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15 YEARS ON: A RELOOK AT THE INDRP POLICY

June 22, 2020

By: Vikrant Rana & Deepika Shrivastav

INDRP – Indian Domain Name Dispute Resolution Policy & Domain Name Disputes

It is no surprise that ever since the recognition of Internet as a tool for advertisement and marketing, there has been a widespread increase in the number of domain name disputes. As per the statistics released by the World Intellectual Property Organization (WIPO), there has been a progressive increase in the number of domain dispute cases filed each year since 2013[1]. Similarly, the number of domain dispute cases filed in India with respect to Indian country code top-level domains (ccTLDs) have also seen a remarkable annual increase in the recent years as is evident from the chart below:

A large number of cases from the above can be attributed to cyber squatters who register domains in bulk, thereby, forcing honest and bonafide brand owners to resort to dispute resolution mechanisms so as to recover the domains. Often times, the term ‘virtual property’ is seen being used in conjunction with ‘domain names’ which has alarmed cyber squatters around the globe to get their share of ‘hot property’ and then use it to derive illegitimate monetary benefits by harassing honest and bonafide right owners. At the same time, the surge in numbers, year on year, can be attributed to various other factors including the change in economy, easy access to internet, new and more refined cybersquatting techniques, increasing usage of domain proxy services, and the periodic launch of new generic top-level domains (gTLDs) or country code top-level domains (ccTLDs) in the ever evolving internet world.

In India, domain name disputes relating to (gTLDs) are governed by the Uniform Domain Dispute Resolution Policy (UDRP) whereas disputes pertaining to (ccTLDs) are governed by the .IN Dispute Resolution Policy (INDRP) which is overseen and managed by the National Internet Exchange of India (NIXI). The .IN Dispute Resolution Policy (INDRP) was formulated in 2006 following the footsteps of the Uniform Domain Dispute Resolution Policy (UDRP) and is in line with the rules of procedure set out by the World Intellectual Property Organization (WIPO). However, the INDRP has a few fundamental differences which have been incorporated bearing in mind the requirements inherent to the Indian legal framework. A comprehensive understanding of the differences between the UDRP and INDRP can be viewed here.

The ever growing menace of cyber-squatting can be illustrated by the example of a Registrant/Respondent named “Gao Gou”, purportedly based in Toronto, Canada, The Registrant/Respondent under the said name has been involved in over 16 INDRP cases, which includes domain names such as tatamotors.in, louboutin.in, goodyear.in, sothebysrealty.in, etc. Indeed, one can even say that professional cybersquatting has even assumed the role of a career choice, wherein third parties register hundreds of domains, with the hope that brand owners would be willing to pay them significant sums to recover such domain names.

.IN Domain Name Dispute Resolution Policy (INDRP)

In nearly fifteen years of its existence, NIXI has been able to transparently and efficiently resolve over 1177 matters, thus far[2]. An analysis of the dispute resolution process as well as the judgements passed under the INDRP regime reveals that there has been a slight decrease in the number of decisions passed in favour of the Complainants. A latest analysis conducted for cases filed and decided over the last 15 years revealed that a significant number of decisions (over 97%) were passed in favour of the Complainants/Right holders.

An evaluation of a few notable judgements passed against the Complainant, under the INDRP regime in recent years, aids in understanding the rationale behind the shift in the decision-making paradigm.

Failure to establish the requirements laid down in Paragraph 4, INDRP

Alongside the requirements laid down in Paragraphs 4(i) and 4(ii), INDRP, the ‘bad faith’ requirement as envisaged under Paragraph 4(iii) read with Paragraph 6 of INDRP is one of the most essential pre-requisite to establish malafide intent on part of the Respondent. It may be noted that ‘bad faith’ registration and use of a domain name can be established by showing 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
  •  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
  •  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.

In Tata Motors Limited v. Amit Badyani, INDRP/1020, the Ld. Arbitrator observed that as the Respondent has adopted and registered the mark/domain name prior to the Complainant and has been using the same in respect of a bona fide offering of goods since before receiving notice to the dispute, the Complainant has failed to establish the grounds 4(i) and 4(ii) of the .INDRP policy. With regard to “bad faith”, the Ld. Arbitrator held that the Respondent has not satisfied all the criteria under 4 (iii) and therefore, it cannot be said that the domain has been registered to prevent the Complainant from reflecting the mark HARRIER in a corresponding domain. The Ld. Arbitrator also noted that “mere fear as to what may happen if the Respondent were ever to sell the domain to a third party cannot be the sole criteria for establishing bad faith, especially when bona fide adoption/use has been shown by the Respondent”.

Reverse Domain Name Hijacking (RDNH)

Paragraph 1, UNDR Rules defines Reverse Domain Name Hijacking as using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. The Rules further state that if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”[3]. It may be noted that while there exists no specific jurisprudence on RDNH under the INDRP, the Tribunals in India have recognized the principal in a number of matters.

For instance, in Tickets Worldwide LLP v. India Portals, INDRP/1187, the disputed domain comprised of the generic word TICKETS. After careful examination of the facts of the case and the evidence placed on record, the panel held that the Complainant has failed to establish any of the requirements laid down under the INDRP. Further, the panel also noted that “the subject matter dispute is a case of Reverse Domain Name Hijacking, given the Complainant’s weak mark and its attempt to misrepresent its date of first use of the mark”. Reverse Domain Name Hijacking was previously held under the INDRP in Computer.in, INDRP/008 wherein the panel had observed that “the tribunal is of confirmed opinion that the domain name, trade name and trademark is a weak mark and absent of proof of fame of widespread recognition of the services provided by the Complainant makes this complaint without cause of action”. In conclusion, the Ld. Arbitrator observed “that the present complaint by the Complainant is a blatant attempt to hijack the domain name of the Respondent and in bad faith to harass the Respondent and to abuse the process of law.”

Other instances where decisions were not passed in favour of the Complainant

Proceedings Dismissed/ Neutral Decisions

Domain disputes are also dismissed on account of the Complaint suffering from inherent deficiencies with regard to the filing requirements or otherwise due to ownership related issues and and hence are dismissed on the grounds of maintainability.

In this regard, in Homeway.com, Inc. v. Ajay Gupta, INDRP/1056[4], the panel held that even though the Respondent has not filed any rebuttal to the Complaint, looking at the facts and circumstances of the case, the Complaint in its present form is not tenable as post the Complainant’s merger with Expedia, Inc., the Complainant are no longer in existence and therefore, lack the locus of filing the said Complaint. However, the Complainant being aggrieved by the Order passed by the panel, filed an appeal before the Hon’ble High Court of Delhi wherein the Ld. Judge set aside the impugned Order and directed the INDRP panel to allow the Complainant to file requisite documents proving ownership on affidavit and to provide an opportunity for an oral hearing before passing the Order. Upon evaluating the additional Affidavit filed by the Complainant and specifically in view of the fact that the Respondent had not challenged the complaint, the Ld. Arbitrator finally decided the matter in favour of the Complainant.

More recently, in Dell, Inc. v Madugula Kartik, INDRP/1059, the panel dismissed the Complaint, under section 25 (c) of the Arbitration and Conciliation Act, 1996, on account of non-compliance with various orders passed by the Tribunal. It is of note that the dismissal of the Complaint in the aforesaid matter was founded on deficiencies in the Complaint filed. Further, the Ld. Arbitrator also observed that the language used by the Counsel was improper and insulting and of the nature that cast aspersions on the Tribunal’s independence and impartiality.

Suspension and termination of proceedings

As per the law laid down under the INDRP, the panel may terminate the arbitration proceeding if, during the arbitration proceedings and before the Arbitrator’s decision, the parties agree to settle the dispute (Settlement or other grounds of termination, Rule 14, INDRP Rules of Procedure).

In this regard, it may be noted that Paragraph 18(a), UDRP Rules, states that “in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”. However, such terminology has not been explicitly used in the INDR Policy and the Rules framed thereunder and it cannot be said with certainty whether it was the legislative intent of the framers to give such an interpretation to the phrase “other grounds of termination”, as used in Rule 14.

Further, while the UDRP identifies settlement of domain name disputes via administrative proceedings to be a mandatory requirement (Paragraph 4(a), UDRP), the nomenclature used in INDRP lacks any such imposition thereby suggesting that concurrent proceedings pertaining to a single domain may be made.

The issue as to whether concurrent proceedings can exist under the INDRP as well as the civil procedure was dealt with at length in Citi Corp And Anr. vs Todi Investors And Anr. 2006 (4) ARBLR 119 Delhi[5]. The contention of the Defendants was that with the formulation of the INDRP, the subject proceedings are liable to be terminated as the dispute of this nature is to be covered under the INDRP and the Rules framed thereunder. The Court observed that “the scheme of the Policy and the Rules framed thereunder, in any case, show that there is no explicit ouster of the jurisdiction of the Civil Court”. It was further noted that “it is well established that where a right pre-existing in common law is recognized by the statute and a new statutory remedy for its enforcement is provided, without expressly excluding the Civil Courts jurisdiction, then both the common law and the statutory remedies might become concurrent remedies leaving open an element of election to persons of inherence”.  The Court further held that the whole scheme of the INDRP shows that the remedies available under the said Policy are of an extremely limited nature – “limited to requiring the cancellation of the Registrant’s domain name or the transfer of the Registrant’s domain name registration to the Complainant” (paragraph 12 of the Policy) and “Therefore, by not stretch of the imagination, can it be said that the Policy possesses the machinery by which adequate and complete relief can be provided to the plaintiffs herein.”

Therefore, the INDR Policy and the Rules framed thereunder do not ouster the jurisdiction of civil courts. Accordingly, in cases where relief sought is more than mere cancellation or transfer of domain and where the Plaintiff intends to seek compensation, a civil proceeding may be initiated.

Termination on other accounts

Other instances of termination of arbitration proceedings are seen in cases where there is a lack of prosecution of the Complaint[6] and in cases where all the parties involved are not correctly impleaded. For instance, in Disney Enterprises Inc. v RSADVVM SPT, INDRP/544, the panel observed that “this Tribunal cannot proceed further as there are third party interest involved and the said party is not a party before the Tribunal and the maxim of audi alteram partem restrains this Tribunal from passing any Orders behind the back of a party that too when its’s interest is involved”.

While the shift in numbers cannot be attributed to one specific reason, it can definitely be speculated that the same may be due to the evolution of the INDRP jurisprudence over the years, more sophisticated understanding of the law, NIXI’s continued attempts towards fair, transparent and impartial proceedings to name a few.

Tightening of due diligence – Wrong/Incomplete contact details provided by Registrants

While the above instances illustrate the growing number of cases wherein INDRP panellists have ruled in favour of Respondents/Registrants or have passed neutral orders, there have also been growing instances of INDRP panels tightening the screw on Registrants/Respondents with respect to them providing incorrect contact details while registering the impugned domain names. In many INDRP cases, NIXI/Complainants are not able to successfully serve hard copies of the complaints to the Registrants/Respondents and the couriers as sent return undelivered. This is a common tactic which a professional cyber-squatter might use to keep their personal identities and contact details removed from any legal proceedings. Providing such incorrect information while registering Indian ccTLDs is a violation of paragraph 3(a) of the policy, which stipulates that –

The Registrant’s Representations

By applying to register a domain name, or by asking a Registrar to maintain or renew a domain name registration, the Registrant represents and warrants that:

(a) the statements that the Registrant made in the Registrant’s Application Form for Registration of Domain Name are complete and accurate;

Since 2011, there have been cases wherein INDRP panels have pointed out the violation of paragraph 3(a) of the policy on part of Registrants/Respondent in their awards, including but not limited to the cases INDRP/562, INDRP/606. While this is not a ground prescribed under the INDRP with respect to bad faith on part of the Registrants/Respondents, the mere acknowledgment of the same suggests that the said fact, while looked at in conjunction with the facts and peculiar circumstances of a case, can be used to draw logical inferences to illustrate bad faith.

The above instance suggests that while there has indeed been an upsurge in cases decided in favour of Registrants/Respondents, at the same time there is growing jurisprudence which suggests that minute details like incorrect registration information of Registrants, is being scrutinized while arbitrating matters.

Conclusion

In conclusion, it is evident that arbitration proceedings, as contemplated under the INDRP, are a much sought after alternative for resolution of domain name disputes for aggrieved parties who do not wish to engage in protracted legal proceedings before courts. Further, from our aforementioned analysis, it is apparent that it is the endeavour of panellists in most domain dispute proceedings under the INDRP regime to pass decisions in favour of honest and bonafide right owners (Complainants or Respondents) so as to discourage cyber squatters from maliciously hoarding domains that they have no legitimate interest in.

Our exhaustive analysis of the INDRP, focusing on the procedural rules, the role of the Registrar, Registrant’s rights etc. can be viewed here.

[1] https://www.wipo.int/amc/en/domains/statistics/cases.jsp

[2] https://www.registry.in/Policies/DisputeCaseDecisions

[3]  https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en

[4] https://www.registry.in/Policies/DisputeCaseDecisions

[5] https://indiankanoon.org/doc/1791092/

[6] Basf-se.in, INDRP/484

 

For more information please contact us at info@ssrana.com or submit a query.

 

Read More About Domain Name Dispute in India by clicking on below links. 

Evaluation of the .IN DOMAIN Name Dispute Resolution Policy (INDRP) in India

REVERSE DOMAIN HIJACKING- CARE-FULL WHO YOU PICK!

Rules & Regulations related to Domain name in India

For more information please contact us at : info@ssrana.com