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A Domain Name is a word or a combination of words which help identify a website’s association with another individual. Domain names are used to locate a website and are popularly known as Uniform Resource Locator (URL). The Internet Domain Name is very important for every business that wants to establish their name globally. Domain Names consist of two parts, top-level and second-level domain names. These are easily identifiable, for e.g. www.google.com, here ‘com’ is the top-level domain and ‘google’ is the second-level domain. Any individual can purchase a Domain Name from a certified Registrar for a limited amount of time which can be renewed by the registrant upon its expiry.
Domain Names can be registered and protected as trademarks as long as it meets the requirements of a trademark under the Trade Marks Act 1999. Domain Names that are registered trademarks are universally protected primarily by the Internet Corporation for Assigned Names and Numbers (ICANN). Resultantly, in case of any abusive registrations or infringement of existing rights, an individual has the option to file a Domain Name Dispute complaint under the Uniform Domain Name Dispute Resolution Policy (at the international level) or under the .IN Domain Name Dispute Resolution Policy (at the national level).
A Domain Name Dispute may arise when there is infringing, conflicting and/or unauthorised use of a domain name on part of an individual. In order to successfully establish a Domain Name Dispute, the Complainant is required to satisfy the criteria laid down in the various dispute resolution policies. These grounds are elaborated later upon in this article.
As the internet is not restricted by any borders or boundaries, and due to the global presence of most businesses, a Domain Name infringement can occur in a country different from where it is registered. In the event of such a trans-border infringement, the person can use the Uniform Domain Name Dispute Resolution Policy (UDRP), a standard and uniform Policy across the world, unlike domestic laws that can vary across jurisdictions.
Broadly, there are three different ways in which a Domain Name is infringed:
Domain Name Disputes can be resolved using various mechanisms. Proceedings before the Uniform Domain Name Dispute Resolution Policy (UDRP) or .IN Domain Name Dispute Resolution Policy (INDRP) are governed by arbitral proceedings. The former provides for the Complainant to choose the arbitrator from a list of providers whereas in the case of the latter, the arbitration proceedings are conducted under the provisions of the India’s Arbitration and Conciliation Act, 1996. Alternatively, the Complainant can also resort to civil remedies i.e. by filing an infringement suit before a commercial court. Notably, in the latter case, the domain name dispute is resolved under the Trade Marks Act, 1999 and proceedings are conducted in accordance with the Civil Procedure Code, 1908. Moreover, the Complainant can opt for out of court settlement as well, avoiding litigation costs and prolonged pendency of the dispute. Evidently, the Complainants are free to choose their dispute resolution mechanism.
As per Paragraph 4 of the UDRP, any person (Complainant) can bring an action on the grounds that:
But the Complainant is required to prove all these elements if he wants his action to succeed. If the abusive registration is proved, the domain name registration is cancelled or transferred to the Complainant, however, no financial remedies are available.
In India, no legislation explicitly refers to Cyber-Squatting or other Domain Name Disputes. However, Domain Names are considered to be trademarks based on their use and brand reputation. In the absence of an appropriate law to resolve Cyber-Squatting, Domain Name owners can initiate an action for passing-off and infringement of trademarks under the Trade Marks Act, 1999, against the infringer.
The Registrant is required to submit to a mandatory arbitration proceeding if a complaint is filed. The .IN Registry appoints an arbitrator to proceedings in accordance with the Arbitration & Conciliation Act, 1996.
The arbitrator considers the Domain Name as registered and used in bad faith in circumstances when:
The Registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the registration to the owner of the trademark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the Registrant's documented out-of-pocket costs directly related to the domain name; or
With the advent of the internet and the expansion of businesses and their presence over it, it is exceedingly important to protect and safeguard the trademark/brand name of an online business. Domain Name Disputes have revolutionised like trademark infringement over the web. These days with the presence of artificial intelligence and various tools, it has become easier for brand owners to identify online trademark infringement rather than identifying on-ground infringements, as Domain Names can be accessed from anywhere across the globe. It is seen that judicial precedents majorly favour the owner of the trademark or the prior user of the trademark, thus in case of an alleged infringement it is a good strategy to file a Domain Name Dispute Complaint.