Domain name and associated disputes – Intellectual property

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A domain name is a word or a combination of words that helps identify the association of a website with another individual. Domain names are used to locate a website and are commonly referred to as URLs (Uniform Resource Locator). Internet domain name is very important for any business that wants to establish its name globally. Domain names consist of two parts, the first and second level domain names. These are easily identifiable, for example, here “com” is the top level domain and “google” is the second level domain. Anyone can purchase a domain name from a certified registrar for a limited time that can be renewed by the registrant when it expires.

Domain names can be registered and protected as trademarks as long as they meet the requirements for 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). Therefore, in the event of abusive registration or violation of existing rights, an individual has the opportunity to file a domain name dispute complaint under the Uniform Domain Name Dispute Resolution Policy (at the level international) or under the .IN domain name dispute resolution policy (at the national level).

A domain name dispute can arise when there is violation, conflict and / or unauthorized use of a domain name by an individual. In order to successfully establish a domain name dispute, the complainant is required to meet the criteria set out in the various dispute resolution policies. These patterns are developed later in this article.

Because the Internet is not limited by any borders or borders, and due to the global presence of most businesses, a domain name violation may occur in a different country than where it is registered. In the event of such a cross-border breach, the individual may use the Uniform Domain Name Dispute Resolution (UDRP) policy, a standard and uniform policy across the world, unlike national laws which may vary from jurisdiction to another.

Basically, there are three different ways to damage a domain name:

  • Cyber-squatting: Cyber ​​squatting is carried out through domain name parking or when an individual registers a domain name without intending to conduct legitimate commercial or non-commercial activities. It is commonly done by registrants in order to sell the domain name to its authorized user at exorbitant prices.
  • Liaison and framing: Link and Framing is when a user clicks on a text hyperlink that takes them to another website. This website is similar to a well-known business and is created only to trick consumers into believing that their domain name is associated with successful business entities that have a strong online presence.
  • Meta markup: Metatag occurs when words and tags are used to manipulate search engines to display the violated website. They work the same as hashtags used on social media websites to increase visibility.

Domain name disputes can be resolved using a variety of mechanisms. Proceedings before the Uniform Domain Name Dispute Resolution Policy (UDRP) or the .IN Domain Name Dispute Resolution Policy (INDRP) are governed by an arbitration procedure. The first provides that the complainant chooses the arbitrator from a list of suppliers while in the case of the second, the arbitration process is conducted under the provisions of the Indian Arbitration and Conciliation Act, 1996. Alternatively, the plaintiff can also have recourse to a civil recourse procedure, that is to say by bringing an action for infringement before a commercial court. Notably, in the latter case, the domain name dispute is resolved under the Trademarks Act of 1999 and the proceedings are conducted in accordance with the Code of Civil Procedure of 1908. In addition, the plaintiff can also opt for an amicable settlement, thus avoiding litigation. the costs and the prolonged duration of the dispute. Obviously, Complainants are free to choose their dispute resolution mechanism.

  • ICANN Dispute Resolution Policy– Internet allows access to the Web without geographic limitation, because a domain name is generally accessible regardless of the geographic location of buyers. (Unless a specific website is blocked in the country by this government). This is beneficial for universal accessibility and connectivity, and gives the domain name worldwide exclusivity. ICANN (Internet Corporation for Assigned Names and Numbers) is a global Internet administration and with the introduction of the UDRP (Uniform name Dispute Resolution Policy), together they form the best possible redress system for international disputes relating to domain names because they are expensive. effective.
  • Uniform Domain Name Dispute Resolution Policy (UDRP)– The UDRPs define the legal framework for the resolution of disputes between a domain name holder and a third party in the event of abusive registration in generic top-level domains (gTLDs). ICANN has adopted the UDRP Rules which define procedures and other requirements for each stage of dispute resolution and administrative proceedings. The dispute resolution process is managed by service providers accredited by ICANN. The WIPO Arbitration and Mediation Center (WIPO Center) is one such provider of dispute resolution services. This policy provides for dispute arbitration instead of domain name dispute litigation.

In accordance with paragraph 4 of the UDRP, any person (complainant) may bring an action on the grounds that:

  • A domain name is identical or similar to the point of confusing a trademark or service mark to which the complainant has rights,
  • The owner of the domain name has no right or legitimate interest in the domain name, and
  • The domain name has been registered and is being used in bad faith.

But the Complainant is required to prove all these elements if he wants his action to succeed. If the abusive registration is proven, the domain name registration is canceled or transferred to the complainant, however no financial recourse is available.

  • Decisions of the WIPO Arbitration and Mediation Center on Domain Names– The World Intellectual Property Organization is the leading provider of domain name dispute resolution services under the UDRP. WIPO provides qualified experts, complete and expeditious administrative procedures, and serves as a globally impartial and credible dispute resolution center. A domain name file filed with WIPO is normally concluded with a minimum fee, within two months and using online procedures.

There is no legislation in India that explicitly refers to cyber squatting or other domain name disputes. However, domain names are considered trademarks based on their use and the reputation of the brand. In the absence of an appropriate law to address cyber squatting, domain name owners can bring an action for trademark infringement and infringement under the Trademark Law of 1999 against the infringer.

  • .IN Dispute Resolution Policy(INDRP) – The INDRP was adopted by the National Internet Exchange of India (NIXI) and is incorporated by reference into the Registry Accreditation Agreement (RAA). It imposes the terms and conditions which govern any dispute in connection with .IN or .Bharat domain names. Under NIXI, the .IN registry operates as an autonomous body that has primary responsibility for the maintenance and operational stability, reliability, and security of the .IN country code top level domain (ccTLD). The procedures within the .INDRP can be initiated by any person who considers that the registered domain name is in conflict with his rights or legitimate interests, under paragraph 4 of the. the INDRP on the grounds that:
    • the domain name of the Holder is identical or similar to the point of confusing a name, a trademark or a service mark over which he has rights;
    • the holder has no right or legitimate interest in the domain name, and
    • the Holder’s domain name has been registered or is used in bad faith.

The Holder is required to submit to a compulsory arbitration procedure if a complaint is lodged. The .IN registry appoints an arbitrator for proceedings in accordance with the Arbitration and Conciliation Act 1996.

The arbitrator considers the Domain Name to be registered and used in bad faith in circumstances where:

  • The Registrant 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 documented amount of the Holder. pocket costs directly linked to the domain name; Where
  • The registrant registered the domain name in order to prevent the owner of the trademark or service mark from mirroring the mark in a corresponding domain name, provided that the registrant has engaged in such behavior; Where
  • The Holder has intentionally attempted to attract Internet users to his website or other online location, creating a risk of confusion with the name or brand of the complainant as to the source, sponsorship, affiliation or approval of the Holder’s website or of a product or service on the Holder’s website.

With the advent of internet and the expansion of businesses and their presence on it, it is extremely important to protect and safeguard the brand / brand name of a business online. Domain name litigation has revolutionized just like trademark infringement on the Web. Nowadays, with the presence of artificial intelligence and various tools, it has become easier for brand owners to identify trademark infringements online rather than identifying infringements in the field, as names domain names are accessible from anywhere in the world. We see that the legal precedents mainly favor the owner of the mark or the previous user of the mark, so in the event of an alleged infringement, it is a good strategy to file a complaint for domain name litigation.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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