LUtHrA & LUtHrA
or interests lies most directly within the registrant’s In contrast, UNDRP decisions have allowed the
knowledge. Thus, once the complainant establishes concurrent use of confusingly similar domain
prima facie that the registrant does not have names where legitimate interests of the registrant
“ tHe bUrden OF
rights or legitimate interest in the domain name, have been found. prOOF On A
the burden of evidence shifts to the registrant to
cOmpLAInAnt tO
rebut the said contention. This is heightened in the
None of the INDRP cases decided provide
disputes involving well-known trademarks.
assistance in interpretation of the phrase prOVe LAcK OF rIGHtS
“commonly known by” as stipulated under
Or A LeGItImAte
The INDRP also stipulates that a registrant paragraph 7(ii) of the INDRP. However, where
undertaking demonstrable preparations to use
IntereSt In tHe mArK
the registrant is able to show that the domain
the domain name in connection with the offering name is associated with the registrant’s name as an IS LIGHt”
of goods or services is said to have rights to individual or with his business or organisation, or
legitimate interest in the mark. For this purpose, that the registrant or his business was commonly
it is essential to prove one’s bona fides in offering
known by the domain name, he might succeed in
the owner of the mark from reflecting the mark
the goods or services or in demonstrating
proving a legitimate interest.
in a corresponding domain name regularly; or
preparation to use the domain name, and that it
to attract Internet traffic by creating likelihood
was prior to the receipt of the notice of dispute. If
Under paragraph 7(iii) of the INDRP, legitimate
of confusion. Each of the aforementioned
it is proven that the registrant sought to ride on
non-commercial or fair use on behalf of the
circumstances is dealt with individually below.
the reputation of the complainant’s mark or cause
registrant has been held to be sufficient to defeat
A perusal of the decided cases under the INDRP
confusion, the benefit of this deeming provision
the claim of the complainant. A peculiar case is
shows that the first condition of paragraph 6
becomes unavailable.
that of Perfetti Van Melle Benelux v. Anupam (one
of the rare cases under the INDRP where the
is usually based on facts that show a history of
Panel decisions under the INDRP have held that
complaint was denied), wherein the proprietor of
negotiations between the parties concerning
‘demonstrable preparations to use’ the domain
the trademark ‘Mentos’ sought the cancellation
the sale or transfer of domain names or where
name can only exist in cases where the respondent
or transfer of the domain name ‘mentis.in’. The
the registrant unilaterally posts an offer on
has hosted a website using the domain name or
registrant sought to use the domain name for
his website offering to sell the domain name
where the domain name resolves into a website.
offering software services and also furnished
(Vodafone Group v. Rohit Bansal). This condition
Further, ‘preparation’ must be substantial; mere
four links before the panel incorporating the
has also been inferred in many cases where the
conceptualisation of the business idea or the
said domain name. The panel concluded that the
respondent has had a pattern of registering a
registrant’s efforts to prepare substantial design
registrant successfully demonstrated legitimate
number of domain names similar to well-known
and functional outlining of the website do not
non-commercial or fair use as per the policy.
trademarks for the purpose of selling them to
constitute demonstrable preparations to use the
interested parties.
domain name.
The registrant may further establish rights to or
legitimate interest in the said domain name by
It is pertinent to note that where the negotiations
Registrant claims of legitimate interests have
virtue of the express or implied rights conferred
for the selling of the domain name to the
often been rejected on the grounds that the
on the registrant. Conversely, the absence of
complainant commenced after the initialisation
offer made by the registrant was not bona fide.
any relationship between the complainant and
of administrative proceedings against the
The absence of a justifiable reason to adopt a
the registrant is a factor to conclude absence
respondent, the same will not be indicative of
particular name that is completely unrelated to
of legitimate interest (Jagex Limited v. Fozhou
the respondent’s intention to register the domain
the respondent’s business has been held to be
Touzi). Finally, it has been routinely held that
name primarily for the purpose of selling, renting
indicative of a lack of bona fides on the part of
the practice of placing the domain names on a
or otherwise transferring the domain name
the respondent. The panel in such cases has often
parking site does not constitute legitimate use,
registration to the complainant as per paragraph
concluded that the registration was to prevent
especially where the domain name incorporates
6(1) of the policy (Perfetti Van Melle Benelux
the complainant from registering the mark as
a trademark (Google v. R Jain).
v. Anupam). In certain cases, arbitrators have
his domain name and to derive benefit from the held that the domain name has been registered
future resale of the domain name.
Under paragraph 4(iii) of the INDRP, the primarily for the purposes of selling, renting or
complainant is required to prove that the otherwise transferring for valuable consideration
In the case of Franklin Resources v. Franklin
domain name was registered or used in bad faith. from surrounding circumstances.
Templeton Asset Management (India), the panel
Paragraph 4 of UDRP requires any complainant to
observed that where the website lists various
prove mala fide both with respect to registration
The other condition to establish bad faith is that
mutual funds being offered by the complainant
and use of the domain name. However, this
the domain name has been registered in order to
along with links to the websites of entities that
provision only requires the complainant to
prevent the complainant from using the mark in
are in the same line of business as that of the
establish either registration in bad faith or use in
a corresponding domain name. However, here it
complainant, such offering cannot be said to be a
bad faith by the registrant, thereby reducing the
must be shown that the registrant has engaged
bona fide offering of goods or services. Similarly,
rigours faced by the complainant.
in a pattern of procuring other domain names
where the respondent promoted a shopping registered by the complainant that are trademark
portal that offered goods similar to the ones ‘Bad faith’ may be established by proving terms in India or in other countries. In any case,
offered by the complainant and installed links to registration of the domain name in either of if the complainant is able to establish that the
various other products and websites, including the following circumstances under paragraph 6 registration of the domain name has prevented
that of the complainant, the said preparations of the INDRP: (a) with the intention of selling, the complainant from using the domain name,
for use were held not to be bona fide (Franke rending or otherwise transferring for excessive the burden of proof lies with the registrant to
Holding v. Franke India Private). consideration; (b) with the intention to prevent prove that he has not engaged in such “habitual
40 World Intellectual property review September/October 2009 www.worldipreview.com
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