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INTELLECTUAL PROPERTY RIGHTS

PROJECT ON

“WIPO Domain Name

Resolution and Impact, Effectiveness”

Submitted to: Dr. Athira P.S

Subitted on: 2nd November 2017

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ACKNOWLEDGEMENT

Every project’s big or small success is largely due to the effort of a number of
wonderful people who have always given their valuable advice or lent a helping
hand. I sincerely appreciate the inspiration; support and guidance of all those
people who have been instrumental in making this project a success. Firstly I
would like to thank the Almighty God, for giving me health and ideas for finishing
this project successfully.

Then, I would like to express my special thanks of gratitude to my Professor,

Dr. Athira P.S (Assistant professor, NUALS) who gave me the golden opportunity
to do this wonderful project on the topic “WIPO Domain Name Resolution and
Impact, Effectiveness”, which also helped me in doing a lot of Research and I
came to know about so many new things I am really thankful to her.
Then I would also like to thank my parents, sisters, grandmother and friends who
helped me with unconditional emotional support and also helped a lot in finalizing
this project within the limited time frame.

Last but not least I like to also thank our librarian for giving helping hands while
collecting data.

Thank you,

Ancy Varghese.
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Introduction

The Uniform Domain Name Dispute Resolution Policy (the UDRP Policy) 1 sets out the
authorized structure for the declaration of dispute among a domain name possessor and a third
party over the intolerable registration and use of an Internet domain name in the generic top level
domains (gTLDs) and those country code top level domains (ccTLDs) that have agree to the
UDRP Policy on a forbidden base. On October 24, 1999, the ICANN Board adopt a set of rules
for Uniform Domain Name Dispute Resolution Policy (the UDRP Rules) setting out the
measures and additional necessities for every phase of the dispute resolution directorial process. 2
That first one states conditions signifying that the domain name was register or acquire first and
foremost for the function of selling, renting, or otherwise transferring the domain name
registration to the plaintiff who is the proprietor of the trademark or service mark or to a
competitor of that plaintiff, for valuable consideration in excess of the domain name registrant's
out-of-pocket costs directly related to the domain name; then comes the The domain name was
registered in order to prevent the owner of the trademark or service mark from reflecting the
mark in a corresponding domain name, provided that the domain name registrant has engaged in
a pattern of such conduct;3 and By using the domain name, the domain name registrant
intentionally attempted to attract for financial gain, Internet users to the registrant's website 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 the registrant's website or location or of a
product or service on the registrant's website or location. 4

1
Kisc IP, Internet, ecommerce and domain names, available at http://www.kisch-ip.co.za/ last seen on 10/12/2015

2
WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP) available at

http://www.wipo.int/amc/en/domains/guide/ last seen 10/12/2015

3
Ibid
4
David Lindsey, International Domain name Law: ICANN and UDRP, p. 410
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The UDRP Administrative Procedure is merely accessible to decide dispute among a third party
allege a rude registration of a domain name (see above) and the domain name registrant. The
UDRP Administrative Procedure is only available to resolve disputes brought or commenced by
a third party5 alleging an abusive registration of a domain name against a domain name
registrant.

World Intellectual Property Organization (WIPO)

The World Intellectual Property Organization (WIPO) is one of the 17 specialized agencies of
the United Nations (UN). WIPO was created in 1967 "to encourage creative activity, to promote
the protection of intellectual property throughout the world".6WIPO currently has 191 member
states, administers 26 international treaties,7 and is headquartered in Geneva, Switzerland. The
current Director-General of WIPO is Francis Gurry, who took office on 1 October 2008.[4] 186
of the UN member states as well as the Cook Islands, Holy See and Niue are Members of WIPO.
Non-members are the states of Marshall Islands, Federated States of Micronesia, Nauru, Palau,
Solomon Islands, South Sudan and East Timor. Palestine has permanent observer status.

Domain Names

Domain names are simple and human- friendly forms of Internet addresses that enable users to
easily locate and remember addresses. The domain name system (DNS) operates on the basis of
a hierarchy of names. The top-level domain names are ‘generic top-level domains’ (gTLDs),
such as .com, .org, .net, .biz, or .info and ‘country code top-level domains’ (ccTLDs), such as .ch
(Switzerland)., .fr (France) or .za (South Africa). The use of the DNS has grown rapidly over the
last few years. By the end of first quarter of 2008, there were more than 162 million domain
names registered across the entire top- level domain names, with more than 63 million of these
names registered in the ccTLDs8 . Because domain names are easy to remember and use, the
DNS- the central system for routing traffic on the internet- has assumed a key role in electronic
5
Supra n.2
6
"Convention Establishing the World Intellectual Property Organization signed at Stockholm on 14 July 1967,
Preamble, second paragraph".
7
Treaties administered by WIPO - Consulted 26 June 2013". Wipo.int. Retrieved 18 October 2013
8
The VeriSign Domain Report, ‘The Domain Name Industry Brief’, vol.5, 2008:
<www.verisign.com/static.043939.pdf>
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commerce. On the one hand, it facilitates the ability of consumers to navigate the internet to find
the website they are looking for, and on the other hand, it facilitates businesses ability to
promote an easy – to- remember name or word which may, at the same time, serve to identify
and distinguish the business itself (or its goods or services) and to specify its corresponding
online, Internet location.

The system of business identifiers that existed before the arrival of the internet was trademarks
and other right of business identification such as geographical indications. Domain names have
now acquired increasing significance as business identifiers. The conflict between domain and
standard Intellectual Property Rights (IPRs) raised challenging policy questions. One system –
the DNS – is largely privately administered. It gives rise to rights that are exercisable only
within the territory concerned.

This conflict has given rose to a number of predatory and practices that have been adopted by
some parties to exploit the lack of connection between the purposes for which the DNS was
designed and those for which IP protection exists. There have been many cases where domain
names to the owners of those marks, or simply to take unfair advantage of the reputation
attached to those marks.

The growing number of cyber squatting disputes (regarding the abusive registration of domain
names that violate trademark rights) reflects the premium that business place on domain names
and their potential for facilitating e- commerce. Cybersquatting is universally condemned as an
indefensible activity. Keeping this problem in view, the US government sought international
support to request that WIPO initiate a balanced and transparent process to:

- Develop recommendations for a uniform approach to resolving trademark/ domain name

disputes involving cyber piracy;
- Recommend a process for protecting famous trademark in the gTLDs; and
- Evaluate the effect of adding new gTLDs and related dispute resolution procedure on
trademark and IP holders.
WIPO, in July 1998, commenced an extensive international process of consultations- ‘the WIPO
Internet Domain Name Process’. The purpose of the WIPO process was to make
recommendations to the corporation established for the technical management of the DMS, the
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Internet Corporation for Assigned Names and Numbers (ICANN), on certain questions arising
out of the interface between domain names and IPRs. WIPO came out with clear guidelines.9
- Adoption of a number of improved, minimum ‘best practices’ for registration authorities
(‘registrars’) registering domain names in the gTLDs intended to reduce the conflict that
exists between domain names and IPRs. In particular, a formalized agreement clearly
setting forth the rights and obligations of the parties is important.
- The ICANN should adopt a uniform dispute- resolution policy under which an
administrative dispute- resolution procedure is made available for domain name dispute
in all gTLDs. The administrative procedure should be quick, efficient and cost-
effective.10
In the case of American Civil Liberties Union v. Reno,11 Judge Mokenna has explained the
Internet address system, as follows; each host computer providing Internet services (site) has a
unique Internet address. Users seeking to exchange digital information with a particular internet
host require the host’s address in order to establish a connection. Hosts actually posses two
fungible addresses a numeric IP address and alphanumeric Domain name, with greater
mnemonic potential
Internet Domain names are similar to telephone number mnemonics, but they are of greater
importance, since there is no satisfactory Internet equivalent to a telephone company white
pages or director assistance, and Domain names may be a valuable corporate asset, as it
facilitates communication with a customer base.

In Marks & Spencer v. One-in-a Million12, the UK Court observed that when a person
deliberately registers a domain name on account of its similarity to the name, brand name or
trademark of an unconnected commercial organization, he must expect to find himself at the
receiving end of an injunction to restrain the threat of passing-off.

9
Guide to WIPO Domain Name Dispute Resolution:
<www.wipo.int/freepublications/en/arbitration/892/wipo_pub_892.pdf>
10
Intellectual Property and Competitive Strategies in the 21st Century, Shahid Alikhan, R. A. Mashelkar
11
521 U.S. 844 (more) 117 S.Ct. 2329
12
[1999] F.S.R. 1
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Further, in Jews for Jesus v. Brodsky,13 the US Court held that merely placing a disclaimer, in
the Website would not be an adequate remedy against the appropriation of plaintiff’s trademark
by the defendant.

The greatest perplexity in cybersquatting was the fact, that in most cases cyber squatters never
activated their Web site. ‘Use’, was a necessary requisite which had to be shown by the plaintiff
against the defendant to claim relief under common law of passing-off. Legal ingenuity was
shown by the Court in Marks & Spencer case, while interpreting ‘use’, to include such obvious
non-use. The Court of Appeal affirmed that the mere act of registration of the domain name and
an offer to sell the same constituted ‘use’.

Indian judiciary too adopted this approach in Tata Sons Ltd v. Kirti Sharma14
One of the most significant cases in the Indian context of cybersquatting remains Yahoo! Inc. v.
Akash Arora & Anr.15 , wherein Court held that trademark law applies with equal force on the
Internet as it does in the physical world.

The Indian Courts has followed this decision in several other subsequent cases such as
tanishq.com case, Rediff Communication Ltd. v. Cyberbooth & Anr.16 , wherein the Bombay
High Court has upheld the value and importance of a domain name as an corporate asset.
However, incases where domain names involves a descriptive term such as
mutualfundsindia.com, Courts, has refused to grant an injunction holding that in absence of
secondary meaning, the term MUTUALFUNDSINDIA is descriptive and the plaintiff cannot be
said to have any trademark rights over it.

In India, since there exists no direct law to wrestle the threat of cybersquatting; hence courts
have largely used the principle of passing-off. This approach is significant in the sense that such
an approach seems necessary in a country where trademark application take years to process
Indian businesses had to face such threat before WIPO also in a large no. of cases as
13
98 Civ. 274 (AJL)
14
Suit no.2369 of 1988
15
1999 IIAD Delhi 229
16
1999 (4) BomCR 278
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Complainant. In most cases, Indian firms and corporations have successfully defended their
trademark. The domain name involved in such cases include, Mahindra.com,
Tridenthotels.com, Theeconomictimes.com, Timesofindia.com, Tata.org

Classic instances of cybersquatting are generally easier to establish and countered as can be
determined from cases such as worldwrestlingfedreation.com, dodialfayed.com, Talk-City.com,
jimihendrix.com.

The Uniform Domain Name Dispute Resolution Policy and WIPO

The Uniform Domain Name Dispute Resolution Process was adopted by ICANN in 1999 on the
basis of recommendations made by WIPO in the First WIPO Internet Domain Name Process.
The UDRP is limited to clear cases of bad-faith, abusive registration and use of domain names
and has proven highly popular among trademark owners. To date, some 35,000 UDRP cases
have been processed. Looked at holistically, the results speak for themselves in terms of overall
numbers of cybersquatting disputes kept out of the courts. Being administrative (and not
arbitral), the UDRP procedure is optional for trademark owners, but mandatory for (gTLD)
domain name registrants. The UDRP does not prevent either party from submitting a dispute to
a national court of competent jurisdiction; but very few cases that have been decided under the
UDRP have been brought before national courts.
The UDRP applies to registrations in generic top-level domains (gTLDs), such as .com, .net and
.org, and will apply to any new gTLDs introduced. (Additionally, many country-code top-level
domains (ccTLDs) have adopted the UDRP or a variation thereof, some 65 of which are
administered by WIPO.)
Under the UDRP, the rights-holding complainant submits its electronic complaint to the
provider, which has five days to conclude an administrative compliance review of the
complaint. Typically, this will include registrar verification of relevant registrant name and
contact information, along with a request for confirmation that the disputed domain name has
been locked pending resolution of the dispute. In the event that any administrative deficiencies
are identified in the complaint, the Complainant has five days within which to correct these. On
successful conclusion of the administrative compliance check, the provider proceeds to
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formally commence the proceedings by forwarding a copy of the Complaint (including any
Annexes) to the Respondent by email. The provider also sends written notice of the dispute to
the Respondent to any available postal address and/or fax number. The respondent has 20 days
to file a response from the date the Provider notifies the respondent of a filed complaint. The
Provider then appoints an independent single- or three-member panel to decide the case. (Either
party may elect a three-member panel.) Table 6: WIPO UDRP Flow Chart A reasoned decision
is taken within two weeks by the panel. If the panel orders the transfer or cancellation of the
domain name (these are the sole remedies available, with monetary damages, in particular,
being excluded), the registrar is obliged to implement the decision, except if the losing domain
name registrant files a case concerning the disputed domain name in a competent court against
the complainant within ten business days of notification of the panel decision. The UDRP
Provider posts notice of the filing of a case and the full text of decisions on its website. (All
WIPO UDRP decisions are searchable through the online index of WIPO UDRP Decisions,
which allows structured access to the large quantity of legal and other data contained in those
decisions. The WIPO Center also provides a unique jurisprudential overview which draws on
the some 20,000 cases administered by WIPO to reflect a balanced statement of some 50
substantive and procedural UDRP issues.

India And Domain Name Dispute Resolution

The ccTLD’s category is specific and distinct from the gTLD’s and correlate to the names of
specific countries and territories. Various corporations today not only register their trade name
and their core brands as gTLD’s, but also as ccTLD’s in select countries where they see future
business potential. Functionally, there is no dissimilarity between the gTLD and the ccTLD. A
domain name registered in a ccTLD provides exactly the same connectivity as a domain name
registered in a gTLD. There are at present more than 200 ccTLD’s. Each of these domains bears
a two letter country code derived from Standard 3166 of the International Standardization
Organization. An example would be: Yahoo.com is a gTLD. However, Yahoo.co.in would be a
ccTLD registered in India. Similarly, Yahoo.co.au would be a ccTLD registered in Australia.

The administration of a ccTLD is left to the specific country concerned and thus each ccTLD
policy is distinct from the other. For example, the administration of domain names within
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the .in (Indian) category is overseen by NIXI (National Internet eXchange of India). Similarly,
registrations in the UK are overseen by a body known as Nominet.
Under NIXI, the INRegistry, functions as an autonomous body with primary responsibility for
maintaining the .IN ccTLD and ensuring its operational stability, reliability, and security,
implementing the various new policies set out by the Government of India and its Ministry of
Communications and Information Technology, Department of Information Technology.

IN Registry has assumed responsibility for the registry from the previous registry authority, The
National Centre for Software Technology (NCST) after the Government decided to revamp the
administration of the .IN registry in late 2004.This change was announced via an executive
order through a gazette notification issued by the Department of Information Technology
(DIT), Government of India, according a legal status to the IN Registry.

IN Registry does not carry out registrations itself. Instead, it accredits registrars through a
process of selection on the basis certain eligibility criteria.

Usually a domain names may be registered for a minimum of one (1) year, and a maximum of
five (5) years. Domains automatically renew at the end of their term. .IN domain names may be
between 3 and 63 characters in length. Only letters, digits, and hyphens are accepted in a
domain name. It is proscribed to begin or end domain names with hyphens. For names in the
unrestricted zones registrants are allowed to transfer their domains to the registrar of their
choice. The registry holds the authority to deny or suspend a registration if it conflicts with the
sovereign national interest or public order.

Owners of registered Indian trademarks or service marks were also allowed a Sunrise Period to
protect their marks online. The sunrise period gave preference to Indian citizens and companies
over entities from abroad.

".In" Dispute Resolution Process

The IN Registry has published the .IN Dispute Resolution Policy (INDRP) which is a
mandatory dispute resolution procedure. India does not subscribe to UDRP. However, INDRP
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has been formulated in lines of UDRP, internationally accepted guidelines, and with the
relevant provisions of the Indian IT Act 2000.

INDRP sets out the terms and conditions to resolve a dispute between the Registrant and the
Complainant, arising out of the registration and use of the .in Internet Domain Name. Para 4,
INDRP is strikingly similar to Para 4 (a) of the UDRP and constitutes the same essential
premises for filing a complaint. INDRP makes it obligatory on the Registrant to submit to
arbitration proceeding in an event a complaint is brought against the same with .IN Registry.

Upon receipt of complaint the .IN Registry shall appoint an Arbitrator out of the list of
arbitrators maintained by the Registry. Within 3 days from the receipt of the complaint the
Arbitrator shall issue a notice to the Respondent. The Arbitrator shall then conduct the
Arbitration Proceedings in accordance with the Arbitration & Conciliation Act 1996 and also in
accordance with this Policy and rules provided there under.

Once the arbitrator is appointed the .IN Registry shall notify the parties of the Arbitrator
appointed. The Arbitrator shall pass a reasoned award and shall put forward a copy of it
immediately to the Complainant, Respondent and the .IN Registry. The award shall be passed
within 60 days from the date of commencement of arbitration proceeding. In exceptional
circumstances this period may be extended by the Arbitrator maximum for 30 days. However,
the Arbitrator shall give the reasons in writing for such extension.

Evidence of registration and use of domain name in Bad Faith has to be ascertained by the
Arbitrator taking in to consideration Para 6, INDRP; but without any limitation. These
considerations are analogous to those provided under Para 4(b), UDRP.

The Arbitrator shall ensure that copies of all documents, replies, rejoinders, applications, orders
passed from time to time be forwarded to .IN Registry immediately for its records and for
maintaining the transparency in the proceedings.
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The policy provides that no in-person hearings is take place (including hearings by
teleconference, videoconference, and web conference), unless the Arbitrator determines, in his
sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the
Complaint.

The remedies available to a Complainant pursuant to any proceeding before an Arbitrator is

limited to cancellation of the Registrant's domain name or the transfer of the Registrant's
domain name registration to the Complainant. Costs may also be awarded by the Arbitrator.

The INDRP prohibits a Registrant from transferring a disputed domain name registration to
another holder in case an Arbitration proceeding is initiated pursuant to this policy, for a period
of 15 working days ("working day" means any day other than a Saturday, Sunday or public
holiday) after such proceeding is concluded, or, while the dispute is pending, unless the party to
whom the domain name registration is being transferred agrees, in writing, to be bound by the
decision of the court or arbitrator.

Conclusion
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The explosion of new gTLDs and ccTLDs will help not only streamline the contents available
to a consumer on the Internet but will enable a user to access data faster and more resourcefully.
This jubilation is marred by the conviction that such growth will also lead to larger number of
cases involving cybersquatting, leading not only to confusion but also economic suffering.

The need for better and more efficient means to fight this peril is necessary as e-commerce take
another step forward with time. Policies such as UDRP and INDRP may be viable concepts
now, but the ingenuity of a rogue cybersquatter should not be undervalued. Thus, it is
imperative that judiciary must be proactive to balance both trade-interest and right of free-
speech.