Domain Name Dispute Resolution

Written By: N V Saisunder, Esq.

S Eshwar Consultants House of Corporate & IPR Laws

Chennai, India

INTRODUCTION

It is now very well settled that a website is an important tool for business promotion, and domain name for the website is to be carefully chosen. It is acceptable to name a new business, product or a service after checking the availability of the domain name. With the globalisation of businesses, and brands becoming bigger, it brings in cybersquatters and also plagiarists who copy as much information as possible from other websites.

This article is aimed at providing a brief insight into the procedures involved in resolving disputes relating to domain names, under the Internet Corporation for Assigned Names and Numbers' (“ICANN”) Uniform Domain Name Dispute Resolutions Policy (”UNDRP”) in:

Generic Top Level Domain Names (gTLD’s) (eg: .com, .info, .org, .net, .biz, etc.).
.uk domain names under the Nominet's Dispute Resolution Service (NDRS).
.in domain names under the .IN Domain Name Dispute Resolution Policy (INDRP).

I. DOMAIN NAME DISPUTE RESOLUTIONS UNDER UDRP

A. PREAMBLE

ICANN is the global body which has the responsibility of coordination of the global internet's system of unique identifiers, and to ensure its stable and secure operation. ICANN has prescribed a Uniform Domain Name Dispute Resolution Policy which each Registrar is required to adopt, which is in turn incorporated in every agreement between the person buying a domain name and the registrar from whom it is bought.

UDRP describes and establishes a system on how disputes over the global top-level domains (gTLD’s) can be settled through a mandatory and non-binding, administrative arbitration procedure. This arbitration procedure can be used to resolve claims in the nature of claims of abusive and bad faith registration which would amount to a violation of the rights of a registered trademark holder. The UDRP is incorporated by reference into the Registration Agreement that the Registrant of a gTLD executes with the Registrar wherein the Registrant undertakes to be bound by the UDRP as amended from time to time. The UDRP sets forth the procedure involved in settling a dispute between the infringing domain name holder (Respondents) and the Complainant (Registered Trade Mark Proprietor/Holder) over the registration and use of a gTLD which is similar or identical to a registered Trade Mark.

B. ESSENTIAL CONDITIONS OR PRE-REQUISITES OF A COMPLAINT-TESTS FOR A VALID AND SUCCESSFUL COMPLAINT
When does a Domain Name Dispute arise under the UDRP?

As per Paragraph 4 of the UDRP, a Domain Name Dispute arises when:

the domain name of the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
the Respondent has no rights or legitimate interests in respect of the domain name; and
the domain name has been registered and is being used in bad faith.

The Complainant has to prove in the proceedings initiated under the UDRP that all the above three elements are present.

What are the conditions to be satisfied to prove “Usage in Bad Faith”?

Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs incurred by the Respondent, directly related to the domain name; or
The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other on-line location of the Respondent, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent website or location or of a product or service on the Respondent’s website or location.

C. PROCEDURE IN BRIEF FOR DOMAIN NAME DISPUTE RESOLUTION UNDER UDRP

A party files a domain name Complaint with the dispute-resolution service provider approved by ICANN (Service Provider) in accordance with the UDRP Policy and Rules. A copy of the Complaint is sent by the Service Provider to the Respondent and the disputed domain name’s registrar.

(A list of such Service Providers can be viewed at http://www.icann.org/en/dndr/udrp/approved-providers.htm)

Once the Complaint is filed, the Service Provider reviews the Complaint for administrative compliance. If there are any deficiencies, it shall notify the Complainant and the Respondent of such deficiencies, and the Complainant has 5 days to bring the Complaint into compliance with the rules or else the same would be deemed to be withdrawn.
Once the Complaint has been processed and accepted by the Service Provider, the administrative proceedings are commenced. The Respondent has 20 days to file a response with the Service Provider.
If the Respondent does not provide a written response within the time stipulated, the Panel appointed by the Service Provider shall decide the dispute based on the Complainant’s submissions.
The Panel reviews the Complaint and the Response, and has the discretion to review any additional submissions from the parties.
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.
The Complainant has an option to select either a single member panel or a three member panel.

D. REMEDIES AVAILABLE UNDER UDRP

The remedies available to a Complainant pursuant to any proceeding before an Administrative Panel shall be either the cancellation of the domain name or the transfer of the domain name registration to the Complainant.
The mandatory administrative proceeding requirements shall not prevent either of the parties from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that the domain name registration should be canceled or transferred, ICANN will wait for ten business days after it was informed by the applicable Service Provider of the Administrative Panel's decision before implementing that decision. ICANN will then implement the decision unless it has received from the Respondent during that ten business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that the Respondents have commenced a lawsuit against the Complainant. If ICANN receives such a documentation within the ten business day period, it will not implement the Administrative Panel's decision, and it will take no further action, until it receives (i) evidence satisfactory to a resolution between the parties; (ii) evidence satisfactory that the lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing the lawsuit or ordering that the respondents do not have the right to continue to use the domain name.

E. FEES

The Fees for resolution of Domain Name Disputes under the UDRP depends on the choice of the Service Provider to be opted by the Complainant. The most prominent of the approved Service Providers are WIPO, National arbitration Forum, and Asian Domain Name Dispute Resolution Centre. The table of fees of the above named Service Providers is given below:

i) THE NATIONAL ARBITRATION FORUM

NUMBER OF DISPUTED DOMAIN NAMES	SINGLE-MEMBER PANEL	THREE-MEMBER PANEL
1 – 2	$1,300	$2,600
3 – 5	$1,450	$2,900
6 – 10	$1,800	$3,600
11 – 15	$2,250	$4,500
16 or more	Please contact the Forum for a fee quote.	Please contact the Forum for a fee quote.

ii) THE ASIAN DOMAIN NAME DISPUTE RESOLUTION CENTRE (ADNDRC)

NUMBER OF DISPUTED DOMAIN NAMES	SINGLE MEMBER PANEL	THREE MEMBER PANEL	ADNDRC'S ADMINISTRATIVE FEE	TOTAL SINGLE PANELIST FEES	TOTAL THREE PANELISTS FEE
1 to 2 domain names	US$ 500	Presiding Panelist: US$1,000 Each Co-Panelist: US$500	US$ 500	US$ 1000	US$ 2500
3 to 5 domain names	US$ 600	Presiding Panelist: US$1,200Each Co-Panelist: US$600	US$ 600	US$ 1200	US$ 3000
6 to 9 domain names	US$ 800	Presiding Panelist: US$1,400Each Co-Panelist: US$700	US$ 800	US$ 1600	US$ 3600
10 domain names or more	US$ 1500	Presiding Panelist: US$2,500Each Co-Panelist: US$1,500	US$ 1500	US$ 3000	US$ 7000

If any amendments are required due to deficiencies in the Complaint (Form C), an additional charge of US$150 shall accompany any resubmission.

iii) WIPO

NUMBER OF DISPUTED DOMAIN NAMES	SINGLE-MEMBER PANEL	THREE-MEMBER PANEL
1 to 5 domain names	US$ 1500 Presiding Panelist: US $ 1000 Center : US $ 500	US$ 4000 Presiding Panelist: US$ 1500 Co- Panelist :US $ 750 Center : US $ 1000
6 to 10 domain names	US$ 2000 Presiding Panelist: US $ 1300 Center : US $ 700	US$ 5000 Presiding Panelist: US$ 1750 Co- Panelist :US $ 1000 Center : US $ 1250
10 domain names or more	To be decided in consultation with the WIPO Arbitration and Mediation Center	To be decided in consultation with the WIPO Arbitration and Mediation Center

II. BRIEF PROCEDURE FOR RESOLVING DOMAIN NAME DISPUTES UNDER THE NOMINET DISPUTE RESOLUTION SYSTEM (NDRS)

Nominet is the Internet registry for .uk domain names. It maintains the register of .uk domain names.

A. What is the process for Domain Name Dispute Resolution under NDRS?

On receiving a Complaint from the Complainant, Nominet will serve the complaint on the Respondents.
If the Respondents reply to the Complaint within the stipulated period of 15 days, the Complaint will be given to one of the Mediators appointed for this purpose who would in turn try to settle the dispute by speaking to both parties to the dispute and discusses with them, confidentially and as a neutral third party, how the dispute could be settled between the parties. Mediation usually lasts two weeks, but the mediator may adjust the time limits.
If the matter does not get settled by way of mediation, or it is a no response case, then Nominet will offer the Complainant the chance to pay and have an independent expert appointed for the settlement. A summary decision is only available in cases where there is no response from the Respondent. The expert does not get to see what has happened in mediation (this is confidential). The parties cannot speak to the expert directly, and cannot send in any new evidence other than what they filed in early stages. Generally, if the expert is of the opinion that the Complainant has proved its case, he will order the domain name be transferred to the Complainant. If he is of the opinion that the Complainant has not proved its case, he will order for no action to be taken. The expert may also in his discretion order that the domain name be suspended or cancelled (deleted).
After the expert makes his decision, there is 15 days time within which the Complainant/Respondents can appeal against the decision. The appeal is heard by a panel of three experts.

B. Fees under Nominet:

The applicable fees in respect of the referral of proceedings under the DRS to an Expert are £750 excluding VAT for disputes involving 1-5 Domain Names and only one Complainant. For disputes involving 6 or more Domain Names, a fee will be fixed in consultation with the Expert by Nominet.
The applicable fee for a summary decision application shall be £200 excluding VAT.
The applicable fee for the submission of an appeal is £3,000 excluding VAT.

III. BRIEF PROCEDURE FOR RESOLVING DOMAIN NAME DISPUTES UNDER THE THE .IN DOMAIN NAME DISPUTE RESOLUTION POLICY (INDRP):

.IN is India's top-level domain on the Internet viz., .CO.IN and .IN.

A. What is the process for Domain Name Dispute Resolution under INDRP?

On receiving complaint from the complainant, the .IN Registry shall appoint an Arbitrator out of the list of arbitrators maintained by the Registry.
The Arbitrator shall conduct the Arbitration Proceedings in accordance with the Arbitration & Conciliation Act, 1996, as amended from time to time, and also in accordance with the INDRP Policy and Rules.
An Arbitrator shall decide a Complaint on the basis of the statements and documents submitted to it, and in accordance with the Arbitration and Conciliation Act, 1996, Dispute Resolution Policy, the Rules of Procedure and any by-laws, rules and guidelines framed thereunder, and any law that the Arbitrator deems to be applicable.
The Arbitrator shall forward its decision on the Complaint to the .IN Registry within Sixty calendar days of commencement of the Arbitration Proceedings.
An Arbitrator's decision shall be in writing, provide the reasons on which it is based, indicate the date on which it was rendered, and identify the name of the Arbitrator.

B. Fees under INDRP

The Complainant shall pay to the .IN Registry the prescribed fee, in accordance with the .IN Registry's schedule of fees. All cheques/drafts towards the .IN Registry administration charges and payment of the Arbitrator's fee shall be drawn in favour of 'NATIONAL INTERNET EXCHANGE OF INDIA'. No action shall be taken by the .IN Registry on a Complaint until it has received from Complainant the prescribed fee. The schedule of fees is as under:
In case the Arbitrator calls for personal hearings, the fees for a personal hearing shall be shared by the parties equally. However if any party requests a personal hearing and that request is allowed by the Arbitrator, the fees for the personal hearing shall be payable by the party making such request.
- In case the arbitration proceedings are deemed to be withdrawn, the Registry Administration Fee shall be forfeited to the .IN Registry.
- No interest whatsoever shall be payable by the .IN Registry in respect to any money deposited with it in accordance with this policy.
- Venue of personal hearings will be the notified address of the arbitrator.

CONCLUSION

From the above, it can be noticed that domain name dispute resolution is a very simple, cost-effective and straight forward process which enables proprietors of trademarks in any corner of the globe to enforce their proprietary rights by merely filing online complaints with the various arbitral institutions. With the opening of the new gTLD’s, the domain space is one of the most important mediums through which businesses, irrespective of their size, publicize their products and services to its various stakeholders. Thus, the domain name dispute resolution procedure is one of the most effective tools available to trademark holders to protect their trademark from Cybersquatting.

For more information about S Eshwar Consultants House of Corporate & IPR Laws, please visit www.eshwars.com or the International Society of Primerus Law Firms.