Protecting Your .in Domains from Cybersquatters
Cybersquatting and the Legal Framework
Cybersquatting is the practice of registering a domain which is deceptively similar to a registered trademark with the intention of either selling it to its rightful owner or taking unfair advantage of the trademark's goodwill and reputation.
The INRegistry has been created by NIXI, the National Internet eXchange of India. NIXI is a Not-for-Profit Company under Section 25 of the Indian Companies Act, 1956, with the objective of facilitating improved Internet services in the country. Under NIXI, the INRegistry functions as an autonomous body with primary responsibility for maintaining the .IN ccTLD (Top Level Domain) and ensuring its operational stability, reliability, and security. After a brief period for accepting Sunrise Applications, the INRegistry was thrown open to the general public on February 16, 2005.
The .IN Domain Name Dispute Resolution Policy ( INDRP) sets out the terms and conditions to resolve a dispute between the holder of a registered trademark and the registrant of a similar domain name. Only disputes related to the registration and use of the '.in' extension are covered by this system. To settle the dispute, the .IN Registry appoints an arbitrator out of the list of arbitrators maintained by the registry. The arbitrator has to conduct the arbitration proceedings in accordance with the Arbitration & Conciliation Act ,1996. He functions as a one-man court who schedules the proceedings, hears arguments and gives the judgment. The arbitrators who settle disputes under the INDRP are chosen by NIXI after verifying their qualifications. They have to sign a Declaration of Impartiality and Independence form, under which they shall discharge their responsibilities.
The Legal Framework
Evidence of Registration and use of Domain Name in Bad Faith
Under Rule 6 of the INDRP, the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
The Domain Registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the trademark owner or creator.
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. (i.e. he has booked a domain name identical to the owner's trademark.)
By using the domain name, the Registrant has intentionally attempted to attract Internet users to the Registrant's website by creating a likelihood of confusion with the Trademarked name or logo.
A Case Study: 'rediff.com' versus 'rediff.in'
Rediff.com India Limited is an online media company incorporated as a public limited company under the provisions of the Companies Act, 1956. It owns the trademark 'Rediff', which is used as the popular domain name 'rediff.com'.
Registration of 'rediff.in'
Mr. Abhishek Verma, heading the firm 'iAdvance Media' based in Jaipur, registered the domain name 'www.rediff.in'. This registration was challenged by Rediff which filed a complaint under the INDRP. Accordingly, the National Internet Exchange of India (NIXI) referred the dispute for arbitration to Mr. S.C. Inamdar, a qualified arbitrator, at Pune on February 4, 2006.
Before the Arbitrator – Contentions of Rediff
Challenging the registration of the 'rediff.in' domain, Rediff India put forth the following arguments:
The domain name 'rediff.in' was confusingly similar to their trademarked name rediff.com'.
iAdvance Media had no rights or legitimate interests in 'www.rediff.in'. They had registered the name in bad faith with the sole objective of reselling it to Rediff India for a premium.
The founders of Rediff India Limited had themselves coined the word 'rediff' and it had no dictionary meaning or equivalent.
Rediff India had built valuable reputation and goodwill in the name 'rediff' over several years. Thus, iAdvance Media was wrongfully, illegally and dishonestly trading upon the reputation of the Complainant by using the name 'rediff.in'.
Email to Rediff – The Turning Point
On 22nd February 2006, Mr. Verma sent an email to Rediff India in which he clearly stated that he did not use 'rediff.in' to promote his business. He advised Rediff to concentrate on 'the straightforward and easy transfer of rediff.in' to them and also stated his intention to settle the matter in a 'fair and friendly manner'.
Mr. Verma's email proved to be decisive in winning the case for Rediff. After reading the email, the arbitrator interpreted the email to as evidence of his profit motive in registering 'rediff.in'. It was held that 'rediff.in' had been registered primarily for the purpose of selling it to Rediff India. This email, coupled with the non-usage of the disputed domain for any other purpose, was clear evidence of an intention to profit on the part of iAdvance Media. No separate website was created for the domain 'rediff.in'. No person who was serious and strongly desirous of commencing or continuing business activity in a particular domain name would voluntarily offer the same to other party, as was done in the email.
Lack of Nexus
Moreover Mr. Verma did not produce any evidence to show any previous relationship of his proposed business activity with the word 'rediff'. There was no nexus between 'iAdvance Media' and the word 'rediff'. In absence of any evidence to the contrary, it could easily be inferred that Mr. Verma intentionally attempted to attract internet users to the proposed website by creating confusion between 'rediff.com' and 'rediff.in'. Accordingly Mr. Inamdar, the arbitrator, ordered the transfer of the domain name 'www.rediff.in' to Rediff India Limited. Rediff was to only pay Abhishek Verma the costs of Domain Registration (around Rs. 250) and bear the costs of arbitration.
Conclusion - The Procedure
Thus, it can be said without reservation that the INDRP is indeed an excellent model which is tailor-made to provide quick justice in the fast moving world of cyberspace.It ensures adequate and cost effective justice for numerous Internet startups who lack the financial muscle of large corporates. Therefore today, if the owner of a business having a registered trademark receives a message from the registrant of a domain name which is deceptively similar to his trademark, he need not worry and give in to the monetary demands of the unscrupulous cybersquatter. He can easily initiate an arbitration proceeding by submitting a complaint to the .IN Registry in accordance with the .IN Dispute Resolution Policy and the INDRP Rules of Procedure, 2005. The National Internet Exchange of India (NIXI) will then forward this complaint to a qualified arbitrator who can impart speedy justice in the matter.
Trademark Registration is Not Mandatory, Evidence of Usage is Enough
Moreover, it is not necessary for the owner of any trademark to register it with the Government in order to avail of the protection of the INDRP. This is a great blessing because while the online world moves fast, the files in the trademark registry's offices move at a snail's pace. The removal of the requirement for registration ensures that the benefits of the INDRP reach out to small businessmen and self-employed persons who do not have the legal knowledge and financial resources to register their trademarks. Indeed, it must be noted that trademark registry in India requires a fee of several thousand rupees whereas a .IN domain registration can be done in as little as Rs. 200. Thus, if a person has created a logo for his business and is using it on his products and is displaying it in the course of his business, but has not registered the logo as a trademark, then the judge will still recognize his rightful claim to the trademark and will order any unscrupulous registrant to transfer a deceptively similar domain name back to him.
Thus, the procedure outlined in the INDRP is suited for delivering speedy justice to hapless registrants who are being harassed by cyber-squatters. The system of arbitration has eliminated the inefficiency of the civil court from infiltrating this area. In fact, if the timings of the rediff.in case are analysed, it will be seen that the dispute was referred by NIXI to the arbitrator on February 16, 2006 and the judgment was delivered on April 3, 2006 – a record time of less than two months which no civil court in India can possibly match!
- Aditya Singh