In our previous post we discussed what are the basic grounds that complainant will use against you (respondent) during an INDRP dispute, Yodha.in was initiated in order to help respondents understand different battle tactics and strategies that can be used during an INDRP dispute in order to help them win the dispute. If you happen to miss our previous posts then you can check it out here. In our previous post we have also covered the various ways and tactics complainant will use in order to prove the basic grounds of INDRP against you. Now that the complainant has filed his side of allegations, its time to prepare a strong reply to counter each of those allegation. This post is all about tactful retaliation.
Lets counter the first ground which is “Registrant’s domain name is identical or confusingly similar to a name, trademark or service mark in which complainant has rights.” In usual circumstances the complainant will simply provide a proof that he is the registered owner of his trademark of the respective company which is being effected by the disputed name, But this doesn’t prove that the disputed name is effecting the business of the complainant. This is effective when the domain is a generic word which is commonly used by everyone such as wood, shop , clothes etc. The next best point you can add to this reply is that mere submission of the trademark doesn’t explain how the respondent was supposed to know about trademark submission since it is not mandatory to search all classes before registering the domain, if however the complainant already claims that his trademark is a “well known” mark in his initial allegation then you can counter this by stating that the complainant lacks evidence to prove that his trademark is a “well known” mark as he has failed to produce required evidence that shows the expense the complainant has spent in order to advertise the trademark, If he provides the net expense on advertising the trademark, then do check the legitimacy of the data provided. Moreover you can also state that the by mere submitting the trademark the complainant has failed to prove that the mark has acquired a secondary meaning, which would be a heavy blow to the complainant side specially in the case of generic or liquid domains (eg LLL.in and LLLL.in etc). This statement simply means that just because the complainant has a trademark on the word how does it prove that the word is directly associated with his particular business, specially when many different businesses can be linked with this given word or combination of letters. Trust me after this your complainant would be speechless and will clearly understand that he has underestimated you.
Now lets counter the second ground which is “The registrant has no rights or legitimate interests in respect of domain name.” Just how we discussed before the complainant can allege that you (respondent) has no interest to work on the domain name, which can be countered with obvious replies like you can state that you wish to work on this domain for a specific project, you can provide logo and short business model that you have created just add cream to your reply, if you are genuinely working on the domain then you can provide original documents of the expenses and work done on the project.
Now lets move over to the third ground which is “Registrant’s domain has been registered or being used in bad faith” Like discussed in previous post, In order to prove this ground the complainant will link the above two grounds to this one, in other words the complainant will use this ground as an end result to what he alleges in the above to grounds, basically this ground will help him to gain compensation from you. So this ground has to be handled very tactfully, in fact this ground has to be answered using the complainant’s own tactics against himself. For example the counter replies discussed in the first ground can be used here by stating that since the complainant has failed to prove that the trademark is a “well known” mark hence there is no way respondent would have known about the trademark hence it cannot be said that registration was made in bad faith. Similarly you have to use different grounds where you have to indirectly state that the disputed domain is not being used or registered indirectly.
Reverse Domain Hijacking
Now that the opposition’s attacks has been repelled and their defenses is down, its time to bring in the artillery. In the previous post i just gave a mere introduction on “Reverse Domain Hijacking” Now its time to understand how to use this properly during the dispute. This can be only used effectively if the above grounds has been countered properly, They key is seed the idea of reverse of domain hijacking within the mind of the arbitrator using meaningful points, Please note that arbitrator is well versed in law and is very diligent in making decisions so don’t try to put on this allegation without a solid or plausible ground. So when pitching this point you can state that since the complainant has not been able to produce proof if his business has been effected or his trademark has acquired a secondary meaning, this proves that he is not entitled to claim the disputed domain name hence he has used the system of law to harass the respondent by filing the dispute with sole intention to make the respondent surrender the domain name, which is nothing but act of Reverse Domain Hijacking. The statement can be modified according to the facts and circumstances of the dispute. Now lets study more about reverse domain hijacking by using a very popular dispute as a case study which is again filed against Mr Stephan Koenig, who is apparently our new hero.
Mr SHEVALDAS C. RAGHANI v. Mr STEPHAN KOENIG
Disputed domain – Computer.in
Case Summary and Analysis
The complainant alleges that the respondent has registered “Computer.in” which is confusingly similar to his trademark and the respondent is a well known speculator and has registered the disputed domain name for selling purpose only. The complainant also alleges that the respondent has parked the domain and he is earning revenue by luring visitors to his parked page. The respondent denies the allegations and submitted that the complainant has failed to establish any contentions and has failed to produce any document which could prove any use of the trademark. The respondent also states that “Computer” is a highly generic term and the complainant has failed to prove if the word has acquired any secondary meaning. Further the respondent stated that the dispute was filed to harass the him which is a blatant abuse of proceedings. The court held that the since the complainant failed to prove his entitlement over the disputed domain hence the respondent has emerged as the decree holder. It was also held that the act of complainant will be considered as an act of “reverse domain hijacking”. If you wish to read the whole dispute in detail you can check it out right here.
So now you are ready to fight the main battle, you now possess the skills without which you would have had less chances to win your battles. Now you are a yodha (soldier) ready to charge for the battle. In the whole post I have made more emphasis on countering the first ground, because it is the most crucial ground that has to be countered properly, as you may have observed all the replies and allegations are generally linked to the first ground, hence it is important that it is countered properly.
Rest in next post we will discuss into advance and confusing battle situations. For example what would you do if both the complainant and the respondent has similar trademarks for the entitlement of the disputed domain, how to fight such battles and what tactics can be used best. Have a nice day!