Domain Names
A domain name is a part of your online address, i. e. the word/s after the“WWW” and before the extension “.com”/”.in”. For example, my online address is www.Cyber-IPR.com and “Cyber-IPR” is my domain name.
People are ready to pay exorbitant price for generic domain names. Few reported domains sales are
VacationRentals.com: $35 million
PrivateJet.com: $30 million
Hotels.com: $20 million
Insure.com $16 million !!!
If someone is using a domain name which is identical or confusingly similar to your trademark (Cybersquatting). You can file a domain name dispute complaint for such cybersquatting either the Uniform Domain-Name Dispute-Resolution Policy (UDRP) or the .IN Dispute Resolution Policy (INDRP).
.com domain name disputes are governed by the UDRP and is overseen by World Intellectual Property Organisation (WIPO) and .in domain name disputes are governed by the INDRP and is overseen by the National Internet Exchange of India (NIXI).
According to the INDRP/UDRP, the Complainant must prove that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered or is being used in bad faith.
In case of UDRP, the point is:
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
You can put button under each above-mentioned three points, which provides additional information on each points.
Identical or Confusingly Similar Trade Mark
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which complainant has rights;
The term “trademark or service mark” as used in paragraph (i) encompasses both registered and unregistered (sometimes referred to as common law) marks. To establish unregistered or common law trademark rights for purposes of the UDRP/INDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.
Relevant fact: Rights in trademark must be existence at the time the complaint is filed.
However, where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.
Specific top level domain, such as “.com”, “.in”, “.firm”, “.net” or “.travel”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
By mere addition of the word “India” or “China” or “Canada” adjacent to the Complainant’s trademark and Domain Name do not alter these conclusions.
Case-laws
Domain name <yahooindia.com> was found identical or confusingly similar to trademark “Yahoo!”
(Yahoo! Inc. vs Akash Arora & Anr. 1999 IIAD Delhi 229, 78 (1999) DLT 285)
Domain name <cellularonechina.com> was found identical or confusingly similar to trademark “CELLULARONE”
(Cellular One Group v. Paul Brien WIPO case no. D2000-0028)
Domain name <walmartcanada.com> was found confusingly similar to trademark “WAL-MART”
(Wal-Mart Stores Inc. v. Walmarket Canadan WIPO case no. D2000-0150.)
Rights or Legitimate Interests
ii) the Respondent has no rights or legitimate interests in the Disputed Domain Name;
Any of the following circumstances, in particular but without limitation, if found by the Arbitrator to be proved based on its evaluation of all evidences presented before him, shall demonstrate the Respondent’s rights to or legitimate interests in the domain name :
(a) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(b) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no Trademark or Service Mark rights; or
(c) the Respondent is making a legitimate non-commercial or fair use of the domain name, without the intention of commercial gain by misleadingly or diverting consumers or to tarnish the Trademark or Service Mark at issue.
If the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and as such the burden of proof shifts to the Respondent See Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762
Registered and Used in Bad Faith
(iii) the Disputed Domain Name has been registered or is being used in bad faith.
In case of UDRP, the point is:
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
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:
(a) 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 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or
(b) 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
(c) by using the domain name, the Respondent has intentionally attempted to attract Internet users to the Respondent’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 Respondent’s website or location or of a product or service on the Respondent’s website or location; or
(d)The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.
Weny’s LLC v. Apex Limited, INDRP Case no. 737. In this case the domain name <wendys.co.in> was found to be registered with the intention of trading on the goodwill and reputation associated with Wendy’s trademark and was held to be registered and use of domain name in bad faith.
The non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. See Telstra Corporation Limited v Nuclear Marshmallow, Case No. D2000-0003 and Accenture Global Services v Mr. Upendra Singh INDRP/829
Reference: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
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