It has been time and again held that the Domain Dispute policies like INDRP/UDRP are designed to deal with cases of purely CyberSquatting and not applicable to disputes between parties with competing rights acting in good faith. That is, in case the domain owner is already having a legitimate business upon the domain name or otherwise has put the domain name to use or known by the Domain Name and there is no violation of rights of the Trademark owner. Such matters are out of the preview of the INDRP/UDRP policies and are better dealt in a court of Law.
The origin of this basis can be found in the Final Report of the WIPO Internet Domain Name Process (Dated April 30, 1999) [Source]:
135. In view of the weight of opinion against mandatory submission to an administrative procedure in respect of any intellectual property dispute arising out of a domain name registration, the final recommendations of the WIPO Process contain two major changes in
respect of the suggested administrative dispute-resolution procedure:
(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is notapplicable to disputes between parties with competing rights acting in good faith.
(ii) Secondly, the notion of an abusive domain name registration is defined solely by reference to violations of trademark rights and not by reference to violations of other intellectual property rights, such as personality rights.
Further, similar references can be located in the Second Staff Report on UDRP (Dated 24 October 1999) [source]:
Para 4.1 clause(c) – c. The Recommended Policy Is Minimalist in its Resort to Mandatory Resolution. In contrast to the policy currently followed by NSI, the policy adopted by the Board in Santiago, as set forth in the final WIPO report and recommended by the DNSO and registrar group, calls for administrative resolution for only a small, special class of disputes. Except in cases involving “abusive registrations” made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger’s trademark) is a feature of the policy, not a flaw. The policy relegates all “legitimate” disputes–such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name – to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure.
In the UDRP matter of Audi AG v. Stratofex [WIPO Case No. D2012-1894], wherein AUDI was a well known Trademark registered since 1997, while Domain Name AUDICITY.com as registered in 2001 by the Respondent. The domain name was being used for personal legitimate purpose. It was held that “UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts” [source].
Similar stance has been taken under INDRP, the following are the relevant cases in this regard:
- MasterCard Intl. Inc. V. Champion Software (INDRP/972 – Masterpay.in – 2018):
MasterCard, MasterPass, PayPass and more well known marks registered in India by Complainant (over 30 marks under class 36 itself), earlier to registration of domain name masterpay.in in 2014. Respondent rendering utility bill, money transfer, recharges and similar services through website MASTERPAY.in, referring services falling under class 36. Defense included under Para 6.2.4 that Master is generic word and lacks distinctiveness and otherwise numerous end users use ‘MASTER’ as suffix and prefix and also services rendered by both the parties are different.
It was held that Respondent is using the Domain in it’s legitimate business and never targeted the Complainant and satisfied at least one condition of para 7 as to legitimate interests, the Bad Faith clause was not analyzed. Complaint Denied.
Lastly, it was provided under Para 7.4.5 INDRP proceedings are for clear cases of cyber squatting, not for resolving trademark infringement and / or trademark dilution disputes or other matters more appropriately dealt with through the courts. [source]
Similarly, exact same underlined stance was held in the following another INDRP matters:
- MasterCard Intl. Inc. V. Champion Software (INDRP/978 – Masterpay.co.in – 2018):
Similar were facts in this matter, except domain name was registered in 2016 and redirected to MasterPay.in. The Redirection was upheld as legitimate interest. The Bad Faith clause was not analyzed. Also held that these domain dispute / arbitration proceedings as INDRP deals purely with Cybersquatting matters, not where legitimate interests are proved [source].
- AREVA Société Anonyme V. Rajendra Mishra (INDRP/809 – Arevaindia.in – 2016):
AREVA Trademark registered under various classes and Complainant owned more than 300 Domain Names including areva.com, areva.in, areva.co.in. Respondent website was active and read as Areva Logistics Private Ltd, therefore held as protected under Clause 7 (ii) of the INDRP Policy, as Respondent known by the Domain Name. The Bad Faith was not analyzed. [source]
- PRADEEP MISRA V. RADIANTLY LIFE (INDRP/957 – Apanaghar.in – 2018):
APNA GHAR Trademark registered since 2007 and 2015 under class 35 and 36, while in usage since 2005 with apnaghar.co.in. Disputed domain name was registered in 2016. It was held that APNA Ghar is a generic term and no one needs a licence or permission to use the term, while the Complainant is required to prove secondary meaning. Denied [source]
- Microsoft Corporation V. ZOAI Founder (INDRP/1063 – ZOAI.in – 2019):
Likewise, in this matter Microsoft tried to claim rights to two letter trademark ZO and domain name ZO.AI. Similar principles were laid down, while the Respondent was having a legitimate business. Denied [Source].
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