemental Rules means the rules adopted by the Provider administering a
proceeding to supplement these Rules. Supplemental Rules shall not be inconsistent
with the Policy or these Rules and shall cover such topics as fees, word and page
limits and guidelines, file size and format modalities, the means for communicating
with the Provider and the Panel, and the form of cover sheets.
Written Notice means hardcopy notification by the Provider to the Respondent of the
commencement of an administrative proceeding under the Policy which shall inform
the respondent that a complaint has been filed against it, and which shall state that the
Provider has electronically transmitted the complaint including any annexes to the
Respondent by the means specified herein. Written notice does not include a
hardcopy of the complaint itself or of any annexes.

Communications
(a) When forwarding a complaint, including any annexes, electronically to the
Respondent, it shall be the Provider's responsibility to employ reasonably available
means calculated to achieve actual notice to Respondent. Achieving actual notice, or
employing the following measures to do so, shall discharge this responsibility:
(i) sending Written Notice of the complaint to all postal-mail and facsimile
addresses (A) shown in the domain name's registration data in Registrar's Whois
database for the registered domain-name holder, the technical contact, and the
administrative contact and (B) supplied by Registrar to the Provider for the
registration's billing contact; and
(ii) sending the complaint, including any annexes, in electronic form by e-mail to:
(A) the e-mail addresses for those technical, administrative, and billing
contacts;
(B) postmaster@<the contested domain name>; and
(C) if the domain name (or "www." followed by the domain name) resolves to
an active web page (other than a generic page the Provider concludes is
maintained by a registrar or ISP for parking domain-names registered by
multiple domain-name holders), any e- mail address shown or e-mail links on
that web page; and
(iii) sending the complaint, including any annexes, to any e-mail address the
Respondent has notified the Provider it prefers and, to the extent practicable, to all
other e-mail addresses provided to the Provider by Complainant under Paragraph
3(b)(v).
(b) Except as provided in Paragraph 2(a), any written communication to Complainant
or Respondent provided for under these Rules shall be made electronically via the
Internet (a record of its transmission being available), or by any reasonably requested
preferred means stated by the Complainant or Respondent, respectively (see
Paragraphs 3(b)(iii) and 5(b)(iii)).
(c) Any communication to the Provider or the Panel shall be made by the means and
in the manner (including, where applicable, the number of copies) stated in the
Provider's Supplemental Rules.
(d) Communications shall be made in the language prescribed in Paragraph 11.
(e) Either Party may update its contact details by notifying the Provider and the
Registrar.
(f) Except as otherwise provided in these Rules, or decided by a Panel, all
communications provided for under these Rules shall be deemed to have been made:
(i) if via the Internet, on the date that the communication was transmitted,
provided that the date of transmission is verifiable; or, where applicable
(ii) if delivered by telecopy or facsimile transmission, on the date shown on the
confirmation of transmission; or:
(iii) if by postal or courier service, on the date marked on the receipt.

(g) Except as otherwise provided in these Rules, all time periods calculated under
these Rules to begin when a communication is made shall begin to run on the earliest
date that the communication is deemed to have been made in accordance with
Paragraph 2(f).
(h) Any communication by
(i) a Panel to any Party shall be copied to the Provider and to the other Party;
(ii) the Provider to any Party shall be copied to the other Party; and
(iii) a Party shall be copied to the other Party, the Panel and the Provider, as the
case may be.
(i) It shall be the responsibility of the sender to retain records of the fact and
circumstances of sending, which shall be available for inspection by affected parties
and for reporting purposes. This includes the Provider in sending Written Notice to
the Respondent by post and/or facsimile under Paragraph 2(a)(i).
(j) In the event a Party sending a communication receives notification of non-delivery
of the communication, the Party shall promptly notify the Panel (or, if no Panel is yet
appointed, the Provider) of the circumstances of the notification. Further proceedings
concerning the communication and any response shall be as directed by the Panel (or
the Provider).
The Complaint
(a) Any person or entity may initiate an administrative proceeding by submitting a
complaint in accordance with the Policy and these Rules to any Provider approved by
ICANN. (Due to capacity constraints or for other reasons, a Provider's ability to
accept complaints may be suspended at times. In that event, the Provider shall refuse
the submission. The person or entity may submit the complaint to another Provider.)
(b) The complaint including any annexes shall be submitted in electronic form and
shall:
(i) Request that the complaint be submitted for decision in accordance with the
Policy and these Rules;
(ii) Provide the name, postal and e-mail addresses, and the telephone and telefax
numbers of the Complainant and of any representative authorized to act for the
Complainant in the administrative proceeding;
(iii) Specify a preferred method for communications directed to the Complainant
in the administrative proceeding (including person to be contacted, medium, and
address information) for each of (A) electronic-only material and (B) material
including hard copy (where applicable);
(iv) Designate whether Complainant elects to have the dispute decided by a
single-member or a three-member Panel and, in the event Complainant elects a
three-member Panel, provide the names and contact details of three candidates to
serve as one of the Panelists (these candidates may be drawn from any ICANNapproved Provider's list of panelists);
(v) Provide the name of the Respondent (domain-name holder) and all

information (including any postal and e-mail addresses and telephone and telefax
numbers) known to Complainant regarding how to contact Respondent or any
representative of Respondent, including contact information based on precomplaint dealings, in sufficient detail to allow the Provider to send the complaint
as described in Paragraph 2(a);
(vi) Specify the domain name(s) that is/are the subject of the complaint;
(vii) Identify the Registrar(s) with whom the domain name(s) is/are registered at
the time the complaint is filed;
(viii) Specify the trademark(s) or service mark(s) on which the complaint is based
and, for each mark, describe the goods or services, if any, with which the mark is
used (Complainant may also separately describe other goods and services with
which it intends, at the time the complaint is submitted, to use the mark in the
future.);
(ix) Describe, in accordance with the Policy, the grounds on which the complaint
is made including, in particular,
(1) the manner in which the domain name(s) is/are identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
and
(2) why the Respondent (domain-name holder) should be considered as
having no rights or legitimate interests in respect of the domain name(s) that
is/are the subject of the complaint; and
(3) why the domain name(s) should be considered as having been registered
and being used in bad faith
(The description should, for elements (2) and (3), discuss any aspects of
Paragraphs 4(b) and 4(c) of the Policy that are applicable. The description shall
comply with any word or page limit set forth in the Provider's Supplemental
Rules.);
(x) Specify, in accordance with the Policy, the remedies sought;
(xi) Identify any other legal proceedings that have been commenced or terminated
in connection with or relating to any of the domain name(s) that are the subject of
the complaint;
(xii) State that a copy of the complaint, including any annexes, together with the
cover sheet as prescribed by the Provider's Supplemental Rules, has been sent or
transmitted to the Respondent (domain-name holder), in accordance with
Paragraph 2(b);
(xiii) State that Complainant will submit, with respect to any challenges to a
decision in the administrative proceeding canceling or transferring the domain
name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction;
(xiv) Conclude with the following statement followed by the signature (in any
electronic format) of the Complainant or its authorized representative:
"Complainant agrees that its claims and remedies concerning the registration

of the domain name, the dispute, or the dispute's resolution shall be solely
against the domain-name holder and waives all such claims and remedies
against (a) the dispute-resolution provider and panelists, except in the case of
deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d)
the Internet Corporation for Assigned Names and Numbers, as well as their
directors, officers, employees, and agents."
"Complainant certifies that the information contained in this Complaint is to
the best of Complainant's knowledge complete and accurate, that this
Complaint is not being presented for any improper purpose, such as to harass,
and that the assertions in this Complaint are warranted under these Rules and
under applicable law, as it now exists or as it may be extended by a good-faith
and reasonable argument."; and
(xv) Annex any documentary or other evidence, including a copy of the Policy
applicable to the domain name(s) in dispute and any trademark or service mark
registration upon which the complaint relies, together with a schedule indexing
such evidence.
(c) The complaint may relate to more than one domain name, provided that the
domain names are registered by the same domain-name holder.
Notification of Complaint
(a) The Provider shall review the complaint for administrative compliance with the
Policy and these Rules and, if in compliance, shall forward the complaint, including
any annexes, electronically to the Respondent and shall send Written Notice of the
complaint (together with the explanatory cover sheet prescribed by the Provider's
Supplemental Rules) to the Respondent, in the manner prescribed by Paragraph 2(a),
within three (3) calendar days following receipt of the fees to be paid by the
Complainant in accordance with Paragraph 19.
(b) If the Provider finds the complaint to be administratively deficient, it shall
promptly notify the Complainant and the Respondent of the nature of the deficiencies
identified. The Complainant shall have five (5) calendar days within which to correct
any such deficiencies, after which the administrative proceeding will be deemed
withdrawn without prejudice to submission of a different complaint by Complainant.
(c) The date of commencement of the administrative proceeding shall be the date on
which the Provider completes its responsibilities under Paragraph 2(a) in connection
with sending the complaint to the Respondent.
(d) The Provider shall immediately notify the Complainant, the Respondent, the
concerned Registrar(s), and ICANN of the date of commencement of the
administrative proceeding.
The Response
(a) Within twenty (20) days of the date of commencement of the administrative
proceeding the Respondent shall submit a response to the Provider.
(b) The response, including any annexes, shall be submitted in electronic form and
shall:

(i) Respond specifically to the statements and allegations contained in the


complaint and include any and all bases for the Respondent (domain-name
holder) to retain registration and use of the disputed domain name (This portion of
the response shall comply with any word or page limit set forth in the Provider's
Supplemental Rules.);
(ii) Provide the name, postal and e-mail addresses, and the telephone and telefax
numbers of the Respondent (domain-name holder) and of any representative
authorized to act for the Respondent in the administrative proceeding;
(iii) Specify a preferred method for communications directed to the Respondent in
the administrative proceeding (including person to be contacted, medium, and
address information) for each of (A) electronic-only material and (B) material
including hard copy (where applicable);
(iv) If Complainant has elected a single-member panel in the complaint (see
Paragraph 3(b)(iv)), state whether Respondent elects instead to have the dispute
decided by a three-member panel;
(v) If either Complainant or Respondent elects a three-member Panel, provide the
names and contact details of three candidates to serve as one of the Panelists
(these candidates may be drawn from any ICANN-approved Provider's list of
panelists);
(vi) Identify any other legal proceedings that have been commenced or terminated
in connection with or relating to any of the domain name(s) that are the subject of
the complaint;
(vii) State that a copy of the response including any annexes has been sent or
transmitted to the Complainant, in accordance with Paragraph 2(b); and
(viii) Conclude with the following statement followed by the signature (in any
electronic format) of the Respondent or its authorized representative:
"Respondent certifies that the information contained in this Response is to the
best of Respondent's knowledge complete and accurate, that this Response is
not being presented for any improper purpose, such as to harass, and that the
assertions in this Response are warranted under these Rules and under
applicable law, as it now exists or as it may be extended by a good-faith and
reasonable argument."; and
(ix) Annex any documentary or other evidence upon which the Respondent relies,
together with a schedule indexing such documents.
(c) If Complainant has elected to have the dispute decided by a single-member Panel
and Respondent elects a three-member Panel, Respondent shall be required to pay
one-half of the applicable fee for a three-member Panel as set forth in the Provider's
Supplemental Rules. This payment shall be made together with the submission of the
response to the Provider. In the event that the required payment is not made, the
dispute shall be decided by a single-member Panel.
(d) At the request of the Respondent, the Provider may, in exceptional cases, extend
the period of time for the filing of the response. The period may also be extended by

written stipulation between the Parties, provided the stipulation is approved by the
Provider.
(e) If a Respondent does not submit a response, in the absence of exceptional
circumstances, the Panel shall decide the dispute based upon the complaint.
Appointment of the Panel and Timing of Decision
(a) Each Provider shall maintain and publish a publicly available list of panelists and
their qualifications.
(b) If neither the Complainant nor the Respondent has elected a three-member Panel
(Paragraphs 3(b)(iv) and 5(b)(iv)), the Provider shall appoint, within five (5) calendar
days following receipt of the response by the Provider, or the lapse of the time period
for the submission thereof, a single Panelist from its list of panelists. The fees for a
single-member Panel shall be paid entirely by the Complainant.
(c) If either the Complainant or the Respondent elects to have the dispute decided by
a three-member Panel, the Provider shall appoint three Panelists in accordance with
the procedures identified in Paragraph 6(e). The fees for a three-member Panel shall
be paid in their entirety by the Complainant, except where the election for a threemember Panel was made by the Respondent, in which case the applicable fees shall
be shared equally between the Parties.
(d) Unless it has already elected a three-member Panel, the Complainant shall submit
to the Provider, within five (5) calendar days of communication of a response in
which the Respondent elects a three-member Panel, the names and contact details of
three candidates to serve as one of the Panelists. These candidates may be drawn from
any ICANN-approved Provider's list of panelists.
(e) In the event that either the Complainant or the Respondent elects a three-member
Panel, the Provider shall endeavor to appoint one Panelist from the list of candidates
provided by each of the Complainant and the Respondent. In the event the Provider is
unable within five (5) calendar days to secure the appointment of a Panelist on its
customary terms from either Party's list of candidates, the Provider shall make that
appointment from its list of panelists. The third Panelist shall be appointed by the
Provider from a list of five candidates submitted by the Provider to the Parties, the
Provider's selection from among the five being made in a manner that reasonably
balances the preferences of both Parties, as they may specify to the Provider within
five (5) calendar days of the Provider's submission of the five-candidate list to the
Parties.
(f) Once the entire Panel is appointed, the Provider shall notify the Parties of the
Panelists appointed and the date by which, absent exceptional circumstances, the
Panel shall forward its decision on the complaint to the Provider.
Impartiality and Independence
A Panelist shall be impartial and independent and shall have, before accepting appointment,
disclosed to the Provider any circumstances giving rise to justifiable doubt as to the Panelist's
impartiality or independence. If, at any stage during the administrative proceeding, new
circumstances arise that could give rise to justifiable doubt as to the impartiality or independence
of the Panelist, that Panelist shall promptly disclose such circumstances to the Provider. In such

event, the Provider shall have the discretion to appoint a substitute Panelist.
Communication Between Parties and the Panel
No Party or anyone acting on its behalf may have any unilateral communication with the Panel.
All communications between a Party and the Panel or the Provider shall be made to a case
administrator appointed by the Provider in the manner prescribed in the Provider's Supplemental
Rules.
Transmission of the File to the Panel
The Provider shall forward the file to the Panel as soon as the Panelist is appointed in the case of
a Panel consisting of a single member, or as soon as the last Panelist is appointed in the case of a
three-member Panel.
General Powers of the Panel
(a) The Panel shall conduct the administrative proceeding in such manner as it
considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and
that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due
expedition. It may, at the request of a Party or on its own motion, extend, in
exceptional cases, a period of time fixed by these Rules or by the Panel.
(d) The Panel shall determine the admissibility, relevance, materiality and weight of
the evidence.
(e) A Panel shall decide a request by a Party to consolidate multiple domain name
disputes in accordance with the Policy and these Rules.
Language of Proceedings
(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration
Agreement, the language of the administrative proceeding shall be the language of the
Registration Agreement, subject to the authority of the Panel to determine otherwise,
having regard to the circumstances of the administrative proceeding.
(b) The Panel may order that any documents submitted in languages other than the
language of the administrative proceeding be accompanied by a translation in whole
or in part into the language of the administrative proceeding.
Further Statements
In addition to the complaint and the response, the Panel may request, in its sole discretion,
further statements or documents from either of the Parties.
In-Person Hearings
There shall be no in-person hearings (including hearings by teleconference, videoconference, and
web conference), unless the Panel determines, in its sole discretion and as an exceptional matter,
that such a hearing is necessary for deciding the complaint.
Default
(a) In the event that a Party, in the absence of exceptional circumstances, does not
comply with any of the time periods established by these Rules or the Panel, the Panel

shall proceed to a decision on the complaint.


(b) If a Party, in the absence of exceptional circumstances, does not comply with any
provision of, or requirement under, these Rules or any request from the Panel, the
Panel shall draw such inferences therefrom as it considers appropriate.
Panel Decisions
(a) A Panel shall decide a complaint on the basis of the statements and documents
submitted and in accordance with the Policy, these Rules and any rules and principles
of law that it deems applicable.
(b) In the absence of exceptional circumstances, the Panel shall forward its decision
on the complaint to the Provider within fourteen (14) days of its appointment
pursuant to Paragraph 6.
(c) In the case of a three-member Panel, the Panel's decision shall be made by a
majority.
(d) The Panel's decision shall be in writing, provide the reasons on which it is based,
indicate the date on which it was rendered and identify the name(s) of the Panelist(s).
(e) Panel decisions and dissenting opinions shall normally comply with the guidelines
as to length set forth in the Provider's Supplemental Rules. Any dissenting opinion
shall accompany the majority decision. If the Panel concludes that the dispute is not
within the scope of Paragraph 4(a) of the Policy, it shall so state. If after considering
the submissions the Panel finds that the complaint was brought in bad faith, for
example in an attempt at Reverse Domain Name Hijacking or was brought primarily
to harass the domain-name holder, the Panel shall declare in its decision that the
complaint was brought in bad faith and constitutes an abuse of the administrative
proceeding.
Communication of Decision to Parties
(a) Within three (3) calendar days after receiving the decision from the Panel, the
Provider shall communicate the full text of the decision to each Party, the concerned
Registrar(s), and ICANN. The concerned Registrar(s) shall immediately communicate
to each Party, the Provider, and ICANN the date for the implementation of the
decision in accordance with the Policy.
(b) Except if the Panel determines otherwise (see Paragraph 4(j) of the Policy), the
Provider shall publish the full decision and the date of its implementation on a
publicly accessible web site. In any event, the portion of any decision determining a
complaint to have been brought in bad faith (see Paragraph 15(e) of these Rules) shall
be published.
Settlement or Other Grounds for Termination
(a) If, before the Panel's decision, the Parties agree on a settlement, the Panel shall
terminate the administrative proceeding.
(b) If, before the Panel's decision is made, it becomes unnecessary or impossible to
continue the administrative proceeding for any reason, the Panel shall terminate the
administrative proceeding, unless a Party raises justifiable grounds for objection
within a period of time to be determined by the Panel.

Effect of Court Proceedings


(a) In the event of any legal proceedings initiated prior to or during an administrative
proceeding in respect of a domain-name dispute that is the subject of the complaint,
the Panel shall have the discretion to decide whether to suspend or terminate the
administrative proceeding, or to proceed to a decision.
(b) In the event that a Party initiates any legal proceedings during the pendency of an
administrative proceeding in respect of a domain-name dispute that is the subject of
the complaint, it shall promptly notify the Panel and the Provider. See Paragraph 8
above.
Fees
(a) The Complainant shall pay to the Provider an initial fixed fee, in accordance with
the Provider's Supplemental Rules, within the time and in the amount required. A
Respondent electing under Paragraph 5(b)(iv) to have the dispute decided by a threemember Panel, rather than the single-member Panel elected by the Complainant, shall
pay the Provider one-half the fixed fee for a three-member Panel. See Paragraph 5(c).
In all other cases, the Complainant shall bear all of the Provider's fees, except as
prescribed under Paragraph 19(d). Upon appointment of the Panel, the Provider shall
refund the appropriate portion, if any, of the initial fee to the Complainant, as
specified in the Provider's Supplemental Rules.
(b) No action shall be taken by the Provider on a complaint until it has received from
Complainant the initial fee in accordance with Paragraph 19(a).
(c) If the Provider has not received the fee within ten (10) calendar days of receiving
the complaint, the complaint shall be deemed withdrawn and the administrative
proceeding terminated.
(d) In exceptional circumstances, for example in the event an in-person hearing is
held, the Provider shall request the Parties for the payment of additional fees, which
shall be established in agreement with the Parties and the Panel.
Exclusion of Liability
Except in the case of deliberate wrongdoing, neither the Provider nor a Panelist shall be liable to
a Party for any act or omission in connection with any administrative proceeding under these
Rules.
Amendments
The version of these Rules in effect at the time of the submission of the complaint to the Provider
shall apply to the administrative proceeding commenced thereby. These Rules may not be
amended without the express written approval of ICANN.
The Anticybersquatting Consumer Protection Act: Key Information
The Anticybersquatting Consumer Protection Act (ACPA), 15 USC 1125(D) "was intended to
prevent 'cybersquatting,' an expression that has come to mean the bad faith, abusive registration
and use of the distinctive trademarks of others as Internet domain names, with the intent to profit
from the goodwill associated with those trademarks." [1]
The ACPA renders one liable to the owner of a trademark who, with "a bad faith intent to profit

from that mark," "registers, traffics in or uses a domain name" that is either identical or
confusingly similar to a "distinctive" mark or is identical, confusingly similar or dilutive of a
"famous mark."
If a violation of the ACPA is found, a court can "order the forfeiture or cancellation of the
[offending] domain name or [its] transfer . . . to the owner of the mark." 1125(D)(1)(c). The
mark owner can also recover up to three times his actual damages and obtain injunctive relief.
Actual damages include the profits the domain name registrant made from his use of the mark, as
well as losses sustained by the mark holder as a result of the domain name registrant's actions,
such as lost sales or harm to the mark's reputation. In lieu of actual damages, the mark owner can
elect to recover statutory damages of between $1,000 and $100,000 per domain (1117). The
actual amount awarded is fixed by the court in its discretion. 1117(d). In "exceptional cases,"
attorney's fees can also be recovered. (1117).
'Cybersquatting' Defined
The ACPA has been effectively used to combat a number of wrongs. These include
"cybersquatting," which occurs when a registrant obtains a domain name containing another's
mark and offers to sell it to the mark holder for a tidy sum. The ACPA has also been used to
prevent domain registrants from improperly profiting from the commercial use of another's mark,
such as by selling or displaying ads for products that compete with those of the mark holder at a
domain containing the mark. The ACPA has also been successfully used to prevent the
tarnishment of a mark by its use in the domain of a Web site containing pornographic or other
materials with which the mark holder does not wish his mark associated. In addition, the ACPA
has been used to combat gripe sites Web sites critical of the mark holder set up at a domain
containing his mark.
To successfully prosecute an ACPA claim, you must first establish that the defendant "registers,
traffics in or uses" the offending domain name. "Registers" encompasses the act of registering
the domain with a domain name registrar, such as Network Solutions or GoDaddy. The party that
obtains this registration is known as the "domain name registrant." Registering a domain reserves
it for the registrant's use, and enables him to display on the domain a Web site of his choosing.
"Use" occurs when one operates a Web site at the challenged domain. Only "the domain name
registrant or that registrant's authorized licensee" can be held liable for such "use." (1125(D)(1)
(d)). Finally, one "traffics in" an offending domain when he transfers or receives the domain in
exchange for consideration, such as via a sale, purchase, loan, pledge or license. (1125(D)(1)
(e)).
Next, you must establish that the domain name is "identical or confusingly similar" to a
"distinctive" mark, or identical, confusingly similar or dilutive of a "famous" mark. In comparing
the mark to the domain name, courts do not consider the generic top-level domain component of
the domain name, such as the .com in homedepot.com. Nor do they consider a domain name's
path, such as the phrase "Kohler faucets" in the domain homedepot.com/kohlerfaucets, as paths
are not deemed to be source identifiers of a Web site. Instead, courts compare the mark to the
second-level domain component of the domain at issue, the Home Depot in homedepot.com.
Misspelling the Owner's Mark
Courts regularly find "typo" domains domain names that misspell the owner's mark to be
confusingly similar and thus to trigger liability under the ACPA. [2] Courts have also found
confusing similarity in names such as "drinkcoke.org," "mycoca-cola.com" and "pepsisays.com."

[3]
The ACPA protects both registered and unregistered common-law marks.[4] However, the mark
must be "distinctive" (a trademark term of art) or "famous" (see 1125(c)) at the time the domain
name is registered to receive the statute's protection. If your mark is "famous," you can prevail
not only if the domain name at issue is identical or confusingly similar to your mark, but also if it
is "dilutive." "Generic" terms are never protected as marks think here of the term "baseball"
as a mark for the sale of baseballs.
The final element you need to establish is the most difficult to demonstrate, namely the
motivation for defendant's conduct. To prevail on an ACPA claim, you must show that defendant
acted with "a bad faith intent to profit from [your] mark." The statute (1125(d)(1)(b)(i)(I)-(IX))
supplies a nonexhaustive list of nine factors courts may, but do not have to consider, in
determining if defendant acted with the requisite motivation.
Three of these factors focus on potential legitimate uses by the defendant of the domain, the
presence of which support a finding that defendant did not act in bad faith. These include: (i) the
trademark or other intellectual property rights of the defendant in the name; (ii) the extent to
which the domain name consists of defendant's legal or nickname; and (iii) the defendant's prior
use of the domain in connection with the bona fide offering of goods or services.
The same mark can legitimately be used by different concerns in different markets, or geographic
areas. Application of this principle allowed a defendant to defeat an ACPA claim brought by
plaintiff arising out of defendant's registration of the domain chambord.com, where defendant
utilized the "Chambord" mark to sell coffee-makers, while plaintiff used the same "Chambord"
mark to sell liquor and assorted food products. Chatam Intl. v. Bodum, Inc., 157 FSupp2d 549
(E.D. Pa. 2001).
Names or Nicknames
Similarly, individuals whose name or nickname are identical to a company's mark have been held
to have legitimate claims on a domain containing that mark. See, e.g., Nissan Motor Co. v.
Nissan Computer Corp., 61 USPQ2d 1839 (C.D. Cal. 2002) (Uzi Nissan, founder of Nissan
Computer, held not to violate ACPA as a result of his registration of Nissan.com, incorporating
the mark of plaintiff Nissan Motor Co.).
In determining whether a particular domain name was registered or used in good faith, the use
made of the domain name prior to the commencement of the parties' dispute is particularly
important. Switching after a dispute arises from an illegitimate to legitimate use will not cure the
original bad faith registration. [5]
Switching uses after registration from a legitimate to illegitimate use can, however, evidence the
requisite bad faith necessary to trigger ACPA liability. "Bad faith" "can arise either at the time of
registration or at any time thereafter. Thus, a domain name initially registered legally can become
illegal through bad faith actions which follow." McCarthy on Trademarks, 25:78, p. 25-296.11.
[6]
Four of the statute's nine factors evidence a bad faith intent to improperly profit from another's
mark. These include:
(i) defendant's offer to transfer a domain name to the mark holder for financial gain which has
not been used in connection with a bona fide offering of goods or services;

(ii) defendant's provision of false contact information when registering the domain name, or
failure to maintain accurate contact information thereafter;
(iii) defendant's registration of multiple domain names identical or confusingly similar to the
marks of third parties; and
(iv) defendant's intent to divert consumers from the mark holder's online location to a site that
harms the good will represented by the mark, whether for commercial gain, or to tarnish or
disparage the mark.
Offers to Sell Domain Name
Most of these factors are self-explanatory and require little comment. As observed by the U.S.
Court of Appeals for the Sixth Circuit "registering a famous trademark as a domain name and
then offering it for sale to the trademark owner is exactly the wrong Congress intended to
remedy when it passed the ACPA." Ford Motor Co. v. Catalanotte, 342 F3d 543 (6th Cir. 2003).
Courts thus routinely look to offers by the defendant to sell the domain name as evidence of his
bad faith. Such is also true of the submission of false contact information to a domain name
registrar, which is taken as a sign the defendant neither wants to be identified nor held
accountable for his conduct.
Registration of multiple domain names containing marks owned by third parties also evidences
bad faith. Evidence of such registrations can be obtained by performing a reverse "who is"
search. Unlike a typical "who is" search, which only identifies who registered a particular
domain name, a reverse "who is" search allows you to find out each domain a particular
individual registered.
The statute enumerates two final factors courts may consider in determining defendant's
motivation. The first is the relative strength of the mark at issue. Use of a strong well-known
mark evidences bad faith. Conversely, "the fact that a mark is not well-known may . . . suggest a
lack of bad faith." Senate Section-by-Section Analysis, Congressional Record, p. S14717 (Nov.
17, 1999).
The final factor is whether defendant is making a "bona fide noncommercial or fair use of the
mark on a site accessible under the domain name." Defendants typically claim that their
noncommercial complaint site constitutes just such a use. While such a use is evidence of
defendant's good faith, it is not dispositive as "to recognize such an exemption would eviscerate
the protection of the bill by suggesting a blueprint for cybersquatters who would simply create
criticism sites in order to immunize themselves from liability despite their bad faith intentions."
Coca-Cola Co. v. Purdy, 382 F3d 774 (8th Cir. 2004).
Similarly, that defendant has made no commercial use of his domain, or the mark, is also not
dispositive on this issue. See e.g., Bosley Medical Institute v. Kremer, 2005 USAppLexis 5329
(9th Cir. 2005).
Registered, Trafficked, Used
If you can establish each of these elements that the defendant registered, trafficked in or used
a mark identical or confusingly similar to a distinctive or famous mark with a bad faith intent to
profit therefrom you can use the ACPA to prevent the misuse of your mark in another's
domain. That is, provided the court does not find that the defendant "believed and had reasonable
grounds to believe that the use of the domain name was a fair use or otherwise lawful." 1125(d)
(1)(B)(ii). Such a finding prevents a determination that defendant acted with the requisite "bad

faith." McCarthy on Trademarks, 25:78, p. 25-296.6 says that this defense should be accepted
"very sparingly and only in the most unusual cases . . . . Otherwise, every cybersquatter would
solemnly aver that its conduct was lawful." [7]
But what if the domain registrant has provided false contact information, preventing you from
knowing who to sue? Or what if the registrant resides outside of the United States? Relief can
still be obtained under the ACPA's in rem provisions.
In in rem proceedings, the court's remedial powers are limited to directing that the domain name
at issue be forfeited, cancelled or transferred to the mark holder. (1125(d)(2)(D)(i)). The court
cannot award monetary relief.
To proceed in rem, the mark holder must demonstrate that he cannot establish personal
jurisdiction over the defendant. This can be done where the domain name registrant resides in a
foreign country. Alternatively, for registrants whose identity is unknown, the mark holder must
establish that he cannot locate the defendant both by sending notice to the address listed with the
domain registrar, and by publishing notice of the lawsuit as directed by the court.
In rem proceedings can be commenced in a judicial district "in which the domain name registrar,
domain name registry, or other domain name authority that registered or assigned the domain
name [at issue] is located." (1125(d)(2)(c)).
Once in court, the mark holder must still establish, for a registered mark, that the defendant
violated 1125(d). This requires proof of defendant's bad faith, even though he is not present
before the court. [8] The burdens here may be less, however, if the identify of the defendant is
unknown due to his false contact information. McCarthy on Trademarks, 25:79, pp. 25-305. An
in rem action can also be used to address violations of 15 USC 1125(a) (infringement of
unregistered mark); 1114 (infringement of a registered mark) or 1125(c) (dilution of a famous
mark).
ernestandjuliogallo.com
As shown above, the ACPA is a useful weapon against those who improperly register a domain
containing your mark. For example, it was used by E. and J. Gallo Winery, owners of the "Ernest
and Julio Gallo" mark, to obtain from defendants the domain name ernestandjuliogallo.com.
Plaintiff prevailed despite the fact that defendants neither offered the domain for sale, nor used it
to sell wine products. The court held defendants acted in bad faith because they had registered
the domain as "real estate" on which they had intended to make a profit, and had registered some
2,000 additional domains containing the names of famous companies, cities and buildings. In
addition to directing the defendants to transfer the domain to plaintiff, the court also awarded
plaintiff $25,000 in statutory damages. [9]
Consumer Gripe Site
In Harrison v. Microfinancial Inc., [10] the ACPA was used to successfully combat a consumer
gripe site. There, the court found that a disgruntled customer violated the ACPA by registering a
domain name containing defendant's trademark, at which he operated a Web site critical of
defendant. The court's finding of bad faith rested in large part on its determination that plaintiff
had offered to transfer the domain to defendant if it refunded certain lease payments plaintiff had
made which were at the heart of his dispute with defendant, as well as funds plaintiff claimed
defendant improperly received from third parties. A similar result was reached in Lamparello v.
Falwell, 360 FSupp2d 768 (E.D. Va. 2004).

As shown by the foregoing, the ACPA can be an effective tool to prevent the misuse of your
mark in another's domain.