Wednesday, May 18, 2011

Domain Name Registration and Dispute Resolution

What is Domain Name?
A domain name is used to represent the owner of the address in order to locate computers on the Internet. The main purpose of a domain name is to provide recognizable names to mostly numerically addressed Internet resource. To simplify the differences among Domain name, URL and Registered domain name, the bellow mentioned example can be cited.
When a company’s domain name is same to its company’s name or one of their particular products, their domain name can be commercially exploited by other competitor companies and there is a chance of loosing the valuable IP assets of that company. Company whose domain name is registered will have the legal right to file a lawsuit against the unauthorized users.
There are two types of domain name one is “generic top-level domains (g-TLD)” and “Country Code Top Level Domain Name (cc-TLD)”. In the top-level of the hierarchy appears after the last dot ('.') in a domain name. In "iocl.com", the top level domain name is .COM. The .COM name is the most common top-level domain name, and is used to indicate that the domain name is owned by a commercial enterprise. Other common top-level domain names include .ORG (for non-profit organizations), .NET (for network and Internet related organizations), .EDU (for four-year colleges and universities), and .GOV (for government entities).
Apart from this each country has been given a unique top-level domain name. For an example, .IN indicates a domain in India and .UK indicates a domain in United Kingdom.

What are the benefits of domain name registration under trade marks law?
Domain name registration is considered as the most effective legal way to ensure legal protection under trade mark law through out the territory of a country where the trademark right was granted.
Under the statutory right to a registered trade mark, the registered owner of the domain name can protect his/her intellectual property rights against detrimental exploitation
What is the procedure for registration of a Domain name under Trade Marks (amended) Act 1999?
There is no specific section or rules in India to register the domain name under the Trade Marks (amended) Act, 1999 and Trade Marks (amended) Rules, 2002.
However it is a general practice before the Trade Mark Registry India that anyone interested can file a trade mark application for registration of its domain name.
The detail procedure to file and registration of a trademark for domain is same as the procedure envisaged in the Trade Mark Manual Portion.

Is there any International Domain name dispute Resolution system?
The Internet Corporation for Assigned Names and Numbers (ICANN) is a not-for-profit public benefit corporation to keep internet’s unique identifiers system secure, stable and interoperable. ICANN provides a globally accepted domain name dispute resolution system under the Uniform Domain Name Dispute Resolution Policy (UNDRP). The details rules and procedure to file a complaint and filing of defense argument, the formation panel to hear the disputes etc. discussed under this policy is available at: http://www.icann.org/en/dndr/udrp/uniform-rules.htm.
ICANN provides a number of providers who can deal with the domain name disputes.
In particular, ICANN involves in the following-
1. It coordinates the allocation and assignment of the three sets of unique identifiers for the Internet, which are
a. Domain names (forming a system referred to as "DNS");
b. Internet protocol ("IP") addresses and autonomous system ("AS") numbers; and
c. Protocol port and parameter numbers.
2. It coordinates the operation and evolution of the DNS root name server system.
3. It coordinates policy development reasonably and appropriately related to these technical functions

What are the key issues to be analyzed while a Domain name dispute arises?
Some of the key issues should be analyzed in a domain name disputes are-
 Whether the domain name holder has trademark rights over the domain name?
 Whether the domain name the legal name of the domain name holder, or some other name that is otherwise commonly used to identify that person?
 Whether the domain name holder used or using (prior to the dispute) of the domain name in connection with a bona fide sale of its goods or services?
 Whether the domain name holder using the mark in a bona fide non-commercial or fair use way at a web site accessible at the domain name?
 Whether the domain name holder made an attempt to divert consumers from the trademark owner's web site in a confusing way, either for commercial gain or in an attempt to tarnish or disparage the trademark mark?
 Whether the domain name holder offered to sell the domain name to the trademark owner (or anyone else) for financial gain without having any intent to use the mark with the sale of goods or services?
 Whether the domain name holder behaved in a pattern of registering and selling domain names without intending to use them in connection with the sale of goods or services?
 Whether the domain name holder provides false information when applying for the registration of the domain name (or does so in connection with other domain names)?
 Whether the domain name holder registered domain names of other parties trademarks?; and
 Whether the trademark of the owner’s trademark satisfies the criteria of distinctive and famous?

What is WIPO Arbitration and Mediation Centre to adjudicate the disputes relating to Domain name?
It provides international dispute resolution system on the basis of the ICANN’s UNDRP. The WIPO Arbitration and Mediation Center is recognized as the international leading institution in the resolution of Internet domain name disputes. Since December 1999, the Center has administered over 32,000 proceedings, of which over 17,500 under the WIPO-initiated Uniform Domain Name Dispute Resolution Policy (UDRP) which is adopted by the Internet Corporation for Assigned Names and Numbers (ICANN). The UDRP applies to disputes in the generic Top-Level Domains (gTLDs) (e.g., .com, .net, .org), as well as an increasing number of Country Code Top-Level Domains (ccTLDs) (e.g., .in for India, .au for Australia).
A detail guidelines on the dispute resolution procedure before the WIPO Mediation and Arbitration Centre is available at: http://www.wipo.int/freepublications/en/arbitration/892/wipo_pub_892.pdf
In 30th April 1999, WIPO recommended and published a report on the issue and dispute resolution process on domain name. Based on the WIPO’s recommendation ICANN adopted the Uniform Domain Name Dispute Resolution Policy (UNDRP) which came into effect from 1st December, 1999.
There are a number of ICANN accredited domain name dispute resolution providers under UNDRP from time to time. WIPO is the leading ICANN accredited domain name dispute resolution providers in the world. According to WIPO about 60% of all cases filed under WIPO domain name dispute resolution policy.

What are the types of Domain name disputes?

There are two types of controversies that can rises under Domain name dispute. In the first type of dispute, an individual reserves the domain name of a well-established company for the purpose of re-selling it to the company at a higher profit which is called “Cyber squatting.” The second type of dispute involves two established companies with similar domain names.

Cyber squatting can be defined as the practice of registering a domain name with an intention to earn profit by selling it to the trademark owner. Basically, there are two things which are responsible for this practice. First, Registrar of trade marks grant domain name registration on first come first served basis. Secondly, a trademark is not infringed by a domain name unless the trademark existed at the time of domain name registration.


Is there any case precedent on domain name disputes in Indian courts?
Indian Courts have seriously dealt with Cyber squatting and have confirmed that such activities shall be looked upon. In the case of Tata Sons Limited v, Bodacious Tats & Ors., the defendants were unable to establish any legitimate interest for the use of “TATA” as their domain name. Hence, the Delhi High Court restrained the use of the trademark “TATA” as a domain name. Similarly, in Dr. Reddy’s Laboratories Ltd v. Manu Kasouri, the Court found that the defendant had bad faith in registering “Drresddyslab.com” as their domain name. One of the significant cases in this regard is Yahoo case where the Internet website sued an Internet pirate who had not only registered the domain name “Yahooindia.com” and many other variations of it but had used “Yahooindia” as a trademark in a similar manner on its website. The Delhi High Court granted an injunction restraining the defendant from using “Yahoo” either as a part of his domain name or as a trademark or from copying any of the contents of the plaintiff’s web page and thereby infringing yahoo’s copyright.