Shashank Mangal, who is fast becoming one of our regular guest posters, brings us a post on a in an area we don’t cover very often – domain name disputes. Shashank is a 4th year student at ILS, Pune.
“RPG Life” Arbitration – some interesting observations
Recently, an award (here) was passed in a domain name dispute initiated by an Indian entity ‘RPG Life Sciences Ltd.’ against ‘James Mathe’. It was arbitrated upon by ‘WIPO Arbitration and Mediation Center’ and the law applied was the Uniform Domain Name Dispute Resolution Policy (UDRP). The award that was passed not only declined the claim of the complainant but also came up with a finding of ‘reverse domain name hijacking’ against it. This post deals with certain important facets of this arbitration.
What was the dispute?
The complainant, RPG Life Sciences Ltd., claimed that the respondent got the domain name ‘rpglife.com’ registered in violation of para 4 of the UDRP.
[UDRP stands for Uniform Domain Name Dispute Resolution Policy devised by ICANN (International Corporation for Assigned Names and Numbers) and it gets incorporated by reference in every domain name registration agreement. It is to be invoked in case of certain disputes arising between the domain name registrant and a third party.]
In order to satisfy the three conjunctive conditions of para 4(a) of UDRP, it was claimed by the complainant that since the domain name was both identical (when compared with RPG Life) and confusingly similar (when compared with RPG) to the trademarks of the complainant, the respondents had no rights or legitimate interests in respect of the domain name, and it was registered by the respondent in bad faith, the same was liable to be transferred to the complainant.
On the other hand, the respondent proved that ‘RPG’ was a short form for role playing games and was commonly known as such since 1974. Additionally, the respondent said that he was merely offering for sale such games and providing a social platform for such gaming and thus had legitimate rights in the domain name. The rationale behind using it (rpg) with ‘life’ was “to resolve to a webpage directed to those Internet users who liked that sort of thing”.
|
Complainant’s Trade Mark |
Domain Name |
|||
| Name | Registration | Use Since | Name | Registration |
| RPG | 1999 | 1999 | — | — |
| RPG Life | October, 2012 | 1999 | Rpglife.com | Application under Process [28 October 2005] |
Arbitration Award
The sole panelist found the respondent in violation of Para 4(a)(i) only (which meant that the panel agreed that the respondent’s domain name was confusingly similar to the complainant’s trademark). But regarding other allegations, it said that the respondent had a legitimate right in the domain name and also that he didn’t register it in bad faith. Since the UDRP requires all three requirements as mentioned in Para 4(a) to be fulfilled conjunctively, the award was passed in favour of the respondents.
Reverse Domain Name hijacking
Reverse domain name hijacking means filing a UDRP complaint in bad faith for depriving the domain name holder of his domain name. The Panel found the complainant guilty of reverse domain name hijacking because as per its finding the complaint was filed without any evidence and in such circumstances, it should have been clear to the complainant (prior to the filing of the complaint only) that its complaint would not succeed.
Expediency of Arbitration
A look at the following timeline would not only highlight the role of arbitration in resolving such disputes but also the enviable professionalism displayed by the respondent and the panelist;
3.12.2013 – Complaint filed with WIPO Arbitration and Mediation Center (hereinafter referred to as ‘Mediation Center’)
12.12.2013 – Response filed by the Respondent notwithstanding the fact that as per UDRP Rules the same could have been filed by 30.12.2013.
19.12.2013 – Sole Panelist appointed by the Mediation center.
30.12.2013 – Arbitration Award passed by the sole panelist.
All in all, it took only 27 days for the complaint to be arbitrated upon, which is a remarkable achievement.
But is this arbitration too costly?
Not at all, in this case the sole panelist and the Mediation Center must have cost our Indian complainant $1500/- only (besides its usual customary sense, I am using the word ‘only’ in its literal sense too!). Taking the Rupee-US Dollar exchange rate to be at Rs. 60/-, this fee translates to just Rs. 90,000/- in INR. I am not arguing that it’s a petty amount to pay but for the big corporations it is nothing. I would think that the lawyer’s fee pinched the complainant’s pocket more!
If you want to know more about the fee charged by the Mediation Centre, click here.
Critical Analysis
This seems to be a no loss situation for a big corporation seeking to cancel or transfer to itself, a commercially beneficial domain name. If they succeed, they get the domain name. And if they fail they just get a lesson in moral education through a consequence-less mention of their malafide intention. Despite receiving and adverse observation of reverse domain name hijacking, the complainant is still not liable for anything. It simply means that the judge (arbitrator) tells the respondent that he knows that the proceedings initiated against him were in bad faith but he can do no more than inform the original complainant that he knows of his bad faith.
Interesting. Good thing is that the arbitration gets completed in a very short time, which is one of the strengths of ICANN and this mechanism can be adopted by its registries also. I think NIXI, the Indian .in registry owner/manager, also has similar mechanisms to resolve disputes.