Are you a transnational corporation aspiring to serve the Indian market? Do you carry an established business, trying to utilize the potential of Indian consumers to the fullest? Are you trying to solicit business or popularize your goods or services over the Internet using the “.in” domain? If your answer to any of the above is “yes”, then there is a fair chance that an unknown party has already obtained a registration of your domain name with the “.in” extension and is waiting for you to buy it for an exorbitant amount of money.
Business methods have, over time, evolved gradually. However, none has developed and grown at a pace as rapid as the now ubiquitous Internet. Most businesses have now established an “e-presence”, and are conveniently accessible to their customers globally.
Businesses across the world not only wish to make known their global presence, but also want to highlight their strengths in a particular country. As a matter of existing commercial practice, this is achieved by making use of the country code top level domain (ccTLD)—a country specific two-letter extension used as part of the domain name (for example, .uk for the UK, .us for the US and .in for India).
However, in many instances across the world, companies/individuals wanting to make genuine use of a ccTLD have found that their name or flagship brands have been registered by third parties with the intention of either diverting traffic by creating confusion or blocking the domain for reselling it to the rightful owner at a premium.
Domain names based on famous marks such as espn.co.in, bbc.co.in, gmail.co.in, gillette.in, sonyericsson.in are cases in hand, which were initially registered in favour of third parties that had no connection with the companies that owned the brands.
Until early 2006, there was no established procedure to deal with grievances of persons alleging abuse of their names/marks through registered domain names with a “.in” extension. Ultimately, brand owners did seek judicial recourse but this is usually a time-consuming and expensive proposition, and sometimes courts may find it difficult to appreciate the nuances of the unconventional method of conducting business over the Internet.
In 2006, the government came out with the .IN Domain Name Dispute Resolution Policy (INDRP), and the corresponding rules of procedure. This aimed at dealing with complaints from entities aggrieved by unauthorized use of their names or trademarks by third parties as part of their domain names with the .in extension. INDRP and the rules are administered by the National Internet Exchange of India (Nixi), a non-profit company registered under Section 25 of the Companies Act, 1956.
Any person may initiate the process by filing a complaint with Nixi against the domain name registrant (the respondent). Any such complaint must detail (i) the name, address and contact details of the complainant; (ii) the name and contact details that the complainant may know of the respondent; (iii) a request that the dispute be decided by arbitration; (iv) the subject domain name with the .in extension; (v) the trademark or service mark on which the complaint is based; (vi) the grounds on which the complaint is made; (vii) the remedies sought; and (viii) expressly submit to arbitration.
Nixi appoints an expert to act as the arbitrator, within five working days of receiving the complaint, to preside over the proceedings and conduct them in accordance with the Arbitration and Conciliation Act, 1996. The arbitrator so appointed must be a person of high professional ethics and conduct the proceedings in an unbiased manner.
Nixi then forwards a copy of the complaint to the arbitrator, and informs both the parties of the appointment. This is the date of commencement of the arbitration proceedings. In compliance with the rules of natural justice,the arbitrator offers equal opportunities to both parties to present their case.
Unlike conventional judicial proceedings, arbitration under INDRP is conducted on the basis of notices/submissions sent over email, facsimile, registered or speed post within a strict time frame. As a matter of general rule, neither party is granted a personal hearing unless exceptional circumstances demand.
The onus of proof is on the complainant who must establish that (1) the respondent’s domain name is identical or confusingly similar to the trademark of the complainant; (2) the respondent has no rights or legitimate interests in respect of the subject domain name; and (3) the domain name has been registered and is being used in bad faith. In deciding the matter, the arbitrator may consider if (a) the complainant has obtained/applied for/used any trademarks identical or similar to the domain name; (b) such registration/application/use is prior in time to the respondent’s registration of the subject domain name; (c) the respondent has used, or has demonstrated intention to use, the subject domain name prior to receiving notice of the arbitration proceedings; (d) the respondent is making legitimate non-commercial use of the domain name; and (e) the respondent has any credible explanation for adopting the said domain name.
Proceedings before the arbitrator are stipulated to be completed within 60 days or, in exceptional circumstances, 90 days. The arbitrator is then required to pass a reasoned award, which is communicated to both parties.
During the pendency of proceedings, the subject domain name is usually locked, and cannot be transferred to any other person to ensure that parties do not disrupt arbitration proceedings by indulging in “cyberflying”.
What is pertinent to note is that the only remedy available to the parties under INDRP is to either have the subject domain name transferred or cancelled. No party can claim any other relief, including damages through such proceedings, for which courts remain the only alternative.
Having said that, the introduction of INDRP has been widely welcomed, as it ensures that complainants have an alternative forum that specializes in domain name disputes, and their expeditious resolution in a cost-effective manner, which has been the bane of most litigants in the Indian judicial system.
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This column is contributed by AZB & Partners, Advocates & Solicitors.