If you are a small business / sole proprietorship, it would come as no surprise that an essential aspect today in building your brand's credibility and legitimacy is to establish your presence in the virtual world. Even if your venture is not an e-commerce enterprise, having a website with an appropriate domain name is as important (and some would argue more important) than having a good office address in the 'real' world. But what is your option when someone tries to unjustly piggy-back on your goodwill by registering a similar domain name?
The virtual world, with its immense business advantages, also brings about some risks. As elsewhere, but especially in India where intellectual property rights are often flouted brazenly, businesses that are able to successfully build a brand often find themselves victim to copycat brands. Take, for example, the plethora of ~something~kart.com retailers that have mushroomed after the success of Flipkart.
When it comes to protecting your brand, sometimes litigation becomes unavoidable. Trademark / IP litigation is often expensive and time consuming, while sometimes the desired result can also be achieved by raising a domain name dispute, which in essence is the initiation of arbitration proceedings seeking the transfer of the contentious domain name to you.
When it comes to protecting your brand, sometimes litigation becomes unavoidable. Trademark / IP litigation is often expensive and time consuming, while sometimes the desired result can also be achieved by raising a domain name dispute, which in essence is the initiation of arbitration proceedings seeking the transfer of the contentious domain name to you.
Difference between .COM and .IN - gTLDs vs. ccTLDs
Generic Top-Level Domains (gTLDs), simply put are domains intended for the global community. Popular gTLDs include .com, .net, .org, .biz, .info etc. and are readily used by individuals and organizations the world over. Country Code Top-Level Domains (ccTLDs) on the other hand are typically two letter domains representative of different countries/territories, such as .us (USA), .in (India), .fr (France), .eu (Eurpoean Union) etc. While anyone anywhere in the world can register a domain on any ccTLD, most legitimate users typically use ccTLDs where the demographic they intend to reach out to is in a particular geographic territory.
A .com address is highly advisable if your business plan includes expansion overseas, even if only in the long term. However, the .com domain is typically more expensive, and moreover hard to find due to the saturation of the TLD. As of April, 2014, about 11,31,15,091 registrations exist on the .com TLD. While the theoretical maximum of a subdomain is 63 characters (leading to an immense number of theoretically possible sub-domains), it goes without saying that the vast majority of these theoretical possibilities would be unintelligible, and therefore highly unlikely to be of use to anybody. All the good ones, would of course, be already taken. A ccTLD like .in on the other hand has found appeal relatively recently (even though it was technically introduced as far back as in 1989), and still has much more availability relatively. While this availability gives businesses some flexibility it also makes it easier for disingenuous registrants involved in domain squatting to register a deceptively similar domain name in order to make a fast buck, either by starting their own similar service and stealing your potential clients, or by holding such a domain name hostage and thereafter trying to 'sell' it to you.
Domain Name Disputes and .COM vs. .IN
Administratively, the most significant difference between the two is that the .com TLD is administered by the Internet Corporation for Assigned Names and Numbers (ICANN) headquartered in Los Angeles, California, while the .in TLD is administered by the INRegistry headquartered in New Delhi, India. More significantly, when it comes to domain name disputes, different policies apply to the two TLDs. The .com TLD is subject to the Uniform Domain Name Dispute Resolution Policy (UDRP), while the .in TLD is subject to the .IN Domain Name Dispute Resolution Policy (INDRP).
If the contentious domain name is registered on the .com TLD, the appropriate forum to raise such a dispute is to file a complaint under the UDRP before the Arbitration and Mediation Centre of the World Intellectual Property Organization (WIPO). The fees for the WIPO range from $1,500 to $5,000 or more depending on the number of contentious domains, as well as the number of panelists sought to adjudicate on the complaint. Professional fees for legal counsel would, of course, be over and above this charge.
On the other hand, if the contentious domain name is registered on the .in TLD, the appropriate forum to raise a dispute would be the INRegistry which maintains a panel of Arbitrators to adjudicate such disputes. Comparatively, raising such a dispute is more economical, at Rs. 20,000/- plus service tax per dispute plus Rs. 2,000/- per personal hearing if required. (This too is not inclusive of professional fees for legal counsel).
On what grounds can you raise a dispute before the INRegistry?
Domain Name Disputes are typically raised on the following grounds as per Clause 4 of the INDRP (below), which is to say that the misuse should be such that it is deceptively similar and used in bad faith by a registrant who has no rights or legitimate interests in the domain name.
4. Types of Disputes
Any Person who considers that a registered domain name conflicts with his legitimate rights or interests may file a Complaint to the .IN Registry on the following premises:
(i) the Registrant's domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights;
(ii) the Registrant has no rights or legitimate interests in respect of the domain name; and
(iii) the Registrant's domain name has been registered or is being used in bad faith.
The term "bad faith" stipulated in Clause 4 (iii), is clarified in Clause 6 (below), which covers misuse that it is the nature of domain squatting for profit (either by holding it to ransom or creating deceptively similar services), or to prevent its use by a legitimate user.
6. Evidence of Registration and use of Domain Name in Bad Faith
For the purposes of Paragraph 4(iii), the following circumstances, in particular but without limitation, if found by the Arbitrator to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Registrant 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 bears the name or is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of the Registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the Registrant 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 Registrant has engaged in a pattern of such conduct; or
(iii) by using the domain name, the Registrant has intentionally attempted to attract Internet users to the Registrant's website or other on-line location, by creating a likelihood of confusion with the Complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of the Registrant's website or location or of a product or service on the Registrant's website or location.
The Arbitration itself is to be concluded and decided within 60 calendar days of the commencement of the arbitration proceedings, save in exceptional circumstances. While it is rather uncharacteristic of the litigation experience in India, fortunately most disputes under the INDRP appear to be decided in a much shorter time span by the current panel of Arbitrators. This may partly be because domain name squatters would mostly have little to offer by way of defence. Moreover domain squatting essentially being an opportunistic attempt to unjustly enrich oneself on someone else's goodwill, most cyber-squatters probably don't think it's worth their while to incur legal fees. The INRegistry site is a great place to get copies of past decisions of domain name disputes decided under the INDRP.
However, do keep in mind that the relief that can be granted under the INDRP is limited to transfer of the domain name to the aggrieved party. If the aggrieved party wishes to seek compensation, or any other action, then he/she would need to initiate separate litigation in the criminal / civil court of competent jurisdiction. There is however no bar to filing a complaint under the INDRP for transfer of the domain name and simultaneously moving the courts for other relief.
However, do keep in mind that the relief that can be granted under the INDRP is limited to transfer of the domain name to the aggrieved party. If the aggrieved party wishes to seek compensation, or any other action, then he/she would need to initiate separate litigation in the criminal / civil court of competent jurisdiction. There is however no bar to filing a complaint under the INDRP for transfer of the domain name and simultaneously moving the courts for other relief.