LUtHrA & LUtHrA
infringement”. Similarly, even if the domain relationship between the complainant and the
name does not resolve into a website (i.e. the registrant. The content of the website is therefore
respondent does not host a webpage), the criteria also relevant in determining (Perfetti Van Melle
of paragraph 6(ii) have been held to have been Benelux v. Anupam) the ‘likelihood of confusion’
fulfilled, provided the requirements under under paragraph 6(iii).
paragraph 4(i) are satisfied by the complainant.
Once the aforementioned triple criteria are
The third form of bad faith conduct is when the satisfied, the arbitrator may either cancel or
registrant uses the domain name with an intention transfer (paragraph 10 of the INDRP) the
to attract Internet users to its website by creating impugned domain name in favour of the
a likelihood of confusion with the mark of the complainant. Although the dispute can be
complainant. Panel decisions have held that the resolved by an arbitrator only after both the
registration of a domain name that is confusingly
parties agree to undertake that the settlement
similar or identical to a famous trademark by any
or decision of the arbitrator shall be final and
Meera Chature Sankhari
entity that has no relationship to that mark is
binding (paragraph 4 of the INDRP read with
Meera Chature Sankhari works in the
itself sufficient evidence of bad faith registration
Rule 3 of the INDRP Rules of Procedure ), there
intellectual property department at Luthra
and use (Axa v. Domain Dragons). In such cases,
are concerns regarding finality of the awards.
& Luthra Law Offices. She graduated from
the panel proceeded on a presumption that the
However, as the proceedings under the INDRP
the National Law School of India University
registrant has registered the famous mark to
are conducted in accordance with the Arbitration
in 2001 and joined a leading IP boutique
capitalise on the complainant’s long history,
and Conciliation Act, 1996, any such award can
firm in New Delhi. Before joining the Luthra
its reputation and its goodwill, and such cases
be challenged in accordance with the provisions
& Luthra, she worked with a IP litigating
fall within the ambit of paragraph 6(iii) of the
of the Arbitration and Conciliation Act, 1996.
firm in Delhi. Her primary areas of practice
INDRP (ITC Limited v. Vishal). include IP transactions, advisory and
litigation involving trademarks, copyrights,
Apart from the above, existence of actual likelihood
confidential information and copyrights.
of confusion could be established by proving that Meera Chature Sankhari is a senior associate with
the consumers are likely to or will be induced Luthra & Luthra Law Offices, New Delhi. She can
into believing that there exists an affiliation or be contacted at:
msankhari@luthra.com
www.worldipreview.com World Intellectual property review September/October 2009 41
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