IPR: Domain Name Disputes

This article is an attempt to understand the intellectual property disputes related to the website domain names. The article is specifically written in the question-answer format to cover different aspects of the subject.

 

 

 What is a domain name?

In simple terms, a domain name is the address of a website over the internet. It’s similar to the name/address of house property in the real world. We all know that the computer understands only the language of the Bits, i.e. of the numbers. Therefore, the address of a website is essentially a series of numbers and called the IP address. With the passage of time computer science has evolved andcoding has become possible in human-understandable languages. These days it’s also possible to execute many of the computing activities without even knowing the coding languages through graphical user interfaces. In the same way instead of the numeric IP Addresses we use human languages for the domain names, predominantly most of these names are in English, whereas with the development of the UNICODE webnames can also be found in non-English languages. The only condition for the web domain names is that these domain names must be unique such that the computers can uniquely identify each of the domain names in the vast digital jungle. ICANN  (The Internet Corporation for Assigned Names and Numbers) is the entity that coordinates these unique identifiers across the world. Therefore, it is very clear,if we eliminate the coordination done by the ICANN, there won’t be the internet. Some of the popular examples of domain names are amazon.in, amazon.com, flipkart.com, etc.

Why the domain names are important?

In the virtual world, a Domain Name is the identity of an entity over the internet. To understand the importance of the domain names, one has to understand the fascinating evolution of Information Technology.Every aspect of human existence from social life, commerce, books, tv, restaurants, hotels, car rentals has transformed and even Government functions have gone online with the development of Intimation Technology. In the current circumstances of COVID-19 pandemic, we all spent close toa year and a half in our houses working from homeand we couldsustain this phase only because of the Information Technology and unprecedented growth of the internet. In India, another thing has changed, i.e. digitization of money and overwhelming growth of online fund transfers! Today, our local grocery store or the “Paanipooriwaala” happily accepts digital payment using the fund's transfer Apps. Therefore, it has become very important for every businesses entity to ensure the Digital World presence and present the uniqueness of their brand identities. Domain Name and with the changing times, the mobile app are the core identification marks of a business in the virtual world.Hence there is a lot of similarity between the domain name and the trademark. Therefore, any lapse in protecting the identity of the brand through the domain names may result in potential business losses. Therefore, irrespective of whether an entity is big or small, it needs to give careful consideration to the domain names and ensure they are taking every step to maintain its uniqueness.

What are the different types of domain names?

These days we shop on the online megastores such as amazon.in, we consume news from the portals of timesofindia.com, opindia.in or bbc.co.uk. The government services and updates can be accessed from the websites of various government sites such as ipindiaonline.gov.in or covin.in. One must have noticed in the above-mentioned examples of the domain namesthat it contains various extensions such as “.in”, “.co.uk”, “.gov.in”. These extensions of the websites can be classified in various categories of domain names and they are referred as top generic Top-Level Domain (gTLD) names, country code Top Level Domain (ccTLDs) names and new Top-Level Domain names.  The examples of the gTLDs are “.com”, “.org”, “.edu” etc. Whereas the country code top-level domain names are two-letter domain extensions, these extensions are assigned for a country, geographic location or territory such as “.IN”,”. JP, “.UK”, etc.

With the advancement of time, growth and technology, several new top-level domain names were introduced mainly to classify the brands, organizations and these services are offered by various entities. These new top-level domain names provide means to directly identify the natureof the business entities and gives the entities an optionto customize their domain names. Some of the examples of these new TLDs “.app”, “.tv”, “.io” etc.

 

What is the framework for Domain Name Dispute Resolution under the WIPO?

To resolve the disputes around the domain names, the WIPO - AMC (Arbitration and Mediation Center) provides time- and cost-effective mechanisms through online Arbitration proceedings. That the Arbitration proceedings are based on the Uniform Domain Name Dispute Resolution Policy (UDRP) , which is very elaborate and covers various crucial aspects of the domain name dispute. That the WIPO-UDRP has wide and exhaustive jurisprudence spanned over 50,000 decided cases. That all the WIPO Arbitral awards are available for the public view and WIPO has published a detailed guide in form of WIPO UDRP overview from time to time, its latest version being WIPO Jurisprudential Overview 3.0 .

That the WIPO – UDRP Arbitration tribunal has jurisdiction to decide the domain name disputes related to the generic Top-Level Domain Names .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel and travel. The UDRP also applies to all New gTLDs.  In addition to the above, the WIPO-AMC also provides domain name dispute resolution services for 76 country code Top-Level Domains (ccTLDs).

The arbitration proceedings can be invoked by filing a complaint by a complainant against the respondent who has registered a domain name in bad faith, which is identical or confusingly similar to the domain name of the complainant. The complainant to succeed it has to satisfy three elements, as prescribed in para 4(a) of the UDRP, the same has been reproduced as below:

  • the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
  • the respondent has no rights or legitimate interests in respect of the domain name; and
  • the respondent’s domain name has been registered and is being used in bad faith

  • Are the domain names a type of intellectual property? If yes, how?


    Names, more so brand names, are the identification marks for a business. Among many things, brand names are the expression of the unique personality, quality and character of the product and/or services of the brand itself. With the consistent delivery of high-quality products, the brand names generate goodwill and brand equity for themselves.The brand name often involves a Trademark of Logo, which act as the visible identifier for the brand in the physical world. Whereas, the domain name in the virtual world is an expression of the product and services offered by the brand in the real world and hence the domain names carry the goodwill and uniqueness of the brand in the virtual world. Moreover, names are the creation of the mind and intellect and hence are classified as intellectual property. The goodwill of a business is the advantage gained by the business through the reputation of the brand and its long-standing association with customers. The reputation of the name and domain names possess the value of the attraction of the business to the customers..


  • Are Trademarks and Domain Namesare similar?


    With the evolution of the Intellectual Property law, the protection to the Tradenames has developed in the form of Trademarks. There is a long history of the evolution of law related to trademarks both in India and across the globe.Since the evaluation of trademark law is not the subject of the current discussion, we will not dive into it, will only touch base on the relevant portions of that law related to the Domain Names. That, in the modern Trademark enactments, such as Indian Trademarks Act 1999, both the tradenames and symbols. If we consider domain names as the identifier of a brand or a business in the world of the Internet and websites then the domain names are identical to that of the Tradenames. Therefore, when a question of genuineness over the ownership of a domain name occurs, registration of the Trademarks is an expression of legitimate interest over the said name and it is a powerful right that helps the registrant. Therefore, the law of trademark plays a vital role in determining the ownership over the web domain. However, it is also important to understand that there are other critical elements along with the registration of trademarks that help in determining the legitimate interest over a web domain name.


  • What are the Trademark classes and whether the classification plays any role to protect the domain names?


    The fourth schedule to the Trademarks rules defines these classes across the product and service categories . As per the classification of the Trademarks, there are 34 product classes and 11 service classes. A Trademark applicant can apply for registration in one or more Trademark classes depending on its product and service offering. It is important to understand the TM classes as they define the area of business operations as per the declaration of the mark owner, in the context of the domain names, registration against the applicable classes iscrucial to determine the extent of the protection. The Hon’ble Supreme Court of India in the judgement of Nandhini  has very rightly observed that the Trademark protection shall not create Monopoly overall or the entire class of the Trademark upon registration. Hence, it may very well be possible that several businesses legitimately use similar tradenames/business domains across the different categories. Likewise, for a given class - when the classification is itself broad, then for different products or services there can be a possibility of co-existence of similar tradenames.

    Similarly, the nature of the mark, i.e. the name of the mark can make a mark as a weak mark, or an abstract or a strong mark. The same characteristic of the Trademark is also applicable in the case of domain names. The weaker, common names don’t get the protection even in the case of domain names.  


  • How are the Domain Names protected in the borderless Digital World? 


    With the breakthrough of the developments in the 21st century over the last two decades, we have seen massive disruption in the industrial world. The territorial boundaries of the nation-states have been breached with the advancement ofinformation technology. Modern communication networks have truly made the world interconnected and interdependent like never before. The said interconnection and interdependence at one end have empowered the global economy and workforce, while at the other end it has made the world susceptible to the threats from bad elements across the globe. Therefore, at one end one can sense the opportunities presented by a huge global marketplace, on the other hand, it has created a new set of legal challenges for safe and secure business transactions.

    Typically, Intellectual Property rights are territorial, i.e. they are limited to the territory of the registration. However, with the advent of technology and especially that of the internet, a domain name can be accessed from any corner of the world irrespective of the jurisdiction of its origin. Hence, the digital world is beyond any geographical boundaries and poses additional challenges to territorially restricted protection. International boundaries and protection of the Trade names across the borders have always been the critical component that was responsible for the development of the IP Law across the globe. 

    As mentioned above, the international cooperation in the space of Intellectual Property goes back to 1883 with the Paris Convention followed by the 1886 Berne Convention, the 1891 Madrid Agreement, formation of BIRPI, the French acronym of United International Bureaux for the Protection of Intellectual Property in the year 1893. In the year 1970, a new International Organization the World Intellectual Property Organization (WIPO) was established under the Convention transforming an erstwhile BIRPI into WIPO. In 1974 WIPO joined the UN. Among many goals of the WIPO was to establish a Robust mechanism for quick and easy disposal of disputes related to intellectual property in the modern interconnected world. To fulfil the said objective in the year 1994, WIPO Arbitration and Mediation Center (AMC) was established. The Arbitral awards passed by the said WIPO – AMC are enforced in India as per mechanism of the Arbitration and Conciliation Act, 1996, paving a way for effective dispute resolution in the Intellectual Property space.

    Therefore, if an identical domain name is registered by another user in bad faith without having any legitimate interest in it, then if the domain falls within the gTLD under the jurisdiction of the WIPO, the arbitration process led-down thereunder shall be followed. If such a domain name falls within the country-specific domain name, then the dispute resolution process of that nation is required to be followed to seek resolution of the dispute. (More on this will be covered in the following part of the article)


  • How long does the Dispute Resolution process take to resolve a domain name dispute under UDRP? What reliefs can be sought through the adjudication process?


    That, the dispute resolution process kick start with the submission of a complaint with WIPO – AMC by selecting from the receipt of the complaint under the UDRP, typically it takes two months to arrive at the arbitral award. Mentioned below is the flow chart of the.CN dispute resolution flow chart :

    The typical relief sought as per the WIPO – AMC for the Domain Names Dispute Resolution process can be either the cancellation of the respondent’s domain name or the transfer of the respondent’s domain name to the complainant. There is a choice to select an Arbitral panel consisting of either 1 or 3 arbitrators to adjudicate the dispute. Typically, the fees for the arbitration proceedings are borne by the complainant, however, if the respondent requests a 3-member panel, then the ½ of the fees must be borne by the respondent.


  • What is the dispute resolution process for “.in” or“.co.in” domain names?


    “.in” registry governs the allocation of the “.in”, “.co.in” or“.Bharat” domain names as per the country-specific TLD for India. Its dispute resolution policy is called as “.IN Domain Name Dispute Resolution Policy (INDRP)”  and is broadly based on the UDRP as referred above. National Internet Exchange of India (NIXI), a company registered under section 25 of the Companies Act, 1956 (now Section 8 under Companies Act,2013) has the overall control over the dispute resolution process. The dispute can be reported in the form of a complaint and the resolution process is in the form of Arbitral Proceedings. The Arbitral Tribunal (AT) consist of 1 member on the panel of the NIXI and NIXI can only make the appointment of the AT. The arbitral proceedings are mandated to complete within 3 months, a maximumof 2 month’s extension can be granted. That the procedural aspects are governed through INDRP Rules of Procedure  according to which a personal/virtual hearing can also be requested by a party to the complaint.


  • How to determine the Confusing similarity requirement for the domain names?


    The term “trademark or service mark” as used in the INDRP paragraph encompasses both registered and unregistered (sometimes referred to as common law) marks. Mentioned below are the critical conditions used to determine the confusingly similar marks.

    • Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a case.
    • To establish unregistered or common law trademark rights for purposes, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
    • Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of the use of the mark, (ii) the number of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
    • (Particularly about brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
    • Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are composed solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.
    • Also, the goods and/or services for which the mark is registered or used in commerce, the filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test. These factors may however bear on a panel’s further substantive determination under the second and third elements.

  • What are the core grounds that a complainant must prove to succeed in a complaint?


    Similar to that of the UDRP, in the case of INDRP three critical conditions are required to be proved as per para no 4 of the INDRP, the conditions are as below:

    1. a) the Registrant's domain name is identical and/or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
    2. b) the Registrant has no rights or legitimate interests in respect of the domain name; and
    3. c) the Registrant's domain name has been registered or is being used in bad faith

What determines whether the Respondent has no rights or legitimate interest in the impugned domain name?

To succeed in a complaintabout the domain name against the infringer/respondent, the complainant must prove that the respondent doesn’t have any rights or legitimate interest in the impugned domain name. That the para 6 of the INDRP policy puts following conditions.

“6. Registrant's Rights and Legitimate Interests in the Domain Name

Any of the following circumstances, in particular but without limitation, if found by the Arbitrator to be proved based on its evaluation of all evidence presented, shall demonstrate the Registrant's rights to or legitimate interests in the domain name for the purposes of Clause 4 (b) :

(a) before any notice to the 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;

(b) the 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

(c) the 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.”

                   Moreover, the WIPO – UDRP Overview 3.0[1] is a compilation of the jurisprudence on the Domain name disputes. That INDRP is based on the WIPO UDRP model and the said UDRP Overview 3.0 in its second chapter has listed various other important consideration for the derivation of the rights and legitimate interest of the domain name registrant. The relevant portion of section 2.2 on qualification of the Legitimate Interest has been reproduced as below:

“As expressed in UDRP decisions, non-exhaustive examples of prior use or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of the pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required.”

Moreover, in section 2.3 it dealt with a critical question of “How would a respondent show that it is commonly known by the domain name or a name corresponding to the domain name?” the same has been reproduced as below

“…For a respondent to demonstrate that it (as an individual, business, or other organization) has been commonly known by the domain name or a name corresponding to the domain name, it is not necessary for the respondent to have acquired corresponding trademark or service mark rights…”

“…Absent genuine trademark or service mark rights, evidence showing that a respondent is commonly known by the domain name may include: a birth certificate, driver’s license, or other government-issued ID; independent and sustained examples of secondary material such as websites or blogs, news articles, correspondence with independent third parties; sports or hobby club publications referring to the respondent being commonly known by the relevant name; bills/invoices; or articles of incorporation. Panels will additionally typically assess whether there is a general lack of other indicia of cybersquatting. In appropriate cases, panels may refer to the respondent’s domain name-related track record more generally….”

Similarly, how to prove that the registration of the impugned domain name is done in bad faith?

Para no 7 of the INDRP gives guidance on what evidence can be considered as the registration of the domain name is done in the bad faith:

“7. Evidence of Registration and use of Domain Name in Bad Faith

For the purposes of Clause 4(c), the following circumstances, in particular but without limitation, if found by the Arbitrator to be present, shall be evidence of the registration and use of a domain name in bad faith:

(a) circumstances indicating that the 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 bears the name or is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of the Registrant's documented out-of-pocket costs directly related to the domain name; or

(b) the Registrant has 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 the Registrant has engaged in a pattern of such conduct; or

(c) by using the domain name, the Registrant has intentionally attempted to attract Internet users to the Registrant's website or other on-line location, by creating a likelihood of confusion with the Complainant's name or 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”

What is Reverse Domain Name Hijacking?

Reverse domain name hijacking (RDNH)happens when the complainant tries toillegitimately hijack or own the domain name of the respondent by filing a complaint in bad faith. Paragraph 15(e) of the UDRP Rules provides that, 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”.

RDNH is furthermore defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Panels have also referred to paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules in addressing possible RDNH scenarios.

UDRP - Panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. At the same time, the mere fact of a respondent default would not by itself preclude an RDNH finding as this ultimately turns on the complainant’s conduct. In either event, following some early cases to the contrary, panels have more recently clarified that, for an RDNH finding to be made, a respondent doesn't need to seek an RDNH finding or prove the presence of conduct constituting RDNH.

Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant’s failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence.

Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard.

[1]https://www.wipo.int/export/sites/www/amc/en/docs/overview3.pdf last accessed on 25/03/2021