By Baranika :-
The dispute of domain name is a conflict which arises when more than one individual or group believe that they have the right to register a particular domain name.
Most frequently, a domain name dispute would arise when a domain name comparable to a registered trademark is registered by an individual or association who is not the trademark holder. All domain name registrars must follow the ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP).
Cybersquatting 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 Chugh [AIR 2002 Del 243].
The Information Technology Act, 2000 of India talks about several cyber crimes and has set up a special Cyber Crimes Cell. However, the Act strangely ignores the problem of domain name disputes and cybersquatting. The only saving grace for sufferers of such felonies is that domain names may be regarded as trademarks based on usage and brand status and so fall under the Trade Marks Act, 1999. However, not all domain names are trademarks. Several cases of Rediff, Yahoo, and Satyam have laid down some guidelines as stated below.
1.The offender should have sold/ offered its goods/ services in a way that misleads the public into thinking that the goods/ services of the respondent are in fact the plaintiff’s.
2.Misrepresentation by the offender to the community should be proved.
3.Loss/ probability of it should be proved.
Passing-off and Domain Name Disputes: Contrasting the action for violation of a trademark, under an action of passing off, the registration of trademark is not obligatory. Whereas that the action for violation is based on a legal right attained by the registration of a trademark, in an action of passing off it is vital that goodwill has been attained by usage of the trademark.
OPTION IN A DISPUTE:
Prioritize Important Domains
It may be that numerous domain names have been registered in a number of jurisdictions. If so it is probable that it will prove to be an expensive affair to recover all the domain names. Hence, it may be wise to prioritize the domain names that one finds particularly offensive.
Contesting the Registration: If the domain name is not vital, it may not be worth challenging. However, it is advisable to monitor the registration date and register the domain name if the holder lets the registration lapse.
Writing to the Registrant
It may be that a letter demanding the registrant to terminate and discontinue using the domain name may be sufficient to prompt them to transfer it for no compensation or for no more than out of pocket expenses, to avoid additional lawful action. However, the registrant is not probably going to transfer the domain name if it is registered for a genuine reason or for the purposes of extracting a large sum of money from a trademark owner. Negotiating a value for the acquisition of the domain name may perhaps be the commercially practical solution, as a speedy acquisition may prove inexpensive and faster than any lawsuit or dispute resolution process.
A Link to your Site or a Disclaimer
The possessor of the domain name may agree, possibly for a minor sum, to have a link that directs the internet traffic which has erroneously reached their site, back to one’s website. As an alternative, a disclaimer may be displayed on their website declaring that it is in no way linked to the person’s business or his website. This is more expected if the registrant has not registered the domain name in bad faith or is engaged in an unconnected trade which does not compete with the people.
Use the Internet Service Provider’s Terms and Conditions
The operator may be in breach of its ISP’s terms and conditions, particularly if the site is being used for unlawful or immoral purposes. A person could then bring this to the attention of the ISP and request them for suspending the site. Although the ISP can’t transfer the domain name to the person, the registrant may be more eager to transfer the domain name for a equitable sum if holding on to the domain proves to be more troublesome than it is value.
-An appellant in a UDRP proceeding must establish the following three elements to succeed:
-The domain name is indistinguishable or confusingly similar to a trademark or service mark in which the appellant has rights;
-The registrant does not have rights or legitimate interests in the domain name;
The domain name has been registered and is being used in “bad faith”.