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December 2, 2020

Domain Name Protection: Is Your Interest Legitimate?

Author: Aditi Roy Chowdhury

Introduction

Merriam-Webster defines domain name as “a sequence of usually alphanumeric characters (such as Merriam-Webster.com) that specifies a group of online resources (as of a particular company or person) and that forms part of the corresponding Internet addresses”.[1] Domain names therefore are like addresses on the internet, which enable users to locate the host on the internet in an easy manner. Further, they act like trademarks as they help in identifying and distinguishing goods and services of one from another. This makes domain names very valuable to business owners and a lot of resources are expended for enforcement against cyber-squatters and infringers. This piece will explore the mechanism of domain name dispute resolution for ‘.in’ domain names and in particular, the need to establish legitimate interest.

Resolution of Domain Name Dispute under INDRP

The disputes involving ‘.in’ domain names are governed by the .IN Domain Name Dispute Resolution Policy (“INDRP”). A person interested in filing a complaint with the .IN Registry regarding a conflicting domain name can do so according to the rules and guidelines of the INDRP.

The INDRP has a limited scope and can be understood from WIPO’s Final Report on Internet Domain Name Process[2], which has been referred to in numerous INDRP proceedings. It states “First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith”. Therefore, the narrow scope of INDRP proceedings does not cover issues of infringement of trademarks, priority of rights, etc.

Essential Elements under INDRP

In order to succeed in a complaint under the INDRP, a complainant must prove all three elements mentioned below, conjunctively, as provided in the Rule 4 of the INDRP:

  • That the Registrant’s domain name is identical or confusing, similar to a name, trademark or service mark in which the Complainant has rights,
  • That the Registrant has no rights or authorized interests in respect of the domain name,
  • That the Registrant’s domain name has been registered or is being used in bad faith.

For instance, in the case of Starbucks corporation v. Mohanraj [Case Number INDRP/118, decided on November 26, 2009] before the sole arbitrator – Shri Sanjay Kumar Singh, the registrant’s domain name <starbucks.co.in> was found confusingly similar to the complainant’s domain name <starbuscks.in>.  It was also held that the registrant had no legitimate interest in the domain name and was using it in bad faith. Since the trifecta of requirements was met, the disputed domain name was transferred to the complainant.

What amounts to Legitimate Interest under INDRP

Paragraph 7 of the INDRP lists three factors to determine a right or legitimate interest in a disputed domain name:

  • The Registrant has used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a good faith offering of goods or services;
  • The Registrant (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
  • The Registrant is making a legitimate non-commercial or fair use of the domain name without the intent of commercial gain to divert consumers misleadingly or to tarnish the trademark or service mark at issue.

These factors have been discussed in numerous cases. For instance, in the case of FDC Limited v. Christian Schmidt [Case Number INDRP/913, decided on November 6, 2017] before the sole arbitrator – Harshavardhan Sancheti,the registrant tried to establish legitimate interest by claiming to have registered the disputed domain name <fdc.in> for offering a product called Fluor and Calcium, which was marketed under the initials ‘FDC’. However, the registrant did not produce any evidence to show use of the domain name as claimed and also did not provide any reason behind the abbreviation of Fluor and Calcium to ‘FDC’. The arbitrator relied upon the decision in the case of World Wrestling Federation Entertainment Inc. v. Ringside Collectibles [WIPO Case No. D2000-1306],which held “Respondents seeking to show preparations to make a legitimate use must give Panels some evidence; acceptance evidence may include business plans or documented expenses…the failure to present any credible evidence of demonstrable preparations…is fatal to Respondent’s claim of a legitimate interest in domain names.” Accordingly, the arbitrator held “there is no evidence that the Responded ever made any preparations or attempts to use the domain name FDC.IN for any purpose relating to marketing any product. The Tribunal can only conclude that no such evidence exists…Accordingly, the Tribunal concludes that the Registrant has no legitimate right or interest in the domain name.”

In the case of Sazerac Brands, LLC v. Dean Chandler [Case Number INDRP/1243, decided on September 23, 2020] before the sole arbitrator – C.A. Brijesh, the registrant claimed to have registered <fireball.in> to establish an alumni network for the McMaster Faculty of Engineering, which he claimed was referred to as the ‘Fireball Family’ since at least 1995. The registrant also stated that he was an avid astronomer and fireballs were a frequent occurrence where the college was located. The arbitrator observed that <fireball.in> was identical to the complainant’s mark and that the registrant had failed to establish to show legitimate interest in the said domain name by way of use. Further, the registrant’s justification for adoption of the disputed domain name was appeared to be an afterthought and ingenuine. The arbitrator held “Tribunal is of the view that the Respondent has been unable to prove that it has been using the mark ‘FIREBALL’ or the disputed domain name ‘fireball.in’ in connection with a bona fide offering of goods or services. The Complainant has thus proved that the Respondent has no rights or legitimate interests in the disputed domain name”. Accordingly, the disputed domain name <fireball.in> was transferred to the Complainant.

Apart from establishing use, holding a trademark registration in India for the domain name is also a way of establishing legitimate interest in the domain name. This is because trademark registrations in India either record prior use of the mark or indicate intention of the registrant to use the mark in future. Therefore, it is enough to establish legitimate interest for INDRP proceedings. In the case of Stephen Koeing v. Arbitrator NIXI & Anr. [2015 (64) PTC 406 (Del)], a division bench of the High Court of Delhi reiterated this principle by stating “The registration of a trade mark is dependent upon fulfillment of statutory conditions, and subject to the mark not falling within any disqualifying conditions or being debarred from use. Trade mark registration in India is also on the basis of its use, or proposal of the applicant to use it, subject to conditions. Therefore, the appellant’s contention that registration does not confer per se legitimate interest is unacceptable.

Conclusion

In the current day and age of internet, it is evident that domain names have become very valuable to brands. Therefore, swift action against cyber-squatters is the need of the hour. INDRP with its limited scope provides a such clear and speedy mechanism for resolutions of domain name disputes, provided the Registrant does not have legitimate interest and is using the domain name in bad faith. From a perusal of the abovementioned cases it is clear that evidence of use or trademark registrations are some of the best defenses for a Registrant to establish legitimate interest in an INDRP proceeding. However, if both parties are able to establish legitimate interest or infringement of trademark/domain names needs to be addressed, parties have to approach the Indian courts, instead of initiating a proceeding under the INDRP.

[1] See – https://www.merriam-webster.com/dictionary/domain%20name, last accessed on November 23, 2020.

[2] See – https://www.wipo.int/amc/en/processes/process1/report/finalreport.html, last accessed on November 23, 2020.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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