This article has been written by Nishant Gulyani pursuing the Diploma IPR, Media and Entertainment Laws from LawSikho.
Table of Contents
Introduction
In this era of the digital revolution, every business, whether big or small, has to build its presence online through social media and websites. According to WIPO (World intellectual property organization), the number of cases involving a similar domain name has gone through the roof in 2020 as a direct result of businesses going online due to the COVID-19 pandemic. A majority of these are cybersquatters,i.e., people who register a large number of domain names similar to well-known brands with the intention of extorting money from them in exchange for the domain name. With work from home becoming the new normal and businesses going online, it has become inevitable that a business shall face this issue. So the only possible solution is for people and businesses to be educated about the policies and rules formulated by the .IN Registry to tackle these illegal practices.
The INDRP has been adopted by the .IN registry/NIXI (National Internet eXchange of India) to resolve disputes arising out of domain names that use the .in code like amazon.in. This article will explore the concept of an INDRP complaint when one should file it, how should one file it, and on what grounds can one file the complaint. The INDRP Rules of Procedure as laid down by the Registry to govern the proceedings have also been discussed in detail in this article.
What is the INDRP?
Following the acceptance of the internet as a tool to promote and sell goods and services, there has been a steady and rapid increase in the number of domain name disputes in the country. To regulate these disputes, the .IN registry formulated a policy named the INDRP in 2006.
The INDRP was drafted in accordance with international guidelines (of the WIPO) and the provisions of the Information technology Act, 2000. The INDRP governs disputes regarding domain names containing the .IN or .Bharat code at the end, such as amazon.in, ssrana.in or apple.in . (Give an example of a .Bharat code as well ?)
What is an INDRP Complaint?
An INDRP complaint refers to a complaint filed under the INDRP policy against an infringing domain name containing the .in code at the end.
For example, if you have a website and you have a trademark ‘aston martin‘ and even a domain name registered with that mark, i.e. astonmartin.com and someone else registered the domain name astonmartin.in or astinmartin.in , then you can file an INDRP Complaint either for the cancellation of the infringing domain name or for its transfer to your name.
In simpler terms, if someone registers a domain name that is identical or confusingly similar to your mark with a mala fide intention and without any legitimate interest in the name, you should file an INDRP Complaint.
Grounds on which you can file an INDRP Complaint
Paragraph 4 of the INDRP policy/Rules provides the ground for filing an INDRP Complaint:
- The registered domain name should be identical/confusingly similar to your mark (trademark or service mark) or the name in which you have rights.
- There shall be no legitimate interest or rights of the Registrant in the registered domain name. The INDRP (Paragraph 6) provides examples of what can be termed as the Registrant’s legitimate interests and rights:
- The Registrant is engaged in the bonafide distribution of goods and services under the domain name or a name identical/similar to the domain name. For example, if you are the owner of a car brand, you launched a car under the name carrier and registered it as a trademark. Mr. Gupta, on the other hand, is selling toiletries through his website under the registered domain name CARRIER.IN. Now you can’t restrict Mr. Gupta from selling his goods under a domain name identical/confusingly similar to your mark, as he is engaged in the bonafide distribution of goods and services.
- Internet users identify the Registrant with the disputed domain name, whether he owns no rights relating to the mark under the Trademark Act.
- There is no intention on the Registrant’s part to divert any customers or ride on the goodwill associated with the Complainant’s Mark. He/she is using the domain name for a lawful non-commercial or fair purpose.
3. The domain name should have been registered by the registrant in bad faith. The INDRP (Paragraph 7) provides examples of what can be termed as bad faith:
- If the Registrant has registered the domain name for the sole purpose of selling, renting, or transferring it back to its original owner, i.e. the Complainant.
- The Registrant registers the domain name before the owner of the mark in order to prevent the original owner (Compliant) from registering that domain name.
- If the registrant has been using the domain name to attract innocent internet users to the name and reputation of the Complainant by causing confusion as to any affiliation or sponsorship between the Registrant and the Complainant. For example, if you are the owner of APPLE and someone registers a domain name APPLEESTORE.IN and on its website provides links to its competitor’s goods and services, i.e. provides details and links to the mobile phones of Samsung and OnePlus. It will be considered as registering and using it in bad faith.
What happens after filing the complaint?
After filing the complaint, the registry will:
- Review your complaint–
The registry will check whether all the requirements under the rules of procedure are met in the complaint. If yes, then the complaint is moved forward to the next stage. If no, then the complaint is forwarded back to the complainant to remove any discrepancies present in the document and submit it again.
2. Appointment of an Arbitrator–
Within 5 days of receiving the complaint, the registry appoints an arbitrator from its list of registered arbitrators.
3. Passing an award–
The arbitrator, after hearing both the parties, passes an award no later than 60 days from the commencement of proceedings. He can seek a 30-day extension, but can only do so in exceptional cases.
4. Communication of decision–
After the award is passed by an arbitrator, it is the duty of the registry to forward the decision of the arbitrator to both parties within 5 working days.
Rules and procedures to be followed under INDRP
The .IN Dispute Resolution Policy (INDRP) has been published by the .IN registry. It was drafted in accordance with WIPO guidelines and necessary provisions of the Information Technology Act 2000.
All parties to a dispute must study the following two documents carefully:
- .IN Dispute Resolution Policy (INDRP)– It provides different grounds for the filing of an INDRP complaint and contains illustrations establishing those grounds and the remedies available to the parties.
- Rules of Procedure for the INDRP– These rules outline how to file a complaint, reply to a complaint, along with the fees, communications, and other procedures that will be followed. Some of the important rules are:
The Procedure of Dispute Resolution Under the INDRP;
- The complainant shall file his complaint and supporting documents with NIXI in an online form.
- A power of attorney shall be submitted with the complaint either by the aggrieved party or its authorized representative.
- The complaint should not be more than 5000 words (excluding supporting documents/evidence).
- The supporting documents/evidence shall not exceed 100 pages in total.
- Within 5 days of receiving the complaint, the registry shall appoint an arbitrator from its list of registered arbitrators.
- Personal hearings are conducted only at the request of either party or both parties. The personal hearing includes video conferencing and teleconferencing.
- There can’t be more than 2 hearings.
- After an award is passed by the arbitrator, it is the duty of the registry to forward the decision of the arbitrator to both parties within 5 working days.
The INDRP Rules of Procedure can be accessed from here.
Case laws
Facts – The respondent registered a domain name ‘marutisuzukieeco.co.in’ similar to the trademark of the complainant, MARUTI SUZUKI.
Issue – The Complainant (Maruti Suzuki) argued that, due to the deceptive similarity of the disputed domain name with the Complainant’s MARUTI SUZUKI mark, it would cause confusion in the minds of innocent internet users and will divert customers from the Complainant’s website.
Regulations/Provisions – The complainant satisfied all the 3 grounds for the filing of a complaint (i.e., identical/confusing similarity, bad faith, and no legitimate rights or interest) as stated in Paragraph 4 of the INDRP policy and provided evidence of its more than 100 registered trademarks all over the world.
Held – It was observed by the Arbitrator that slight character changes made by the Respondent to the Complainant’s mark ‘Maruti Suzuki’ are insufficient to avoid confusing similarity.
The Arbitrator held that by registering the disputed domain name, the respondent has intentionally attempted to attract Internet users to the respondent’s website or other online locations by creating the likelihood of confusion with the complainant’s trade name or trademark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or online location.
Analysis- It is a clear-cut case of cybersquatting where the respondent surrendered the domain name following an INDRP Complaint by the Complainant. The disputed domain name incorporates the complainant’s mark in its entirety, which lands us to only one possible conclusion: the respondent wanted to capitalize on the goodwill of the complainant’s Maruti Suzuki Mark. Here, the fact that the respondent was unaware of the complainant’s famous and well-known Maruti Suzuki mark is inconceivable.
Facts – The respondent registered the domain name HARRIER.IN similar to the Complainant’s Harrier Mark.
Issue – The Complainant (Tata Motors) argued that the respondent was using the mark to utilize the goodwill of the Complainant and capitalize on the confusion caused to customers due to the similarity of his domain name with the Complainant’s mark.
Regulations/Provisions– As per the grounds mentioned in paragraph 4 of the INDRP, the complainant has to establish that the Respondent has been using an identical domain name in bad faith with no legitimate interest in the name. According to paragraph 6 of the INDRP, if the Respondent has been using the domain name for a bonafide offering of goods and services under the domain name and is known by internet users by that name (i.e. HARRIER.IN) then it can be said to have a legitimate interest and rights in the disputed domain name.
Held– It was held by the Arbitrator that the Respondent was engaged in the bonafide distribution of goods and services related to computer software under the name HARRIER before receiving the dispute notice and had registered the domain name HARRIER.IN much prior to the Complainant. The complaint was dismissed.
Analysis- Proving identical or confusing similarity of a domain name with your mark is insufficient to take down the disputed domain name. Two other grounds mentioned in the paragraph of the INDRP policy also need to be proved, i.e., bad faith and no legitimate interest in the name. If an individual is carrying on his genuine business and providing goods and services through the disputed domain name, it can’t be said that he is operating under bad faith or without any legitimate interest in the domain name.
Discussing international perspective
This practice of registering a domain name identical/confusingly similar to a well-known brand in the market happens all over the world, and even in some countries like China, this is the business of many individuals, i.e. they register domains in bulk and then try to extort money from the brand owners by demanding a large amount of money in return for the domain name.
Each country has its own policy. Like India has an INDRP policy to tackle domain name disputes containing .IN or .Bharat codes in the domain name, China also has a China Internet Network Information Center Dispute Resolution policy (.CN Policy) governing domain name disputes with .CN and 中国 code. The complainant has to prove that the disputed domain name is identical or similar to his mark or name and has been registered or used in a bad faith with no legitimate interest. (Article 8 of .CN Policy)
Basically, all these National Domain Dispute Resolution policies have been adopted following the footsteps of the UDRP (Uniform Dispute Resolution Policy), and that is the reason for the similarity in their provisions. If the domain name contains a top-level domain code such as .COM, .ORG, or .EDU, then the complaint has to be filed under the UDRP with the WIPO Arbitration Center.
The key differences between INDRP and UDRP
- The INDRP appoints a single arbitrator to oversee the arbitration proceedings, whereas the UDRP allows for an administrative panel of one to three panelists.
- Under INDRP, paragraph 4, you need to prove that the disputed domain name has been registered OR is being used in bad faith, but under UDRP, paragraph 4(a), you need to prove that the domain name has been registered AND is being used in bad faith.
- A party to an INDRP process may request a personal hearing with the arbitrator to present arguments to prove the merits of its case; the UDRP does not have such a provision.
The UDRP and .CN Policy is also almost similar as the three grounds listed under Article 8 of the .CN policy is similar to the grounds listed under 4(a) of the UDRP.
The key differences between .CN Policy and UDRP
- Under.CN policy is sufficient to prove either registration or use of the name in bad faith, but under the UDRP a complainant needs to prove both, i.e., the registration and the use of the disputed domain name in bad faith.
- Under .CN policy, a complaint can be filed against a disputed domain name similar/identical to a mark or any ‘name’ in which the complainant has rights, while under UDRP, a complaint can be filed against a disputed domain name similar/identical to only the trademark of the complainant.
Loopholes in current policy and the need to amend it
Under paragraph 3(c) of the INDRP, a single complaint is filed against a single disputed domain only, and if someone is using your mark on four disputed domain names, you need to file four different complaints.
For example, if you are the owner of ASTON MARTIN and someone is using the domain names ASTINMARTIN.CO.IN, ASTINIMARTIN.IN, ASTINMARTINSTORE.IN, and ASTINMARTINCLOTHING.IN, then you need to file four different complaints against four disputed domain names, which will definitely be a costly process for you. Moreover, your complaint will be assigned to four different arbitrators.
Consequences of this loophole
- It becomes a very expensive process to file several complaints against an entity using several disputed domain names, as it costs around INR 14000 to file a single INDRP Complaint.
- When different complaints are filed to protect the same trademark, a separate arbitrator is appointed to deal with each complaint, which may lead to the passing of inconsistent and conflicting decisions.
Need for amendment
There is an immediate need to amend this paragraph and bring it in compliance with the UDRP, which allows for the filing of a single complaint against an entity using several domain names identical/confusingly similar to your mark or name.
Conclusion
With the ever-changing digital world, businesses have moved online, and so have disputes and crimes. In order to tackle these online disputes, we need to be aware of the procedures and rules associated with them.
A domain name complaint can be filed with the .IN Registry/NIXI under the grounds mentioned in paragraph 4 of the INDRP policy, i.e. bad faith, identical/confusingly similar mark, and no legitimate interest in the mark. While registering your business online with a .COM domain, you should also register other domains, such as .IN domain for the name of your business, to avoid disputes in the future. Website service providers like GoDaddy or WordPress provide registration of a domain name on a first come first serve basis, and anyone can seek a domain name registration similar to your trademark or domain name to ride on your goodwill, So it is your responsibility to be aware of such malpractices and take measures to tackle them as stated in the article above.
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