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Tina. K. Stephen and Adv. Introduction The Domain Name Registration is fast moving towards a trend where a Secondary Level Domain (SLD) is recognized by its Top Level Domain (TLD); for example, .edu TLD would mean that it would host a website of an Educational Institute, similarly .org TLD would signify that it is a website of an organization. Furthermore, Internet Corporation for Assigned Names and Numbers (ICANN) had discussed the possibility of organizing all the pornographic websites under.xxx TLD. In view of these emerging trends, .com TLD should strictly be reserved for commercial websites and individuals should be denied to claim their 'legitimate claim' over .com TLD. This topic acquires more importance in the light of recent judicial decisions worldwide and the interpretation given to the provisions of the Uniform Dispute Resolution Policy ( UDRP ). Domain name: Definition In order to understand this issue, we need to first understand the Domain Name System. Now what happens when we type the website address on our web browser? We will take an illustration of www. asianlaws.org. This domain name has to be resolved into an Internet Protocol1 (IP) address of www. asianlaws.org . In layman's term, this domain needs to be resolved into an IP address before the web browser can locate the server on which this website is hosted. These domain names are resolved using the Domain Name Servers. If the domain name is not resolved using the domain name servers, the request is sent to the Root Servers. These Root Servers form the top level of Domain Name Hierarchy. The request from these Root Servers is sent to the server which hosts the website. If we take the above illustration of www. asianlaws.org, then the request will be sent from the Root Server to the .org server. On the .org server there will be a virtual space just like a folder on the computer that will host all the pages of asianlaws domain. As two identical folders cannot exist within one folder, similarly two identical SLD cannot exist under the same TLD. TLD Registration and Dispute Resolution ICANN is entrusted with the registration of all the TLDs worldwide. ICANN also provides for resolution of disputes arising out of the registration of all the TLDs. When it comes to the registration of an SLD, this task is assigned to Domain Name Registrars. The Domain Name Registrars act as agents of the ICANN. Subject to availability, these Domain Name Registrars register a domain on the first-come-first-serve basis. Any dispute relating to domain names, the parties have to submit the dispute to the mandatory administrative proceedings. The UDRP incorporates the provision for providers who shall resolve the domain name disputes. The UDRP also provides an option to the Rahul Sud* UDRP )

conflicting parties to approach a local Court for the dispute resolution. We will restrict our discussion to the mandatory administrative proceedings conducted by the dispute resolution providers under the ICANN's UDRP . The disputes that may arise in relation to a domain name may be classified as follows: (a) Legitimate Right Holder v. Legitimate Right Holder (b) Trade mark Right Holder v. Trade mark Right Holder (c) Legitimate Right Holder v. Trade mark Right Holder

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Whether Domain Name qualifies for Trade mark protection? Now before we decide what approach shall be taken in each of the above mentioned cases, we need to understand the basic difference between Trade marks and Domain Names. A trade mark is basically a sign that is used to distinguish the goods or services offered by one undertaking from those offered by another. The basic idea of the trade marks is to protect the goodwill of a product. The trade mark laws protect the goodwill of a product where it exists. This goodwill may extend to a particular region or to a class of goods. For example, a trade mark X is used for edible product in a Y country. The trade mark protection to X will be extended to a particular class of goods i.e. edible products and it will get protection within a certain territorial limit. In this case, the protection will extend to the territorial limits of country Y. Various countries worldwide have framed national laws to resolve the trade mark disputes. These laws describe the characteristics of a good trade mark. The local laws of different countries also provide for a registration process. A trade mark may comprise of a device, alphabet, number, sign, etc that is used to indicate the quality of a product and its source of origin. It can be granted for a product or a service. Keeping in mind all these characteristics we can conclude that domain names certainly qualify for a trade mark protection. Yahoo.com undoubtedly can file for a trade mark registration for the word 'Yahoo'. What is the conflict? In the early age of internet, the websites contained mostly static pages directed to dispense information about the product or the services. The character of these websites slowly started to change and they came to be increasingly used in trade. It has now become an easy source of transaction for many companies. The companies also found that it was now getting easier to provide their various services like banking, education, consultancy, retailing, etc through the internet. It also facilitated the better marketing and promotion of the company and its products. With about one billion of the world's population having access to internet, the revenue generated through online business is rapidly increasing and in this context the relevance of domain name registration of trade marks has also started increasing. The domain name registration follows a different rule in contrast to the principles of trade mark registration. A domain name is granted on first-come-first-serve-basis. If a domain name is available it can be registered by any person irrespective of the fact that the person is using that domain or not. If a company registers a trade mark, it does not qualify that company to get a domain name. For example, if a company has registered a trade mark "Asian Laws", it does not entitle them to get the domain name "www.asianlaws.com". The person who books the domain name first will own that domain name. Secondly, there are few concepts which the trade mark registration follows but the domain name registration overlooks. The conflict begins at the point when it is evident that the two can survive independently i.e., a trade mark holder necessarily need not have a domain name registered in the name of the trade mark or that a domain name holder need not necessarily have a trade mark protection for the name that has been used by him as the domain name. Further, where the same name is held by two different people at the same time, conflicts are bound to arise especially because both the trade mark and the domain name have commercial value as the trade mark is used to identify a product and create a market and consumer identity for the product. On the other hand the domain name is used to further the commercial interest of the company through the internet. So in such situations, it is important to see that there should be some guidelines which are required to be followed so that such conflicts can be avoided. Because it also happens that due to such dual holdings of the same name, the trade mark holder who actually has a commercial interest over the same is put into much difficulty which may ultimately also have an adverse effect on his business. Honest concurrent use In this context we need to understand the concept of honest concurrent use under the trade mark law. We need to see whether such concurrent use is possible in the trade mark and

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domain name context. As discussed earlier the trade mark law is territorial. Trade marks are exclusive rights which grant protection over a certain territory. Under trade mark law two trade marks can exist simultaneously provided they have been used honestly and concurrently at two different places. But when we compare this situation with domain names, the situation of honest concurrent use cannot arise. The moment someone registers a domain name he will get a worldwide protection over this domain and no one else will be able to book the same domain. But the problem arises when the domain name registrant is different from the trade mark holder for the same name. In such a situation the conflict will arise and the interest of the parties seems to thoroughly clash. Generic names The generic names are usually devoid of basic characteristics of a good trade mark i.e. being distinctive in nature. Therefore, generic names such as names of people, words of common usage, etc are not granted trade marks protection. To get a trade mark protection these words need to acquire distinctiveness from a long usage. After a long usage when the people start associating these names with the product/services, these names acquire distinctiveness. When we compare this position of generic names with domain name registration we find that the generic names can also be registered as domain names, provided they are available. The domain name registration completely overlooks the concept of distinctiveness. Bringing out these fundamental issues, it is important to understand as to how this whole situation is handled. The jurisprudence which has developed in this context has led to a lot of confusion and overlapping between what is being set as a policy and what is being interpreted of it by the Courts around the globe. Thus, it is inevitable for us to understand the provisions incorporated in ICANN's UDRP and the interpretation given by the Courts in following them while deciding on such matters. ICANN's UDRP UDRP was very different from what it has now

Its important to note that the origin of

turned out. Initially ICANN was a body under the US government and was called Internet Assigned Numbers Authority (IANA). The US Government later submitted a White Paper to the World Intellectual Property Organisation (WIPO) to initiate a balanced and transparent process which includes the participation of trade mark holders and members of the internet community who are not trade mark holders to develop recommendations for a uniform approach to resolving trade mark and domain name disputes involving cyber piracy.2 Thus, through the efforts of WIPO and taking into consideration the opinion of other countries, ICANN was later given the status of an internationally organized non-profit corporation which had the responsibility to coordinate and manage the Domain Name System (DNS). It is ICANN's responsibility to see that all internet users get a valid address, which is a major disputed issue, and thus, in such a backdrop the role of ICANN is very crucial. Though this being so, it is also true that ICANN refuses to participate in the administration or conduct of any dispute relating to domain names3. For the purpose of settling disputes it was necessary that there be a set of rules. For this ICANN asked WIPO to produce a report on how internet domain disputes could be quickly, simply and cheaply settled to save the internet from becoming a huge, litigious no-man's land. WIPO produced a report with a range of recommendations and submitted it to ICANN. There, it was widely discussed and eventually the Uniform Dispute Resolution Policy was formed and approved on 24th October, 1999. This Policy, adopted and implemented in 1999, serves as rules for domain name disputes. The most important aspect to note is that the policy was solely for trade mark owners in dispute with non-trade mark owners. Each Provider is bound to follow this Policy along with its own supplemental rules. Approved providers include the National Arbitration Forum (NAF), the World Intellectual Property Organization (WIPO), CPR Institute for Dispute Resolution (CPR), and eResolution.

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The Policy includes acts causing domain name violation or trade mark violation as in a given case. What all evidence needs to be brought forward to prove bad-faith, details regarding court proceedings etc., ICANN has also adopted a set of Rules which shall govern the administrative proceedings for resolution of disputes under the UDRP . These Rules explain the procedural aspect regarding the settlement of domain name disputes which needs to be followed by the Provider. Cyber-Squatting Earlier when a lion's share of the business was transacted through paper and when companies were unaware of expanding their business through internet, there was a section of people who realised the potential of conducting business through the internet in the name of those companies who were still sleeping on their rights and did not bother to protect the trade marks on the internet. People who thus tried to capture others' trade marks by registering a domain name with a similar name or mark and thus made unjust profit out of it were referred to as cyber-squatters. Later, it was found that these people tried to sell these domain names back to the original trade mark holder at a very hefty amount. Many companies have in fact fallen prey to such cyber-squatters.4 Trade mark holders slowly woke up from their deep slumber and realised that their business and reputation was at stake and that something urgently required to be done. The Courts are yet to recognise that domain names are of much importance and can be a valuable corporate asset. A domain name is more than an internet address and, thus, is entitled to equal protection as a trade mark5. Even though the courts in their decisions have favoured the rights of a trade mark holder, in many cases the trade mark right holder has fallen prey to the strict standards of proof laid down by the ICANN's UDRP . Many a time a trade mark holder while trying to get his trade mark back from an individual who has legitimate right (discussed later) over the domain name is criticized and tagged as "Reverse Domain Name Hijacker".6 Reverse Domain Name Hijacking Reverse domain name hijacking signifies the act of a trade mark holder to reclaim the domain name which may be same or similar to his trade mark from a registrant who may have a legitimate right over the same. There are a number of decisions which have been decided by the Courts and the WIPO Panel on the given issue. Some cases have been a good attempt at laying down some standards to find out whether a domain name user is a genuine one or a cyber-squatter. Any how the minimum principles that are followed are those as laid down under paragraph 4 of the UDRP which says that in a case of cyber-squatting, the complainant (most of the times the trade mark holder) needs to invariably prove each of the following: (a) The domain name is identical or confusingly similar to the trade mark; and (b) The respondent has no right or legitimate interests in respect of the domain name; and (c) The domain name has been registered and is being used in bad faith.7 Apart from the abovementioned guidelines, the trade mark holder would also have to prove that the registrant through the domain name is trying to build up a competing business against him and thus trying to bring in monetary losses to him. The traditional trade mark law does not address the overlap between the trade mark in the commercial context and trade marks in the cyberspace context. While a trade mark holder tries to prove trade mark violation by a domain name user, he will invariably have to prove that the domain name user is affecting his business and causing him losses? Moreover, he has to prove that through his acts he is confusing the consumer. Even though we are talking of violation of rights in the cyberspace context these are the basic principles of trade mark violation which cannot be sidelined. The slightest failure on

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the part of the trade mark holder to prove the same would lead to his failure in getting the Domain name back. Although '.com' signifies commercial websites and even though the trade mark holder is able to prove commercial use of the said website, the irony is that in a case where the domain name user is able to prove legitimate use, then it will prevail over any other argument of the trade mark holder. Concepts of bad faith and legitimate claim The Requirements of Bad Faith: Registration and Use Bad Faith Use UDRP's concept of bad-faith was an issue of utmost concern for trade mark attorneys because under US trade mark law, "use" meant that the domain name had to be "used in commerce." The hope was that the UDRP would give trade mark holders a claim against a domain name owner, even in those cases where the domain was not being used commercially. ICANN has laid down the instances of what would constitute bad faith in para 4(a)(iii). The trade mark holder has to invariably prove any one of those instances to establish his claim over the trade mark. In many cases, it has been observed that if he fails to prove he loses his domain name rights over the trade mark. Case Study To better understand this situation we may discuss the position of Maruti Udyog8 wherein the Maruti Udyog Ltd filed a complaint before the WIPO Panel against Tella Rao for registering and using the domain name maruti.com. In their decision the panelist set out the indicia of bad faith in paragraph 4(b) of the Policy and held that the Respondent's conduct did not constitute cybersquatting. During this given period Maruti Udyog was put into immense hardship and was denied access to the domain name in spite of having a huge reputation build around the trade mark 'Maruti'. This decision was later on reversed in re-litigation. Though the concept of bad faith demands vast discussion, the thrust of the discussion will be on legitimate claim of the domain name holders. Rights and Legitimate Interests in a Domain Name Elements of a Successful Response As discussed above, the trade mark holder must prove all the required elements stated in 4(a) to force the transfer or cancellation of a domain name under the UDRP . In theory then, a domain name registrant can prevail by negating any one of the three required elements, either by showing that the domain name is not "identical or confusingly similar" to the trade mark; that the registrant has "rights or legitimate interests" in the domain name, or that the domain name was not registered and is not being used in bad faith. Use or preparation to Use in Connection with a Bona Fide Offering of Goods and Services Cases decided against the trade mark holder on the basis of the concept of legitimate interest can be divided into two types; one in which the Respondent is selling goods and services and second in which the Respondent is selling the domain name itself. A typical case decided in favour of a respondent on the basis of sales or preparation to sell goods and services is EAuto, L.L.C. v. Triple S. Auto Parts (eautolamps. com) 9. In this case, the Respondent, who was an operator of a long-standing business that sold autolamps, decided to begin selling the same products on the Internet. The panelists were to decide regarding the word "e" which was used as a prefix to the word 'autolamp'. It was decided that the word "e" denotes nothing but that the same product is being sold via internet. Therefore, "eautolamps" is an example of internetbased description of a generic product. A number of cases have focused on the generic quality of the domain as a principal indicator of whether or not a domain is logically connected to a bona fide offering of goods and services.

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Undoubtedly, an attempt to resell the domain name to the orginal trade mark holder is taken as an act of bad faith under para 4(b)(i), but an attempt to market the domain name is not bad faith. In these cases, the "genericness" of the domain is an important determinant of the outcome, though other factors, such as the timing of Respondent's awareness of the existence of the mark, are also important. A typical approach to the marketing of domain names can be found in Allocation Network GmbH v. Gregory (allocation.com)10, in which the panelist ruled in favour of a registrant on the ground that it had a legitimate interest in using a common word as a domain name for sale. But it is also important to note that in a case where the domain name is marketed, the registrant can always take the plea that he had no knowledge about the existence of such a trade mark. The position is even simpler in case of a generic or descriptive name as it is not regarded a violation at all11. This position makes things difficult for a trade mark holder. There are further issues which would make things difficult for a trade mark holder. In order to show legitimate use, the domain name user only need to show that there had been a demonstrable preparation to use the name.12 But there has been no exact interpretation to the words 'demonstrable preparation' which has further complicated the issue. The ICANN Policy is very narrow in scope. It covers only cases of 'cybersquatting' and 'cyberpiracy,' and not every dispute that might arise over a domain name. Legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue There are ample examples wherein non-commercial use has been successfully used as a defence. The best example of a successful non-commercial use defense is Western Hay Company v. Carl Forester (westernhay. com)13. In this case, the panel accepted evidence that the Respondent operated a non-commercial web-based discussion group. It should be noted, however, that although the complainant Western Hay was a business, it did not have the trade mark. It, according to panelist, did not try to acquire the mark. In such a case, the domain gets blocked for those who have a commercial use for it. The complainant would invariably be at a disadvantage because it is he who would have to suffer the monetary losses. Conclusion Judges are often seen as applying the following guidelines to prove a case of domain name dispute: 1. Whether the domain name was registered even before the trade mark was registered? 2. What is the purpose of registering such a domain name, whether it is for a commercial purpose or whether it is for personal purpose 3. Lastly, a very important factor that needs attention is the intention of the registrant to sell it back to the trade mark holder at a very hefty amount. The application of these guidelines makes things much difficult. The best way is to lay down rules which would lay all these arguments to rest. .com domain names are becoming moving targets for rights holders, so due consideration should be given to concrete policy responses. Domain name is a fast growing field and disputes are thus bound to arise even faster. The Policy set forth to resolve this dispute is proving to be inadequate. In spite of all the ambiguity and all the unwanted disputes, it has never seemed to have occurred to ICANN that the Policy is redundant today and that there is a need for a review of the same. A balanced approach is needed to ensure the interest of individuals and the commercial trade mark holders can be separately and without much overlap be protected. In order to do way with such anomaly, it is suggested that there be a provision for separate domain name registration. Individuals are required to get registration under the .ind TLD. The legitimate claim clause should not be applied to .com domains and there should be a separate domain name dispute resolution policy for each TLD domain. __________________

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1 IP address is a unique identification number of a computer connected through internet or Local Area Network (LAN) 2 63 Fed. Reg. 31747 (available at http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm) 3 ICANN Policy Paragraph 4(h) 4 Companies like Pansonic, Avon have all fallen in such traps. 5 Rediff Communications Limited v. Cyberbooth and another 1999(3) All MR 164(Bom HC) 6 The Veronica and Pokey situations (non-commercial sites the homepages of young children who received cease and desist letters from trade mark owners) that gave rise to the phrase "reverse domain name hijacking" 7 ProtoSoftware, Inc. v. Vertical Axis, Inc, WIPO, Case No. D2006-0905 8 Maruti Udyog Ltd v. Tella Rao D2000-0518 9 WIPO- D2000-0047 10 D2000-0016 11 Car Toys, Inc. v. Informa Unlimited, Inc. (cartoys.net) FA0002000093682 General Machine Products Company, Inc. v. Prime Domains (craftwork.com) FA0001000092531, 12 Shirmax Retail Ltd. v. CES Marketing Group, Inc. (thyme.com) AF-0104 13 FA0001000093466 * Adv. Tina. K. Stephen and Adv. Rahul Sud are working as Consultants to Asian School of Cyber Laws

(www.asianlaws.org). Asian School of Cyber Laws is a pioneer institute providing education, training and consultancy in cyber laws, intellectual property laws, cyber crime investigation and computer evidence analysis.

Copyright (c) Adv. Tina. K. Stephen and Adv.

Rahul

Sud

2009-02-09

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Kotak Mahindra Bank Ltd

2009-02-09

Source : www.manupatra.com

Kotak Mahindra Bank Ltd