INDIAN DOMAIN DISPUTES


As a corollary, if a complainant can prove that the registrant has no legitimate interest in the domain name and that it was registered or used in bad faith, the disjunctive interpretation implies that the domain name needn’t be similar to a trademark in which the complainant has rights. However in such an event, the complainant may not have any locus standi to submit the complaint in the fi rst place.


It must be kept in mind that the object of the INDRP is to counter cybersquatting, for which it is imperative that a complainant satisfi es all three elements while seeking a remedy under the INDRP. T erefore, it is vital that the elements are interpreted conjunctively.


T e second diff erence is that under the UDRP, a complainant must prove that the domain name is registered and being used in bad faith. However, under the INDRP by virtue of the disjunctive requirement of the phrase “or”, the complainant is required to prove that the domain name has been registered or is being used in bad faith. T e signifi cance of this is that if a complainant proves that the domain name was registered but not used in bad faith or vice-versa, the complainant will be unable to obtain a remedy under the UDRP, but can do so under the INDRP.


T ere are several other unique aspects of the INDRP in contrast to the UDRP, notably:


In UDRP proceedings, the complainant selects the provider (from the list of ICANN approved providers) who then forms an administrative panel which administers the proceedings, while under the INDRP, an arbitrator is appointed by NIXI to conduct the proceedings.


The UDRP proceedings are governed by the UDRP Policy, Rules of Procedure and the WIPO supplemental rules, while under the INDRP, the arbitrator has to conduct the proceedings in accordance with the INDRP Policy, Rules of Procedure and the Arbitration and Conciliation Act, 1996.


Under the INDRP a sole arbitrator is appointed to conduct the proceedings, while under the UDRP the administrative panel can consist of one or three panellists.


A party to an INDRP proceeding may request the arbitrator for a personal hearing to enter appearance and advance arguments to make its case; no such provision exists under the UDRP.


Under the INDRP, an arbitrator is empowered to award costs as deemed fi t while the UDRP expressly limits its remedies to cancellation and transfer of the domain name.


www.worldipreview.com “IN UDRP


PROCEEDINGS, THE COMPLAINANT SELECTS THE PROVIDER (FROM THE LIST OF


ICANN APPROVED PROVIDERS) WHO THEN FORMS AN ADMINISTRATIVE PANEL WHICH ADMINISTERS THE PROCEEDINGS.”


Signifi cantly, a fundamental diff erence between the policies is that under the UDRP a complainant may combine multiple domain names into one consolidated complaint. However, under the INDRP, the rules clearly stipulate that “a separate complaint is required to be fi led for dispute relating to each domain name” [Paragraph 3(c)].


T is poses a serious problem for a complainant who comes across an entity which wrongfully registers multiple domain names in clear violation of its rights and who, owing to Paragraph 3(c), is required to fi le separate complaints for each domain name. T is is an onerous task which is not only expensive for the complainant, costing as much as $200 per complaint, but may lead to inconsistent decisions being passed with respect to the same trademark.


Recently, Dell Inc came across such an entity that had wrongfully registered 10 domain names comprising its trademark/name ‘Dell’ and suffi xed with .in.


Although it seemed both expedient and practical to submit a single complaint consolidating the domain names under the INDRP, Dell Inc apprehended objections under Paragraph 3(c).


Dell Inc contacted representatives of NIXI to ascertain the permissibility of fi ling a consolidated complaint. NIXI accepted the necessity to bring about an amendment in the existing provisions to circumvent multiplicity of proceedings, especially when confronted with


numerous decisions


passed by WIPO, NAF and even the High Court of Delhi wherein multiple domain names were consolidated to form the subject matter of a single action. However, they appeared reluctant to allow deviation from the INDRP especially with respect to an express provision contained therein.


Dell Inc was leſt with no alternative but to fi le separate complaints for each domain name. In the circumstances, it was essential that


all


complaints were entertained by a common arbitrator in order to ensure consistency in decisions. Accordingly, a formal request was made to NIXI to assign all the complaints to a common arbitrator to ensure consistency.


However, to Dell Inc’s surprise, despite taking all the precautions and following up with NIXI constantly, each complaint was assigned to a diff erent arbitrator.


It appears that until there is a signifi cant


amendment to the INDRP, starting with the abolishment of Rule 3(c), to bring it in sync with the UDRP and court procedure, an aggrieved party must fi le a separate complaint before NIXI for each domain name bearing in mind that each complaint will be assigned to a separate arbitrator and run the formidable risk of confl icting decisions, thereby defeating the entire process. T e need for a renaissance is at hand. 


Pravin Anand is managing partner at Anand and Anand. He can be contacted at: pravin@anandandanand.com


Raunaq Kamath is an associate at Anand and Anand. He can be contacted at: rau naq@anandandanand.com


Pravin Anand has been a practising advocate and patent and trademark attorney since 1979. He has appeared in several landmark IP cases and is chairman of the Indian IP Promotion Advisory Committee and president of


the


International Association for the Protection of Intellectual Property (AIPPI). Anand is a co-author of two volumes of Halsbury's Laws of India on IP.


Trademarks Brands and the Internet Volume 2, Issue 2 37


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