Arbitration

Pranay Bhattacharya on Arbitration as a Method of Resolving Cybersquatting Disputes

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 PREFACE

With the revolution in the cyberspace arena and e-commerce, the growing need for a unique domain name has taken a different toll, and so have the disputes. Domain names act as a link between the potential customers and the service providers via online channels. Therefore, this write-up is an attempt to dissect the contention between the parties using arbitration as a method to resolve the disputes in cases of cybersquatting.

WHAT IS CYBERSQUATTING?

It refers to copying and using a registered domain name or using one’s trademarkwith the mal-intention of commercial gain, online frauds or selling off one’s trademark. The names so used are to some extent varied of the popular websites[i]i.e. typo-squatting.

ARBITRATION AS A METHOD OF RESOLVING CYBERSQUATTING DISPUTES

As a measure to combat domain name disputes and cybersquatting issues, Internet Corporation for Assigned Names and Numbers[ii](ICANN) has framed its Uniform Domain-Name Dispute-Resolution Policy (UDRP). The UDPR policy has been designed as a framework to administer most type of domain based disputes and cybersquatting matters to be resolved by agreement, court litigation or by arbitration. The policy sets out legal rules and provisions between the domain name registrant and a third party over the abusive registration. Additionally, World Intellectual Property Organization[iii](WIPO) has established a separate branch in 1994 as WIPO Arbitration and Mediation Centre to offer alternatives such as arbitration and mediation as an alternative of court litigations concerning commercial disputes. Be that as it may, WIPO (accredited by ICANN) has also framed policies such as WIPO Contract Clauses and Submission Agreements, WIPO Mediation, Arbitration, Expedited Arbitration and Expert Determination Rules and Clauses, and  adopted Uniform Domain Name Dispute Resolution Policy (UDRP)for preventing trademark infringement applicable to all Generic top-level domains (GTLDs) names such as .com, .info, .net, .org. Both the organizations work as a multitasker in resolving cybersquatting disputes through different methods. Other organizations such as Asian Domain Name Dispute Resolution Centre,National Arbitration Forum, .IN Domain Name Dispute Resolution Policy (INDRP) etc. has also adopted UDPR as a measure of solving cybersquatting disputes through arbitration. These organizations have worked to provide the spate of pending litigations as an alternative of commercial disputes concerning domain names by opting for arbitration and mediation.

As per UDPR, disputes arising out of cybersquatting of domain names allow the parties to go for arbitration instead of moving to court for litigation. For, filing such application there are various elements which needs to be proved[iv]i.e. a) Using identical domain name by a third party and, b) mal-intention of commercial gain, online frauds or selling off such domain name.

As per WIPO’s 2018 reports, around 5,655 caseloads were covered in total with WIPO’s Arbitration and Mediation Centre involving domain name disputes. The cases involved parties from around 109 countries. From the first case in 1999, the total case filings under has WIPO crossed the 42,500 mark in 2018, encompassing over 78,500 domain names.

INDIAN DISPUTE RESOLUTION FRAMEWORK

There are no specific laws or enactments particularly framed for cybersquatting in India. But India follows the .IN Domain Name Dispute Resolution Policy [INDRP]. The INDRP rules were approved and adopted on June, 2005 by National Internet Exchange of India (NIXI) by bringing arbitration as a method of dispute resolution by espousing the policy in consonance with the Indian Arbitration and Conciliation Act, 1996. The policy has been brought in line with the internationally recognized laws and policies framed under UDPR.

According to INDRP, the arbitration proceeding can only be initiated in case of the following disputes[v]:

  1. i) Using identical or confusingly similar domain name, trademark or service mark by the registrant in which the petitioner has rights.

(ii) The Registrant has no rights or legitimate interests in respect of the domain name; and

(iii) The Registrant’s domain name has been registered or is being used in bad faith.

In case of the aforementioned ground, the applicant is required to register the disputed domain name with NIXI pursuant to the .IN Dispute Resolution Policy and submit a mandatory arbitration proceeding complaint.[vi]

PROCEDURE FOR INITIATING ARBITRATION PROCEEDING[vii]

After the complaint has been filed, the following process takes place:

  • An arbitrator is appointed by the .IN Registry among the arbitrators listed with the registry.
  • The arbitrator so appointed shall initiate the arbitration proceedings as per the rules and regulations framed in the Arbitration & Conciliation Act 1996 and INDRP.
  • The rules thereunder state that the arbitrator is required to pass an award within 60 days of filing the complaint and forward the copy of the award immediately to the respondent, claimant and the .IN Registry.

The Registrar and the Registry shall not participate in the domain name disputes other than providing relevant information upon the request of the arbitrator. Further, the registrar or the registry does not hold any liability of the arbitral award given by the arbitrator.

REMEDIES AVAILABLE[viii]

The arbitrators can grant the following remedies to the complainant:

Cancellation of the Registrant’s domain name:This allows taking down of a domain name and taking down of the registration from losing the registrant. But, once such domain name gets cancelled, it again becomes available for registration on first-come-first-serve-basis.

Transfer of the Registrant’s domain name registration to the Complainant:In case the domain name was registered before or acquired primarily and the third party uses it for the purpose of disrupting the business of the competitor, the arbitrator may transfer the domain name from the registrant to the complainant and can ask to charge fees/ penalties as may deem fit thereof.

Costs as may be deemed fit may also be awarded:This allows the complainant to seek benefit in the form of compensation in case of any domain name dispute. The arbitrator may grant such penalties/fees as may be deemed fit on the basis of evidence(s) produced.

JUDICIAL PRONOUNCEMENTS

  • In Vodafone Group Plc v. Rohit Bansal[ix](December 14, 2007), bad faith was considered as an essential element by the arbitrator in passing of the arbitral award in favor of Vodafone group. The arbitrator held that the Respondent intentionally registered his domain name as “vodafone.co.in” to deceive customers and later selling it to the appellant with the intention of making money. The arbitrator ruled in favor of the complainant as per the framework of INDRP and ordered an immediate transfer of the domain name.

 

  • In Bennett Coleman & Co Ltd v. Steven S Lalwani and Bennett Coleman & Co. Ltd v. Long Distance Telephone Company[x](March 11, 2007), the respondent used the domain names www.economictimes.com and www.timesoftimes.com. which were held by the complainant’s registered trademark “The Economic Times” and “The Times of India” and were similar to complainant’s domain name. Further, the respondent’s website (using the complainant’s domains) redirected the users to comwhich provides India-related news and articles. In accordance, with Paragraph 4(i) of UDPR[xi]the arbitrator passed an order in favor of the complainant.

Various arbitration proceedings have taken place along similar lines in analogous fact situations, thereby following the guidelines and policies framed under international standards set by UDPR and INDRP.

CONCLUSION

What emerges from the aforesaid is whether arbitration can be used as a method of resolving internet disputes between the parties? The policies and frameworks stated above prove that arbitration and other alternative dispute resolution methods can be used as a quasi-judicial system of resolving disputes instead of approaching Courts. With the revolution in the technology, domain names act as a corporate asset of every organization. Protecting these domain names require stringent laws and policies to prevent misuse of cybersquatting. With espousing arbitration as method of dispute resolution in matters of internet disputes not only provides time and cost effective alternative but also helps parties to settle their domestic as well as cross-border technology and internet related disputes out of the court. Although the arbitration process in this sector has its own limitations due to its nascent stage in this evolving technology, the organizations dealing with such cases must have vigil in anticipating the diverse use of commercial evolvement in the use of internet and mold the policies accordingly.

[i]Gayle Weiswasse , Domain Names, the Internet, and Trademarks: Infringement in Cyberspace (Santa Clara High Technology Law Journal) available at

https://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?article=1341&context=chtlj

[ii]The Internet Corporation for Assigned Names and Numbers is a nonprofit organization responsible for coordinating the maintenance and procedures of several databases related to the namespaces and numerical spaces of theInternet, ensuring the network’s stable and secure operation. Link available at https://www.icann.org/.

[iii]The World Intellectual Property Organization is one of the 15 specialized agencies of the United Nations. WIPO was created in 1967 “to encourage creative activity, to promote the protection of intellectual property throughout the world”.  Link available at https://www.wipo.int/portal/en/index.html.

[iv]The Uniform Domain Name Dispute Resolution Policy: A Cheaper Way To Hijack Domain Names And Suppress Critics (Harvard Journal of Law & Technology) available at

http://jolt.law.harvard.edu/articles/pdf/v15/15HarvJLTech211.pdf

[v]Internet Corporation for Assigned Names and Numbers available at

http://archive.icann.org/en/udrp/udrp-policy-24oct99.htm#4

[vi]INDRP Rules of Procedure available at https://www.registry.in/indrp-rules-of-procedure

[vii]Supra iv

[viii]Supra iv

[ix]Link available at  at https://www.registry.in/show-doc?id=vodafone_0.pdf

[x]Link available at https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0014.html

[xi]Mandatory Administrative Proceeding. Link available at https://www.icann.org/resources/pages/policy-2012-02-25-en#4

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