With Insure.com selling for US$16 million in 2009, the valuation of domain names has increased exponentially. All over the world cyber-squatters are registering domain names, in the hope of quick profit. This has forced rights holders to use dispute resolution mechanisms to recover domain names.
In this context, understanding how India differs from other jurisdictions is vital.
Disputes pertaining to generic top-level domain names (“.com”, “.info”, “.net”, “.org”, etc.) are governed by the Uniform Domain Name Dispute Resolution Policy (UDRP). Service providers approved by the Internet Corporation for Assigned Names and Numbers (ICANN), such as the World Intellectual Property Organization and the National Arbitration Forum, entertain these disputes.
Similarly, domain name disputes concerning “.in”, the country code top-level domain name for India, are governed by the .IN Dispute Resolution Policy (INDRP) and are entertained by the National Internet Exchange of India (NIXI).
Framing a complaint
The INDRP follows a similar procedure to the UDRP, but with a few important differences. The most significant difference lies in how many of the following three elements a complainant must satisfy:
- The domain name must be similar to the complainant’s trademark;
- The registrant must not have rights or legitimate interests in respect of the domain name;
- The domain name must be registered and/or used in bad faith.
Under the UDRP, a complainant is expressly required to satisfy all three elements. However, under the INDRP, a complainant must simply satisfy either the first element or the second and third elements.
Nevertheless, such a literal interpretation of the elements can be misleading. A disjunctive reading of the elements implies that a complainant can obtain a remedy against a registrant who has legitimate rights in a registered domain name and uses it in good faith, solely by virtue of its similarity to the complainant’s trademark.
As a result, if a complainant can prove that the registrant has no legitimate interest in the domain name and that it was registered or used in bad faith, a disjunctive interpretation of the INDRP implies that the domain name needn’t be similar to a trademark to which the complainant has rights.
Under the UDRP, a complainant must prove that the domain name is registered and also being used in bad faith. But under the INDRP, the complainant is required to prove only one of them. As a result, if a complainant can prove that a domain name was registered but not used in bad faith or vice versa, the complainant will be unable to obtain a remedy under the UDRP, even though it may be possible to do so under the INDRP.
Other key differences between the INDRP and the INDRP include:
- Under the INDRP, a sole arbitrator is appointed by NIXI to conduct the proceedings. In UDRP proceedings, by contrast, a complainant selects a provider (from a list of ICANN-approved providers) which then forms an administrative panel, consisting of one or three panellists, to administer the proceedings.
- The arbitrator in an INDRP proceeding relies on the INDRP, its rules of procedure and the Arbitration and Conciliation Act, 1996. UDRP proceedings are governed by the UDRP, its rules of procedure and the World Intellectual Property Organization’s supplemental rules.
- A party to an INDRP proceeding may ask the arbitrator for a personal hearing to enter appearance and advance arguments. This is not possible in a UDRP proceeding.
- Under INDRP, an arbitrator is empowered to award costs. The UDRP expressly limits the remedies available to the cancellation and transfer of a domain name.
Another fundamental difference between the policies is how complaints against multiple domain names are filed. Under the UDRP, a complainant may combine multiple domain names into one consolidated complaint. However, paragraph 3(c) of the INDRP rules clearly stipulates that “a separate complaint is required to be filed for dispute relating to each domain name”.
This poses a serious problem for the complainant because filing separate complaints for each domain name is expensive – it costs as much as US$200 per complaint. In addition, since different arbitrators may decide each complaint, inconsistent decisions may be passed with respect to the same trademark.
Recently, Dell came across an entity that had registered 10 domain names comprising Dell suffixed with “.in”. Although a single complaint consolidating the domain names under INDRP seemed both expedient and practical, when Dell, anticipating objections under paragraph 3(c), asked NIXI if a consolidated complaint was permitted, NIXI refused to allow it.
Dell subsequently filed separate complaints but asked NIXI to assign them to a single arbitrator. However, each complaint was assigned to a different arbitrator.
Subsequently, four of the complaints have been decided in Dell’s favour – in one case the arbitrator has also awarded costs of ₹50,000 (US$1,000). The remaining six complaints are awaiting adjudication and it remains to be seen if consistent decisions will be passed.
Until there is a significant amendment to the INDRP, starting with abolishing paragraph 3(c) of the rules, aggrieved parties run the risk of obtaining conflicting decisions. A rethink of this provision is critical.