India Domain Name Complaints – Trademark

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In recent times, we have witnessed the footfall of brick-and-mortar stores, the increased shift of people to e-commerce, and omnichannel as the new normal. This modern change in society has led several individuals/start-ups and companies to put their businesses online, making them accessible to the general public. For complete legitimacy and customer convenience, many businesses have realized the value of having a domain name synonymous with their business name and/or the name of one of their products.

With the increase in the number of domain names, the number of disputes has also increased, leading to an increase in domain name complaints. Domain name disputes arise mainly from infringements such as cyber squatting (i.e. the unauthorized registration and use of Internet domain names that are identical or similar to trademarks, service marks, company names, or personal names), meta markup (i.e. small content descriptors that help tell search engines what a webpage is about), linking (A “link” is a set of commands in HTML (Hypertext Markup Language) which, when activated by a right mouse click, directs your browser to another page. The new page may be on the website you are viewing, or it may be a page on another website) and
framing (i.e. the process of allowing a user to view content from one website while framed by information from another site, similar to the “picture in picture” feature available on select TVs.). These cybercrimes have a higher success rate than other offenses, making them the most common occurrences and opening the door to a multitude of legal actions.

In addition, the adoption of a practically identical domain name1and use of the same or similar domain name may result in user diversion which could result from those users mistakenly accessing one domain instead of another2a domain name registered and used in bad faith, the domain name owner/registrant has registered the domain name primarily for the purpose of disrupting a competitor’s business are some of the grounds that may constitute improper use and are considered essential before placing the order.

Upon receipt of the complaint, the .IN registry will assess compliance and discrepancies (if any) will be notified to the complainant within 5 business days, who will then have 7 business days to make corrections. Once the complaint has become compliant with the Rules, the .IN Registry will appoint an arbitrator within 5 business days. Previously, the .IN registry forwarded the complaint to the arbitrator; however, after the Amendments, it is now the Complainant’s duty to forward an electronic copy of the Complaint (along with any attachments) to the appointed arbitrator within 2 business days of receipt of the notification email advising of the appointment of the arbitrator. The Complainant is also required to serve an electronic copy as well as a hard copy of the Complaint and Attachments on the Declarant/Defendant and provide proof of service. The arbitrator will then set a time limit for the declarant/respondent to file submissions.

Thereafter, the arbitrator would review the submissions made by both parties and then render a decision on the merits of the case.

There is no in-person hearing unless there is an exceptional circumstance decided by the arbitrator and even in such cases, the number of in-person hearings is limited to 2 hearings.

The arbitrator is required to render the decision within 60 days of the start of the proceedings and, in exceptional circumstances, it may be extended for a period of 30 days. The arbitrator’s decision is communicated in writing to the parties in the .IN registry within 5 days of its receipt by the arbitrator.

In order to circumvent the maximum possibility of getting a registered domain name violated or immorally used by any of the third parties, one can register the popular top-level domains and forward them to your original website, follow the timely renewals, and legal watch services to perform frequent checks for identical and similar domain names, to register every word of your domain name as a trademark as well as to guarantee a complete and exclusive right to the name of domain as well as brand, consumer awareness programs to explain them about fake domains so that they are aware of scam websites or counterfeit products.

Footnotes

1. Gulshan Khatri v Google Inc. OMP (COMM) 497/2016

2. Satyam Infoway Ltd. vs. Sifnet Solutions Pvt. (2004) 6 SCC 145

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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