This article is written by Meera Patel pursuing BA.LLB (Hons.) from Maharaja Sayajirao University, School of Law. This article elaborates on the process of arbitration which is used to resolve domain name disputes.
Table of Contents
Introduction
The revolution and upbringing of the technology have been remarkable as it started a new era known as the e-age. Due to the expansion of the internet, globally, people started to make their presence known on the internet. From shopping to researching, people choose to make themselves exclusive.
Consumers prefer to do online research about any goods or services which they wish to purchase or avail of. Companies market their products through the Internet and even sell and accept purchase orders as well. Huge transactions are taking place every day through the internet. The plethora of information is just a few clicks away.
All about arbitration
The precise meaning of arbitration states that it is a process or method of disputes between the involved parties by helping them to land on agreeable terms. It is a part of the Alternative Dispute Resolution ‘ADR’ mechanism. The ADR mechanism aids the disputes between the involved parties who wish to avoid the money-draining, lengthy, and time shrinking process of resolving disputes within the Indian Judicial system, also known as the honourable court system of India. By using the arbitration method, the parties hire people who can be called arbitrators who can help them come to reasonably agreeable solutions which the parties are bound to agree with. It has been observed that people prefer the method of arbitration over resolving matters in courts. It is most commonly used in resolving commercial matters.
According to a judgment titled in the case Collins vs Collins, 1858, the court passed on a precise definition for arbitration. The definition stated by the court said that any decision that has been taken by one or more person that too with or without an umpire (also referred to as an adjudicator) on a particular matter can be observed by the court (also referred to as an arbitration office) where the disputed parties can resolve their dispute in the presence of a neutral advisor (also referred to as an adjudicator) will be known as arbitration.
In the process of arbitration, the unbiased adjudicator is supposed to create a common ground for the disputed parties so that they can agree on the legislation that has been decreed by the adjudicator and that decision will be final binding.
Types of arbitration processes
Voluntary arbitration
In a voluntary arbitration process, the parties choose or decide to resolve their dispute through arbitration at their own discretion.
Involuntary arbitration
This kind of arbitration is also known as mandatory arbitration. Mandatory arbitration can only be practiced if the parties have agreed to a contract stating that they will be bound to hold all the present or future disputes to arbitration. This applies to the parties even if they change their mind because they are bound to follow the contract they signed on their own.
Binding arbitration
For every binding arbitration, the parties are bound to accept the decision made by the arbitrator. They cannot disregard their judgment.
Non-binding arbitration
A non-binding arbitration process is similar to that of mediation. Even though the arbitrator is supposed to decide the final judgment of the case, the arbitrator will not be allowed to impose his decision/judgment on the parties involved. Although, unlike a mediator who is supposed to become a bridge between the disputed parties, the non-binding arbitration is entitled to determine the liability and state the quantum of payable damages. The arbitrator cannot interfere in the settlement process though.
Types of Arbitrations
Domestic arbitration
According to Section 2(2)(7) of the Arbitration and Conciliation Act, 1996, the type of arbitration needs to happen in India only. Other than that, when the arbitrator is resolving the disputes of the two parties, he/she needs to abide by the substantive laws of India that are mentioned in the constitution of India as the cause of the dispute had originated in India hence, the parties are bound to be subject to the Indian jurisdiction even if they are posting for arbitration and not the Indian judicial system to resolve their disputes.
International arbitration
When an arbitration happens in India which is related to either Indian or international elements whose origin is related to the subject of the involved parties dispute is known as international arbitration. The main element of this kind of arbitration is that the subject of dispute should be domiciled outside India.
Types of arbitrations that are recognized based on their rules and procedure
Institutional arbitration
Arbitrations that take place in registered arbitral institutions are widely known as institutional arbitrations. Even though the pastries opt for arbitration, they do have a choice to specify their wish to generate a judgment that abides by the rules that are followed by the chosen arbitral institution.
Ad hoc arbitration
The expression ‘Ad hoc’ means when necessary or needed. In an Ad hoc arbitration, the disputed parties decide to resolve their dispute on their own without involving any institutional proceedings. These disputes range from domestic, international, and foreign arbitrations.
Fast track arbitration
The involved parties opt for the fast track arbitration as they wish to speed up the long tedious process of arbitration as time can be an issue for many sometimes. This method is the remedy of time management as mentioned in the Arbitration and Conciliation Act, 1996.
Fundamental attributes of arbitration
Consensual arbitration
An arbitration process can only take place if all the involved parties have agreed and given their consent to resolve their dispute using the method of arbitration. Usually, the involved parties add a clause in the contract beforehand only which binds them to resolve their disputes using an arbitrator whenever they might have any disputes.
Parties have the authority to choose the arbitrator
Under the Indian Arbitration Act, 1940, the parties need to select their arbitrator or their preferred arbitral institution on their own. They can select as many arbitrators as they want but they should always select the arbitrators in an odd number so that the votes don’t clash.
Arbitrators are neutral or unbiased
While choosing the arbitrators, they have the liberty to choose an adjudicator who matches their criteria of a common language, venue for the arbitration, etc. also, this gives them a bonus advantage to select an arbitrator who is a neutral party. The involved parties shouldn’t face bias.
Advantages of opting for arbitration in India
- The arbitrators are generally employed for their work based on their field of interest and expertise. They can easily deal with issues that require technical expertise. Thus, this can be counted as an advantage for the involved parties as this factor about the arbitrators maintains a good standard for resolving disputes more efficiently.
- The court process is time consuming, tedious and it drains one financially but on the other hand, the arbitration process costs less than the court process.
- The parties can select an arbitrator or a panel of arbitrators as it is more flexible and it respects their needs such as common language, time, venue, proceedings, etc.
- The unnecessary publicity reveals their privacy but in this form of resolving disputes, arbitrations provide a security blanket to the involved parties’ privacy and confidentiality.
All about domain names
A domain name is a distinguishing identifier that states the exclusive presence of any administrative autonomy, authoritative figure on the internet. Usually, the domain names are used for:
- Networking context
- Application-specific naming
- Addressing purposes
In simpler words, a domain name identifies a network domain (it is an administered group of various private computer networks) and/or a network IP address (it is the fundamental protocol of the Internet protocol suite for passing on data programs across multiple network boundaries). For example:
- Internet
- Any server computer that hosts multiple websites
- An internet communication service
- A website
A total of 358.1 million domain names were registered by the end of 2018 out of which 2.1 million domain names were from India.
An example of a domain name is google.com but their thousands of similar domain names out there. Therefore the distinguishing feature of these domain names is that as they are used in URL addresses, the original owner of the domain name will have a specific suffix or prefix for their domain name which will be unique. Usually, various businesses, traders, companies, entrepreneurs tend to use their business names or trading company names as their domain name as it helps people distinguish the company’s online identity in the sea of other traders and companies. In simple words, it is the company’s permanent online address that any user can access regardless of their registered geographical location. A domain name gives its user a global presence in the form of their online identity.
These domain names are created after abiding by the rules stated in the procedure of the Domain Name System Laws.
What is a Domain Name System (DNS)
A domain Name System is a system by which a particular domain name is located on the Internet Protocol address and the system which gives it its unique internet presence, globally. In technical terms, the domain names are the numerical form of an IP address. Hence, as no one would like to remember the numeric form of a website, they prefer to refer to it using their IP address as it seems to be more user friendly.
Difference between TDL AND SDL
Speaking in technical terms, there are two parts in a domain name, Top Level Domain (TDL) and Second Level Domain (SDL). To explain the two parts of a domain in a better way, if we take an example of a domain name, ‘meerapatel.com’ then the ‘.com’ is the TDL and ‘MeeraPatel’ is the SDL.
There are 3 types of Top Level Domains:
The most commonly used TLDs are the generic Top Level Domains such as .in, .com, . net, . org, .aero, .name, .biz, .jobs, .travel, etc.
- Then the next type of TLD is the restricted Top Level Domain such as .biz, .US, .Ind, and only a few organizations, people, institutions, etc are allowed to use them as they are the ones who meet the restricted TDL criteria.
- The last one is the Country Code Top Level Domain. Official country websites use domain names such as .in is used for India. These types of TDLs are handed out to countries and their bureaucratic registered authorities.
Disputes of domain names
When we talk about using a domain name to gain a unique presence on the internet, technically speaking, these domain names are business identities therefore it automatically makes them fall under the intellectual property rights class. Domain disputes are very common and it also includes cybersquatting.
What is cybersquatting
Cybersquatting is a process where a registered domain name that is a trademark is stolen or plagiarised by a third party and used as their domain name. There is no typical process to get approval from the authority therefore if one desires to create a domain anime, all they need to do is register the name they want as it is a first come first serve the type of registry. Hence, due to this policy, people tend to register their domain names without showcasing the proof of their registered authority of that particular name. Due to this factor, many exploit others intellectual property rights and register the stolen names for trademark business without having a single proof of acquiring the property rights over that name. The domain name disputes always trigger the general top-level domain they fall under the Uniform Domain Name Dispute Resolution Policy (UDRP).
Uniform Domain Resolution Policy (UDRP)
ICANN is the Internet Corporation for Assigned Names and Numbers and it was established on 26th August 1996. It was originally adopted from the Uniform Domain Name Dispute Resolution Policy. Under this policy, if a domain name user is found to be an infringer, then it can become a reason for beginning a formal proceeding against the registrant.
Process of claiming the infringed domain name back
One must follow the UDRP policies, the wronged person needs to file a formal complaint which should include details like the original domain names, the infringer who stole the domain name, the registrar who formally registered the domain name, and lastly the grounds of the complaint. To qualify as a complaint, the grounds provided must fulfill the ideal central idea that is:
- A way through which the domain name is similar or identical to the original trademarked domain name.
- A reason stating why the infringer should not have any rights over the domain name
- A reason stating why the domain name should be considered to be used in bad faith and not by accident.
Even though these rules are created for the person that has been wronged, the respondent or the apparent infringer gets a chance to justify his/ her defence. The arbitration panel gets to decide that if the said complaint matches the criteria mentioned above and only after that, they can cancel a domain name and to collect compensation, the aggrieved party is allowed to move the matter to the court within a specified time period as the panelists do not hold the right to pass any kind of reliefs or damage fulfillment decree.
International arbitration bodies that resolve domain name disputes
ICANN dispute resolution policy
All the legally registered trademarks are protected by the laws of the respective countries but there are chances that the same product has been trademarked in multiple countries, globally. One such example is a domain name. As the internet permits its users to access nearly everything from anywhere in the world, a domain name is accessible regardless of the geographical location. The exclusive domain name we use can be exclusive around the globe but at the same time, there have been instances where the national laws haven’t been as efficient when it comes to protecting the domain names on an international level, therefore, international regulatory bodies such as ICANN was created.
As mentioned above, the ICANN foundation (International Corporation for Assigned Names and Numbers) was established in 1998. It is considered the world’s internet administration cell. Moreover, it even introduced the Uniform Domain Name Policies in 1999 to solve the global domain name disputes in an efficient and money-saving manner. ICANN managed to become one of the best and most efficient international legal domain name dispute resolving bodies. It not only managed to resolve various internet legal problems but also the intellectual property rights of multiple users.
WIPO arbitration and mediation centre
WIPO, the World Intellectual Property Organisation has been one of the fundamental domain name resolving bodies ever since UDRP and ICANN was established. WIPO is an efficient body which provides their own:
- A best and qualified panel of adjudicators/ arbitrators
- Fast track administrative procedures to save time
- Neutral and impartial judgments
- Lastly, credibility
WIPO provides money and time-saving methods/ mechanisms to resolve internet domain name disputes without including the court at all. They have resolved over 48,000 domain name disputes till now. Although, a maximum of 2 months are taken up to resolve a domain name dispute if complaints are filled in WIPO where they prefer to use the method of one-line procedures. India is one of the 171 countries of the world that are the esteemed permanent members of WIPO and use its services like potential forums for developments and implementation of IPR policies globally via treaties and other policy-making instruments.
In 1998, WIPO was requested to conduct a try-out WIPO’s first internet Domain Name Process which is a globally open consultation process where the users could consult their questions regarding the possible practices and procedures that could help them avoid or resolve the domain anime disputes easily. The perks provided by WIPO:
- Time-saving procedures
- Money-saving procedures
- Transparency
- Enforceable decisions
- No prejudice and neutral adjudication
National arbitration bodies
India does not provide distinctly explicit cybersquatting or domain name dispute legislation. Although the Information Technology Act, 2000 which is also known as the IT Act of India addresses various cyber-related crimes such as cyber fraud, hacking, identity theft, catfishing, phishing, etc, it somehow doesn’t address issues such as domain name disputes or cybersquatting. Domain names are considered trademarks because they are the distinctive identifiers of a company/ business/ individual. Therefore, due to the absence of the laws that deal with domain name disputes or cybersquatting, this issue can be dealt with in the Trade Marks Act, 1999 as infringing someone’s registered domain name results in trademark infringement.
.IN dispute resolution body
In response to the domain name disputes and cybersquatting in India, the national arbitration body, .IN registry developed the .IN Dispute Resolution Policy (.INDRP). The .INDRP states that they refer to the globally accepted guidelines and the related provisions from the Indian Information Technology Act, 2000. According to the National Internet Exchange of India (NIXI), the .IN registry is considered as an autonomous body that handles the fundamental issues such as maintaining the .IN country code Top Level Domain and to make sure it is operational, reliable as well as secure all the time.
As per the procedural rules of .IN, any person who has acquired a domain anime by legally registering the name can initiate a complaint by providing legitimate grounds and reasons. Here are some key points that one needs to keep in mind if they use the .IN service to resolve a domain name dispute:
- The complaint can be only registered if the infringed domain name is identical or similar to the original name.
- The registrant’s domain name is being used with bad faith therefore, it is necessary for the registrant to submit a compulsory arbitration proceeding complaint. After that only, .IN will provide an arbitrator or a panel of arbitrators to the registrant. This process falls under the Arbitration and Conciliation Act, 1996.
- In arbitration, a domain name dispute is always considered as a circumstance of bad faith on multiple occasions such as when the involved party had acquired that particular domain name for the purpose of sale or rent or for purposes like transferring the property to the owner of the original trademark to the competition against whom the complaint was registered in the first place. This complaint can manage to earn the right amount of damage consideration if the registrant had to suffer any charges which should have been reimbursed to them as they were the original owner of the said domain name.
Famous arbitration cases
Starbucks corporation vs. Mohanraj 26 November 2009
In this case, the respondent’s domain anime was very similar to that of the registrant’s. The latter’s (registrant) domain name was www.starbucks.in whereas the former’s domain name was www.starbucks.co.in due to which, it was very evident how the respondent’s domain anime could confuse the unaware customers. The respondent did mention that they did not have any interest in acquiring the domain name from the registrant. Later on, it was discovered that the respondent was using the domain name in bad faith. Thus, the qualified arbitrators argued that the respondent’s domain name was strikingly similar to that of the owner’s trademarked domain name. It was then established that because the domain name was established in bad faith, the domain name was transferred back to the registrant after the arbitration.
Morgan Stanley vs. Bharat Jain 28th October 2010
In this case, the infringed domain name www.morganstanleybank.co.in was a registered domain name under the name of the infringer on 20 June 2010. The complaint registered against the infringer was based on the fact that in addition to the country code top-level domain which was added to the infringed domain name, the disputed domain name was very similar to the complainant’s official trademark, “MORGAN STANLEY”.
Google Inc vs. Gulshan Khatri 6th October 2011
In this case, the complainant or the disputed party filed a formal complaint against the infringer for infringing their domain name as the respondent registered an identical domain name. On top of that, the respondent was also providing a very similar service that the complainant offered to its users, therefore, the involved party went for arbitration to resolve the matter and reconsider the original rights of the domain name. Hence, after the arbitration, the adjudicator ruled the case in favour of the complainant, and the same domain name was later scrapped officially.
The superseding judiciary
Indian internet users have faced multiple cases of cybersquatting in India in the last few years and usually, people go to arbitrators in such cases but many people prefer to go to court to resolve these disputes. One of the earliest cybersquatting judgments given out by the court was related to the case Rediff Communication Limited vs. Cyberbooth and another, 22 April 1999. This case stated that the value of a domain name is as important as a corporate asset is to a corporate firm. The domain name is the identifier of the individual/organization/ institution and that it is not just an internet address but it is an important part of the company and it should be entitled to get protection under the TradeMarks laws of India. This case dealt with the fact that the defendant had registered a domain name as ‘radiff.com’ which was confusingly similar to the prosecution’s client’s domain name which was ‘Rediff.com’. The court ruled its decision in favour of the prosecution.
The rules were very rigid in the past. Only companies with a registered domain name which consisted of a “.co.in” were allowed to acquire Indian subsidiaries and their related benefits but all these rules have now been relaxed and all the entities who have a registered domain name no regardless of the fact that they might not have a “.co.in” TDL can benefit from the Indian subsidiaries and its related benefits. Although it is advisable that during registering for a domain name, its name should be affiliated to the country’s trademarked country code Top Level Domain which is ‘.in’ or ‘.co.in’
Conclusion
The tremendous growth the internet has managed to make in this commercial world has also brought multiple problems when we talk about intellectual property rights. Domain name disputes are one of the most growing concerns internet users have been facing. The Indian judicial system does not have direct and relevant cyber laws that should deal with cybersquatting or domain name disputes. Due to this reason, these issues are usually dealt with using the principles of the trademark laws of India the .IN dispute resolution policy in India.
Anyways, people are not obliged to resolve these disputes in court. They can reach out to arbitrators or arbitration bodies such as WIPO and ICANN to resolve their issues. These arbitration bodies put out a lot of benefits for their clients that a court cannot such as time management, money-saving, efficiency, neutral judgments, etc.
References
- https://www.registry.in/IN%20Domain%20Name%20Dispute%20Resolution%20Policy%20%28INDRP%29
- https://www.researchgate.net/publication/329921688_Domain_Name_Disputes_and_Their_Resolution_under_UDRP_Route_A_Review
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