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 vary from wanting to sell 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 brand to lose customers, as customers may visit the wrong website due to typographical errors.
Cybersquatting can be done through various means. For example: the brand name is “Aprajita” and the brand owner owns the domain name www.aprajita.com. Now, cybersquatting can be done by any of the following means, among others:
- Registering 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
Also, 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 may send a notice to the Registrant with a copy to the applicable domain name registrar demanding the transfer of the infringing domain name to you and for the Registrant to agree to s refrain from any misuse. The registrant name and registrar of the domain name can be verified from the WHOIS database. If the dispute is not settled by notification, then you can file a domain name complaint.
If the dispute concerns a generic top-level domain (gTLD) such as .com, .org, .net, .gov, etc., the complaint may be filed under the Uniform Dispute Resolution Policy (UDRP). 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 he considers that a domain name registration infringes his mark. 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 the same or similar to your brand; and
(ii) the Registrant has no right or legitimate interest with respect to the domain name in
(iii) the domain name has been registered and is being used in bad faith.
Once the complaint has been filed, WIPO verifies its administrative compliance. If there are 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 holder/respondent. The declarant/defendant must file the response within 20 days of the start of the proceedings. Upon receipt of the response, a sole arbitrator or an 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/group.
Once the decision is submitted, WIPO notifies the decision to the parties and the Registrar within 3 working days of receipt of the decision. If the complaint is dismissed, the Registrar is not required to take any action. However, if the complaint has been accepted, Registrar is obligated to implement the decision of the arbitrator/panel after 10 business days of receipt of the decision, i.e. the transfer of the domain name to you or cancellation of the domain name, unless within the 10 day period it receives any formal documentation that the registrant/respondent has commenced legal action against the plaintiff in a mutual jurisdiction. In such a case, the Registrar will take no action until it receives satisfactory evidence that the matter has been resolved, or that the suit has been dismissed or withdrawn or a copy of a court order that the owner/respondent has no right to use. the domain name. The UDRP does not have an appeals process. If they are aggrieved, the parties can initiate a new procedure before the court.
If the dispute relates to 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 Rules of Procedure of the ‘INDRP with the National Internet Exchange of India (NIXI), also known as the .IN registry. In the complaint, you can ask for the cancellation of the domain name of the holder or the transfer of the registration of the domain name to you.
In September 2020, NIXI made certain changes to the INDRP Bylaws, INDRP Policy, and Ethical Code of Conduct for Arbitrators. These rules have given way to electronic filing and communication. The Complainant may file a complaint addressed to the ‘.IN Registry’ by e-mail. Sending a physical/hard copy is no longer necessary. The complaint can be filed for the following reasons:
- The domain name in question is identical or similar to a trademark/service mark in which the Complainant has rights; and
- The Holder/Respondent has no right or legitimate interest in the domain name; and
- The domain name in question has been registered or is being used in bad faith or for illegal/unlawful purposes.
Upon receipt of the complaint, the .IN registry will assess compliance and discrepancies (if any) will be notified to the complainant within 5 business days, who will then have 7 business days to make corrections. Once the complaint has become compliant with the Rules, the .IN Registry will appoint an arbitrator within 5 business days. Previously, the .IN registry forwarded the complaint to the arbitrator; however, after the Amendments, it is now the Complainant’s duty to forward an electronic copy of the Complaint (along with any attachments) to the appointed arbitrator within 2 business days of receipt of the notification email advising of the appointment of the arbitrator. The Complainant is also required to serve an electronic copy as well as a hard copy of the Complaint and Attachments on the Declarant/Defendant and provide proof of service.
The arbitrator will then set a deadline for the Holder/Respondent to file his observations. Thereafter, the arbitrator would review the submissions made 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 the 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.
Although the legal remedies listed above are available in the event of a domain name dispute, it is best to zealously protect your intellectual property, including your domain names.
Some proactive steps brand owners can take:
- Register all popular top-level domains and redirect these 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 deal with 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 watch services to perform frequent checks for identical and similar domain names.
- It is also imperative to educate consumers and explain to them what fake domains can look like, so that they are not tricked into visiting bogus websites or buying counterfeit products.
(The author is an advocate, specializing in the area of intellectual property rights and currently works as a managing partner at LexOrbis, an IP boutique company based in New Delhi, Mumbai and Bengaluru.)