Domain_Name_Disputes_Blog

Karur Vysya Bank Loses its Complaint

Karthik Murthy — Sat, 19 May 2012 07:06:29 +0000

Karur Vysya Bank loses Complaint against registrant of www.karurvysyabank.com!

Karur Vysya Bank(KVB), one of the leading private sector banks in India has been denied relief by the Arbitration and Mediation panel of the WIPO.

Karur vysya bank, the complainant in the instant case, was set up in the year 1916. It has registered a number of domain names such as , , , etc.

It is also the registered proprietor of the trademark ‘KVB’ bearing Application No. 1145374 in the office of the Trademarks Registry, Chennai.

KVB filed a Complaint with the WIPO against registration of the domain name by one Lakhsmi Narasimha and prayed for transfer of the said domain name.

KVB submitted that it had exclusive rights to the trademark /domain name “Karur Vysya Bank”. It alleged that the respondent adopted the said domain name only with a dishonest intention to cash upon on the reputation and goodwill of KVB.

Though the Panel observed that the complainant’s rights in the registered trademark would bolster the chance of relief under the Uniform Domain Name Dispute Resolution Policy, the complainant was the registered proprietor of the trademark ‘KVB’ alone. They had no Trademark registration or any Pending Application for the expression “KARUR VYSYA BANK” per se .

The Panel expressed that KVB also did not expressly claim rights under common law whereby they could have alleged that the respondents were passing off their services as from KVB. KVB also did not submit commensurate proof to affirm the fact that the confusingly similar expression ‘KARUR VYSYA BANK’ has acquired immense reputation to the extent that general public associate the mark only with KVB.

Hence the centre adjudicated that KVB failed to prove that it had rights in the deceptively similar domain name and subsequently denied the complaint!

This Order from the WIPO proves the need for online companies to Audit their Intellectual Property Portfolio. An IP Audit would have analysed the Intellectual Property Rights that vests with KVB and would also have suggested ways to obtain complete protection of its Intellectual Property Rights.

Domain Name Disputes India, are India’s first consultants dealing exclusively with Online Brand Protection & Domain Name Disputes. Domain Name Disputes India offers its clients detailed online brand protection strategies and solutions to protect them from online frauds, cybersquatting, sale of counterfeit goods etc., To know more, please visit www.domaindisputesindia.com., call me @ +91 9840477744 or mail me at karthik@domaindisputesindia.com.

Case Commentary – MasterCard

Karthik Murthy — Tue, 15 May 2012 06:27:42 +0000

Mastercard International Incorporated, the owners of well-known Trade Mark “MASTERCARD” have filed a series of Complaints with the Arbitration Panel of the World Intellectual Property Organization (WIPO) for transfer of the following domain names;

priceless.net,

priceless.org,

pricelessmastercard.com,

pricelesslondon.com,
pricelessparis.com,

pricelesslosangeles.com,
pricelessmexico.com,
pricelessnewyork.com,

pricelessamsterdam.com,

pricelessistanbul.com.

The Complaints were filed by Mastercard to protect its right in the Trade Mark PRICELESS. While Mastercard succeeded in getting transferred three domain names viz., priceless.net, priceless.org & pricelessmastercard.com, it appears that it has failed to convince the Arbitration Panel with regard to the other seven domain names. The Arbitration Panel arrived at the conclusion that Mastercard failed to prove that the respondents acted in bad faith coupled with the fact that Mastercard did not provide sufficient evidence (in the form of documents) to prove the bad faith. This would come as a big setback for Mastercard since it would be difficult to succeed in future complaints against domain names which have geographical location in addition to the expression PRICELESS. With regard to the position in India, the domain name www.pricelessindia.com appears to have been registered by an individual. The best strategy now available for Mastercard would be to register all the available domain names with geographical locations. For Example www.pricelessmastercard.in / www.pricelessmastercard.co.in appear to be available for registration in India.

WIPO Case Commentary – Verizon

Karthik Murthy — Mon, 16 Apr 2012 06:17:28 +0000

The Arbitration Panel of the World Intellectual Property Organization (WIPO) has ordered for transfer of nine (9) domain names in favour of the Verizon Group. The Domain Names against which the complaint has been filed are;

www.verizoniphone4.com,

www.verizonwirelessiphone4.com,

www.verizonwirelessiphone4g.com,

www.verizonwirelessiphone5.com,

www.verizonwireless4giphone.com,

The Order which was made on 30^th March 2012 ruled that the respondent Cyrus de Ocampo (the registrant of all the nine domain names) has cyber squatted the domain names and has registered them in bad faith. One important issue to be noted in the Order is that though the Domain Names contained the expression “IPHONE”, which is a well-known mark of Apple Inc., the Panel ruled in favour of Verizon on the ground that “the respondent’s inclusion of third-party’s Trade mark in a domain name does not eliminate confusing similarity.

With regard to the Indian Market, it seems that mobile operators in India have not yet analysed the 'Online Brand Protection Strategies' and the dilution and tarnishment that a cybersquatted domain name may cause to their well-known Trade Mark. For example, www.airteliphone.com / www.airceliphone.com have been cybersquatted.

Intellectual Property Audit

Karthik Murthy — Thu, 29 Mar 2012 11:27:03 +0000

The importance of the Intellectual Property and its commercial value is increasing day by day. It can be said that the Intellectual Property Rights constitutes more than 80% of the total value of the assets of the company. In such an event, it is important for every company to keep track of the value, extent, ownership, licenses, transfers etc., of their Intellectual Property Assets. It is important for a business to know the scope, value and contents of its Intellectual Property for the business to make full commercial gain out of the IP Assets.

An IP Audit is an assessment of the company’s Intellectual Property Rights which include Trade Marks, Copyrights, Patents, Designs, Copyrights, Trade Secrets, Confidential Information. Conducting an Intellectual Property Audit helps the organization to identify and maintain its IP Assets as well as to uncover any problems relating to it and prevents the misuse of IP Assets of the companies by third parties. The Audit includes a detailed examination and evaluation of the Intellectual Property Assets and determines its strengths and weaknesses. It helps to perfect and enforce company’s Intellectual Property Rights in a better way.

Conducting an IP Audit helps to determine and assess the value of the organization and the ways for an organization to protect, maintain & expand its IP Assets. The IP Audit may also reveal any potential third parties infringements that the company may commit. In other words, the IP Audit will provide a detailed analysis of any Violations of Trade Marks, Patents, Copyrights and other Intellectual Property Rights that a company may commit without any Knowledge.

An Intellectual Property Audit involves various steps such as;

Identification of the assets of the company,
Collecting information on the IP Rights,
Review of the Intellectual Property Procedures and Practices,
Uncovering of any issues / problems with the identified Intellectual Property Assets,
Strategies and solutions to overcome the issues / problems,
Review of various contracts such as employment contracts and contracts with Third Parties,
Review of disputes concerning IP Assets,
Conducting Intellectual Property Searches,
Review of Intellectual Property License and Assignment Agreements,
Listing, collecting and reviewing the Trade Mark Applications,
Review of products, packaging, product literature and advertisements,
Patent Audit and Freedom to Operate Opinion,
Intellectual Property Protection in the online space, (Online IP Audit),
Review of the domain names and domain name infringements,
Verifying the titles and ownership of the Intellectual Property Assets,
Uncovering unprotected Intellectual Property Rights,
Review of Trade Secret Agreements
Preparing detailed report on the above.

Bharat Matrimony sues Google again…

Karthik Murthy — Wed, 28 Mar 2012 13:18:14 +0000

Match Making service provider Consim Info Pvt., Ltd., (owner of the websites www.bharatmatrimony.com / www.tamilmatrimony.com and several other websites) has filed yet another complaint against internet search engine giant ‘Google’ for violation of its Trade Mark “TAMIL MARTIMONY” by one of Google’s services called ‘Adwords’.

This time the complaint has been filed by Consim Info Pvt., Ltd., before the Competition Commission of India. Consim had already filed a case against ‘Google’ before the Hon’ble High Court of Judicature at Madras in 2010 and alleged that ‘Google’ violated its Trade Mark by its ‘Adword’ service. Consim alleged that when a person types the expression “TAMIL MATRIMONY” which is the Trade Mark of Consim, ‘Google’ allegedly provided search results (sponsored listings) of Consim’s competitors such as shaadi.com / jeevansathi.com. The Hon’ble High Court in its interim order ruled that ‘Google’ appears to have not committed Trade Mark infringement on the ground that the words “TAMIL” & “MATRIMONY” were not distinctive of the services offered by Consim.

It is pertinent to note that ‘Google’ has been involved in a series of law suits in various countries on the basis that Google sells its ‘Adword’ to competitors of registered Trade Mark owners. But no Court as of now has ruled against Google. It remains to be seen whether Competition Commission of India would rule in favour of Google.

Kentucky Court orders seizure of 141 Domain Names

Karthik Murthy — Mon, 26 Mar 2012 09:16:40 +0000

The Circuit Court of Kentucky has recently ordered for seizure of 141 domains which were allegedly online gambling sites. The Orders were directed to the Registry, Verisign to take steps to immediately transfer the domain names in favour of the Commonwealth of Kentucky.

The case to order transfer of 141 domain names which allegedly carried on gambling businesses online or which contained expressions related to gambling was filed by the Commonwealth of Kentucky. Gambling in Kentucky which involves ‘luck’ rather than ‘skill’ is considered illegal. The original Order dated 18^th September 2008 directed each of the ‘Registrars’ to take steps to transfer the 141 domain names. The Court directed the domain name registrants to install software to geographically block users from the Commonwealth of Kentucky. The Order was passed without giving any notice or opportunity for a hearing to the registrants. Nine (9) of the domain names were transferred after the Orders were passed.

This Order dated 8^th March 2012 has been directed at the Registry (‘Verisign’ in this case’) to transfer the 132 remaining domain names. While the Order of 18^th September 2008 was directed at the Registrars, the recent Order was a direction to the Domain Name Registry.

The importance of this Judgement arises from the comment of the Court that Domain Names can be considered as ‘Gambling Device’ and mere registration of the domain name which contains expressions related to gambling can entail prosecution of the registrant. Since none of the registrants of the domains preferred to appear before the Court, it is unlikely that there might be an appeal to challenge this Order.

Financial Companies & Brand Identity

Hari Ramasubramanian — Sat, 24 Mar 2012 11:38:52 +0000

The advent of the Internet has irreversibly transformed everyday living and everyday spending. Most banking companies were quick to adapt and take up to the demand of the consumers and moved from being a personal service provider to a cross border uncluttered organization offering its consumers freedom to operate from anywhere and anytime. Almost all working areas of the banks have transformed with hi-tech core banking systems, with few areas that remain unfazed by changing times. One such area that has appeared to remain under-developed is ‘Online Brand Protection Techniques’, mostly in Public Sector Banks.

Internet as a tool has redefined the concept of identity. Every person and organization now has presence in the physical world and in the virtual world. Presence in the online world has now to importance, reason being the reach for the medium being far wider than the physical world. Infringers, cyber criminals, cyber terrorists have been using and operating in this space to unjustly enrich themselves by exploiting the possibility to represent themselves as another third party and commit fraud. Though several of these issues have not been completely unknotted, critical issues pertaining to ‘Online Brand Identity’ and Cyber Squatting have been resolved.

IDENTITY THEFT

One proven modes for cyber fraudsters is to register domain names that is identical / deceptively similar domain names that contain well-known marks in order to get unjust and illegal profit. Such Cyber Squatters look for selling these domains to the original Trademark owners for exorbitant costs. Much worse, the cyber squatters attempt to represent themselves as the authentic owners of the particular brand. They try to replicate the website and trade through the cyber squatted domain name. This results in dilution / tarnishment of the brand and completely reduces the consumer confidence and trust.

FINANCIAL ORGANIZATIONS

Financial Organizations continue to remain the primary target for offences of identity theft. High reliance of consumer trust on their banks and other financial institution is what takes this to an exploitative proportion. Consumer trust evinces as an important factor for any financial organization. With huge public funds being involved, the organizations are required to demonstrate sincerity and absolute confidence in administration of public funds. The act of cyber-squatters to unauthorizedly usurp the domain names shall demotivate the internet banking consumers. The further inaction on the part of banking companies to retrieve the infringing domain names exhibits an uncaring attitude towards the whole situation, which lowers the brand equity to a greater extent.

PHISHING & OTHER BANK FRAUDS

It is easily identifiable that the main intent of the cyber-squatters is to illegally profit from the property of another. Such cybersquatters go to any limits to enrich themselves in the shortest possible time. Such malafide intent fuels the phishing activities where individual internet banking consumer details are in the hands of unscrupulous elements such as cyber-squatters. Such sensitive details may directly be used by them or may be sold to other criminal elements.

Various researches have time and again proved that such illegal gains from phishing and cybersquatting activities are used to fund terrorist and other illegal activities. An extensive research by University of South Australia has quoted that;

“As Internet technologies become more advanced, so have the ways in which terrorists utilise them for illicit and illegal activity. The Internet has become fertile ground for terrorists to obtain funds to support their operations by participating in activities ranging from credit card theft using social engineering attacks such as phishing, hacking and keylogging attacks through to money laundering.”

CONCLUSION

There is an urgent need for banking companies to act in a responsive manner to immediately prevent and curtail the acts of cyber-squatters and protect the interests of banking consumers.

Author is Partner of Domain Name Disputes India. Domain Name Disputes India, is India’s first consultants dealing exclusively with Online Brand Protection & Domain Name Disputes. Domain Name Disputes India offers its clients detailed online brand protection strategies and solutions to protect them from online frauds, cybersquatting, sale of counterfeit goods etc., To know more, please visit www.domaindisputesindia.com. or mail us at grhari@domaindisputesindia.com.

.IN Dispute Resolution Policy – Case Commentary – WWW.HERSHEYS.IN

Karthik Murthy — Sat, 24 Mar 2012 06:17:57 +0000

The Arbitration Panel of the National Internet Exchange of India (NIXI) has ordered for transfer of the domains www.hersheys.in / www.hersheys.co.in on the ground that the domains have been cyber squatted. The decisions of the Arbitration Panel would come as a relief for Hersheys since it would help Hersheys target a potential market in India. This is first domain name disputes proceeding initiated by Hersheys against a cybersquatter for domains containing ".in" Top Level Domain.

Hersheys is a 100 year old renowned company famous for its chocolate and related goods and are the owners of the Trade Mark “HERSHEYS” and the domain www.hersheys.com. It appears that www.hersheys.in was cyber squatted and was registered by one Wangyuan on 13^th July 2011. Hersheys filed a complaint with the Arbitration Panel of the NIXI on 23^rd December 2011. Since the respondent did not reply to the proceedings, NIXI decided the complaint based on merits and ordered for Transfer of the domain name.

Hersheys also commenced separate proceedings with NIXI against registration of Domain Name www.hersheys.co.in by one Rimi Sen of Corporate Domains, USA. The Arbitration Panel ruled that HERSHEY’S being a well-known mark, the registrant registered the domain name in bad faith and ordered the transfer of the domain name.

However, Hersheys is yet to register various available domains in India such as www.hersheyskisses.in, www.hersheykisses.co.in and so on. It is yet to be seen if Hersheys will take a more aggressive approach towards ‘Online Brand Protection’ in India and intiate domain name disputes against cyber squatted domain names.

Domain Name Disputes India, is India’s first consultants dealing exclusively with Online Brand Protection & Domain Name Disputes. Domain Name Disputes India offers its clients detailed online brand protection strategies and solutions to protect them from online frauds, cybersquatting, sale of counterfeit goods etc., To know more, please visit www.domaindisputesindia.com. or mail us at karthik@domaindisputesindia.com.

Choosing the Right Brand

Hari Ramasubramanian — Mon, 12 Mar 2012 11:21:00 +0000

Why corporates need a registerablity report?

Being incautious in choosing a legally right brand might be regarded as one of the most costliest mistake that business could possibly make. The brand is the identity and the means of communication with anyone. Choosing a brand for the business is the cornerstone of every organization since it involves huge investment, time, skill, labour etc.

Conceiving, creating and selecting the right brand involves various ingredients to make it right. The Brand must be suitable, legally available and must differentiate the goods / services of your organization from that of another. It essentailly has to be commerically suitable and legally correct.

Every commercial enterprise goes with promoting that chosen brand with considerable investment for making it known and creating a goodwill. The cost of choosing a legally incorrect brand ends with the loss of the brand itself. That includes foregoing the reputation, goodwill, investment made in the brand. A legally strong brand means that investments are made right.

It is important to comply with all the rules and regulation for the brand to be strong, arbitrary and protected. On the other hand, choosing a wrong brand might lead to

· Potential litigations with third parties resulting in revocation of the brand,

· Huge legal expense

· Tarnishment and Dilution of your brand and company name,

· Mistrust of the consumers etc.

Domain Name Disputes India advises organizations whether your chosen name is legally correct. We help organizations ideate, create and choose the right kind of brand for your organization which legally clean and sustainable in the global market of today. A ‘Registrability Report’ will cover the distinctiveness of your brand, carry out legal, linguistic and online assessment and evaluation of the brand, our comments on the adoption, use and registration of your brand in the national and international sense. You can be rest assured that the protection and management your brand is in the right hands.

Mail us at grhari@domaindisputesindia.com to how we can help your organization.

New Generic Top Level Domains

Karthik Murthy — Fri, 09 Mar 2012 08:41:37 +0000

A brand is the most powerful component and serves as the origin of the quality of goods / services. Enormous amount of investment and hard-work is being put into creating and protecting a brand. With the advent of the internet, it has become sine qua non to protect the brand(s) in the virtual world. Opportunity has now arrived to strengthen the corporate identity on a global basis and to prevent cyber squatters from usurping the hard-earned goodwill and reputation. In other words, a BRAND can now command the respect it deserves.

The Internet Corporation for Assigned Names and Numbers (ICANN), the international body governing the Internet naming and addressing practices, has announced a proposal which will allow for a virtually unlimited number of new generic Top-Level Domains (gTLDs), to the Internet landscape. This present move by the ICANN shall help corporates to affirm their own brand in the Internet in a bigger way and assert their importance.

Presently there are only 22 different generic top-level domains (gTLDs), including .com and .net, and approximately 250 country code TLDs (ccTLDs) such as .sg (Singapore) and .in (India) etc., The new proposal of ICANN will now allow corporates / organizations to propose and apply for generic top-level domains associated with particular interests or business sectors. These domain names will help organizations enhance branding, revenue, security, and user interaction. This means that the internet shall be witnessing URLs such as india.google, windows.microsoft, steel.tata.

Your organization now has complete independence of discretion on how you project yourselves in the online space and such discretion goes beyond the boundaries those earlier specified by ICANN.

What is the need to register new gTLD’s?

Under the proposal, the new naming system brings the possibility for an entity to effectively own, access and control Internet name spaces and achieve a competitive advantage. This has the potential to alter advertising and branding platforms and change the way consumers find information on the web, and the way businesses organize their information online. Some of the benefits of a registering a new gTLD include:

Global brand recognition
Minimized possibility of cyber squatting in the New gTLD
Nearly unlimited URLs on demand
Increased consumer trust.

There are also certain disadvantages of this proposal namely, very high cost, need for a technical support to maintain the gTLD’s.

Fee and Timeline

The evaluation fee of ICANN from prospective applicants is USD 1, 85, 000. According to the gTLD Applicant Guidebook, a USD 5,000 deposit is required to be made at the time the user requests an application slot within TAS – (TLD Application System), and the remaining $180,000 to be submitted with the full application. This is just to start the evaluation process. Additional fees may be required during the course of the application review process, and this fee doesn’t include additional infrastructure fees that a gTLD may generate. ICANN estimates that the evaluation process could be as short as nine months or as long as twenty months, depending on the application, intended usage and other issues.

The gTLD Application process

The entire application process for new TLDs is online and will use a system called TAS. The applicant / authorized representative of the applicant is required to register themselves before applying online. This user registration must be done before 29^th March 2012. The Applicaant / Authorized Representative can then proceed to submit the online application. The Application consists of various segments like answering a series of questions on general information, financial, technical and operational capabilities. The Application must pass an administrative completeness check to ensure that all required or otherwise necessary information has been included in the application. The Application must be submitted before the final deadline of April 12, 2012. The Application then goes through an initial evaluation. This will include background screening on the entities applying and the individuals named in the application. Following the initial evaluation, the application may have to go through extended evaluation, dispute resolution or string contention prior to transition to delegation.

IMPORTANT DATES

12 January      : ICANN BEGINS ACCEPTING APPLICATIONS
29 March         : THE LAST DAY FOR USER REGISTRATION
12 April           : THE LAST DAY TO SUBMIT APPLICATIONS

It is important to note that only established corporations, organizations or individuals “in good standing” may apply for a new TLD and that third parties will be able to file objections to TLD applications. There will be a special period during which objections can be filed. The purpose of this is to ensure the continued integrity and good quality of the internet.

ICANN will be conducting background screenings of applications, focusing on

(1) General business diligence and criminal history; and

(2) History of cybersquatting behavior.

Applicants must also submit documentary proof of financial statements / to be eligible. Some applications will require supplemental documentation: community endorsement, government support or non-objection and/or documentation of third-party funding commitments.

Why Domain Name Disputes India?

The application process for a new gTLD is complicated and very specialized and needs an expert assistance. Further, a new gTLD application process requires clear understanding of the ICANN guidelines and the applicant must be able to demonstrate various financial and technical requirements for establishing a registry to operate a top level domain name (gTLD).

Application for a new gTLD also involves considerable investment. Domain Name Disputes India (DNDI) has the specialized experience and understanding of ICANN application procedures that are needed to successfully apply for a new gTLD. DNDI is India’s First Law Firm to deal exclusively with Domain Name Registration and Prosecution and hence, we are well-equipped to handle and complete this process.

We perform and prepare a due-diligence on your proposed new Top Level Domain.
We assist you in preparing and obtaining the requisite documents for submission with ICANN.
We assist your organization with the complete application process, including preparing statement of case, preparing financial statements with the help of your Finance Department, gathering the required corporate submission information, advising on the technical sections of the proposal, preparing business capabilities requirements and assisting with responses during evaluation and delegation processes. In short, we provide start-to-end and complete assistance with a new gTLD application that complies with the ICANN application process and are there to assist you all the way through to assignment of your top level domain.
A significant part of the new gTLD application includes providing details on technical capabilities specific to registry operations. With our assistance, you can be sure the technical section of the application is complete and detailed.

iBrand Protection in association with Domain Name Disputes India, are India’s first consultants dealing exclusively with Online Brand Protection & Domain Name Disputes. iBrand Protection offers its clients detailed online brand protection strategies and solutions to protect them from online frauds, cybersquatting, sale of counterfeit goods etc., To know more, please visit www.domaindisputesindia.com or mail at karthik@domaindisputesindia.com.