How to fight against INDRP dispute as a respondent? After my previous post I have received good number of messages where people were seeking knowledge and consultation about different INDRP cases. I felt it is necessary that one should know how to protect his/her domain when faced with a challenge. Plus in most of the cases the complainant fight through lawyers against the respondent, while respondent fights back without any legal aid or consultation. So i have decided to start a special series called Yodha (meaning warrior) where we will try to educate you about different tactics/methods your opposition can use against you during an INDRP and how you can retaliate. In this series we will be using some popular dispute resolutions as case studies to take out points the complainant has used and how it effects your claim over the domain. We will also use examples of few successful domain disputes where the respondent has won over the complainant and explain how it was done. In this post itself we will examine a very famous dispute where the respondent won over the complainant. We will dig deep down in the battlefield and rise as a soldier with a loaded m16 ready to pull the trigger. So let the boot camp begin!
Prevention is better than cure.
It is important that i address this before moving forward, Please don’t try registering domains that infringe any trade marks, one of the reasons I initiated these series is because I have observed people often intentionally or accidentally register domains which can cost them a great deal of fortune. If you have accidentally registered such domains then please drop it for your own good, most of all don’t park the domain or try to sell it to the person who’s trademark is being infringed by your domain, later we will discuss how these two things can be used against you, and if its an “obvious trademark” basically the ones that are popular like google and facebook then just surrender the domain name and try to settle the dispute amicably, there is no honor in fighting a lost cause. Now this being said lets proceed.
First act after you receive the dispute notice.
The first thing you must do after you receive the dispute notice is that you must research about the complainant, In most cases your complainant would be an organization so just like before every war you must research about your opposition. Key areas of research would be the number of trademarks (also referred as marks) your complainant owns and how your domain infringes them. It is also important that you dig a little about the type of business your complainant does and if your domain is generic then what other businesses except for complainant it can target. It can be really helpful because later in the proceedings the complainant will try to prove how your infringement has affected his business so you must know how your opposition will move before they act. Also try finding similar judgements of disputes with similar factual background it will help you prove your claim, as the arbitrator can refer to them before passing the judgement, and most of all if the domain is parked please remove it from parking.
Initiation. (shorts fired)
The complainant will initiate the proceedings by stating the points first, Now it is obvious that complainant will try to trap you with three most basic grounds to remove your claim for your domain.
- 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.
If you have tried to pitch the domain to the complainant or if your domain has a “for sale” landing page then the complainant can add a point to prove that the domain was registered for sole purpose of sale only, which increases the power of initial allegations that the registrant has no rights or legitimate interest and the domain for registered in bad faith.
Now lets take up a very popular dispute of internet.in where the respondent stephen koeing provided very strong points against these basic allegations, though the battle was fierce but the outcome was a draw, the disputed domain was confiscated by the registry but it left behind something much valuable – strategies.
By the end of the series we will discuss how this outcome could have been changed.
lets start with the case study
JAGDISH PAROHIT v. STEPHEN KOEING
disputed name – internet.in
case summary and analysis,
In the given case jagdish parohit is the complainant and stephen koing is the respondent. The complainant initiates the dispute by stating that he is the trademark owner of “INTERNET”, the trademark has been issued in respect of tobacco, raw material or manufactured, smoking articles, matches included in class-34. He alleged that the complainant has been using this trademark logo for about two years. Then the complainant used the three basic grounds discussed above, he alleged that the registrant’s domain is similar is identical or confusingly similar to a name, trademark or service mark in which complainant has rights. He also alleged that the respondent had no rights or legitimate interest in the domain name and the registration was made or being used in bad faith. The respondent replied to the first allegation by stating that the complainant has not provided a single document to show the user of the trademark so as to show that it was acquired secondary meaning in respect of trademark by net sales, advertisements, customer service or by media recognition. Respondent replied the second ground by stating that trademark is a generic word and the complainant as such do not inherit right to use it as such the respondent has legitimate right to use the same. The respondent counters other allegations by stating that he intends to use the domain name as identifier of internet related domains and he states that policy of registering domains doesn’t makes it mandatory to take trademark search in all classes nor the complainant has produced any evidence to show that respondent had any knowledge about the complainant’s trademark. If you observe these points they counter the allegation of legitimate interest of respondent and registration in bad faith at the same time. The respondent also countered the ground of bad faith by stating that the respondent didn’t put the domain for sale and there is no evidence that the respondent knew or ought to know about the complainant’s right over his trademark beforehand. He concludes his statement by adding that the domain was registered in good faith and the complainant was trying to harass the respondent. Now if you observe the all above stated replies, they were perfectly aligned with the allegations of the complainant and completely focused upon two main grounds, firstly that the registration wasn’t made in bad faith and he had legitimate right or interest in the domain, it wasn’t for selling. These are the crucial most grounds which has to be tackled perfectly. To tackle the first ground he used that the complainant didn’t provide any proof that the complainant’s trademark was famous enough to make respondent aware before registration, which at the same time again proves that the registration wasn’t done in bad faith. following is link to read the entire dispute in detail. https://registry.in/system/files/internet_0.pdf.
with this we have started off our training to be fully able to defend our domains in an INDRP. If you have your own analysis i would love to hear about it, feel free to connect with me. In our next post we shall continue this series by studying the basic INDRP grounds in much more detail and how they can be proved by complainant and what tactics they can use against you. Till then feel free to check for INDRP process details, A to Z of INDRP.
Gear up for more.
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