domain name dispute: what to do in case of website or domain name dispute
Often bad actors can attempt to take advantage of a brand’s goodwill by cybersquatting domain names that will be associated with the brand. Their intentions can range from selling the domain to the rightful owner at exorbitant prices to selling counterfeit products to unsuspecting consumers. In addition to tarnishing and diluting a brand’s image, cybersquatting can also cause a business and a brand to lose customers as customers can visit the wrong website due to typographical errors.
Cyber squatting can be done by various means. For example: the brand name is “Aprajita”, and the brand owner owns the domain name www.aprajita.com. Now, cybersquatting can be performed by any of the following means, among others:
- Registration of a misspelled version of the domain name: www.aparajita.com
- A domain name formulated differently: www.aprajitas.com
- Any other top-level domain: www.aprajita.org or www.aprajita.in
In addition, it may happen that you own a famous brand, but have not yet registered a corresponding domain name. A bad actor can take advantage of such a situation and register a suitable domain name to sell it to you later at a very high price. If you encounter such situations, you can send a notice to the registrant of the domain name with a copy to the relevant domain name registrar requiring the transfer of the counterfeit domain name to you and for the registrant to agree to refrain. from any other abuse. The name of the Registrar and the Registrar of the domain name can be verified from the WHOIS database. If the dispute is not resolved by notification, then you can file a complaint regarding the domain name.
If the dispute concerns a generic top level domain (gTLD) such as .com, .org, .net, .gov, etc., then the complaint can be made under the UDRP (Uniform Dispute Resolution Policy). The Internet Corporation for Assigned Names and Numbers (ICANN) adopted the UDRP policy on August 26, 1999 based on recommendations from the World Intellectual Property Organization (WIPO). Under this policy, a trademark holder can initiate proceedings against a domain name holder if they believe that a domain name registration infringes their trademark. WIPO is the most commonly used forum for UDRP policy. In the domain name complaint, you can request the cancellation of the registrant’s domain name or the transfer of the domain name registration to you.
The complaint is filed electronically with the WIPO center. Under the UDRP policy, a complaint must meet the following criteria:
(i) the domain name must be identical or similar to the point of confusing your brand; and
(ii) the Holder has no right or legitimate interest with regard to the domain name in
(iii) the domain name has been registered and is being used in bad faith.
Once the complaint is filed, WIPO checks its administrative compliance. If there are any deficiencies in the complaint, they are notified to the complainant (you) who must rectify them within 5 days. Subsequently, the complaint is sent to the Registrar with a copy to the declarant / respondent. The holder / defendant must file the response within 20 days of the start of the proceedings. Upon receipt of the response, a sole arbitrator or a special arbitration panel is appointed by WIPO within 5 days. The Sole Arbitrator / Arbitration Panel is required to decide the matter and submit its decision within 14 days from the date of appointment of the Arbitrator / Arbitration Panel.
Once the decision is submitted, WIPO notifies the decision to the parties and to the Registrar within 3 working days of receiving the decision. If the complaint is dismissed, the Registrar is not obligated to take any action. However, if the complaint is successful, the Registrar is required to implement the arbitrator / panel’s decision after 10 business days of receiving the decision, i.e. the transfer of the domain name. or cancellation of the domain name, except within 10 days. period, he receives any official document proving that the holder / defendant has taken legal action against the plaintiff in mutual jurisdiction. In such a case, the Registrar will take no action until he receives satisfactory evidence that the matter has been resolved, or that the lawsuit has been dismissed or withdrawn or a copy of a court order that the holder / defendant does not have the right to use the domain name. The UDRP does not have an appeal process. If they are wronged, the parties can initiate new proceedings in court.
If the dispute concerns the Country Code Top Level Domain (ccTLD) which is .IN for India, the complaint may be filed under the .IN Dispute Resolution Policy (INDRP) and INDRP Rules of Procedure. with the National Internet Exchange of India (NIXI), also known as the .IN registry. In the complaint, you can request the cancellation of the Holder’s domain name or the transfer of the domain name registration to you.
In September 2020, NIXI made certain changes to the INDRP Rules of Procedure, the INDRP Policy, and the Code of Ethical Conduct for Arbitrators. These rules have given way to electronic filing and communication. The Complainant can file a complaint addressed to the “.IN Register” by email. Sending a physical / hard copy is no longer required. The complaint can be filed for the following reasons:
- The domain name in question is identical or similar to the point of confusing a trademark / service mark to which the complainant has rights; and
- The Holder / Respondent has no right or legitimate interest with regard to the domain name; and
- The domain name in question has been registered or is being used in bad faith or for illegal / illegal purposes.
Upon receipt of the complaint, the .IN registry will assess the same for compliances and discrepancies (if any) will be notified to the complainant within 5 working days, who will then have 7 working days to make corrections. Once the complaint has become compliant with the Rules, the .IN Registry will appoint an arbitrator within 5 working days. Previously, the .IN registry transmitted the complaint to the arbitrator; however, after the changes, it is now the duty of the complainant to forward an electronic copy of the complaint (with annexes) to the appointed arbitrator within 2 working days of receipt of the notification email informing of the appointment of the arbitrator. The complainant is also required to ensure service of an electronic copy as well as a hard copy of the complaint and annexes on the holder / respondent and to provide proof of service.
The arbitrator will then set a deadline for the holder / respondent to file his observations. Thereafter, the arbitrator would consider the arguments presented by both parties and then render a decision on the merits of the case. There are no in-person hearings, except in exceptional circumstances decided by the arbitrator and even in such cases, the number of in-person hearings is limited to 2 hearings. The arbitrator is required to render his decision within 60 days of the start of the proceedings and, in exceptional circumstances, it may be extended for a period of 30 days. The arbitrator’s decision is communicated in writing to the parties by the .IN registry within 5 days of its receipt by the arbitrator.
While the legal remedies mentioned above are available in the event of a domain name dispute, it is best to diligently protect your intellectual property, including your domain names.
Some proactive steps brand owners can take:
- Register all popular top level domains and redirect those domains to your original website. For example: if your original website is www.aprajita.com, you can also register www.aprajita.in and have it redirect to the original website on the .com domain.
- Renew your domain registrations in a timely manner to prevent parties from sweeping them.
- There is no special legislation to manage domain name policing and the legal grounds for filing complaints depend on your trademark registrations. It is therefore important to register the distinctive part of your domain name as a trademark.
- Subscribe to legal monitoring services to perform frequent checks on identical and similar domain names.
- It is also imperative to educate consumers and educate them on what fake domains can look like, so that they are not fooled into visiting bad websites or buying fake products.
(The author is an attorney specializing in intellectual property rights and currently works as a managing partner at LexOrbis, an intellectual property firm based in New Delhi, Mumbai and Bangalore.)