Analysis of the Uniform Domain Name Dispute Resolution Policy

Author:- Nikhil.S. Nair, Final Year Law Student, GLC Ernakulam

Introduction

Uniform Domain Name Dispute Resolution Policy is a dispute resolution mechanism established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. It provides the legal framework for resolving any disputes between a registrant of domain nameand a third party.The dispute however should be regarding over the use of an Internet domain name and registering it abusively in the generic top-level domains (GTLDs) like the .net, .com, .org etc., and in the country code top-level domains (CCTLD’s) which have adopted the policy of UDRP. The entire mechanism and the procedures provided is administered on by ICANN accredited dispute resolution service providers[1].

Historical Background

UDRP Policy was adopted during the Chile meeting of the ICANN Board of Directors in August 1999. The ICANN Board later adopted a set of Rules for Uniform Domain Name Dispute Resolution Policy setting out the procedures and other requirements for each stage of the dispute resolution administrative procedure. The procedure was decided to be administered ICANN accredited dispute resolution service providers[2].

The Procedure for Resolution Of Disputes

A domain name complaint related to a gTLD can be filed by a person or any company from anywhere in the world by using the simple procedures put forward by UDRP. Similarly a complaint regarding the domain name registered in a ccTLD the very same procedure of UDRP can also be used, only if the concerned ccTLD registration authority adopted the UDRP Policy voluntarily. Paragraph 4 of the UDRP sets forth the type of disputes for which are required to submit to a mandatory administrative proceeding. These proceedings will be conducted before one of the administrativedisputeresolution service providers.

The five basic stages in a UDRP Administrative Procedure are:

  1. The first stage begins with the complainant filing a complaint with an ICANN-accredited dispute resolution service provider chosen by the complainant himself.
  2. Then the responding party to the complaint files a response or reply.
  3. Next step would include appointment of an Administrative Panel by the chosen dispute resolution service provider of one or three persons who will be hearing the dispute.
  4. Administrative Panel’s decision and the notification shall be issued to all relevant parties.
  5. The registrar so concerned shall implement the decisions by the administrative panel. If there is a decision delivered that the domain name(s) in question be canceled or transferred then the concerned registrar shall execute the same within the time frame so decided by the panel.[3]

As per Paragraph 4(a) of the UDRP Policy, ‘the administrative procedures of UDRP is only available for disputes concerning an alleged abusive registration of a domain name which meets the following criteria:

  1. If there is an identical or similar domain name which already exists and is duly registered with an authorized registrar to that of the domain name registered by the registrant.
    1. If the domain name registrant has no rights or legitimate interests in respect of the domain name in question
    1. If a domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the UDRP Policy providescircumstances or scenarios that Administrative Panel shall consider as bad faith:

  1. If a domain name is registered with the purpose of selling it for profit in the future.
  2. If a domain name is registered with an aim to disrupt the business or name of competitors.
  3. If the domain name is registered to prevent an owner of the trademark from utilizing the mark through a domain name.
  4. If the domain name is registered to attract Internet users to one’s Web site by creating a likelihood of confusion with any similar trademark.

The biggest advantage of the UDRP Administrative Procedure is that it basically provides a cheaper alternative to resolve a dispute regarding the registration and use of an Internet domain namewith faster procedures as compared to ordinary procedures of thecourts. Also,the procedures are informal as compared to the usual litigation and the panelists who decide the issue are experts in areas such as international trademark law, domain name issues, e-commerce, and dispute resolution related to the internet. In a way it has a wide international scope where it provides a faster, reliable and single windowed mechanism for resolving a domain name dispute regardless of the location of the registrar and the complainant.

In Jeanette Winterson v. Mark Hogarth[4] case, the panel held that registered and unregistered trademark are included in UDRPs reference to trademark.
It was decided that the term ‘trademark’ in clause 4(a) extended to both unregistered and registered trademarks. Panel also pointed out, trademarks, used in Para 4(a) of the Policy is not to be construed by reference to the criteria of register under English law but more broadly in the terms of the distinctive features of a person’s activities.

UDRP and India

In India, there is no particular legislation describing domain name disputes. The Information Technology Act, 2000 (IT Act), which lays the framework for information-technology related issues remains silent on the problem of domain name disputes. Domain names can be considered as trademarks because of its use and reputation related to the brand name. Therefore, an aggrieved party has to initiate an action against infringement of trademarks under the Trade Marks Act, 1999 to deal with a domain name dispute.

It is very important to note that India has not subscribed to UDRP yet. But the Union government of India has formulated .IN Dispute Resolution Policy (.INDRP) in the lines of UDRPwithin statutory framework Indian IT Act 2000, following all the international guidelines.

As per the National Internet Exchange of India (NIXI), functioning of the .IN Registry is as an autonomous body focusing on maintaining the .IN CCTLD and stabilizing its operations, security and enhancing its reliability. The .IN Domain Name Dispute Resolution Policy frames the legal framework for dispute resolution mechanism between a registrant of domain name and the Complainant, regarding the registration and abusive use of an .IN or .Bharat (Available in all Indian Languages) Domain Name.

There are major differences between various provisions of the INDRP and the UDRP. The first major difference is that Paragraph 4 of the INDRP indicates the premises or location on which a complaint could be filed, this clause is missing in the UDRP. Paragraph 4(a) of UDRP provides “In the administrative proceeding, the complainant must prove that each of these three elements are present.” The same provision is missing in INDRP.[5]

Stages Involved in INDRP

Paragraph 4 of the policy, a person who considers a registered domain name conflicting with his or her interests or legitimate rights may file a Complaint to the .IN Registry for the following reasons:

  1. If the domain name of the registrant is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights
    1.  If the Registrant had no rights or legitimate interests in respect of the domain name
    1. If the domain name of the registrant has been registered or is being used in bad faith.

The .IN Registry then shall appoint an Arbitrator from the list of enlisted arbitrators, duly maintained by the Registry. The Arbitrator shall conduct the entire proceedings in accordance with the Arbitration & Conciliation Act, 1996 amended as per the Arbitration & Conciliation (Amendment) Act, 2015 read with the Arbitration & Conciliation Rules as well as the INDRP Policy and Rules, as amended from time to time .NIXI or .IN Registry will not participate in the administration or conduct of any arbitral proceeding and will remain neutral to the arbitration proceedings.

Once the arbitrator is appointed the .IN Registry shall communicate the same to the parties. The Arbitrator shall pass a reasonable award and a copy of the same shall be sent immediately to the parties and the registry.

The award should be passed within 60 days’ time period which begins from the date of initiating the arbitration proceeding.However, in certain exceptional cases the time period may be extended by the Arbitrator for 30 days maximum, followed by the Arbitrator giving the reasons in writing for such an extension[6].

The Arbitrator should also ensure that the copies of all documents, replies, applications, orders passed from time to time be forwarded to the Registry immediately for its own records and for maintaining the transparency of the proceedings.The policy also restricts any kind of in-person hearing that takes place which includes hearings by teleconference, videoconference, and web conference, unless the Arbitrator in his sole discretion and as an exceptional matter, that such a kind of hearing is absolutely necessary for deciding the Complaint.

The remedies available to a Complainant are very much limited to cancellation of the Registrant’s domain name or transferring the Registrant’s domain name registration to the Complainant.[7]

The INDRP restricts a registrar from transferring a disputed domain name registration to another holder in case an Arbitration proceeding is initiated for a time period ofFifteen days (working) after such proceeding is concluded, or, while the dispute is pending and the party to whom the registration of the domain name is to be transferred agrees in writing that he or she shall be bound by the decision of the court or arbitrator.

In Starbucks Corporation v. Mohan raj[8] ,the domain name of the respondentwww.starbuscks.co.in was very much similar to thedomain name of the complainant’swww.starbucks.in which could confuse the potential and existing customers. It was contended by the petitioner that‘the respondent had no legitimate interest in the domain name and that the mark was used by the respondent in bad faith”. The arbitrator held that “the disputed domain name was confusing, similar and identical to the complainant and that they had right in the trademark. The respondent had registered the domain name in bad faith and so the domain name should be transferred to the complainant.”

Conclusion

India being an emerging IT hub should consider providing the INDRP with a strong legal framework and should always be on the lookout for advanced problem-solving methods for the complex disputes of trademark and intellectual property rights.


[1]WIPO, WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP), Wipo, (Nov. 24, 2020),https://www.wipo.int/amc/en/domains/guide/#a1.

[2]Sourabh Ghosh,Domain Name Disputes and Evaluation of The ICANN’s Uniform Domain Name Dispute Resolution Policy 9 J. Intellect. Prop. Rights, 424 (2004).

[3] supra note 1.

[4]Jeanette Winterson v. Mark Hogarth, Case No. D2000-0235.

[5] Stephen Koenig v. Arbitrator, (2007) ANIXI O.M.P. 132.

[6]Tanuke De & Rajat Tiwari, India: Extension of Time In Arbitration: Review Of Section 29A Of Arbitration & Conciliation Act (Amendment Act 2015), Mondaq, (Nov. 24, 2020), https://www.mondaq.com/india/arbitration-dispute-resolution/782400/extension-of-time-in-arbitration-review-of-section-29a-of-arbitration-conciliation-act-amendment-act-2015.

[7]Shine Joy,Domain Name, Cybersquatting & Domain Name Dispute Resolution, Legal Service India, (Nov. 24, 2020), http://www.legalserviceindia.com/articles/cddisp.htm.

[8]Starbucks Corporation v. Mohan Raj, H901197.

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