in 16 jurisdictions worldwide
Contributing editor: Flip Petillion
2014
®Published by
Getting the Deal Through
in association with:
Domains & Domain Names
Abe, Ikubo & Katayama Aird & Berlis LLP Bird & Bird LLP BPM legal Brigitte Joppich, Rechtsanwaltskanzlei Buchanan Abogados, SC Crowell & Moring LLP Hogan Lovells Hylands Law Firm Krishna & Saurastri Associates Marval O’Farrell & Mairal Mayer Brown JSM ME Haas Ron Klagsbald, Law Offices Sabev and Partners law firm Zacco Denmark A/S
Domains & Domain Names 2014
Contributing editor:
Flip Petillion
Crowell & Moring
Getting the Deal Through is delighted to publish the first edition of Domains & Domain Names, a new volume in our series of annual reports, which provide international analysis in key areas of law and policy.
Following the format adopted throughout the series, the same key questions are answered by leading practitioners in each of the 16 jurisdictions featured.
Every effort has been made to ensure that matters of concern to readers are covered. However, specific legal advice should always be sought from experienced local advisers.
Getting the Deal Through publications are updated annually in print. Please ensure you are always referring to the latest print edition or to the online version at www. GettingTheDealThrough.com.
Getting the Deal Through gratefully acknowledges the efforts of all the contributors to this volume, who were chosen for their recognised expertise.
Getting the Deal Through would also like to extend special thanks to contributing editor Flip Petillion of Crowell & Moring for his assistance in devising and editing this volume.
Getting the Deal Through
London May 2014
Global Overview 3
Flip Petillion Crowell & Moring LLP
Application of domain names in
existing or new gTLDs 4
John Murino and Emily Alban Crowell & Moring LLP ICANN Dispute Resolution
Procedures 6
Jan Janssen and Diego Noesen Crowell & Moring LLP
Argentina 9 Miguel B O’Farrell and Mariano Peruzzotti Marval O’Farrell & Mairal
Belgium 12 Jan Janssen
Crowell & Moring LLP
Bulgaria 16 Assen Alexiev and Yoana Strateva Sabev and Partners law firm
Canada 23 Peter Czegledy
Aird & Berlis LLP
China 29 Lian Yunze and Liu Yuping
Hylands Law Firm
Denmark 35 Lone Prehn
Zacco Denmark A/S
France 39 Marie-Emmanuelle Haas
ME Haas
Germany 45 Brigitte Joppich and Peter Müller
Brigitte Joppich, Rechtsanwaltskanzlei and BPM legal
Hong Kong 51
Gabriela Kennedy and Eugene Low Mayer Brown JSM
India 57 Hemant Thadhani
Krishna & Saurastri Associates
Israel 62 Ron Klagsbald
Ron Klagsbald, Law Offices
Japan 66 Makoto Hattori and Nodoka Nakamura Abe, Ikubo & Katayama
Mexico 72 Pedro W Buchanan
Buchanan Abogados, SC
Netherlands 77 Lars Huisman, Richella Soetens and Wieke During
Bird & Bird LLP
United Kingdom 82
David Taylor Hogan Lovells
United States 89
Dickerson M Downing Crowell & Moring LLP
Publisher Gideon Roberton [email protected] Subscriptions Rachel Nurse [email protected]
Business development managers
George Ingledew [email protected] Alan Lee [email protected] Dan White [email protected] Published by
Law Business Research Ltd
87 Lancaster Road London, W11 1QQ, UK Tel: +44 20 7908 1188 Fax: +44 20 7229 6910
© Law Business Research Ltd 2014
No photocopying: copyright licences do not apply. First published 2014
ISSN 2055-6500
The information provided in this publication is general and may not apply in a specific situation. Legal advice should always be sought before taking any legal action based on the information provided. This information is not intended to create, nor does receipt of it constitute, a lawyer– client relationship. The publishers and authors accept no responsibility for any acts or omissions contained herein. Although the information provided is accurate as of May 2014, be advised that this is a developing area.
Printed and distributed by Encompass Print Solutions Tel: 0844 2480 112
Krishna & Saurastri Associates
INDIA
www.gettingthedealthrough.com
57
India
Hemant Thadhani
Krishna & Saurastri Associates
Registration of domain names at cctld registry 1 Registry
Which entity is responsible for registration of domain names in the country code top-level domain (ccTLD)?
The .IN Registry created by the National Internet Exchange of India, which is a not-for-profit company registered under the Companies Act 1956 of India, is responsible for the registration of domain names in the country code top-level domain (ccTLD). The .IN Registry does not itself carry out the registrations of ccTLD in the country, but it accredits registrars by an open process of selection on the basis of transparent eligibility criteria. The registrars that are duly accredited by the .IN Registry are required to enter into an accreditation agreement with the .IN Registry pursuant to which the registrar’s name is listed on the official website of .IN Registry, www.registry.in.
2 Registration procedure
How are domain names registered?
Any person, whether natural or legal, living in India or abroad, may register any ccTLD (.in, co.in, net.in, org.in, firm.in, gen.in and ind. in) by approaching any of the .IN Registry-accredited registrars. The list of .IN Registry-accredited registrars may be accessed at www. registry.in/Accredited_Registrars. The registration process involves ascertaining the availability of the desired domain name by conduct-ing a ‘WHOIS’ search. If such desired domain name is available for registration then the person may place an online request before one of the .IN Registry-accredited registrars by making the requisite pay-ment and providing certain information such as their name, address and contact information to the registrar. The registrar, upon receiv-ing such request for registration, registers the desired domain name within 24 hours of receiving such request.
3 Registration duration
For how long is registration effective?
Registration of a domain name is effective for a minimum period of one year and a maximum period of 10 years.
4 Registration costs
What is the cost of registration?
.IN Registry-accredited registrars are open to decide whatever retail prices they wish to set for new domain registration, renewal, resto-ration etc. So the registresto-ration cost varies from registrar to regis-trar. The registration of a ccTLD costs approximately 300 to 500 rupees per year.
5 Transfer
Are registered domain names transferable? If so, how?
Yes, registered domain names are transferable. The .IN Registry does not transfer the domain name itself and it has entrusted its accred-ited registrars for the purpose of transferring domain name from registrant to registrant as well as from registrar to registrar.
For registrant-to-registrant transfer, the registrant must contact the sponsoring registrar (ie, the registrar through whom the domain is registered), to initiate the transfer upon payment of the transfer fee. The sponsoring registrar after receiving such request contacts the administrator of the domain via e-mail for confirmation of the trans-fer of the domain name to another person. Once such confirmation has been given by the administrator of the domain, the sponsoring registrar initiates the transfer of the domain to the desired person.
For registrar-to-registrar transfer, the registrant is required to obtain an authorisation code from the current sponsoring registrar and supply it to the new registrar. Once the new registrar receives the authorisation code, he or she initiates transfer of the domain name, which is completed within 24 hours.
6 ccTLD/gTLD registration
What are the differences, if any, with registration in the ccTLD as compared with a generic top-level domain (gTLD)?
The registration of a domain in ccTLD as compared with gTLD does not make any difference. gTLD does not have a country or geo-graphic designation and is neutral. ccTLD, however, has a country or geographical designation and is targeted at a particular country or geographical area. Search engines generally rank domain names on the basis of the ccTLD to which a domain belongs.
Generally, ccTLD is preferred where a registrant intends to target users of a particular country. If a person intends to target users in various countries, gTLD is preferred so that only one domain name is maintained by the registrant. Otherwise, such registrant may end up registering various domains in ccTLD in different countries. Sometimes, a person prefers registering ccTLD to let people of the targeted country know that the domain is specifically targeted to them. Whether to opt for a ccTLD or a gTLD is entirely dependent on the use and requirements of the registrant. The domain name disputes arising out of gTLD are resolved by ICAAN’s Uniform Domain Name Resolution Policy (UDRP), whereas disputes aris-ing between ccTLDs are resolved by .IN Registry’s .IN Domain Name Dispute Resolution Policy (INDRP).
Opposing registration in the cctld 7 Notification of third parties
Are third parties notified of a domain name registration or attempt to register a domain name? If so, how? If not, how can third parties receive notice?
No, third parties are not notified of a domain name registration or attempt to register a domain name. Generally, the .IN-accredited registrars require a person desiring to register a domain name to carry out a WHOIS search to ascertain availability of any identical domain names. If a domain name is already registered a person can-not register it again. However, there is no system of receiving can-notice of domain name registration or attempts to register a domain name similar or identical to an existing domain name. Nevertheless, the INDRP requires the registrant to represent and warrant that as per the registrant’s knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.
8 Opposition procedure
How may a third party oppose registration? What are the remedies if the opposition is not successful? What are the remedies to enforce a decision?
Not applicable.
9 Costs of opposition
What are the costs related to a pre-litigation action?
Not applicable.
10 Time frame for opposing registration
What is the timing related to a pre-litigation action?
Not applicable.
Transfer or cancellation 11 Dispute format
What is the typical format for a cancellation or transfer action in court litigation (domains registered in either a ccTLD or a gTLD) and through ADR (ccTLD only)?
In order to initiate cancellation or transfer of domains registered in either a ccTLD or a gTLD in court, an action for infringement of a trademark or passing off can be initiated before the court hav-ing jurisdiction to try the same. The appropriate forum in an action for infringement is decided in accordance with section 134 of the Trademarks Act, which provides that a suit for infringement shall be instituted before any court not inferior to a district court, including High Courts having original jurisdiction, with jurisdiction to try the suit within the jurisdiction where the plaintiff resides or carries on business or personally works for profit.
In respect of a passing-off action regarding a domain name, the appropriate forum is decided in accordance with the provisions of the Code of Civil Procedure 1908. Section 20 of the Code of Civil Procedure provides that the appropriate forum to initiate a suit would be the place where the defendant actually or voluntar-ily resides; or the place where the defendant carries on business or personally works for profit; or the place where the cause of action, wholly or in part, arises.
Generally, courts in India have accepted the contention that a cause of action would arise at a place where the website is accessible, provided the website is interactive in nature. So a plaintiff residing in and carrying on a business in Mumbai would be allowed to institute a suit before the courts in Mumbai if the website of the defendant is accessible in Mumbai, is interactive and targets consumers in Mumbai irrespective of the fact that the defendant resides or car-ries on business outside the jurisdiction of the courts in Mumbai.
In relation to procedural matters, a civil suit for infringement or passing off can be initiated for cancellation or transfer action in court. The procedural law involving a civil suit is governed by the Code of Civil Procedure 1908. A civil suit for infringement or pass-ing off may be initiated before any court not inferior to district court or a High Court having jurisdiction to entertain the same.
Order VI of the Code of Civil Procedure lays down guidelines for the parties for preparing the pleadings. Order VII and order VIII of the Code of Civil Procedure provides guidelines for preparing plaint and written statement. In a suit for infringement and passing off, an interim application for the granting of a temporary injunc-tion is also filed along with the plaint for the granting of a prelimi-nary or temporary injunction.
When a suit has been duly instituted, a summons may be issued to the defendant to appear and answer the claim and file the written statement of its defence within 30 days from the date of service of summons on that defendant. Delivery of summons and the mode of service is provided in order V of the Code of Civil Procedure.
Discoveries are allowed under the Code of Civil Procedure and can be obtained by taking leave of the court. Discovery allows a party to obtain from his or her opponent material facts or infor-mation as to documents or admissions that will support his or her own case as the plaint or the written statement may not sufficiently disclose the respective cases of the parties involved in the matter. Inspection may be obtained of evidence produced by the opposite party in its pleadings or in affidavits.
Hearings for final disposal of the suit are conducted only after the parties have adduced all the evidence, cross-examination of the witnesses is over and the court has framed the issues.
With regard to cancellation or transfer action through ADR (ccTLD), the .IN Registry has been entrusted to resolve domain name disputes relating to ccTLD. The .IN Registry has laid down the .IN Domain Name Dispute Resolution Policy (INDRP), which explains the types of disputes that can be brought in before the .IN Registry and the criteria considered by the arbitrators. Apart from the INDRP, the .IN Registry has laid down INDRP Rules of Procedure that explain everything about the filing of a complaint, response to a complaint, fee, communications and all other proce-dures involved in the INDRP.
A complainant may approach the .IN Registry for resolution of disputes arising out of registration and use of ccTLD by way of an online arbitration with no in-person hearings. Relief granted by the .IN Registry are limited to either cancellation or transfer of the disputed domain name and no damages are awarded by the arbi-trators, though costs may be awarded if the arbitrator deems fit.
The arbitrator will decide a dispute arising out of registra-tion and the use of ccTLD on the basis of statements and docu-ments submitted to it and in accordance with the Arbitration and Conciliation Act 1996, the INDRP, INDRP Rules, by-laws etc.
Generally, in-person hearings are not conducted unless the arbitrator at his or her sole discretion and as an exceptional matter determines that such hearing is necessary for deciding the complaint.
12 Strategy
What are the pros and cons of litigation and ADR in domain name disputes? What are the pros and cons of choosing a local forum to litigate a gTLD dispute compared with the ICANN ADR format for the gTLD?
Through litigation, a right holder of a trademark may claim a rem-edy of permanent injunction against the infringer preventing them from using any domain that is identical, deceptively similar or con-fusingly similar to that of the right holder’s domain or trademark. Along with a permanent injunction and damages, right holders can seek the remedy of transfer or cancellation of a disputed domain name. Nevertheless, litigation is expensive, time consuming and
Krishna & Saurastri Associates
INDIA
www.gettingthedealthrough.com
59
involves attending daily hearings before the court until the matter is finally disposed of.
ADR, on the other hand, is a cheap and speedy mode of dis-pute resolution arising out of the registration or use of a domain name. Further, the procedure involved in ADR is simpler than the court procedures and in-person hearings are not required for the resolution of disputes through ADR. With ADR, right hold-ers can only seek the remedy of transfer or cancellation of disputed domain names and damages are not awarded. However, costs may be awarded if the arbitrator deems fit.
13 Appeal
What avenues of appeal are available?
With respect to an action for infringement or passing off, if a suit is filed before a district court, an appeal lies to the High Court. An appeal could be filed before the single judge of the High Court and thereafter to the division bench of the same High Court and finally to the Supreme Court. An appeal lies at every stage of the suit. So if a preliminary injunction has been passed by a district court, an appeal lies before the single judge of the High Court and then to the division bench of the High Court and finally to the Supreme Court.
If a person is not satisfied by the award passed by an arbi-trator under the INDRP, under section 34 of the Arbitration and Conciliation Act 1996, the award passed by an arbitrator can be set aside by making a petition before the High Court. However, instances of such petitions for setting aside the arbitral award passed by the arbitrator under the INDRP have been very few.
14 Defendants
Who may act as defendant in an action to cancel or transfer a gTLD in local courts?
The registrant, the owner of the disputed domain name, and the registrar, who has registered such domain may be made defendants in an action to cancel or transfer a gTLD in local courts.
15 Remedies for infringement
What remedies are available to a successful party in an infringement action?
In an infringement action, a successful party is entitled to the fol-lowing remedies:
• grant of a preliminary and permanent injunction restricting the use of the impugned domain name;
• cancellation or transfer of the impugned domain name; or • damages or accounts of profit (a remedy granted by courts
wherein the total profits earned by a defendant due to wrongful use of a trademark or a domain name are calculated by evaluat-ing the defendant’s accountevaluat-ing records in order to compensate the plaintiff’s loss).
16 Injunctive relief
Is injunctive relief available, preliminarily or permanently, and in what circumstances and under what conditions?
Both preliminary and permanent injunctive relief is available. Grant of preliminary injunctive relief is a discretionary power of the court. A preliminary injunction may be granted by the court upon fulfillment of three requirements by the plaintiff:
• the plaintiff must make out a prima facie case for the granting of an injunction to restrict the defendant (ie, the plaintiff must-show that he or she has some possibility of success and that his or her claim is not vexatious);
• the balance of convenience must lie in favour of the plaintiff and against the defendant (ie, the plaintiff will be more disadvan-taged if an injunction is not granted, than the defendant will be because of the grant of an injunction); and
• irreparable injury would be caused to the plaintiff if a prelimi-nary injunction is not granted in favour of the plaintiff. A permanent injunction is granted as a final relief in a suit after the trial of a suit is over upon the merits of the suit.
16 Injunctive relief
Is injunctive relief available, preliminarily or permanently, and in what circumstances and under what conditions?
It is not possible to ascertain the amount of monetary relief available as monetary relief is decided at the stage of the trial where the plaintiff is required to prove the loss sustained by reason of unlawful use of the domain by the defendant. There is no concept of treble damages in India, though the courts have granted punitive damages in some cases. Monetary relief is awarded by Indian courts upon its discretion and the plaintiff may not get the damages as claimed in the suit.
18 Criminal sanctions
What criminal remedies exist, if any?
Criminal remedies exist under the Trademarks Act and provide for imprisonment and fines with respect to falsifying a trademark.
19 Limitation periods
Is there a time frame within which an action must be initiated?
A suit shall be initiated within three years from the date the cause of action arose. Generally, courts are reluctant to grant preliminary injunctions if there is a delay of more than six months in filing an action for infringement or passing off. So it is necessary to initiate an action against the infringer immediately upon receiving knowl-edge of such infringement or passing off.
20 Estoppel and prescription
Can a registrant’s rights in a domain name prescribe because of non-use? Can a registrant be estopped from bringing an infringement action? In what circumstances?
A registrant of a domain name who is also registered under the Trade Marks Act is entitled to file an action for infringement under
Recently, India objected to the gTLD strings .INDIAN and .RAM. before the Governmental Advisory Committee of ICANN. The primary concern for the Indian government is the use of gTLD string .RAM. The automobile manufacturer Chrysler Group LLC has applied to ICANN for registration of .RAM, .CHRYSLER, .JEEP etc gTLDs.
The government has objected to the registration of gTLD string .RAM on the basis that RAM is a homonym for Hindu God Lord Ram or Rama as use of such name is prohibited under section 9(2)(b) of the Trademarks Act, which provides that a mark shall be refused
registration if it contains or comprises any matter likely to offend the religious sensibilities of any class or group in India. The objection is raised based on the government’s anticipation that gTLD string .RAM may be used with an offensive word.
In these rare instances, the outcome of the objection would set new standards for the registration of domain names that contain any matter likely to offend the religious beliefs of any class or section of a country.
Update and trends
the Trade Marks Act, 1999. Therefore, principles of non-use that are applicable to a registered trademark under the Act will be applicable to such a domain name, if the same is not in use as set out in the Act. A registered trademark that is not in use for a period of five years and three months is liable to be cancelled or removed from the Register of Trademarks. However, there is no provision to estop a registered trademark holder whose mark is not in use from filing an infringement action. Similarly, there is no provision in the .IN Dispute Resolution Policy to estop a registrant of a domain name that is not in use from initiating an arbitration against a violating domain name.
21 Disputes timescales
What is the typical time frame for an infringement action at first instance (at trial or in an ADR procedure) and on appeal?
The time frame for infringement action at the first instance may vary. Generally, urgent preliminary relief stage is concluded within two to four weeks of the filing of the suit. In other cases, final disposal of the preliminary relief stage usually takes six months to a year. Final disposal of the suit, including trial, approximately takes about three to five years.
The time frame for an appeal is usually less than the time frame for final disposal of a suit. Once an appeal is admitted, it is generally decided within a period of approximately two to three years.
The time frame for ADR is shorter and a complaint for resolution of disputes arising out of registration and use of ccTLD filed before the .IN Registry is generally decided within three to four months.
22 Standing
Who is entitled to seek a remedy and under what conditions?
Owners of registered or unregistered trademarks or their registered users are entitled to seek a remedy. The licensee is not entitled to seek a remedy.
The conditions of seeking a remedy would depend upon the forum before which an action is initiated. If an action is initiated before a court, the plaintiff would be required to establish the essen-tial events of infringement or passing off for entitlement to a remedy. However, if an action is initiated before the .IN Registry, the com-plainant would be required to establish that the registrant’s domain name is identical or confusingly similar to the complainant’s trade-mark; and that the registrant has no rights or legitimate interests in respect of the domain name; and the registrant’s domain name has been registered or used in bad faith.
23 Burden of proof
What is the burden of proof to establish infringement and obtain a remedy?
The burden of proof to establish infringement lies upon the plaintiff. The plaintiff must prove the following conditions to establish infringement, that the plaintiff is the registered pro-prietor or registered user of the trademark in question; use of the infringing domain name is not authorised; the infringing domain is identical to or deceptively similar to the registered trademark of the plaintiff; the plaintiff has made out a prima facie case for the granting of an injunction; the balance of con-venience lies in the plaintiff’s favour; and irreparable injury would be caused to the plaintiff if the injunction is not granted. Upon satisfying the court of the aforesaid conditions, the court will grant relief in favour of the plaintiff.
24 Case law and precedent
Is a case law overview available on procedural or substantive issues? Does the case law have a precedential value?
Case law overview is available on procedural as well as substan-tive issues. The precedential value of case law depends upon the court that has pronounced the judgment. A judgment pronounced by a High Court of a state is binding on all lower courts of that state. However, a judgment pronounced by a High Court of one state is not binding on High Courts of other states and it only bears a persuasive value on them. As per article 141 of the Constitution of India, decisions pronounced by the Supreme Court of India are binding on all courts within the territory of India.
25 Appointment of panellists
Can parties choose a panellist in an ADR procedure involving a ccTLD? Can they oppose an appointment?
No, parties cannot choose a panellist in an ADR procedure involv-ing ccTLD. The appointment of a panellist in an ADR procedure involving a ccTLD is provided in the INDRP Rules of Procedure. Paragraph 5 of the same provides that the appointment of the pan-ellist shall be done by the .IN Registry within five working days of receipt of the complaint after removal of any objections. It provides that parties are not entitled to choose the arbitrator. Nevertheless, a party may challenge an arbitrator’s impartiality or independence.
Yes, the appointment of a panellist in an ADR procedure involv-ing a ccTLD may be opposed under paragraph 6 of INDRP Rules by filing a written request to the .IN Registry within seven calendar days of the date of receipt of the notice of appointment of the arbi-trator in question, stating inter alia the grounds or circumstances likely to give rise to justifiable doubt as to the arbitrator’s impar-tiality or independence. The .IN Registry then in its sole discretion
Hemant Thadhani
[email protected]
New Excelsior Building, 7th floor
Tel: +91 22 2200 6322
Wallace Street
Fax: +91 22 2200 6326
A.K. Nayak Marg, Fort
www.krishnaandsaurastri.com
Mumbai 400001
India
Krishna & Saurastri Associates
INDIA
www.gettingthedealthrough.com
61
decides whether such doubts are justified or not. If so, the .IN Registry may remove the arbitrator against whom the challenge was made and replace such arbitrator with another arbitrator from the .IN Registry’s list of arbitrators.
26 Costs
What is the typical range of costs associated with an infringement action, including pre-litigation procedures, trial or ADR, and appeal?
The typical cost associated with an infringement action, including pre-litigation procedures, would depend on the damages claimed in the suit. The court fee is decided on the basis of the amount of
damages claimed in the suit. Different states have their own court fee legislation, so the amount of court fees may vary from state to state.
The typical official fee associated with filing a complaint through the ADR before the .IN Registry is 10,000 rupees.
* I would like to extend my sincerest gratitude to Sunil B Krishna and to Kavita Nigam for their valuable comments and feedback on the chapter.
Strategic Research Partner of the ABA Section of International Law
Official Partner of the Latin American Corporate Counsel Association
Annual volumes published on:
For more information or to
purchase books, please visit:
www.gettingthedealthrough.com
Acquisition Finance Advertising & Marketing Air Transport Anti-Corruption Regulation Anti-Money Laundering Arbitration Asset Recovery Banking Regulation Cartel Regulation Climate Regulation Construction Copyright Corporate Governance Corporate Immigration Data Protection & Privacy Debt Capital Markets Dispute Resolution Domains & Domain Names Dominance
e-Commerce Electricity Regulation
Enforcement of Foreign Judgments Environment
Foreign Investment Review Franchise
Gas Regulation
Insurance & Reinsurance Insurance Litigation
Intellectual Property & Antitrust Investment Treaty Arbitration Islamic Finance & Markets
Labour & Employment Licensing
Life Sciences Mediation Merger Control Mergers & Acquisitions Mining
Oil Regulation Outsourcing Patents
Pensions & Retirement Plans Pharmaceutical Antitrust Private Antitrust Litigation Private Client Private Equity Product Liability Product Recall Project Finance Public Procurement Real Estate
Restructuring & Insolvency Right of Publicity
Securities Finance Shipbuilding Shipping Tax Controversy
Tax on Inbound Investment Telecoms and Media Trade & Customs Trademarks Vertical Agreements
