Basics of Domain Name Disputes

Written by Karthik Murthy on . Posted in Uncategorized

What would you do if the domain name containing your trade mark that you searched for registering it has been registered by somebody else? Would you keep quiet thinking that you should have registered it before somebody had registered it? Or would you explore the legal options and remedies that might be available and providing you with a chance to get the domain name back.

As we have said in numerous posts above (in almost all the posts), that your domain name and online presence through the domain name is what is needed most to succeed in this Internet-savy world.  You need an online presence to market your goods and to make consumers know about you and your goods.  So coming back to the basic question what would be your remedy if someone has registered a domain name which contains your Trade Mark.

As per the principles governing the Domain Dispute Laws, a domain name is also considered a Trade Mark.  Hence, in order to retrieve a domain name, you must have some right over the expression that has been contained in the Domain Name.  That right must also be proved using certain cogent documentary evidence.  Once you are able to get some documents, there are three options that can be done to retrieve a domain name back.

The First one is to issue a ‘cease and desist notice’ to the cybersquatter to stop using and hosting the domain name and to transfer the domain name.  In some cases, this might work out if the person who has registered the domain name is not a regular cybersquatter.

The Second step is to consider the option of either choosing litigating before the competent Courts or to commence an Arbitration Proceedings before the Competent Forum.  Usually, entities, individuals or companies prefer Arbitration since it is time-bound, cost-effective and reliable.

Choosing the Arbitration Forum depends upon the domain name which has been cybersquatted.  If the cybersquatted domain name extension is “.com”, “.org”, “.info”, proceedings has to be commenced either before the Arbitration Panel of the World Intellectual Property Organization (WIPO) or National Arbitration Forum (NAF).  If the disputed domain name contains the extension “.in”, Arbitration Proceedings have to be commenced before the National Internet Exchange of India (NIXI).

It is not mandatory that you should have a registered domain name for commencement of the Proceedings.  All that is required is that you have right over the expression that is contained in the Domain Name and you have cogent documents to prove that you have using the expression.  There have been many cases where we have helped our clients retrieve the domain name(s) which contained their Trade Mark in entirety.

Resolving a domain name dispute and retrieving a domain name has been never been so easier and with our assistance you can be rest assured that you rights in your Trade Mark and Domain Name is never misused.

Domain Name Disputes India are India’s First Legal Consultants dealing exclusively with ‘Online Brand Protection’ & ‘Domain Name Disputes’.  Karthik is the Director of Domain Name Disputes India and is a Master’s Degree Holder in Intellectual Property & Technology Law from the prestigious National University of Singapore.  He can be contacted at +91 98404 77744 or at [email protected].

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Comments (1)

  • Malaika Naidu

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    Hi,
    I need some help regarding a paper I’m working on. I want to tackle the problem relating to the idea of competent courts for litigation in India regarding Domain Disputes.
    Is it preferable to go for arbitration? If so, why?

    Thank you.

    Reply

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