In my previous post we discussed the need of education about INDRP procedures and how you can fight the dispute as a respondent. To fulfill this necessity we launched Yodha.in, where we will be covering every aspect of fighting an INDRP dispute as a respondent. We also covered a very popular dispute Jagdish purohit V. Stephen Koeing where the disputed domain was INTERNET.in, If you missed my previous post you check it out here. We discussed different grounds that the complainant can use during the dispute, today we will discuss in more detail how complainant can use different tactics you and how you can be 10 steps ahead as a respondent.
In a battle best offense is a good defense, for a good defense it is necessary to prepare for the oppositions best offense, so we’ll discuss in detail by referring different cases and understanding different tactics used by the complainant. We start by explaining more about the three basic grounds that your opposition will definitely use.
- Registrant’s domain name is identical or confusingly similar to a name, trademark or service mark in which complainant has rights.
- The registrant has no rights or legitimate interests in respect of domain name.
- Registrant’s domain has been registered or being used in bad faith.
Now lets discuss the first ground, ” Registrant’s domain name is identical or confusingly similar to a name, trademark or service mark in which complainant has rights” This is the first ground that every complainant will use. To make this ground even stronger against you the complainant will deposit the copy of the trademark along with the associated trademarks. Complainant will also deposit the domains that he owns and are associated with his business. These submissions will be used to prove that the disputed domain is effecting the complainant’s business because it is confusing to the names that complainant hold and is infringing the complainant’s trademark at the same time.
To keep the attacks in a chain the complainant will proceed and try to link the second ground “The registrant has no rights or legitimate interests in respect of domain name“. To prove this ground complainant will try to research more on you, basically he will provide the list of other domains the respondent owns through which he will try prove that the respondent has no intention to work on the disputed domain because he is only buying to sell the domains which partially also proves the third ground which we will discuss in upcoming posts. To prove this ground the complainant basically has to prove that he needs domain more than you (respondent). In order to solidify this ground he might submit the expense incurred by him to advertise his trademark globally or he can also submit the net sales report to indirectly prove that the disputed domain can affect his cash flow. Another way complainant can prove this ground is by providing the screenshot of the sales pitch if you tried selling the disputed domain to the seller.
Then the plaintiff will proceed to prove the final main ground which can be lethal for you if not countered properly. The third ground “Registrant’s domain has been registered or being used in bad faith“. This ground will be used as a tactic by complainant to recover damages from you (respondent). In this the plaintiff will be using combination of statements from both the above grounds but here he will only focus on proving that the disputed domain is costing him his business, he will be using screenshot of your sales pitch as a weapon to prove that the true motive of the registration was to sell it to the complainant in other words the registration was in bad faith. If the disputed domain is parked then he can use this opportunity against you by stating that the respondent is earning undue profit from CPC (cost per click) by confusing the visitors making them believe its the complainant’s website. These are the common grounds which can be covered in multiple ways in order to win the dispute, Axalta coating system V. Om Narayan is a recent on point example of what all a complainant can produce during the proceedings and how it could benefit the opposition, this dispute has already been reviewed feel free to check it out here.
Respondents often ignore the above grounds and how can these grounds be proved which makes them vulnerable. They often believe that their domain is “generic” would be enough during the proceedings, well they are certainly wrong. With this said now i would like to introduce you to the subject of “Reverse Domain Hijacking“.
Reverse Domain hijacking occurs where a trademark owner attempts to secure a domain name by making false cybersquatting claims against a domain name’s rightful owner. This often intimidates domain name owners into transferring ownership of their domain names to trademark owners to avoid legal action, particularly when the domain names belong to smaller organizations or individuals. Reverse domain name hijacking is most commonly perpetrated by larger corporations and famous individuals.
Now that we know how our opposition can act, thus we can now begin our victory march by studying retaliation, in other words next post will be covering everything about filing the reply and how to counter each of these grounds effectively. It was necessary for me to make this post as it will act as a yard stick in the next post. Now you are aware of possible claims that will be put forward by the opposition, now we must prepare for a powerful counter. After all Victorious warriors win first and then go to war, while defeated warriors go to war first and then seek to win.