volume 2: issue 4 || september 2020 || email: editor

www.whiteblacklegal.co.in ISSN: 2581-8503

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VOLUME 2: ISSUE 4

|| September 2020 ||

Email: [email protected]

Website: www.whiteblacklegal.co.in

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ABOUT US

WHITE BLACK LEGAL is an open access, peer-reviewed and

refereed journal provide dedicated to express views on topical legal

issues, thereby generating a cross current of ideas on emerging

matters. This platform shall also ignite the initiative and desire of

young law students to contribute in the field of law. The erudite

response of legal luminaries shall be solicited to enable readers to

explore challenges that lie before law makers, lawyers and the society

at large, in the event of the ever changing social, economic and

technological scenario.

With this thought, we hereby present to you

WHITE BLACK LEGAL: THE LAW JOURNAL



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A critical examination of the Uniform Domain Name DisputResolution Policy

By Miss Mridusha Guha

Student, KIIT School of Law,

KIIT Deemed to be University, Bhubaneswar

ABSTRACT

The Internet is one of the significant and appreciable innovations of humankind and in today’s

world; the Internet is not a luxury but a utility. It is a vast virtual forum where artists, authors,

scholars, and many others showcase their work. Technology is changing; people are working hard

to develop the latest technology or software and every other day a new device is coming up with

better technology than the previous one. In this fast-moving modern age, everything is digitalized;

every document is available at one’s finger-tips in the cyberspace. Globalization is both a result

and consequence of the continuous technological change happening in different parts of the world.

Even though the Internet and the advent of technology is a boon for humankind, but every good

thing is accompanied by adversity. The development in technology has induced new kinds of

problems and threats to the rights of people. The most common forms of violation in the virtual

space are unauthorized usage and reproduction of works, piracy, hacking, data theft, etc. To

prevent these crimes, Intellectual Property Law plays a vital role in it. The international

organizations have tried to come up with several conventions and policies to help the owners,

authors and inventors regarding any injustice inflicted on them. This paper will be providing a

critical analysis of one such international organization fabricated to deal with the issue of domain

name disputes, i.e. the Uniform Domain Name Dispute Resolution Policy.



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I. INTRODUCTION

The advent of Internet downright has revolutionized the facet of digitalization and technology. The

Internet is such a platform which has the world-wide broadcasting capability of an array of

widespread information regarding anything and everything, and is a medium of participation and

interaction between two individuals. Internet has the answer to every query that we have, it

accommodates every piece of information regarding every possible subject, it provides the

information readily and most of the times, that information is provided free of cost. Therefore,

because of all these reasons the users tend to use any work which is available on the cyberspace

for their own personal requirements, often without the consent of the author. Many times, the

author himself/herself does not have the knowledge of his work being used. While discussing

about the Internet or cyberspace, one of the most important aspect to decipher is that of ‘domain

names’. In simple words, a domain name is the name or address of the website, which is used for

locating specific computer system over the internet.

Even though, the internet and digitalization has produced a massive infrastructure of information

available for everyone at their fingertips, every situation is riddled with flaws. With the increase in

reproduction of information rapidly over the digital platform, the authenticity of the author’s work

is prone to getting tarnished at a very fleeting rate. Hence, it all abridges down to the fact that with

the growth of internet, the issues in the field of Intellectual Property Law has increased. The

border between private use and public use of the information available on the internet seems to be

eroding. Therefore, such rapid transmission or distribution of works leads to several kinds of

disputes and issues of infringement. These days, not only identity theft or fraud is considered as

cyber crime but also copyright or trademark infringement in the digital space is considered to fall

under the ambit of cyber crimes other than that of IPR laws. The issues related to IPR in

cyberspace can be broadly categorized into two parts, namely: Issues related to Copyright and

Issues related to Trademark. As mentioned earlier, domain names are more or less the crux of any

website on the cyberspace and due to the sudden surge in online activities, the centre of problem

related to IPR issues in cyberspace is that of domain name disputes, which fall under the broad

category of issues related to Trademark. Hence, to cope up with these issues which are promptly

impending, the legal systems need to maintain an effective system and process of dispute

resolution not only at a national magnitude but also a uniform system to cater to the international

altercations.

II. AN INSIGHT INTO THE CONCEPT OF DOMAIN NAME

The cyberspace, which is commonly known as the Internet has several computers and servers

incorporated in it and therefore, the identification of each of them is of the utmost importance.

Every computer on the Internet has an IP Address i.e. Internet Protocol Address, which are fairly



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difficult to remember as they are a string of numbers. On the other hand, a domain name is an

address which is comparatively easy to remember and helps the users to locate any particular

website over the Internet. Technically speaking, the Domain Name System (DNS) allows an

information provider to register a domain name corresponding to an IP Address and hence, rather

than entering a meaningless string of numbers to access a website, one can instead enter a domain

name1, which is relatively easier for users. The Domain Name System (DNS) allows the domain

name to be translated into the corresponding IP Address; much like a telephone book allows

subscriber names to be translated into their unique telephone numbers.2 The Bombay High Court

in People Interactive (India) Pvt. Ltd. vs. Vivek Pahwa & Ors3 held, “it is the Internet equivalent

of a physical or terrestrial address. It directs a user to a particular part of the Web where a domain

name registrant stores and displays his information, and offers his services.”

Domain names can be broadly classified into three segments: Top Level Domain (TLD), Second

Level Domain (SLD) and Third Level Domain. For example, if we take the domain name –

www.hrc.com, the anatomy will be: “.com” as top level domain, “.hrc” as second level domain

and “www” as third level domain. However, amongst all three of them, the second level domain

(SLD) is the most difficult one to register as it is first come-first serve basis and therefore is

strictly based on availability of the domain name. Domain names are of great importance as it is

works as a distinguishing factor for different websites and their respective businesses or

companies. Small scale or developing businesses are always advised to register their domain name

because it helps to secure the business, in the present highly competitive and ever growing e-

commerce world. An information provider who wants to registers the domain name is known as a

Registrant. Domain names can be registered and protected as trademarks or service marks at an

international level by only one organization i.e. ICANN (Internet Corporation for Assigned Names

and Numbers) along with national protection under the concerned country’s national Trademark

Law. In regard to India, domain names can be protected under the Trademarks Act, 1999, provided

that it fulfils all the required criteria mentioned under the Act. The proprietor of the domain name

shall hold all rights which a trademark owner is entitled to, which includes the right to sue for

infringement or passing off.

III. DOMAIN NAME DISPUTES

As mentioned earlier, domain names have huge significance as they act as an identifying factor for

businesses and companies and thereby attract intellectual property rights. The prime issue with

domain names is that conflict arises when two or more companies or businesses believe that the

1 Professor Karl Manheim and Professor Lawrence Solum, An Economic Analysis of Domain Name Policy, Loyola

Law School (Los Angeles), Public Kaw and Legal Theory, May 2003, 3, 7. 2 Id. 3 People Interactive (India) Pvt. Ltd. vs. Vivek Pahwa & Ors , (2016) 68 PTC 225 (Bom).



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particular domain name belongs to them and they have the right to register that domain name.

Broadly, domain name disputes, specifically related to trademark, can be categorized into three

segments:

a) Cyber Squatting- Registering a domain name in bad faith and without having any interest in the

particular business, only to sell it later to the authentic proprietor at a much higher price.

b) Profit Grabbing- Similar to cyber squatting, the only difference being lack of intention to sell

the domain name and rather to exploit it for commercial profits.

c) Typo Squatting- This type of cyber squatting generally relies on typographical errors by the

users.

However, cyber squatting is one of the main type of domain name dispute which is often faced by

the registrants. Cyber Squatting has been defined as “an act of obtaining deceitful registration with

an intent to trade the domain name to the legal owner of the name at a premium” according to the

court in the case of Manish Vij v. Indra Chugh4 The Information Technology Act, 2000 has tried

to cover several cyber crimes under its umbrella but however failed to incorporate the issue of

domain name disputes. Therefore, the only act which tries to acknowledge the issue of domain

name disputes is the Trademarks Act, 1999. This Act gives a domain name holder the same rights

as a trademark holder, which has been seen in many landmark cases like that of Rediff

Communication Ltd v. Cyber Booth and Anr, Yahoo! Inc. v. Akash Arora and Satyam Infoway

Ltd. v. Sifynet Solutions Pvt. Ltd.

Domain name disputes related to GTLDs (Generic Top-Level Domain) are subject to the Uniform

Domain Name Dispute Resolution Policy (UDRP) and other than this, ccTLD (Country Code Top-

Level Domain) related disputes are subject to country-specific resolution policies.

IV. HISTORY AND EVOLUTION OF UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

With the advent of digitalization and easy internet access to almost everyone in every corner of the

world, the cyberspace noted a precipitous rise in altercations related to intellectual property law.

The most common issue was that of domain name disputes. To govern this particular affair, a legal

system was extremely necessary which would function at an international platform and therefore

the Uniform Domain Name Dispute Resolution Policy (UDRP) came into being. The UDRP was

fabricated to establish a uniform system which would look after the domain name disputes and the

4 Manish Vij v. Indra Chugh , A.I.R. 2002 243 (Del).



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dispute resolution process. As the reach of internet is worldwide, therefore the primary question

was regarding the jurisdiction of the dispute, i.e. which court has jurisdiction over the particular

matter. Such complexities and differences between national legal systems would only lead to

further disparities and hence the emergence of a uniform system was seen. As over the years, there

was a need for a new and separate entity to manage the domain name system, ICANN (Internet

Corporation for Assigned Names and Numbers) was formed and WIPO was entrusted with

developing UDRP.5 After the approval of the member states of the United Nations, WIPO

undertook the process of developing UDRP and then later on ICANN approved the final report

proposed by WIPO and the Rules for UDRP and adopted the UDRP on August 26, 1999. The first

ever proceeding under the policy commenced on 9th December, 1999.6 Till date, more than 2,000

UDRP proceedings have been initiated. Over 1,300 cases have been decided, more than 75

percent of which have resulted in a transfer of the name to the trademark owner.7 The statistical

data from ICANN show that UDRP is commonly used and has been a success story in regard to

the numbers of disputes which have been submitted for decision by UDRP panels.

The Uniform Domain Name Dispute Resolution Policy (UDRP) is an online system for resolving

disputes related about domain names conflicting with trademarks, where the complaints are

registered by trademark owners. UDRP has the power to delete or transfer domain names. ICANN

requires the domain registrars in .biz, .com, .info, .org, and .net to abide by the results of UDRP

proceedings. They must cancel or transfer a domain registration as a UDRP Panel directs.8 The

UDRP Rules lays down the process for filing a complaint and also for responding to a complaint

as well. All UDRP filings are to be made with dispute resolution providers approved by ICANN,

which are:9

● Asian Domain Name Dispute Resolution Centre

● National Arbitration Forum

● Czech Arbitration Court

● WIPO Arbitration and Mediation Centre

However, one thing which is important to put forward here is that the UDRP is not a court nor is

an arbitration policy and hence it is difficult to define the scope of this particular body. The entire

5Uniform Domain Name Dispute Resolution Policy, Chapter V, SHODHGANGA,

https://sg.inflibnet.ac.in/bitstream/10603/40547/12/14_chapter5.pdf. 6Timeline for the Formulation and Implementation of the Uniform Domain-Name Dispute-Resolution Policy, ICANN,

https://www.icann.org/resources/pages/schedule-2012-02-25-en. 7 Dori Kornfeld, Evaluating the Uniform Domain Name Dispute Resolution Policy, BERKMAN CENTER,

https://cyber.harvard.edu/icann/pressingissues2000/briefingbook/udrp-review.html#_ftn10. 8 Dori Kornfeld, Evaluating the Uniform Domain Name Dispute Resolution Policy, BERKMAN CENTER,

https://cyber.harvard.edu/icann/pressingissues2000/briefingbook/udrp-review.html#_ftn10. 9List of Approved Dispute Resolution Service Providers, ICANN, https://www.icann.org/resources/pages/providers-

6d-2012-02-25-en.



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dispute resolution process of UDRP is fairly flexible, inexpensive and swift. At present the

Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for managing and

co-ordinating the Domain Name System to ensure that it continues to function effectively by

overseeing the distribution of unique numeric IP addresses and domain names.10

V. OVERVIEW OF THE DISPUTE RESOLUTION PROCESS

The Uniform Domain Name Dispute Resolution Policy outlines the legal procedure for the

resolution of disputes between a domain name registrant and a third party, over the abusive

registration and use of a domain name in the generic top-level domains (gTLDs) and also those

country code top-level domains (ccTLDs) which have adopted the UDRP Policy voluntarily. Any

person or company can file a complaint regarding a domain name dispute concerning a gTLD

using the UDRP administrative procedure, and on the other hand, in case of a dispute involving a

domain name complaint concerning a ccTLD, the UDRP administrative procedure can be used

only if the concerned registration authority has adopted the UDRP Policy voluntarily, as

mentioned before. According to Paragraph 4 (a) of the UDRP Policy, the UDRP Administrative

Procedure is only available for disputes concerning an alleged abusive registration of domain

name.

The required criteria are as follows:11

i. the domain name registered by the domain name registrant is identical or confusingly

similar to a trademark or service mark in which the complainant (the person or entity

bringing the complaint) has rights; and

ii. the domain name registrant has no rights or legitimate interests in respect of the domain

name in question; and

iii. the domain name has been registered and is being used in bad faith

One of the major advantages of the UDRP Administrative Procedure is that it is informal

compared to the other dispute resolution procedure i.e. litigation. Also, another prime factor is that

this administrative procedure has an international scope of jurisdiction and also provides a single

platform and procedure for resolving domain name disputes which is very important to cope up

with the borderless nature of the Internet.

10Uniform Domain Name Dispute Resolution Policy, Chapter V, SHODHGANGA,

https://sg.inflibnet.ac.in/bitstream/10603/40547/12/14_chapter5.pdf. 11Uniform Domain Name Dispute Resolution Policy, ICANN, https://www.icann.org/resources/pages/policy-2012-02-

25-en.



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The basic stages in an UDRP Administrative Procedure are as follows:12

1. The complaint needs to be filed with an ICANN approved dispute resolution provider,

which can be chosen by the complainant.

2. The next step involves the filing of a response by the respondent (person or entity against

whom the complaint was made).

3. The chosen dispute resolution service provider of an Administrative Panel (comprising of

one or three persons, as selected by the complainant) will set up an appointment to discuss

the dispute and decide the outcome,

4. Post verification by the provider, the complaint is send to the domain name registrant, who

is required to respond in twenty days. The respondent also has the discretion to choose the

panellists.

5. After the registrant sends his/her response, the dispute resolution provider has five days to

appoint a panel of one or three members and this panel needs to issue a decision within a

stint of two weeks.

6. Post the required discussion, the Administrative Panel’s decision will be issued and

notified to all the relevant parties.

7. The domain holder has ten days to appeal an adverse jurisdiction (if any).

8. The final step will be the implementation of the Administrative Panel’s decision by the

concerned registrar and accordingly the domain name(s) in question shall be cancelled or

transferred.

How to exhibit ones rights and legitimate interests in the domain name while responding to a

complaint?

Paragraph 4 (c) of the UDRP outlines the process to demonstrate ones rights and legitimate

interests in the domain name if he/she receives a complaint.13 It clearly states that one should refer

to Paragraph 5 of the Rules of Procedure in determining how the response should be prepared.

Few of the defences are as follows:

● He/she has made use of, or demonstrable preparations to use, the domain name or a name

corresponding to the domain name, in connection with a bona fide offering of goods or

services.

12WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP), WIPO,

https://www.wipo.int/amc/en/domains/guide/#:~:text=What%20are%20the%20various%20stages%20in%20the%20U

DRP%20Administrative%20Procedure%3F,-

The%20five%20basic&text=(5)%20The%20implementation%20of%20the,question%20be%20cancelled%20or%20tr

ansferred. 13Uniform Domain Name Dispute Resolution Policy, ICANN, https://www.icann.org/resources/pages/policy-2012-02-

25-en.



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● He/she has been commonly known by the domain name, even if they have not acquired

any trademark or service mark rights.

● He/she is making a legitimate non-commercial or fair use of the domain name, without

intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or

service mark at issue.

To which dispute resolution service provider should a complainant submit the complaint?

The complaint can be submitted to any ICANN approved dispute resolution service provider. The

WIPO Centre was the first provider which was accredited by ICANN and was also the first one to

receive cases under the UDRP Policy. UDRP Policy and Rules are an outcome of the request of

WIPO’s member states and therefore it has an expertise in governing domain name disputes at an

international level. The information required to be enclosed in the complaint is stated in Paragraph

3 of the UDRP Rules.14 Also, the WIPO Centre has drafted a model complaint and filing

guidelines which act as a model document of what to include in the complaint.15 In order to aid the

parties in the process of preparing their respective submissions, the WIPO Centre also makes

available a legal index of decisions rendered under the UDRP Policy, which provides an overview

of the entire process.16

VI. SALIENT CONCEPTS UNDER THE UNIFORM DOMAIN NAME DISPUTE RESOLUTION

POLICY

VII.

● Bad Faith :

The term “Bad Faith” is of great importance in the UDRP Policy. A complainant has to prove that

the domain name holder (defendant) has not only registered the domain name, but also has used it

in “bad faith” in order to encompass the dispute under the umbrella of a UDRP proceeding. The

UDRP distinctly lists down in Paragraph 4 (b), four circumstances that can serve as evidence that

a domain name has been registered and used in bad faith (without any limitation). They are as

follows:

14Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), ICANN,

https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en. 15UDRP Model Complaint and Filing Guidelines, WIPO, https://www.wipo.int/amc/en/domains/complainant/. 16Legal Index of WIPO UDRP Panel Decisions, WIPO,

https://www.wipo.int/amc/en/domains/search/legalindex/#:~:text=This%20Legal%20Index%20covers%20all%20WIP

O%20UDRP%20decisions.&text=The%20principal%20purpose%20of%20the,Policy%20(%22UDRP%22).



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i. Circumstances indicating that you have registered or you have acquired the domain name

primarily for the purpose of selling, renting, or otherwise transferring the domain name

registration to the complainant who is the owner of the trademark or service mark or to a

competitor of that complainant, for valuable consideration in excess of your documented

out-of-pocket costs directly related to the domain name; or

ii. You have registered the domain name in order to prevent the owner of the trademark or

service mark from reflecting the mark in a corresponding domain name, provided that you

have engaged in a pattern of such conduct; or

iii. You have registered the domain name primarily for the purpose of disrupting the business

of a competitor; or

iv. By using the domain name, you have intentionally attempted to attract, for commercial

gain, Internet users to your web site or other on-line location, by creating a likelihood of

confusion with the complainant's mark as to the source, sponsorship, affiliation, or

endorsement of your web site or location or of a product or service on your web site or

location.17

The arbitration panel in Telstra Corporation Limited v. Nuclear Marshmallows determined that

registration alone can be sufficient to establish bad faith in particular circumstances, despite the

lack of any other action.18 But on the other hand, in the matter of Loblaws Inc. v.

Yogeinternational, the panel issued that inactive use of the domain name was insufficient

evidence and hence ruled in favour of the respondent.19

● Fair Use:

The UDRP lists “Fair Use” as a defence, available to the registrant, which literally translates to :

if he/she is making a legitimate or fair use of the domain name without the intention of

tarnishing the trademark or service mark in question. The term “fair use” is a very broad

concept and it usually depends on the panellists as to how they shall decipher it and assess it

regarding that particular case in hand. However, the defence of “fair use” is not perceived well

by the panel during the UDRP proceedings.

17Dori Kornfeld, Evaluating the Uniform Domain Name Dispute Resolution Policy, BERKMAN CENTER,

https://cyber.harvard.edu/icann/pressingissues2000/briefingbook/udrp-review.html#_ftn10. 18 Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003, WIPO Arbitration and Mediation

Center. 19WILLIAM A. FINKELSTEIN AND JAMES R. SIMS III, THE INTELLECTUAL PROPERTY HANDBOOK 165 (American Bar

Association).



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● Generic Names:

The altercations and discussions regarding generic words have been buzzing since long in the

field of Trademark protection. One of the landmark cases which discussed this particular arena

was Abercrombie & Fitch Co. v. Hunting World Inc.20 Generic terms are not protected under

trademark law and such has been stated in many cases till date. The Administrative panels do

not apply trademark law to generic words compulsorily in the UDRP proceedings. In one of the

cases J. Crew Int’l v. Crew.com, the panel cleaved in the decision over the rights regarding the

generic word “crew”. However, the panel concluded that the domain name should be transferred

to the complainant.21

VIII. CONCLUSION

The Uniform Domain Name Dispute Resolution Policy is comparatively a recent addition in

the arena of legal systems and since its inception it has tried to provide an inexpensive and

informal mode of dispute settlement. Its international essence makes it an unwavering place for

any problems related to domain name disputes which is of great importance and the sole

purpose of creating UDRP in first place. Like any other dispute resolution system, even UDRP

has certain drawbacks; some might be more pressing than others. For example, the issue of

UDRP dealing the big trademarks and the new comers differently has raised a speculative

eyebrow among many experts and scholars. Domain names are very important for people

owning businesses in the cyberspace and the UDRP is an initiative to safeguard them, their

work and their rights. However, the concept of domain name should be dealt with separately

and all the countries should try and create distinctive laws specifically dealing with problems of

domain names, cyber squatting etc., not only nationally but internationally. Domain name

disputes should be seen as a different problem altogether and not dealt in the same way as

trademark infringement or disputes related to trademark.

20Abercrombie & Fitch Co. v. Hunting World Inc., 537 F.2d 4 (2d Cir. 1976). 21Alternative Dispute Resolution, WIPO, http://arbiter.wipo.int/domains/decisions/html/d2000-0054.html.


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