VOLUME 2: ISSUE 4 || September 2020 || Email: editor ...
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VOLUME 2: ISSUE 4
|| September 2020 ||
Email: [email protected]
Website: www.whiteblacklegal.co.in
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DISCLAIMER
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ABOUT US
WHITE BLACK LEGAL is an open access, peer-reviewed and
refereed journal provide dedicated to express views on topical legal
issues, thereby generating a cross current of ideas on emerging
matters. This platform shall also ignite the initiative and desire of
young law students to contribute in the field of law. The erudite
response of legal luminaries shall be solicited to enable readers to
explore challenges that lie before law makers, lawyers and the society
at large, in the event of the ever changing social, economic and
technological scenario.
With this thought, we hereby present to you
WHITE BLACK LEGAL: THE LAW JOURNAL
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A critical examination of the Uniform Domain Name DisputResolution Policy
By Miss Mridusha Guha
Student, KIIT School of Law,
KIIT Deemed to be University, Bhubaneswar
ABSTRACT
The Internet is one of the significant and appreciable innovations of humankind and in today’s
world; the Internet is not a luxury but a utility. It is a vast virtual forum where artists, authors,
scholars, and many others showcase their work. Technology is changing; people are working hard
to develop the latest technology or software and every other day a new device is coming up with
better technology than the previous one. In this fast-moving modern age, everything is digitalized;
every document is available at one’s finger-tips in the cyberspace. Globalization is both a result
and consequence of the continuous technological change happening in different parts of the world.
Even though the Internet and the advent of technology is a boon for humankind, but every good
thing is accompanied by adversity. The development in technology has induced new kinds of
problems and threats to the rights of people. The most common forms of violation in the virtual
space are unauthorized usage and reproduction of works, piracy, hacking, data theft, etc. To
prevent these crimes, Intellectual Property Law plays a vital role in it. The international
organizations have tried to come up with several conventions and policies to help the owners,
authors and inventors regarding any injustice inflicted on them. This paper will be providing a
critical analysis of one such international organization fabricated to deal with the issue of domain
name disputes, i.e. the Uniform Domain Name Dispute Resolution Policy.
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I. INTRODUCTION
The advent of Internet downright has revolutionized the facet of digitalization and technology. The
Internet is such a platform which has the world-wide broadcasting capability of an array of
widespread information regarding anything and everything, and is a medium of participation and
interaction between two individuals. Internet has the answer to every query that we have, it
accommodates every piece of information regarding every possible subject, it provides the
information readily and most of the times, that information is provided free of cost. Therefore,
because of all these reasons the users tend to use any work which is available on the cyberspace
for their own personal requirements, often without the consent of the author. Many times, the
author himself/herself does not have the knowledge of his work being used. While discussing
about the Internet or cyberspace, one of the most important aspect to decipher is that of ‘domain
names’. In simple words, a domain name is the name or address of the website, which is used for
locating specific computer system over the internet.
Even though, the internet and digitalization has produced a massive infrastructure of information
available for everyone at their fingertips, every situation is riddled with flaws. With the increase in
reproduction of information rapidly over the digital platform, the authenticity of the author’s work
is prone to getting tarnished at a very fleeting rate. Hence, it all abridges down to the fact that with
the growth of internet, the issues in the field of Intellectual Property Law has increased. The
border between private use and public use of the information available on the internet seems to be
eroding. Therefore, such rapid transmission or distribution of works leads to several kinds of
disputes and issues of infringement. These days, not only identity theft or fraud is considered as
cyber crime but also copyright or trademark infringement in the digital space is considered to fall
under the ambit of cyber crimes other than that of IPR laws. The issues related to IPR in
cyberspace can be broadly categorized into two parts, namely: Issues related to Copyright and
Issues related to Trademark. As mentioned earlier, domain names are more or less the crux of any
website on the cyberspace and due to the sudden surge in online activities, the centre of problem
related to IPR issues in cyberspace is that of domain name disputes, which fall under the broad
category of issues related to Trademark. Hence, to cope up with these issues which are promptly
impending, the legal systems need to maintain an effective system and process of dispute
resolution not only at a national magnitude but also a uniform system to cater to the international
altercations.
II. AN INSIGHT INTO THE CONCEPT OF DOMAIN NAME
The cyberspace, which is commonly known as the Internet has several computers and servers
incorporated in it and therefore, the identification of each of them is of the utmost importance.
Every computer on the Internet has an IP Address i.e. Internet Protocol Address, which are fairly
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difficult to remember as they are a string of numbers. On the other hand, a domain name is an
address which is comparatively easy to remember and helps the users to locate any particular
website over the Internet. Technically speaking, the Domain Name System (DNS) allows an
information provider to register a domain name corresponding to an IP Address and hence, rather
than entering a meaningless string of numbers to access a website, one can instead enter a domain
name1, which is relatively easier for users. The Domain Name System (DNS) allows the domain
name to be translated into the corresponding IP Address; much like a telephone book allows
subscriber names to be translated into their unique telephone numbers.2 The Bombay High Court
in People Interactive (India) Pvt. Ltd. vs. Vivek Pahwa & Ors3 held, “it is the Internet equivalent
of a physical or terrestrial address. It directs a user to a particular part of the Web where a domain
name registrant stores and displays his information, and offers his services.”
Domain names can be broadly classified into three segments: Top Level Domain (TLD), Second
Level Domain (SLD) and Third Level Domain. For example, if we take the domain name –
www.hrc.com, the anatomy will be: “.com” as top level domain, “.hrc” as second level domain
and “www” as third level domain. However, amongst all three of them, the second level domain
(SLD) is the most difficult one to register as it is first come-first serve basis and therefore is
strictly based on availability of the domain name. Domain names are of great importance as it is
works as a distinguishing factor for different websites and their respective businesses or
companies. Small scale or developing businesses are always advised to register their domain name
because it helps to secure the business, in the present highly competitive and ever growing e-
commerce world. An information provider who wants to registers the domain name is known as a
Registrant. Domain names can be registered and protected as trademarks or service marks at an
international level by only one organization i.e. ICANN (Internet Corporation for Assigned Names
and Numbers) along with national protection under the concerned country’s national Trademark
Law. In regard to India, domain names can be protected under the Trademarks Act, 1999, provided
that it fulfils all the required criteria mentioned under the Act. The proprietor of the domain name
shall hold all rights which a trademark owner is entitled to, which includes the right to sue for
infringement or passing off.
III. DOMAIN NAME DISPUTES
As mentioned earlier, domain names have huge significance as they act as an identifying factor for
businesses and companies and thereby attract intellectual property rights. The prime issue with
domain names is that conflict arises when two or more companies or businesses believe that the
1 Professor Karl Manheim and Professor Lawrence Solum, An Economic Analysis of Domain Name Policy, Loyola
Law School (Los Angeles), Public Kaw and Legal Theory, May 2003, 3, 7. 2 Id. 3 People Interactive (India) Pvt. Ltd. vs. Vivek Pahwa & Ors , (2016) 68 PTC 225 (Bom).
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particular domain name belongs to them and they have the right to register that domain name.
Broadly, domain name disputes, specifically related to trademark, can be categorized into three
segments:
a) Cyber Squatting- Registering a domain name in bad faith and without having any interest in the
particular business, only to sell it later to the authentic proprietor at a much higher price.
b) Profit Grabbing- Similar to cyber squatting, the only difference being lack of intention to sell
the domain name and rather to exploit it for commercial profits.
c) Typo Squatting- This type of cyber squatting generally relies on typographical errors by the
users.
However, cyber squatting is one of the main type of domain name dispute which is often faced by
the registrants. Cyber Squatting has been defined as “an act of obtaining deceitful registration with
an intent to trade the domain name to the legal owner of the name at a premium” according to the
court in the case of Manish Vij v. Indra Chugh4 The Information Technology Act, 2000 has tried
to cover several cyber crimes under its umbrella but however failed to incorporate the issue of
domain name disputes. Therefore, the only act which tries to acknowledge the issue of domain
name disputes is the Trademarks Act, 1999. This Act gives a domain name holder the same rights
as a trademark holder, which has been seen in many landmark cases like that of Rediff
Communication Ltd v. Cyber Booth and Anr, Yahoo! Inc. v. Akash Arora and Satyam Infoway
Ltd. v. Sifynet Solutions Pvt. Ltd.
Domain name disputes related to GTLDs (Generic Top-Level Domain) are subject to the Uniform
Domain Name Dispute Resolution Policy (UDRP) and other than this, ccTLD (Country Code Top-
Level Domain) related disputes are subject to country-specific resolution policies.
IV. HISTORY AND EVOLUTION OF UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY
With the advent of digitalization and easy internet access to almost everyone in every corner of the
world, the cyberspace noted a precipitous rise in altercations related to intellectual property law.
The most common issue was that of domain name disputes. To govern this particular affair, a legal
system was extremely necessary which would function at an international platform and therefore
the Uniform Domain Name Dispute Resolution Policy (UDRP) came into being. The UDRP was
fabricated to establish a uniform system which would look after the domain name disputes and the
4 Manish Vij v. Indra Chugh , A.I.R. 2002 243 (Del).
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dispute resolution process. As the reach of internet is worldwide, therefore the primary question
was regarding the jurisdiction of the dispute, i.e. which court has jurisdiction over the particular
matter. Such complexities and differences between national legal systems would only lead to
further disparities and hence the emergence of a uniform system was seen. As over the years, there
was a need for a new and separate entity to manage the domain name system, ICANN (Internet
Corporation for Assigned Names and Numbers) was formed and WIPO was entrusted with
developing UDRP.5 After the approval of the member states of the United Nations, WIPO
undertook the process of developing UDRP and then later on ICANN approved the final report
proposed by WIPO and the Rules for UDRP and adopted the UDRP on August 26, 1999. The first
ever proceeding under the policy commenced on 9th December, 1999.6 Till date, more than 2,000
UDRP proceedings have been initiated. Over 1,300 cases have been decided, more than 75
percent of which have resulted in a transfer of the name to the trademark owner.7 The statistical
data from ICANN show that UDRP is commonly used and has been a success story in regard to
the numbers of disputes which have been submitted for decision by UDRP panels.
The Uniform Domain Name Dispute Resolution Policy (UDRP) is an online system for resolving
disputes related about domain names conflicting with trademarks, where the complaints are
registered by trademark owners. UDRP has the power to delete or transfer domain names. ICANN
requires the domain registrars in .biz, .com, .info, .org, and .net to abide by the results of UDRP
proceedings. They must cancel or transfer a domain registration as a UDRP Panel directs.8 The
UDRP Rules lays down the process for filing a complaint and also for responding to a complaint
as well. All UDRP filings are to be made with dispute resolution providers approved by ICANN,
which are:9
● Asian Domain Name Dispute Resolution Centre
● National Arbitration Forum
● Czech Arbitration Court
● WIPO Arbitration and Mediation Centre
However, one thing which is important to put forward here is that the UDRP is not a court nor is
an arbitration policy and hence it is difficult to define the scope of this particular body. The entire
5Uniform Domain Name Dispute Resolution Policy, Chapter V, SHODHGANGA,
https://sg.inflibnet.ac.in/bitstream/10603/40547/12/14_chapter5.pdf. 6Timeline for the Formulation and Implementation of the Uniform Domain-Name Dispute-Resolution Policy, ICANN,
https://www.icann.org/resources/pages/schedule-2012-02-25-en. 7 Dori Kornfeld, Evaluating the Uniform Domain Name Dispute Resolution Policy, BERKMAN CENTER,
https://cyber.harvard.edu/icann/pressingissues2000/briefingbook/udrp-review.html#_ftn10. 8 Dori Kornfeld, Evaluating the Uniform Domain Name Dispute Resolution Policy, BERKMAN CENTER,
https://cyber.harvard.edu/icann/pressingissues2000/briefingbook/udrp-review.html#_ftn10. 9List of Approved Dispute Resolution Service Providers, ICANN, https://www.icann.org/resources/pages/providers-
6d-2012-02-25-en.
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dispute resolution process of UDRP is fairly flexible, inexpensive and swift. At present the
Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for managing and
co-ordinating the Domain Name System to ensure that it continues to function effectively by
overseeing the distribution of unique numeric IP addresses and domain names.10
V. OVERVIEW OF THE DISPUTE RESOLUTION PROCESS
The Uniform Domain Name Dispute Resolution Policy outlines the legal procedure for the
resolution of disputes between a domain name registrant and a third party, over the abusive
registration and use of a domain name in the generic top-level domains (gTLDs) and also those
country code top-level domains (ccTLDs) which have adopted the UDRP Policy voluntarily. Any
person or company can file a complaint regarding a domain name dispute concerning a gTLD
using the UDRP administrative procedure, and on the other hand, in case of a dispute involving a
domain name complaint concerning a ccTLD, the UDRP administrative procedure can be used
only if the concerned registration authority has adopted the UDRP Policy voluntarily, as
mentioned before. According to Paragraph 4 (a) of the UDRP Policy, the UDRP Administrative
Procedure is only available for disputes concerning an alleged abusive registration of domain
name.
The required criteria are as follows:11
i. the domain name registered by the domain name registrant is identical or confusingly
similar to a trademark or service mark in which the complainant (the person or entity
bringing the complaint) has rights; and
ii. the domain name registrant has no rights or legitimate interests in respect of the domain
name in question; and
iii. the domain name has been registered and is being used in bad faith
One of the major advantages of the UDRP Administrative Procedure is that it is informal
compared to the other dispute resolution procedure i.e. litigation. Also, another prime factor is that
this administrative procedure has an international scope of jurisdiction and also provides a single
platform and procedure for resolving domain name disputes which is very important to cope up
with the borderless nature of the Internet.
10Uniform Domain Name Dispute Resolution Policy, Chapter V, SHODHGANGA,
https://sg.inflibnet.ac.in/bitstream/10603/40547/12/14_chapter5.pdf. 11Uniform Domain Name Dispute Resolution Policy, ICANN, https://www.icann.org/resources/pages/policy-2012-02-
25-en.
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The basic stages in an UDRP Administrative Procedure are as follows:12
1. The complaint needs to be filed with an ICANN approved dispute resolution provider,
which can be chosen by the complainant.
2. The next step involves the filing of a response by the respondent (person or entity against
whom the complaint was made).
3. The chosen dispute resolution service provider of an Administrative Panel (comprising of
one or three persons, as selected by the complainant) will set up an appointment to discuss
the dispute and decide the outcome,
4. Post verification by the provider, the complaint is send to the domain name registrant, who
is required to respond in twenty days. The respondent also has the discretion to choose the
panellists.
5. After the registrant sends his/her response, the dispute resolution provider has five days to
appoint a panel of one or three members and this panel needs to issue a decision within a
stint of two weeks.
6. Post the required discussion, the Administrative Panel’s decision will be issued and
notified to all the relevant parties.
7. The domain holder has ten days to appeal an adverse jurisdiction (if any).
8. The final step will be the implementation of the Administrative Panel’s decision by the
concerned registrar and accordingly the domain name(s) in question shall be cancelled or
transferred.
How to exhibit ones rights and legitimate interests in the domain name while responding to a
complaint?
Paragraph 4 (c) of the UDRP outlines the process to demonstrate ones rights and legitimate
interests in the domain name if he/she receives a complaint.13 It clearly states that one should refer
to Paragraph 5 of the Rules of Procedure in determining how the response should be prepared.
Few of the defences are as follows:
● He/she has made 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.
12WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP), WIPO,
https://www.wipo.int/amc/en/domains/guide/#:~:text=What%20are%20the%20various%20stages%20in%20the%20U
DRP%20Administrative%20Procedure%3F,-
The%20five%20basic&text=(5)%20The%20implementation%20of%20the,question%20be%20cancelled%20or%20tr
ansferred. 13Uniform Domain Name Dispute Resolution Policy, ICANN, https://www.icann.org/resources/pages/policy-2012-02-
25-en.
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● He/she has been commonly known by the domain name, even if they have not acquired
any trademark or service mark rights.
● He/she is making a legitimate non-commercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or
service mark at issue.
To which dispute resolution service provider should a complainant submit the complaint?
The complaint can be submitted to any ICANN approved dispute resolution service provider. The
WIPO Centre was the first provider which was accredited by ICANN and was also the first one to
receive cases under the UDRP Policy. UDRP Policy and Rules are an outcome of the request of
WIPO’s member states and therefore it has an expertise in governing domain name disputes at an
international level. The information required to be enclosed in the complaint is stated in Paragraph
3 of the UDRP Rules.14 Also, the WIPO Centre has drafted a model complaint and filing
guidelines which act as a model document of what to include in the complaint.15 In order to aid the
parties in the process of preparing their respective submissions, the WIPO Centre also makes
available a legal index of decisions rendered under the UDRP Policy, which provides an overview
of the entire process.16
VI. SALIENT CONCEPTS UNDER THE UNIFORM DOMAIN NAME DISPUTE RESOLUTION
POLICY
VII.
● Bad Faith :
The term “Bad Faith” is of great importance in the UDRP Policy. A complainant has to prove that
the domain name holder (defendant) has not only registered the domain name, but also has used it
in “bad faith” in order to encompass the dispute under the umbrella of a UDRP proceeding. The
UDRP distinctly lists down in Paragraph 4 (b), four circumstances that can serve as evidence that
a domain name has been registered and used in bad faith (without any limitation). They are as
follows:
14Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), ICANN,
https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en. 15UDRP Model Complaint and Filing Guidelines, WIPO, https://www.wipo.int/amc/en/domains/complainant/. 16Legal Index of WIPO UDRP Panel Decisions, WIPO,
https://www.wipo.int/amc/en/domains/search/legalindex/#:~:text=This%20Legal%20Index%20covers%20all%20WIP
O%20UDRP%20decisions.&text=The%20principal%20purpose%20of%20the,Policy%20(%22UDRP%22).
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i. Circumstances indicating that you have registered or you have acquired the domain name
primarily for the purpose of selling, renting, or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of your documented
out-of-pocket costs directly related to the domain name; or
ii. You have 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 you
have engaged in a pattern of such conduct; or
iii. You have registered the domain name primarily for the purpose of disrupting the business
of a competitor; or
iv. By using the domain name, you have intentionally attempted to attract, for commercial
gain, Internet users to your web site or other on-line location, by creating a likelihood of
confusion with the complainant's mark as to the source, sponsorship, affiliation, or
endorsement of your web site or location or of a product or service on your web site or
location.17
The arbitration panel in Telstra Corporation Limited v. Nuclear Marshmallows determined that
registration alone can be sufficient to establish bad faith in particular circumstances, despite the
lack of any other action.18 But on the other hand, in the matter of Loblaws Inc. v.
Yogeinternational, the panel issued that inactive use of the domain name was insufficient
evidence and hence ruled in favour of the respondent.19
● Fair Use:
The UDRP lists “Fair Use” as a defence, available to the registrant, which literally translates to :
if he/she is making a legitimate or fair use of the domain name without the intention of
tarnishing the trademark or service mark in question. The term “fair use” is a very broad
concept and it usually depends on the panellists as to how they shall decipher it and assess it
regarding that particular case in hand. However, the defence of “fair use” is not perceived well
by the panel during the UDRP proceedings.
17Dori Kornfeld, Evaluating the Uniform Domain Name Dispute Resolution Policy, BERKMAN CENTER,
https://cyber.harvard.edu/icann/pressingissues2000/briefingbook/udrp-review.html#_ftn10. 18 Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003, WIPO Arbitration and Mediation
Center. 19WILLIAM A. FINKELSTEIN AND JAMES R. SIMS III, THE INTELLECTUAL PROPERTY HANDBOOK 165 (American Bar
Association).
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● Generic Names:
The altercations and discussions regarding generic words have been buzzing since long in the
field of Trademark protection. One of the landmark cases which discussed this particular arena
was Abercrombie & Fitch Co. v. Hunting World Inc.20 Generic terms are not protected under
trademark law and such has been stated in many cases till date. The Administrative panels do
not apply trademark law to generic words compulsorily in the UDRP proceedings. In one of the
cases J. Crew Int’l v. Crew.com, the panel cleaved in the decision over the rights regarding the
generic word “crew”. However, the panel concluded that the domain name should be transferred
to the complainant.21
VIII. CONCLUSION
The Uniform Domain Name Dispute Resolution Policy is comparatively a recent addition in
the arena of legal systems and since its inception it has tried to provide an inexpensive and
informal mode of dispute settlement. Its international essence makes it an unwavering place for
any problems related to domain name disputes which is of great importance and the sole
purpose of creating UDRP in first place. Like any other dispute resolution system, even UDRP
has certain drawbacks; some might be more pressing than others. For example, the issue of
UDRP dealing the big trademarks and the new comers differently has raised a speculative
eyebrow among many experts and scholars. Domain names are very important for people
owning businesses in the cyberspace and the UDRP is an initiative to safeguard them, their
work and their rights. However, the concept of domain name should be dealt with separately
and all the countries should try and create distinctive laws specifically dealing with problems of
domain names, cyber squatting etc., not only nationally but internationally. Domain name
disputes should be seen as a different problem altogether and not dealt in the same way as
trademark infringement or disputes related to trademark.
20Abercrombie & Fitch Co. v. Hunting World Inc., 537 F.2d 4 (2d Cir. 1976). 21Alternative Dispute Resolution, WIPO, http://arbiter.wipo.int/domains/decisions/html/d2000-0054.html.