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What's in a name?

Deepak T.H.M.

Annapoorna Ogoti

Last week, under ``Resolving domain name disputes,'' we highlighted the broad framework governing the resolution of domain name disputes. This article specifically examines the factors that the person filing the complaint (Complainan t) has to prove and the defences that can be availed of by the person against whom the proceedings have been initiated (Respondent).

Complainant

The Complainant must prove that: -

1. The domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Case laws have held that the trademark need not be registered to seek protection under the ICANN Policy. In Jeanette Winterson and Julia Robert's cases the WIPO held that a person had a common law trademark right in their name and could use the ICANN P olicy to evict cybersquatters who had registered domain names using the names of individuals.

In numerous cases, Respondents had registered domain names which were the trademark of the Complainants or had done so with minor modifications or additions to the trademark such as an apostrophe, space or word. The Panel has held that th e domain name www.nokiagirls.com was similar to the trademark of Nokia Inc. The Respondent had, at times, registered domain names which were a combination of multiple trademarks. A Respondent had registered www.maersksealand.com, which was a combination of the marks ``maersk'' and ``sea-land,'' in which case also the Complainant won.

2. The Respondent has no rights or legitimate interests in respect of the domain name.

The Respondent can, however, rebut this allegation by proving circumstances which show that he has an interest in the name.

3. The domain name has been registered and is being used in bad faith.

The use of the domain name in bad faith would depend on the circumstances of the case and the elements of bad faith have to be inferred from the acts of the Respondent. The Policy provides an illustrative list of circumstances which indicate bad faith.

The Complainant must prove that:-

i. The Respondent has registered the domain name primarily for the purpose of transferring the domain name for an amount in excess of the cost of registration. In Walmartcanada.com, the Panel held that the offer by the Respondent to sell th e domain name to the Complainant and advertising the sale of the domain on the Internet was proof of bad faith.

ii. The domain name was registered with the intention of disrupting a competitor's business.

iii. The Respondent has registered the domain name to prevent the Complainant from reflecting the mark in a corresponding domain name. However, the Complainant has to also prove that the Respondent has engaged in a pattern of such conduct. In Stanley Work's case the Panel held that the Respondent had acted in bad faith as he had registered ten domain names using combinations of the trademarks of the Complainant. This prevented the Complainant from reflecting their trademark in a domain na me. The Respondent had engaged in a pattern of such conduct.

iv. The Respondent intentionally attempts to pass off his goods or services by creating a likelihood of confusion with the Complainant's mark or misleads people into believing that the site is related to the Complainant. It would be easy to prove passing off especially if the services or goods offered on the site or the representations on the site are such that the users are confused into believing that the services or goods that they procure are related to the Complainant.

The above list is merely illustrative and the Complainant may prove bad faith even by other circumstances depending on the case.

Respondent

The Respondent may be allowed to retain ownership of the domain name if he can prove that he has rights or legitimate interests in respect of the domain name. The ICANN Policy provides an illustrative list of circumstances which would prove that the Respondent has a legitimate right in the domain name.

The Respondent may prove his legitimate right in the domain name if he can prove that even before he received any notice from the Complainant he was using or shows demonstrable preparations for using the domain name or a corresponding mark to provi de goods and services to the public.

The Respondent may also prove that he was carrying on business using the domain name even though he did not have a registered trademark or that he was making non-commercial or fair and legitimate use of the domain name. The Respondent may p rove any other circumstance to establish that he has a legitimate interest in the domain name.

In Digitronics Inventioneering Corporation v. @Six.Net Registered, the Respondent had registered the domain names, www.sixnet.com and www.six.net before the Complainant had registered the trademark `sixnet.' The Panel held that the Respondent had a legitimate right in the domain names as it was commonly known by the domain names and conducted business under the above names. Thus the domain name was not transferred to the Complainant.

Conclusion

In some instances of classic cases of cybersquatting, the Respondents have not even replied to the Complaint and the DSPRs have decided the cases ex-parte. The DRSPs have been successful in providing an alternative speedy and effective remedy in cases of cybersquatting.

There have been various cases from India filed under the ICANN Policy as the remedy under this Policy is more effective than initiating legal proceedings in India for transfer of domain names. In this era of technology where geographical bou ndaries are no longer barriers, there is a need to establish mechanisms for resolution of disputes that are not affected by the nationality of the parties. The mechanism for resolution of disputes regarding domain names is a result of such technological advances.

There have been efforts by the Organisation for Economic Cooperation and Development (OECD) to formulate guidelines for the taxation of international e-commerce transaction.

Recently several companies involved in e-commerce proposed model international rules to govern e-commerce transactions. They have suggested use of third party dispute resolution mechanism to resolve disputes relating to e-commerce.

The authors are with the Technology Law Division of Nishith Desai Associates, Mumbai. This article reflects the opinion of the authors alone and not necessarily of their firm. It should not be construed as legal advice.

copyright Nishith Desai Associates, 2000