Domain Name Disputes, Domain Name Disputes, Cyber squatting & Cyber squatting & Internet Issues Internet Issues 1 Internet Issues Internet Issues Sanjeev Sanjeev Kumar Kumar chaswal chaswal Advocate & IPR Attorney LLM (IPR& Advocate & IPR Attorney LLM (IPR& ARB LAW) M.S. Cyber Law and Cyber ARB LAW) M.S. Cyber Law and Cyber Security Security 10 10 th th of June 2012 of June 2012
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Domain Name Disputes, Domain Name Disputes, Cyber squatting & Cyber squatting &
Internet IssuesInternet Issues
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Internet IssuesInternet Issues
SanjeevSanjeev Kumar Kumar chaswalchaswalAdvocate & IPR Attorney LLM (IPR& Advocate & IPR Attorney LLM (IPR& ARB LAW) M.S. Cyber Law and Cyber ARB LAW) M.S. Cyber Law and Cyber
Security Security 1010thth of June 2012of June 2012
Domain Name System (DNS)Domain Name System (DNS)uu DomainDomain NameName SystemSystem (DNS),(DNS), inin computercomputer communications,communications, aa
methodmethod ofof translatingtranslating InternetInternet addressesaddresses soso thatthat computerscomputersconnectedconnected inin thethe InternetInternet cancan findfind eacheach otherother.. AA DNSDNS serverservertranslatestranslates aa numericalnumerical addressaddress assignedassigned toto aa computercomputer (such(such asas207207..4646..228228..9191)) intointo aa sequencesequence ofof words,words, andand vicevice versaversa..
—— CountryCountry--Code Top Level Domains Code Top Level Domains ––ccTLDsccTLDs——Generally, TLDs with two (2) lettersGenerally, TLDs with two (2) letters
—— May be additional tiers within the May be additional tiers within the ccTLDsccTLDs—— ..com.aucom.au; .; .edu.auedu.au—— ..co.ukco.uk; .; .ltd.ukltd.uk
—— May require local presence for registrationMay require local presence for registration
Three FactorThree Factor--TestsTests(a)(a) Whether or not the domain name registered by the Whether or not the domain name registered by the
Respondent is Respondent is identical and confusingly similar identical and confusingly similar to a to a trademark or service mark in which the Complainant trademark or service mark in which the Complainant has rights; has rights;
(b)(b) Whether or not the Respondent has Whether or not the Respondent has legitimate interestslegitimate interestsin respect of the domain name; and in respect of the domain name; and
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in respect of the domain name; and in respect of the domain name; and
(c)(c) Whether or not the domain name has been registered Whether or not the domain name has been registered and used in and used in bad faithbad faith..
ComplainantComplainantàà the one who complained on domain the one who complained on domain names registrationnames registrationRespondentRespondentàà the one who registered the domain the one who registered the domain names in questionnames in question
Three FactorThree Factor--Tests (cont’d)Tests (cont’d)
Domain Name DisputesDomain Name Disputes— UDRP - Uniform Domain Name Dispute
Resolution Policy—Administrative process through ICANN-
approved service providers (currently four).National Arbitration Forum
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— National Arbitration Forum
— WIPO
— Asian Domain Name Dispute Resolution Centre
— The Czech Arbitration Court
—UDRP process is available for all gTLDs and some ccTLDs (57)
Domain Name DisputesDomain Name Disputes
—— UDRP UDRP -- What does a complainant have to What does a complainant have to prove?prove?——The conflicting domain name is identical or The conflicting domain name is identical or
confusingly similar to the trademark or service confusingly similar to the trademark or service mark owned by the complainant.mark owned by the complainant.
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mark owned by the complainant.mark owned by the complainant.
——The respondent does not have any rights or The respondent does not have any rights or legitimate interests in the domain name.legitimate interests in the domain name.
——The domain name was registered The domain name was registered andand is being is being used in bad faith.used in bad faith.
Domain Name DisputesDomain Name Disputes—— UDRP UDRP -- What remedies are available?What remedies are available?
—— Transfer of the domain name to the complainant.Transfer of the domain name to the complainant.
—— Cancellation of the domain name.Cancellation of the domain name.
—— No monetary damages available.No monetary damages available.
—— UDRP UDRP –– What are the costs?What are the costs?
—— Depends on the number of domain names in a Depends on the number of domain names in a
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—— Depends on the number of domain names in a Depends on the number of domain names in a complaint.complaint.
—— Depends on the number of panelists deciding the Depends on the number of panelists deciding the complaint.complaint.
—— General Budget: ~US $5,000 per General Budget: ~US $5,000 per complaint (one complaint (one domain name, one panelist)domain name, one panelist)
URDP URDP uu Uniform Domain Name Dispute Resolution PolicyUniform Domain Name Dispute Resolution Policy is a is a
policy adopted by ICANN that provides a mechanism for policy adopted by ICANN that provides a mechanism for trademark owners to obtain domain names from cyber trademark owners to obtain domain names from cyber squatters.squatters.
uA case study on domain name dispute Tata sons Ltd v.oktatabyebye.com
ObjectivesObjectives
uuTo study a case related to To study a case related to Domain name dispute.Domain name dispute.
Case Case ..Tata sons Ltd v.oktatabyebye.comTata sons Ltd v.oktatabyebye.com
Detail of case Detail of case uuBackground Background
uuWhen /why issue arise When /why issue arise
uuWhat are the effect What are the effect
uuDecision Decision
uuEffect of decision Effect of decision
BACK GROUNDBACK GROUND
uu Tata Sons Limited under the Indian Tata Sons Limited under the Indian Companies Act, 1913 having its registered Companies Act, 1913 having its registered office at Bombay House, 24, office at Bombay House, 24, HomiHomi ModyModyStreet, Mumbai Street, Mumbai –– 400 001, India. 400 001, India.
uu TATA Group of companiesTATA Group of companies--India’s oldest, India’s oldest, uu TATA Group of companiesTATA Group of companies--India’s oldest, India’s oldest, largest and bestlargest and best--known conglomerate, with a known conglomerate, with a turnover that is over USD 62 Billion. Total turnover that is over USD 62 Billion. Total turnover for 2007turnover for 2007--08 is stated to be 08 is stated to be Rs.251,543 Rs.251,543 crorescrores (USD 62.5 billion).(USD 62.5 billion).
Makemytrip.comMakemytrip.comuu MakeMyTrip.com MakeMyTrip.com -- GurgoanGurgoan based travel based travel
company that in a span of 8 years has garnered company that in a span of 8 years has garnered a wealth of experience and respect in the travel a wealth of experience and respect in the travel industry. industry.
uu The pioneers of online travel services in India; The pioneers of online travel services in India; leading travel website in the country, with over 2 leading travel website in the country, with over 2 million unique visitors each month choosing to million unique visitors each month choosing to use our travel services.use our travel services.
MAKE MY TRIP .COM MAKE MY TRIP .COM TO TO OK TATA OK TATA BYE BYE BYEBYE .COM.COM
three years afterthree years after MakeMyTrip.comMakeMyTrip.com launched an launched an online online travel communitytravel community and called itand called it OkTataByeBye.comOkTataByeBye.com
Lal and sethi associate ,Delhi • Ok tata bye bye .com
Claimant says … Claimant says …
uu The The MakeMyTripMakeMyTrip had “ill intention” behind creation had “ill intention” behind creation ofofoktatabyebye.comoktatabyebye.com in order to infringe the intellectual in order to infringe the intellectual property rights of its registered trademark/service mark property rights of its registered trademark/service mark ‘Tata’. ‘Tata’.
uu confusingly similar to its ‘Tata’ brand and the travel portal confusingly similar to its ‘Tata’ brand and the travel portal runner has no rights or legitimate interests to use it. runner has no rights or legitimate interests to use it.
Respondent points..Respondent points..uu Make my trip Make my trip was an online travel portal rendering travel was an online travel portal rendering travel
consultancy services, while consultancy services, while oktatabyrbye.comoktatabyrbye.comcommunity portal for travelers to share their experiences community portal for travelers to share their experiences and give firstand give first--hand travel advice to other wanderlusts.hand travel advice to other wanderlusts.
uu the word ‘the word ‘tatatata’ had been used in a colloquial sense ’ had been used in a colloquial sense which is to bid adieu and this was clear from the way it which is to bid adieu and this was clear from the way it which is to bid adieu and this was clear from the way it which is to bid adieu and this was clear from the way it had been placed between the words ‘ok’ and ‘bye had been placed between the words ‘ok’ and ‘bye byebye’.’.
uu the word ‘the word ‘tatatata’ could be found on practically every truck ’ could be found on practically every truck on an Indian highway and this was used in a generic on an Indian highway and this was used in a generic sensesense..
uu ((ii) Discontinue use of domain name of oktatabyebye.com) Discontinue use of domain name of oktatabyebye.com
uu (ii) Transfer the aforesaid domain name to the (ii) Transfer the aforesaid domain name to the Complainant in accordance with the applicable Complainant in accordance with the applicable procedureprocedureprocedureprocedure
uu (iii) Refrain from all manner of use of the aforesaid (iii) Refrain from all manner of use of the aforesaid domain name or any other mark, name, domain name, domain name or any other mark, name, domain name, etc that is confusingly similar to the trademark of the etc that is confusingly similar to the trademark of the Complainant.Complainant.
WIPO direction WIPO direction
•As per directions issued by WIPO on August 24, 2009 the transfer of the domain name okaytatabyebye.com would not take place if MakeMyTrip went in for legal proceedings against Tata Sons in the matter within a period of 10 days.against Tata Sons in the matter within a period of 10 days.