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Introduction Domain name: A kind of digital mark
a) Registration of Domain Names b) Domain name and its conflict with Trademark c) Cybersquatting
Regulations available under some legislations
a) Position in the United States of America b) Position in the United Kingdom c) Position in India
Dispute settlement mechanisms
a) World Intellectual Property Organization b) National Arbitral Forum c) Asian Domain Name Dispute Resolution Centre d) The Czech Arbitration Court Arbitration Centre for Internet Disputes e) Criticisms on UDRP
The major revolution that occurred in the last century is the result of the invention and the advancement of computer technology. The faster development of computer and internet makes a drastic change in almost every field in the past century. With the advent of internet, the entire process of the world has been changed. The technology enabled everything including problems, on the one hand it is making every task easy and brings the world under a single click and on the other hand it enabled its misuse in itself. It is well known to everyone that the law has to be changed in accordance with the change in situation, the technological development contributes well for a major change in the domestic and the international laws, intellectual property is the field which got major changes as because of the advancement of computer and internet. The emergence of digital and information technologies towards the concluding decades of the twentieth century as the defining paradigms of new age communications have raised a whole new set of challenges to the IPR regime1. It gives new dimension to the traditional intellectual property rights and makes it necessary on the part of national and international legislative bodies to change their laws relating to IPR. Trademark in general is a mark capable of being represented graphically and may include a word, name, symbol, device, numerals, letters, signature, label, ticket, brand, slogans, pictures, characters, sounds, smell, shape, logo, graphic designs, three dimensional form, moving image, product or packaging features etc2. The monopoly rights of the owners of the trademark to use their mark has been threatened by the network based technology in two forms. One in using another’s trademark by the search engines in meta tagging the hypertext markup language (HTML) and other regarding the domain names, which are considered as the user-friendly substitutes for addresses of computers connected to internet. With the growth of internet, domain names have increasingly come into conflict with trademarks3. In the following chapters it will be discussed the importance of domain name, its conflict with the physical trademark, its misuse by squatting one’s registered trademarks and domain names and the international laws and bodies regulating and resolving the disputes relating to the domain names.
S.K.Verma and Raman Mittal, Legal Dimensions of Cyberspace 113 (Indian Law Institute, New Delhi, 2004). Vakul Sharma, Information Technology Law and Practice 392 (Universal Law Publishing Co. Pvt. Ltd, Delhi, 2005). 3 P.S.Sangal, “Trademarks and Domain Names: Some Recent Developments”, 41 Journal of Indian Law Institute 30 (1999).
Domain Name: A kind of Digital Mark:
In order to understand the legal complexities one would first have to understand and appreciate the concept of domain names and their use on the internet to communicate the internet, the authorities assign alphanumeric addresses called ‘domain names’ to business and individuals4. In simple terms, domain names identify one database or system from the millions of others connected to the internet, which enables the user to access a website, send or receive files, to share files. The domain name system has two components: a) domain names and b) internet protocol (IP) numbers (which correspond to domain names, for example- 22.214.171.124). But it is very difficult for one to remember such a complex number. Hence, today instead of typing 126.96.36.199 once has merely to type in www.tata.com5. Apart from the ease of use, the website of an entity would create an impression that the website which bears the particular company name was the site of the same company. A website or an universal resource locator (URL) comprises of 3 parts i) world wide web(www.) which is common to all, ii) secondary level domain, which is the middle part of the web address and iii) the top level domains at last. This last but the top one, which are usually divided into two: the generic top level domains (gTLD) and the country code top level domains (ccTLD). Registration of Domain name: At the international level there are many registries available for registering a domain name. In India the process for registration of domain names and the security to the registered names were carried on by INRegistry regarding the Indian ccTLD, under the control of National Internet Exchange in India (NIXI). Worldwide, at present, there are twenty one gTLDs out of which seven are important. Three of these are open, in the sense that there are no restrictions on the persons or entities that may register names in them. These three gTLDs are .com, .net and .org. The other four gTLDs are restricted, in the sense that only certain entities meeting certain criteria may register names in them. They are .int, which is restricted to use by international organizations; .edu, which is restricted to use by four-year, degree-granting colleges and universities; .gov, which is restricted to use by agencies of the federal government of the United States of America; and .mil, which is restricted to use by the military of the United States of
Mayuri Patel and Subhasis Saha, “Trademark Issues in Digital Era”, 113 Journal of Intellectual Property Rights 118 (2008). 5 Supra note 1 at p153.
America6. There are 243 ccTLDs at present and each of these domains bears a two letter country code (example: .in for India). Some of these domains are open, in the sense that there are no restrictions on the persons or entities who may register in them. Others are restricted, in that only persons or entities satisfying certain criteria (for example, domicile within the territory) may register names in them. Functionally there is no distinction between the gTLDs and ccTLDs. Internet Corporation for Assigned Names and Numbers (ICANN) is a non-profit corporation which coordinates the internet’s naming system established in 1998 with participants all over the world. The main functions of ICANN are: a) sets rules for giving the numbered IP addresses/protocol parameters, b) adding new suffixes to the directory and c) sets rules for arbitrating disputes over domain ownership7. In India under the INRegistry, six other companies have been accredited by ICANN to act as registrars in one or more TLDs. The Uniform Domain Name Dispute Resolution Policy (UDRP) is a process established by the ICANN for the resolution of disputes regarding the domain names. A person who purchased or registered a domain name is called registrant and he must agree the terms and conditions in the application for registering his domain name with a condition that the domain which is going to get registered is subject to the UDPR. Domain name and its conflicts with Trademark: One consistent thread concerning the management of domain names has been the interface between domain names and the trademarks. Domain name today serves as an online trademark, source identifier, indicates quality and repositories of good will and it must not be confused with property rights like trademarks8. Both systems are having their own different phenomena, one, the domain name system is largely privately administered and gives rise to registrations that result in a global presence, accessible from anywhere in the world and the other trademark system was is publicly administered on a territorial basis and gives rise to rights that are exercisable only within the territory concerned9. Though the domain names were regulated by an international body, still there is a question on that whether the domain names are also a trademark or not? Whether they are
Final report of the WIPO Internet Domain Name Process, April 30, 1999 available at: http://www.wipo.int/amc/en/processes/process1/report/finalreport.html (visited on February 29, 2011). 7 Supra note 2 at p 411. 8 Shine Joy, “Domain name, Cybersquatting & Domain name Dispute Resolution”, available at: http://www.legalserviceindia.com/articles/cddisp.htm (visited on February 15, 2011).
Supra note 6.
governed by the municipal laws or not? In general the domain name is not a trademark, but is related with the trademark, particularly in the passing off and the cybersquatting aspects. In India the initial policy relating to the domain name was an extremely restrictive one and allowed for a registration only if the applicant was a registered commercial entity in India. Owing the demand from several quarters that the policy be liberalized to incorporate the interests of trademark owners and foreign corporations and now the policy was liberalized10. In all we can say the domain name is a digital marks which performs a technical function and functions as an identity for an entity. Cybersquatting: Cybersquatting is the act of registering, trafficking in, or using a domain name that is similar to or confusingly similar to a trademark belonging to someone else, with a bad faith intent to profit from their goodwill. The term is derived from “squatting” which is the act of occupying an abandoned or unoccupied space of land that the squatter does not own. Same in case of the cybersquatting, with a slight different that the unoccupied domain name are squatted by registering it on payment. The cybersquatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price. In 2002, the Delhi high court gave a simple and clear definition for the term cybersquatting that it is “an act of obtaining fraudulent registration with intent to sell the domain name to the lawful owner of the name at a premium”11. As long as the cybersquatters owns the domain name, the owner of a registered trademark cannot register his own trademark as domain name and the existing fake domain name of the squatter will definitely confuse the users of the registered trademark12. Thus, a cybersquatter breaches the right of the owner of the registered trademarks and sometimes passing off his goods as of the later. One more term which is much similar to the cybersquatting is the typosquatting. Unlike cybersquatting which is the registration of a trademark with a mala-fide intention, typosquatting is not related with the trademark as such. It is a trick of using the same word used in an already registered trademark or a domain name with a little addition or omission of word or words. Typosquatting is a form of cybersquatting which relies on mistakes such as typographical errors
Supra note 1 at p163. Manish Vij v. Indra Chugh, AIR 2002 Del 243. 12 Monica Kilian, “Cybersquatting and Trademark Infringement”, 7(3) Murdoch University Electronic Journal of Law 11 (2000).
made by Internet users when inputting a website address into a web browser. Should a user accidentally enter an incorrect website address, they may be led to an alternative website owned by a cybersquatter. Once in the typosquatter's site, the user may also be tricked into thinking that they are in fact in the real site; through the use of copied or similar logos, website layouts or content. Sometimes competitors of the victim site will do this13.
Regulations available under some legislation:
Although disputes involving trademarks and domain names are increasing by the day, very few countries have a specific legislation to tackle this menace. Among the leading countries only he United States of America has a specific legislation14. In most other countries the domain name disputes were decided by their local trademark laws and the pre-registration conditions by their non-statutory authorities. As the domain name has international value, the UDRP gives international dispute settlement mechanism. The UDRP decision does not restrict the lawsuit against the domain name registrant under local laws. 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 outcome15. Position in the United Stated of America: The first cybersquatting case arose in 1994 in the United States of America. USA was the precursor when we speak about the domain name disputes and the litigations. The US Congress enacted the Anticybersquatting Consumer Protection Act (ACPA), which came into force from 29 November 1999. It amends the Lanham (Trademark) Act of 1946 to provide protection against cybersquatting for individuals as well as owners of a registered trademark by adding new section 43(d). It provides some defenses against the domain name squatting. One way of getting protection is to prove bad faith on the part of the person who registered the domain name. Another is to prove intent to profit by the squatter. This ACPA could restrain the squatter from using the trademark by forfeiture or cancellation of the domain name or by transfer it to the owner of the trademark. In addition, the ACPA provides penalties against cybersquatting similar to the penalties for infringement of trademarks. Under the ACPA a cybersquatter can be held liable for actual damages or statutory damages in the amount of a maximum of $100,000 for
Cyber Squatting: A Brief Legal Overview available at: http://www.123oye.com/job-articles/cyberlaw/cybersquatting.htm (visited on March 8, 2011). 14 V.K.Unni, Trademarks & The Emerging Concepts of Cyber Property Rights 122(Eastern Law House, Kolkata, 2002). 15 Para 4(k) of the UDRP
each name found to be in violation, although application of this act in the form of actual fines assessed are few in number. There are two important cases which were considered pivotal in the development of cybersquatting case law in the USA. One is the case of Intermatic v. Toeppen16, in which the court gave a decision in the favour of the plaintiff which owned a federal trademark registration for intermatic. Plaintiff Intermatic, the owner of the trademark INTERMATIC in connection with electronic equipment, sought to enjoin defendant Toeppen from using the domain name "intermatic.com." In addition to registering "intermatic.com," Toeppen had registered over 200 domain names containing names of well-known companies. Toeppen never used the domain name "intermatic.com" to sell or promote any goods or services over the Internet. Toeppen did, however, intend to profit by selling or licensing the domain name to Intermatic. The court granted summary judgment to Intermatic on its dilution claim under the Federal
Trademark Dilution Act, finding that INTERMATIC was a famous mark and that Toeppen's intent to arbitrage the "intermatic.com" domain name constituted a "commercial use" under the Act. The court permanently enjoined Toeppen from using the mark INTERMATIC, from taking any action to prevent Intermatic from obtaining the domain name "intermatic.com," and from asserting any further interest in that domain name. The second case was Panavision International, L.P v. Toeppen17, where the court of appeal, ninth circuit gave the judgment in favour of the plaintiff as in the intermatic case. In this case the Panavision accused Toeppen of being a cyber pirate who had stolen valuable trademarks and established them as his domain names on the internet. The responded had registered domain names with names panavision.com and panaflex.com, both based on the registered trademark of the complainant in connection with motion picture camera accessories. The court found that Toeppen’s conduct diminished “the capacity of the Panavision marks to identify and distinguish Panavision’s goods and services on the internet”. It was felt that though the FTDA has been useful in pursuing cybersquatters, but it was not proving to be an effective deterrent as it only reaches dilution of famous marks18. Hence the new US anticybersquatting consumer protection act came into picture. The above two judgments have played an important role in the drafting of the ACPA. Under this act people can claim their own name if someone else has registered it for
16 17 18
947 F. Supp. 1227. 141 F.3d 1316 Supra note 2 at p415.
profit. The act further setout factors used to assess whether a name has been registered in bad faith or with intent to profit19. After the ACPA came into force, there are many cases decided by the US courts in respect of the domain name registration. The ACPA does not centre on the fact that a cyber squatter offered to sell or transfer the domain name to the trademark owner. It also includes factors such as whether a cyber squatter bas any intellectual property rights in a domain name; whether a cyber squatter has been engaging in bona fide use of a domain name20. The first appellate case decided under the ACPA was Sporty’s Farm LLC v. Sportsman’s Market Inc21. In this case the respondent incorporation used and registered the name “Sporty’s” with the US patent and Trademark office in connection with aviation sales and products. Omega, a competitor, opened a wholly-owned subsidiary, Sport’s farm, for the purpose of selling Christmas trees and registered the domain name sportys.com to advertise the trees. The District court granted an injunction in favour of Sportsman’s for the use of the domain name. The case was originally filed under the Federal Trademark Dilution Act (FTDA), but the ACPA was passed before the appellate court rendered its decision. The appellate court determined that new law applied on appeal. The second circuit judge Calabresi affirmed the judgment of the district court by analyzing the facts under four heads: application of the ACPA, distinctive or famous, identical and confusingly similar, bad faith intent to profit. The court found that Omega planned to enter into direct competition with Sportsman's in the pilot and aviation consumer market and thus their primary intent was to prevent Sportsman's from using the sportys.com domain name. Though the court affirmed the grant of injunctive relief by the district court, it refused to award damages to the Sportsman’s Market for the reason that the sportys.com was registered and used by Sporty’s Farm prior to the passage of the ACPA. Position in the United Kingdom: Unlike the US, there is no specific legislation available in the United Kingdom to protect the interest of the trademark owners against the cybersquatters. But the UK Trademarks Act, 1994 tackles criminal offences to counterfeiting and piracy problems. This act especially under section 92 protects the trademark owner against the unauthorized copying of their registered
Susan Singleton, e-Commerce: A Practical Guide to the Law 19 (Gower Publishing Ltd, England). Sunando Mukherjee, “Passing Off in Internet Domain Names – A Legal Analysis” 9 Journal of Intellectual Property Rights 136 (2004). 21 202 F.3d 489
trademark. In UK the action against the mala fide registration of domain names with an intention to sell or transfer it to the owner of the registered trademark has developed through case law around the doctrine of passing off. This doctrine can provide protection when a company makes a false statement to mislead the public to believe that this is another company or other company’s product or intending to discredit another company, its goods or services. In other words we can say the common law doctrine is protection against the unfair intellectual property rights infringement, in the UK. The development of the doctrine has also significantly, extended the tort and, to some extent, points to an erosion of the traditional reticence of UK courts to make determinations of what is fair and ethical commercial practice. The basis of the doctrine is the intention of a defendant to appropriate the goodwill of another22. Recently the Digital Economy Act, 2010 introduced sections 124(o) to (q) into the Communications Act, 2003, granting the secretary of state certain powers over domain name registries. These power were given to the secretary of state to check whether any misuse of domain names or do not have adequate arrangements in place to seal with the complaints in connection with the domain names. The important decision by the Court of Appeal in the UK in relation to the abusive domain name registration is the case of British telecommunications v. One in a Million Ltd 23. In this case the defendant was a dealer in internet domain names who had registered a large number of domain names which comprised or included the names and trademarks of a number of wellknown enterprises. The claimants, who included Marks & Spencer Plc, J Sainsbury Plc, British Telecommunications Plc, and Virgin Enterprises Ltd, alleged that the registration by one in a million of the domain names like sainsbury.com, markesandspecer.co.uk, marksandspecer.com, bt.org, britishtelecom.co.uk, britishtelecom.net, virgin.co.uk amounted to passing off and to the threat to pass off. None of the domain names registered by One in a Million were in active use as internet addresses and the defendants claimed that they had registered the domain name s with a view to making a profit either by selling them to the owners of the business goodwill associated with the names or to other persons who might have a legitimate reason for using them. But the court does not accepts the contention made by the defendant and at the first instance ordered both negative injunctions, restraining the defendants from passing off, and mandatory injunctions, requiring the defendants to assign the disputed domain names to the claimants. Further the court
John de Lacy, The Reforms of United Kingdom Company Law 144 (Cavendish Publishing Limited, London, 2002) 23 (1998) FSR 265
issued a warning to the cyber squatters stating “Any person who deliberately registers a domain name on account of its similarity to the name, brand name or trademark of an un connected commercial organization must expect to find himself on the receiving end of an injunction to restrain the threat of passing off, and the injunction will be in terms which will make the domain name commercially useless to the dealer”. The latest case decided by the Nominet UK disputes resolution service, which is an authorized body in the UK for an effective and transparent method of resolving disputes in the .uk TLD in Emirates v. Michael Toth24 was a good example for the abusive registration of domain names in reference to the geographical area. In this case the appeal panel transferred the domain name to the complainant, “Emirates”, the official airline of the United Arab Emirates. The panel considered that the respondent probably designed his website emirates.co.uk in light of knowledge of the complainant. Or at least he continued to use it because of benefit resulting from increasing recognition of the Emirates airlines. The panel said that traffic to the respondent’s site was more likely to have been looking for the complainant’s own website instead of a general information site concerning the United Arab Emirates and the domain name was used in a manner which took unfair advantage of the complainant’s rights. The Nominet appeal panel concludes that a domain name which may appear to be geographical, and to be used in reference to that geographical area, may nonetheless be an abusive registration. Position in India: In India, Trademark act, 1999 gives statutory protection to the trademark owner against trademark infringement and passing off action. The Indian trademark law allows concurrent use of the same trademark by multiple parties, provided such use does not create a likelihood of consumer confusion. On the internet, however, concurrent use of the same name is precluded. This restriction has led to a spate of disputes between domain name holders, trademark owners and private individuals25. Since there is no direct law to grapple the threat of cybersquatting, the courts in India have largely used the common law principle of passing off like the UK. A closer perusal of the provisions of the act and the judgment given by the courts in India reveals that the
Case No. D00008634 decided on 07 January 2011 available at http://secure.nominet.org.uk/drs/searchdisputes.html Sourabh Ghosh, “Domain name dispute and evolution of the ICANN’s Uniform Domain Name Dispute Resolution Policy” 9 Journal of Intellectual Property Rights 424(2004).
protection available under the Act is stronger than internationally required and provided26. Though the provisions of the Indian trademark act did not speak expressly about the domain names, it gives two kinds of liability for cybersquatting. This act provides liability for infringement, impliedly says that a person holding a domain name violating a registered trademark can be held liable for infringement under the provisions of the act and another in the form of passing off. Further the procedure given under this act for registration itself is more safe and reliable. First case in India with regard to cybersquatting was Yahoo Inc. v. Aakash Arora & Anr27, in which the plaintiff seeking the court for permanent injunction against the defendants from using, operating any business or deal any services on the internet under the domain name yahooindia.com and other domains which are identical with the plaintiff’s trademark ‘Yahoo!’ and also for rendition of accounts and damages. It was observed by the Delhi high court that the defendants using the domain name for the same purpose like the plaintiff. The court after analyzing section 27(2) and section 106 of the Trade and Merchandise Marks Act, 1958 said that the trademark law applies with equal force on the internet as it does in the physical world. The defendants argued that the domain names are not covered under the trademark laws in India relate to goods and the plaintiff’s domain or trademark is not registered in India. They further contented that “yahoo!” is a general dictionary word and the defendants are not using the trademark of the plaintiff as it is. They have made an addition and the persons using internet and seeking to reach internet site are all technically educated and literate persons and there would be no confusion on the mind of the customers and there could be no application of infringement or passing off in this case. The Delhi High Court rejected the defendant’s argument and said that they are prima facie found to be without any observed that “it was an effort to trade on the fame of yahoo’s trademark. A domain name registrant does not obtain any legal right to use that particular domain name simply because he has registered the domain name, he could be liable for trademark infringement.” This was the first case in India in which the court has applied trademark law to support a judgment in a domain name dispute. Indian courts have followed this decision in several other subsequent cases in deciding the domain name disputes with the trademark laws.
Praveen Dalal, “Domain Name Protection in India” available at: http://www.ipfrontline.com/depts/article.aspx?id=8507&deptid=6 (visited on March 10, 2011). 27 78 (1999) DLT 285.
Another similar case decided by the Bombay High Court was Rediff Communication v. Cyberbooth28. In this case the plaintiff had filed a case of passing off against the defendant, who had registered the domain name radiff.com which was alleged to be similar to the plaintiff’s domain name rediff.com. The court observed that “once the intention to deceive is established, the court will not make further enquiry about likelihood of confusion” and prohibited the defendant from using the said domain name. The reasons given by the High Court in support of its decision is that the plaintiff and the defendant had a common field of activity, both operated the net, and both provided information of a similar nature, and both offered a chat line therefore, there is every possibility of an internet user getting confused and deceived in believing that both domain names belongs to one common source. The first case decided by the Supreme Court of India regarding the domain name disputes was Satyam Infoway Ltd v. Sifynet solutions Ltd29. This case was not related to the cybersqatting in general, but a case of typosquatting. In this case the appellant incorporation registered several domain names like sify.net, sifymall.com, sifyrealestate.com, etc., under the single registered corporate name Satyam Infoway claimed a reputation and goodwill in the name sify and the respondent was passing off its business and services by using the appellant’s business name and domain name by their siffy.net and siffynet.com. It was very well observed by the Supreme Court 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”. Supreme Court further observed that the domain name of the respondent is clearly an overlap of identical or similar services and found prima facie the dishonest adoption of the appellant’s trade name by the respondent. In countries like India, where there was an absence of relevant cyber laws to prevent this practice, such cases were decided within the ambit of trademark laws. India does not have a law for prohibition of cybersquatting. Therefore, courts interpret the principle of Passing off with regard to domain names30.
AIR 2000 BOM 27. AIR 2004 SC 3540. 30 Karnika Seth, “Protecting Intellectual Property in the Internet Age” available at: http://www.sethassociates.com (visited on March 10, 2011).
Dispute Settlement Mechanisms:
There are two kinds of proceedings available with the trademark holders to contend abusive registration of domain names. They are i) Judicial Dispute Resolution which is legal proceeding and ii) Non-Judicial Dispute Resolution which are administrative proceedings. The above discussed are examples of the statutory judicial proceedings, which are different in nation to nation. Regarding the domain name disputes and cyberquatting the non-judicial dispute resolution by the way of arbitration was world-wide accepted and conducted by the authorized bodies. At the international level ICANN approved dispute resolution service providers under the UDRP. They are: i) ii) iii) iv) World Intellectual Property Organization National Arbitration Forum Asian Domain Name Dispute Resolution centre The Czech Arbitration Court Arbitration Centre for International Disputes
Apart from these four service centres, one more body called International Institute for Conflict Prevention and Resolution was also accredited but now it was stopped from service under ICANN. These independent adjudicating bodies are administrative bodies and the administrative procedures and process is governed by the UDRP and rules. The policy encourages a synthetic approach by empowering panels to apply “any rules and principles of law that it seems applicable”. Equally it is built upon procedural arrangements which strive to provide justice which is fair, as well as rapid and cheap31. The UDRP Administrative procedure is available for the disputes concerning an alleged abusive registration of 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 faith32.
W. Cornish, D. Llewelyn, et. al., Intellectual Property: Patents, Copyright, Trademarks and Allied Rights 910 (Sweet & Maxwell Limited, London, 7th Ed,2010). 32 Para 4(a) of the UDRP.
The UDRP further 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.33 The above examples are not exclusive and other circumstances may exist that demonstrate the registration and use of a domain name in bad faith. There are five basic stages in a UDRP administrative procedure, irrespective of the dispute resolution service provider. They are: i) The filing of a Complaint with an ICANN accredited dispute resolution service provider chosen by the Complainant, such as the WIPO, National Arbitration From, ii) The filing of a Response by the person or entity against whom the Complaint was made or by the owner of the alleged domain name in dispute, iii) The appointment by the chosen dispute resolution service provider of an Administrative Panel of one or three persons who will decide the dispute,
Para 4(a) of the UDRP.
The issuance of the Administrative Panel's decision and the notification of all relevant parties, ICANN & concerned registrars and
The implementation of the Administrative Panel's decision by the registrars concerned should there be a decision that the domain names in question be cancelled or transferred.
World Intellectual Property Organization (WIPO): ICANN adopted the UDRP on August 26, 1999 and the WIPO center for arbitration and mediation for the resolution of domain name disputes started working from that day itself. It has its arbitration and mediation center at Geneva from 1994 itself for various intellectual property disputes. Of the all ICANN accredited institutions to provide dispute resolution services under the UDRP, WIPO center processing between 50%-60% of all UDRP cases. A domain name case filed with the WIPO Center is normally concluded within two months, and the applicable fee in most cases is $ 1,500. The Center has also developed a searchable online Index of WIPO UDRP Panel Decisions as well as a more concise overview of trends in WIPO UDRP panel decisions, which facilitate access to the thousands of WIPO decisions rendered thus far and enhance the predictability and consistency of decision-making under the UDRP. WIPO center also introduced online complaint mechanism where the compliant form can be downloaded and the completed word document to be submitted as an email attachment to email@example.com or direct online complaint to the center in an electronic form of model complaint. The First cybersquatting case decided by the WIPO center was World Wrestling Federation Entertainment Inc., v. Michael Bosman34. In this case the complainant, US based World Wrestling Federation (WWF) filed an electronic complaint against the respondent, an individual who registered the domain name worldwrestlingfederation.com. The contention of the complainant is that the alleged domain name in dispute was registered in bad faith by the registrant in violation of WWF’s trademark. The panel observed that the domain name worldwrestleingfederation.com is identical or confusingly similar to the trademark and service mark registered and used by complainant. The panel discovered the bad faith of the respondent from his offer to sell the domain name to complainant for valuable consideration in excess of any out pocket costs directly related to the domain name. The panel cited the two Toeppen’s case of USA and orders the respondent to transfer the registration of domain name to the complainant.
Case No. D1999-0001.
One notorious case decided by the WIPO panel in the year 2000 was Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com"35 which related to the domain name registered after the name of a well-known entertainer Madonna. In this case, complaint contends that the disputed domain name is identical to the registered and common law trademark MADONNA in which she owns rights. She further contends that respondent has no legitimate interest or rights in the domain name. Finally, complainant contends that respondent obtained and used the disputed domain name with the intent to attract Internet users to a pornographic web site for commercial gain based on confusion with complainant’s name and mark. Respondent does not dispute that the disputed domain name is identical or confusingly similar to complainant’s trademark. Respondent claims that complainant cannot show a lack of legitimate interest in the domain name because respondent (a) made demonstrable preparation to use the domain name for a bona fide business purpose, (b) holds a bona fide trademark in the word MADONNA, and (c) has attempted to make bona fide noncommercial use of the name by donating it to the Madonna Rehabilitation Hospital. The Panel after analyzing paragraphs 4(a), 4(b) and 4(c) came to a conclusion that the disputed domain name is identical or confusingly similar to a trademark in which complainant has rights and respondent lacks rights or legitimate interests in the domain name and the domain name has been registered and used in bad faith and the domain name in dispute to be transferred to the complainant. Another famous case settled by the WIPO center decided against the complainant was G.A.Modefines S.A v. A.R.Mani36 , which involves good faith of the respondent. The complainant in this case is the registered proprietor of the trademarks ‘Armani’ Giorgio Armani’ and ‘Emporio Armani’ in large number of countries. The respondent is a graphic artist and his full name is Anand Ramnath Mani. He registered the domain name armani.com in the year 1995 and using the domain only for mailing purposes and not as a website. He has provided copies of a number of e-mails sent to or by him at firstname.lastname@example.org, email@example.com and firstname.lastname@example.org. Further he filed evidence to show that his name was used by him in trade as A.R.Mani since 1981. The contentions of the complainant is that the respondent does not have any legitimate interest in the domain name and the respondent is not using the domain name, has provided no evidence of an effective use of the domain name. Given that the ARMANI mark is
Case No. D2000-0847 Case No. D2001-0537.
famous world-wide, the Respondent must be taken to have known before formal notice of the Complaint that his registration of the domain name was infringing the Complainant’s rights. The panel rejected the complainant’s contention after observing that there is no bad faith on the part of the respondent and the respondent’s legitimate use of a variant of his own name. Finally the Panel concludes, pursuant of paragraph 15(e) of the Rules, that this Complaint has been brought in bad faith and that it constitutes an abuse of the administrative proceeding. National Arbitration Forum: The National Arbitration Forum (NAF), founded in 1986 having its headquarters at New Jersey, USA. In 1999, the NAF was approved by the ICANN to provide resolution services for domain name disputes around the world, under the UDRP. Since then the forum has decided more than 14,000 disputes with approximately 1,800 fillings an year. The NAF also has its own supplementary rules for resolution like the WIPO centre. NAF deals predominantly with registered domain names that are abused by parties who have no legitimate rights to them. Some of the famous trademarks involved in NAF domain name dispute resolutions include Los Angeles Angels, Disney, Hershey's Kisses, Jimmy Buffett, and Univision. One of the important case decided by the NAF was familiarly called as gamesville case37. Apart from the disputed domain names, the respondent John Zucckerini was a well known cybersquatter. He had registered more than 200 domain names with the famous registered trademarks. In the year 2000 itself, he lost many cases in WIPO and he was ordered to pay damages amounting US $ 500,000 in cases decided by federal courts in USA under the ACPA. This case was registered by the complainant regarding the six domain names gamesville.com, gamesvilles.com, gamesvill.com, gamesvlle.com, gamevile.com and famevill.com registered by the respondent. John Zuccerini after failed in many cases does not respond the proceeding before the forum; hence the forum discussed the case and concluded that the disputed domain names to be transferred to the complainant by the respondent. A recent claim decided by the NAF on the complaint from India is the case of Entertainment Network (India) Ltd v. Ash Kapadia38. In this case the domain name in dispute is radiomirchi.us, registered by the respondent in the USA. The complainant’s contention is that the domain name was registered in bad faith, without any legitimate interest and identical to their
Gamesvilli.com, INC. v. John Zuccarini, Claim No. FA0007000095294 decided on 30 August 2000. Claim No. FA1012001364939 decided on 4 Feb 2011.
Radio Mirchi mark, which is a leading, prominent radio channel in India. The forum after discussing the usTLD policy and the UDRP came to a conclusion that the domain name was registered by the respondent with a bad faith and there is no legitimate use by them and ordered the respondent to transfer the domain name to the complainant. Asian Domain Name Dispute Resolution Centre: The Asian Domain Name Dispute Resolution Centre (ADNDRC) is a joint undertaking by the china international economic and trade arbitration community and the Hong Kong international arbitration centre. The ADNDRC was formed to provide dispute resolution services in regard to disputed generic top level domain names (gTLD's), which are the top level domains approved by the ICANN, which appointed the ADNDRC as a domain name dispute provider on 3 December, 2001. ADNDRC is committed to provide neutral panelists familiar with Asian languages, both in Asia and throughout the world. At present ADNDRC has four offices in different places in Asia at Beijing, Hong Kong, Seoul and Kuala Lumpur. In 2009, famous case decided by the Hong Kong centre was Disney Enterprises Inc. v. Wang Chong Xian39, in which the complainant is the world’s leading entertainment and media companies. They had registered trademark and corporate name “Disney” and their Hong Kong Disneyland was completed in 2005. The respondent, an individual registered the domain name beijingdisney.com in the year 2008. The centre concludes that mere addition of Beijing in the domain will not differentiate it from the complainant’s website. It will confuse the users and the respondent registered the domain name in bad faith and based on the UDRP ordered the respondent to transfer the domain name beijingdisney.com to the complainant. Another famous case settled by the ADNDRC was the case of Chinese famous airlines Air china, which registered a complaint against the respondent who registered a domain with name airchina.com. In this case also the centre ordered the respondent to transfer the domain name. The Czech Arbitration Court Arbitration Centre for Internet Disputes: The Czech Arbitration Court (CAC) is an organization based in Prague and attached to the Economic Chamber of the Czech Republic and Agricultural Chamber of the Czech Republic, established in 1949. In January 2009 ICANN, the Internet Corporation for Assigned Names & Numbers, approved the CAC to be the fourth international provider of UDRP services. Its arbitration for internet disputes are being registered under its website adr.eu, which provides
Case ID HK-0900259 decided on 30 September 2009.
Alternative Dispute Resolution services of the highest quality using a secure on-line platform and a network of expert panel lists fluent in all the languages of the European Union and many other countries. The First case decided by the CAC in February 2009 which transferred the disputed domain name novotelvietnam.com to the complainant40. Notorious case settled by the CAC panel was Air France société v. Value Domain Com/ Digirock, Inc.41. In this case The Complainant is an airline carrier company, acting globally and owner of a Community trademark “AIR FRANCE”. The respondent company registered the domain name asia-airfrance.com and the complainant filed its complaint with the CAC. The panel finds the intention of the respondent to post numerous hyperlinks that lead to commercial erotic content. Further in this case the true identity of the domain name holder was not revealed because the respondent using the privacy proxy service and ordered the transfer of domain name to the complainant with the help of the domain name registry. Criticisms on UDRP: The administrative proceedings of the ICANN under the UDRP, in no doubt, protects the interest of the registered trademark owners, it fails to give protection to the bona fide registrants of domain names with good intent to use the domain for their own purposes. There are several oppositions coming against the regulations under the UDRP. Since the system of arbitration rewards decisions made in favour of the complainant, two of the four arbitrators - WIPO and NAF have repeatedly been accused of twisting UDRP towards the trademark holder's favour. It is no mistake, critics say, that these two are also the best known, the richest and most popular.42 Overall, the system gives dispute resolution providers an economic incentive to compete by being complainant-friendly.43 In regards to case law under the UDRP, it is ﬁrst of all necessary to note that it is entirely unclear in many cases why decisions were made, and for what purpose. This is an unfortunate aspect of the UDRP as a system. Another major criticism on the UDRP was on the confidentiality of the proceedings, the parties to the proceedings cannot get to know what was happening inside the panel and the UDRP has no system of appeals and no particular
Case No. 100004 decided on 26 February 2009. Case No. 100093 decided on 16 November 2009. 42 Kieren McCarthy, “What the Hell is UDRP”, available at: http://www.theregister.co.uk/2001/10/04/what_the_hell_is_udrp/ (visited on April 8, 2011). 43 A.Michael Froomkin, “ICANN’s Uniform Dispute Resolution Policy- Causes and Cures”, 67(3) Brooklyn Law Review 608 (2002).
requirements for information given by panelists for their decisions.44 The UDRP had a strange genesis. ICANN, supposedly a technical coordination body for a key part of the Internet, and undoubtedly a body without much legal expertise, based the UDRP on recommendations by WIPO, but made a considerable number of changes of its own.45
In the recent past there are several criticisms coming against the transfer of domain names to the registered trademark owners by the domain name holders for the reason being that the apart from all the intellectual property protection the domain names are covered fundamentally under the human rights protection. It is well known that the domain names are registered under first come first served basis, then how can a trademark owner who is not registering his domain ask for transfer the domain name and some cases can be awarded damages. The registered domain name holders faced a problem on their name as a domain and the trademark which was registered by some other. Porkey.com case was the best example for this, a 14 years old boy who registered the domain name and created a website to post his software creations was ordered to transfer his domain name to the toy company as because they had registered one of their toy as ‘Porkey’. But the domain names are registered in most of the cases by the non-trademark owners in a bad faith only and the internationally accepted UDRP gives standard rules for resolving the domain name disputes outside traditional courts. In India, INRegistry functions very well with primary responsibility for maintaining the .in ccTLD. Though it does not carry out the domain name registration itself, it approves the six registrars functioning in the country through a process of selection on the basis of its own .in dispute resolution policy. It gives the perfect terms and conditions to resolve the dispute between the registrant and the complainant arising out of the registration and use of the .in domain name. The protection of domain name under the Indian legal system is working well as compared to the protection available under other legal systems and the International administrative proceedings. Apart from all these things, there should be some protections given to the trademark owners by making some regulation at the time of registration of the domain name itself. In the present situation cybersquatting is a great threaten to the intellectual property and it is high time India and other countries to setup with a legislative change to protect the IP from the cyber squatters.
Matthew Hall, Paul Heymann, et. al., “UDRP: Criticisms and Solutions” available at: http://www.cs.duke.edu/courses/fall03/cps182s/oldproj/mth6_1/finalpaper.pdf (visited on April 8, 2011). 45 Supra note 43.
Books: John de Lacy, The Reforms of United Kingdom Company Law (Cavendish Publishing Limited, London, 2002). S.K.Verma and Raman Mittal, Legal Dimensions of Cyberspace (Indian Law Institute, New Delhi, 2004). Susan Singleton, e-Commerce: A Practical Guide to the Law (Gower Publishing Ltd, England). V.K.Unni, Trademarks & The Emerging Concepts of Cyber Property Rights (Eastern Law House, Kolkata, 2002). Vakul Sharma, Information Technology Law and Practice (Universal Law Publishing Co. Pvt. Ltd, Delhi, 2005). W. Cornish, D. Llewelyn, et.al., Intellectual Property: Patents, Copyright, Trademarks and Allied Rights (Sweet & Maxwell Limited, London, 7th edn., 2010). Articles: A.Michael Froomkin, “ICANN’s Uniform Dispute Resolution Policy- Causes and Cures”, 67(3) Brooklyn Law Review 608 (2002). Mayuri Patel and Subhasis Saha, “Trademark Issues in Digital Era”, 113 Journal of Intellectual Property Rights 118 (2008). Monica Kilian, “Cybersquatting and Trademark Infringement”, 7(3) Murdoch University Electronic Journal of Law,2000. P.S.Sangal, “Trademarks and Domain Names: Some Recent Developments”, 41 Journal of Indian Law Institute 30 (1999). Sourabh Ghosh, “Domain name dispute and evolution of the ICANN’s Uniform Domain Name Dispute Resolution Policy” 9 Journal of Intellectual Property Rights 424(2004). Sunando Mukherjee, “Passing Off in Internet Domain Names – A Legal Analysis” 9 Journal of Intellectual Property Rights 136 (2004).
Web Resources: • Cyber Squatting: A Brief Legal Overview, available at: http://www.123oye.com/jobarticles/cyber-law/cybersquatting.htm • Final report of the WIPO Internet Domain Name Process, April 30, 1999, available at: http://www.wipo.int/amc/en/processes/process1/report/finalreport.html • • • http://en.wikipedia.org http://wipo.int Karnika Seth, “Protecting Intellectual Property in the Internet Age” available at: http://www.sethassociates.com • Kieren McCarthy, “What the Hell is UDRP”, available at: http://www.theregister.co.uk/2001/10/04/what_the_hell_is_udrp/ • Matthew Hall, Paul Heymann, et. al., “UDRP: Criticisms and Solutions” available at: http://www.cs.duke.edu/courses/fall03/cps182s/oldproj/mth6_1/finalpaper.pdf • Praveen Dalal, “Domain Name Protection in India”, available at:
http://www.ipfrontline.com/depts/article.aspx?id=8507&deptid=6 • Shine Joy, “Domain name, Cybersquatting & Domain name Dispute Resolution”, available at: http://www.legalserviceindia.com/articles/cddisp.htm
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