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Friday, June 1, 2012

Domain Name System and Disputes Involved


AN ANALYSIS OF DOMAIN NAME SYSTEM AND DISPUTES INVOLVED

By

Pankaj Kumar

Introduction

Just few years back born �the concept called internet' multiplied itself in such a fast rate that now it emerged with different products, relating to almost every field of the economy. It entered into the business world in such a way that it resulted in the emergence of new policies, laws, bodies, etc of the government, new profession, society, means of communication and many other things. Pointing towards the negative side of this development, we can see the problems standing side by side of this development. It gave room to a separate branch of crime known as �cyber crime'. There is another major problem for which most of the countries are not even matured to cope with it. This problem is known as �domain name disputes'. This aspect of IP laws is currently dealt under trademark laws of many c ountries, and on the other hand World Intellectual Property Organization (WIPO) and Internet Corporation for Assigned Names and Numbers (ICANN) have also developed certain policies to resolve these disputes. Now days the fight for domain names is not only affecting the rights of the holder but also adversely affecting the business cycle of the world.

WHAT ARE DOMAIN NAMES?

Internet has created a global society in which we have been allotted the intangible houses for which the main gate is tangible, known as �computers'. The term �address' for this society has been replaced by the term �Uniform Resource Locator' (URL). The representations of this URL are known as Domain Names. The computers identify themselves by the help of a unique number known as the Internet Protocol (IP) number. Since these numbers are difficult to remember, it has been represented by particular names which we called as the domain name. For example,ww.lawspace.com

In technical sense, domain name comprises group of alpha numeric characters separated by dots. The first part is �www' is the indicator of World Wide Web. The second part is generally comprises the name of the enterprise, brand name, trading name or sometime personal names which is known as second level domain name. It is associated with the third part known as top level domain names. This top level domain name identifies the nature or location of the organization. These TLDs are classified into two types- gTLDs or generic Top Level Domain names, which is the indicator of nature of organization and ccTLDs or country code Top Level Domain names, which indicates the location of organizations.

DOMAIN NAME MARKET

The market of these intangible assets is one of the youngest and fastest growing markets in the globe. The basis of this market is all about searchable keywords that are both generic and descriptive. With online ad spending increasing at a rate of 30 percent a year, owing domain names has become a business in itself. Entrepreneurs can flip them, like Miami Condominiums, or they can sit on them and collect rent. Today, lots of domain name brokers are available world wide selling the domain names through auction sales with their specific selling procedures. Some of the brokers cum sale agents are Domain mart, e-bay, domain tools, etc. Today people are buying lots of domain names as an advertising tool, rather than as a brand name for their website.

The latest big deal of domain name was for the URL �seniors.com' which took place 15 days back at the domain name auction, hosted by Monikers.com in New York. The bidding started at $300,000 and blasted through seven figure mark at $1.8 million.

Some of the biggest sales of domain names are described as under following sequence:

Serial no.

Domain Name

Amount

Seller

Buyer

1

Sex.com

$12 million

Garry Kremen

Escom LLC

2.

Porn.com

$9.5 million

Moniker.com

MXN

3.

Business.com

$7.5 million

-

ECompanies

4.

Diamond.com

$7.5 million

Odimo

Ice.com

5.

Beer.com

$7 million

Bill Fisher

Interbrew

Source- Times of India, dated- July 3, 2007.

DOMAIN NAMES AND TRADEMARKS.

In a landmark decision of Delhi high court on Yahoo case, Hon'ble Justice Dr. MK Sharma, citing the case of Cardservice International Inc. Vs McGee, held that �the domain name serves the same function as the trademark and is not a mere address and therefore entitled to equal protection as a trademark.' In the countries all over the world the domain names have been treated as specie of trademark. As far as India is conside red, all the disputes relating to domain name is being governed by the Trademark Act, 1999. In India, till date there is not a single court which has treated domain name as a distinct entity from that of the trademark. Various questions arose relating to the jurisdiction of the court to deal with the cases in which domain name has been registered outside India since the trademark Act is restricted to India only. Hon'ble Justice in the Yahoo case itself, citing the case of NR Dongre Vs Whirlpool Corp, made this confusion clear, where WHIRLPOOL, though a dictionary word and not registered in India as a trademark, was entitled to protection as its reputation had traveled transborder to India.

In a recent case of Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd; the apex court gave the outstanding opinion over the confusion relating to the relation between Domain name and trademark. The principle question involved in this case of appeal is whether internet domain names a re subject to the legal norms applicable to other IP such as trademark?

Explaining the principle of domain name, the Hon'ble Supreme Court opined that �with the increase in the commercial activity on the internet, a domain name is also used as a business identifier. Therefore Domain name not only serves as an address for internet communication but also identifies the specific internet site. In the commercial field, each Domain name owner provides information/services which are associated with such Domain name. Thus the domain name may pertain to the provision of services within the meaning of section 2(z) of trademark Act'. Apart from these, there are various authorities which talks about Domain names and trademark as the belongings of the same family.

But apart from similarities, the Hon'ble court has also pointed out several dissimilarities between thou but even then it is not relevant to the nature of the right of an owner in connection with the Domain names but is material to the scope of the protection available to the right. The distinction lies in the manner in which the two operate. A trademark is protected by the laws of the country in which it is registered. Consequently, a trademark may have multiple registrations in many countries of the world. On the other hand, since the internet allows for access without any geographical limitation, a Domain name is potentially accessible irrespective of the geographical location of the consumers. The outcome of this potential is that the national laws became inadequate to effectively protect a domain name. This lacuna has been realized by the internet bodies like WIPO and ICANN and thereafter a Uniform Domain Name Dispute Resolution Policy has been framed and is made applicable to all member countries of the world.

What are domain name disputes and why they arise?

The original role of a Domain name was no doubt to provide an address for computers on t he internet. But the internet has developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the internet, a Domain name is also used as a business identifier. Therefore, the Domain name not only serves as an address for internet communication but also identifies the specific internet site. In the commercial field, each Domain name owner provides information/services which are associated with such Domain name. Moreover as discussed in the previous paragraph relating to the domain name market, it can be analyzed that how professional this domain name system has become. To gather wealth, the illegal activities relating to Domain name took birth which engendered several disputes. The concepts like cyber squatting, typo squatting, Meta tags, etc. got added in the dictionary.

Cyber squatting

It is the practice of registering the well known brand names, corporate names, celebrities or tradema rk as the domain name for various purposes. The purpose may be to attract the consumers to use their products and services or to abuse the brand or corporate names of its holder or mostly to get an opportunity to sell those domain names at the price much higher than the amount required for registration. Cyber squatters cause great hardship to the original holder of the reputation. They violate the �first come first serve basis' of the domain name registration and exploit the natural connection between the domain name and the trademark. The first cyber squatting case arose in 1994 and then it multiplied within itself in such a fast rate that it made the international bodies to draft separate policies for it. Courts in countries like India, US etc. found that the offer to sell the domain name to owner of an identical or similar trademark was a trademark infringement.

Illustration: A leading case involving a cyber squatter, Panavision Int. vs. Toppen, where Dennis Toppen was a cyber squatter who registered hundreds of domain names using well known marks of others with the stated intention of selling or licensing them to the true owners. Toppen registered the domain name "panavision.com" and offered to sell it to Panavision Inr for $13,000. The corporation, which owned a federal trademark registration for PANAVISION, sued Toppen for TM infringement and dilution under the Federal TM Dilution Act of 1995. Court held in favour of Panavision.

US have introduced an �Anti Cybersquatting Act' in 1999 in order to punish the cybersquatters.

Typo squatting

It is also similar to cyber squatting but the only difference is that in this there is no direct infringement of the rights but it is done indirectly. Typo squatting, also called as URL hijacking, is a form of cybersquatting which relies on mistakes such as typographical err ors made by Internet users when inputting a website address into a web browser. Internet users may accidentally enter an incorrect website address, and they may reach to an alternative address owned by a cybersquatter.

Generally, the victim site of typosquatting will be a frequently visited website. The typosquatter's URL will usually be any of the four kinds, all similar to the victim site address, for example:

For the intended website "lawspace.com", a typosquatter may use:

A common misspelling of the intended site---- lawspaces.com A misspelling based on typing errors----------- lawspac.com A differently phrased domain name------ spacelaw.com A different top-level domain------------------------- lawspace.co.in

Sometimes, the typosquatters will use the false addresses to distribute viruses, adware, spyware or other malware. Some are also shock sites. More common are benign domain parking sites, selling advertising to firms based on keywords sim ilar to the misspelled word in the domain.

Once in the typosquatter's site, the user may also be tricked into thinking that they are in fact in the real site; through the use of copied or similar logos, website layouts or content. Generally, competitors of the victim site do this.

John Zuccarini, who redirected domains targeting children to pornographic websites, infamously used this tactic.

The victim may take the following steps to get away from the problem:

A victim website will usually send a letter to the offender at first, in an attempt to quell the activity. It may also try to purchase the website address from the typosquatter, which could have been the typosquatter's aim all along. A Company may try and preempt typosquatting by obtaining a number of websites with common misspellings and redirect them to the main, correctly spelled website. For example , , , and others, all redirect to

Microsoft has released new software to help com bat this issue. The software is called "Strider Typo-Patrol". This is a tool that scans and shows third-party domains that is allegedly typosquatted. It also lets parents restrict access to typo-squatting domains that show sexually oriented ads on typos of children's web sites.

Typosquatting and the law

In very rare case the people go for the law suits. "Typosquatting" is a meaningless term where the law is concerned. Laws generally are not concerned about registrations of domain names that are similar to other domain names or similar to existing trademarks, unless some other important factor is involved.

Bonafide/ non-competing use.

In many cases it can be observed that though the TM is same but there is no claim of infringement. For example the term �prestige' is used by prestige cookers, prestige meridian, and many others industries and organizations. But as far as the domain name is considered, only one of the organizations ca n have prestige.com. So this comes under the legitimate claim cases. Even if any of the organization get the domain name �prestige.com' registered, it will not amount to violation of TM. In this type of cases, US court emphasized that mere registration of domain name without any malafide intention i.e. to sell or block the TM holder from using the same etc. is not sufficient to constitute commercial use. It has been held that mere registration or activation of domain name does not constitute commercial use even when the domain name includes the �.com' designation.

DOMAIN NAME DISPUTE RESOLUTION

There are many international bodies which are playing very active role in evolving appropriate methods for settlement of disputes relating to domain name and trademark violations. This technological world is united through e-mails, mobile phones, internet, satellites, etc. In today's world IP forms an integral part of the economy and the IP assets are b eing globalize and harmonized. So to maintain harmony, the international bodies are mandatorily required to be active regarding the issue.

WTO's Role- The impetus behind global trade mark law harmonization is the World Trade Organization (WTO) TRIPs (Trade Related Aspects of Intellectual Property) Agreement of 1994, effective January 1 1995. TRIPs stems from the General Agreement on Tariffs and Trade (GATT), which establishes the most favoured nation (non-discrimination) principle. GATT and the WTO view trade mark counterfeiting and intellectual property irregularities as distortions of legitimate trade. Its solution, therefore, involves confronting the "trade-related aspects of intellectual property" to maintain a "level playing field." Accordingly, the WTO is seeking ways to combat counterfeiting and raise worldwide minimum standards for intellectual property protection.

Art. 16 of WTO TRIPs Agreement extends the protection of well-known mark s to "the goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damage by such use".

Role of WIPO and ICANN: Though the area of IP disputes is a semi-researched one, efforts are being continuously made in this direction.

Since the cyber space lacks its boundary so there is the requirement of UNCITRAL Model Law to deal with the matters, and arbitration is being viewed as a most appropriate mode of dispute resolution in this arena. WIPO is acting as the major arbitrator provider along with others. WIPO also has its rules of arbitration so as to provide a UNCITRAL Model of Law, though its provisions differ from that of Arbitration and Conciliat ion Act, 1996. Under this law, sole arbitrator is appointed by each party and the third arbitrator is appointed by the consensus of the two selected arbitrators. The arbitrator selected must be fully skilled in the whole aspects of IP laws. WIPO provides a huge database of 1000 independent WIPO arbitrators and mediators from 70 countries. Apart from mediation and arbitration, WIPO also provides for Expedited arbitration which can be called as advancement over arbitration. It carries out arbitration in very short time frame and at reduced cost.

Recognizing the problems raised by clash between domain name system and trademarks, WIPO Arbitration and Mediation Centre is developing an online internet based system for administering commercial disputes involving intellectual properties.

With the nod towards WIPO, ICAAN has announced plans to use an arbitration panel to resolve disputes over domain name ownership before cases reach the court. WIPO established its own i nternal arbitration panel to handle such international disputes. National Arbitration Forum as an outsider source also preferred to resolve disputes over cyber squatting.

To control and resolve the disputes WIPO has formulated Uniform Domain Name Dispute Resolution Policy (UDRP), adopted by ICAAN in the year 1999.

Uniform Domain Name Dispute Resolution Policy

The outcome of consultation between ICANN and WIPO has resulted in the setting up not only of a system of registration of domain names with accredited Registrars but also the evolution of the Uniform Domain Name Dispute Resolution Policy (UDNDR Policy or UDRP) by ICANN.

This policy has been adopted by ICANN on August 26th, 1999 and was approved on October 24th, 1999. . While registration with such Registrars may not have the same consequences as registration under the Trademarks Act, 1999 nevertheless it at least evidences recognized user of a mark. This policy sets out the terms and conditio ns in connection with disputes between the parties over the registration and use of an Internet domain name registered by a party.

"The UDRP created a streamlined �cyber arbitration' procedure to quickly resolve domain name ownership disputes that involve trademarks". Though UDRP uses the arbitration as an ADR process but this arbitration process is not same as that of an ordinary arbitration. This has also been called as an Online Dispute Resolution (ODR) by some of the writers. This arbitration is completely carried out online and physical presence is not necessary.

While the system has been both severely criticized and praised, it is clear that the UDRP has been heavily relied upon. As of today around 10,000 decisions, resolving approximately 13,500 domain names have been published.

Meeting the targets that were initially intended to, the UDRP has successfully provided an easy, quick and affordable way of resolving domain name disputes. The procedure, which is entirely online, costs approximately $1000 and is � in the majority of decisions � concluded within 45 days. Concomitantly, the scope of the Policy is limited only to the cases of �cybersquatting' or those of �cyber piracy'.

The UDRP is a mandatory procedure, applicable to all registrants of generic top-level domain names (gTLDs). Any trademark owner, who believes that his trademark rights are infringed by a domain name registration can initiate a complaint with one of the arbitrator providers accredited by ICANN: Asian Domain Name Dispute Resolution Centre; The National Arbitration Forum (NAF); or World Intellectual Property Organization (WIPO).

Each provider determines the cost of the complaint based on their supplemental rules, the number of panelists and the number of domain names included in the dispute. Fees range, approximately, from $1,250 for a dispute involving a single panel and a single domain name to $6000 for a dispute involving a three- member panel and over five domain names.

Paragraph 2 of this policy necessitates the warrant from the parties that the registration of domain name will not infringe or violate the rights of any third party and registration is not for unlawful purpose and the domain name will not be used in violation of any applicable laws or regulations. This casts responsibility upon the party to determine whether his domain name registration infringes or violates someone's rights.

Under paragraph 4, this policy provides for mandatory administrative proceedings for only those disputes where the complainant can prove that:

Domain name is identical and confusingly similar to a TM or service mark in which the complainant has rights. The person has no rights or legitimate interest in respect of the domain name and Where the domain names have been registered and are being used in bad faith.

Circumstances which are considered as bad faith has been defined in paragraph 4 (b) of this policy, which comprises of cyber squatting, commercial purpose and disruption of competitor from conducting his business.

The complainant is provided with the choice of opting for a one-member or a three-member panel. Each panel serves as the definitive factor in deciding the case. Moreover, if the complainant chooses a one-member panel, the domain name holder (the respondent) has the choice of disregarding his decision and opting, instead, to have the dispute heard by a three-member panel.

The respondent has a twenty-day deadline to respond to the complaint as raised by the trademark owner and submit a written response to the Provider. In case the respondent fails to submit a timely response, the panel will almost certainly decide the action based solely on the complainant's arguments.

Awards

Unlike winning a domain name dispute in court, where the prevailing party may be the beneficiary of a monetary award, the only award, which the UDRP is able to offer, is the cancellation or transfer of the domain name and thus the change of the domain name registration only when the requirement of paragraph 3 of the policy is fulfilled. In such a case, only the complainant, the party that has the power to initiate a UDRP action, receives an award upon victory. If the domain name holder succeeds, he receives nothing and the domain name registration remains in its initial status. There is no provision of costs and damages payable to the winning party by the loosing party.

The non-binding nature of UDRP decisions

Paragraph 4(k) of the policy is very clear in describing the non binding nature of the decisions.

Unquestionably, the most significant difference between the UDRP and typical arbitration is that the UDRP proceedings are subject to de novo review in court. By contrast no arbitral procedure is subject to de novo review, since, unless exceptional circumstance s require it, arbitration calls for the finality of awards. This very point was well explained in the Parisi v. Netlearning, Inc. case.

In that case, Dan Parisi registered the domain name "netlearning.com" with Network Solutions Inc. (NSI), an ICANN accredited registrar. Netlearning, Inc. initiated a UDRP proceeding against Parisi challenging this registration. The three-member panel that was appointed to determine the dispute voted two-to-one in favour of Netlearning. The three-member panel directed NSI to transfer the registration for "Netlearning.com" to Netlearning. Parisi filed a declaratory judgment action seeking a declaration that his registration and use of the disputed domain name was lawful. Netlearning moved to dismiss on the grounds that Parisi's motion was in effect a motion to vacate an arbitration award and that Parisi failed to demonstrate cognizable grounds for such an action under the Federal Arbitration Act (FAA) and the New York Convention. The co urt, per Judge Brinkema, denied Netlearning's motion to dismiss.

Even if the panel decides that the domain name should be transferred or cancelled, ICANN will provide the respondent the discretion to submit documentation of his commencement of formal litigation against the complainant within ten days. If the domain name holder meets this requirement successfully, ICANN will stay the decision of the UDRP panel pending court resolution. For ICANN not to enforce the initial decision and follow the court ruling it needs to receive evidence that:

The parties resolved the dispute; The lawsuit has been dismissed; or The court has found that the domain name holder no longer has the right to use the domain name.

The fact that the Uniform Domain Name Dispute Resolution is non-binding may be related to the fact that the official text of the UDRP refers not to "arbitration", but to a "mandatory administrative proceeding", though without further clarifications. Even t hough this may be nothing more but a semantic difference, most possibly the difference is of more significance. The idea is that the UDRP drafters understanding that their process is not conventional by what ordinarily is defined as "arbitration" decided to clothe it under the term "mandatory administrative proceeding".

Advantages

Alternative dispute resolution process � discovery procedures, trials or juries. Many domain name registries in the United States and other countries participate in the policy In many cases it provides quicker results � 60 to 120 days from filing to decision, with the panel having14 days to render a decision once it is appointed. It is typically less expensive than filing a lawsuit . It is a more simplified process There is no jurisdiction requirement � everyone who registers a domain name in the appropriate gTLD or ccTLD is subject to arbitration Panels usually consist of lawyers and judges knowledgeable in the field

Disadvantages

There is no right to a series of replies or responses unless the information is specifically requested by the arbitration panel. The registrant can continue to use the domain name during the pendency of the UDRP proceeding. The only remedy available to the complainant is transfer or cancellation of the domain name � there is no right to damages, injunctions or attorneys' fees. The only remedy available to a respondent in the event of loss is bringing a new trial in court � no appeal is available. Panels are given a wide discretion concerning admissibility of evidence.

Conclusion

By seeing all these developments within a small time frame, an analogy can be drawn about the development of the intellectuals in this world. This systematic procedure has resulted in the settlement of thousands of disputes in a quick time. This shows a positive sign towards the development of thi s branch. But even though there are certain areas that are still remain vague and are the root of confusion. Generally most of the confusion arises with respect to the conflict between the UDRP arbitration panel's decision and the decision of the domestic courts in the common matters. The courts are still in dilemma on the situation when both the judicial body is of contrary view. The main reason behind this confusion is the one-man rule over the cyber world. So in this situation, the necessity required is to bifurcate of the power of adjudication. Process is currently going on in India and china to evolve their own root domain name so as to have a hold over the disputes and making the policies relating to domain name disputes in conformity with domestic laws. But this process is getting some opposition from superpowers. Thus an amicable settlement of this issue is much required to bring more harmonization in the domain name dispute resolution process.





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