An analysis of the recent domain dispute case: Religare Health Insurance Company Limited vs. Name Administration Inc. /Domain Administration (UDRP Case Ref. No. - D2019-2073)
Reverse Domain name Hijacking or Reverse Cyber squatting
Cyber-squatting is a growing malady in the world of Intellectual Property (IP) offences. With increasing number of domain name registrations in bad faith, third-party registrants are phishing genuine business owners/traders/proprietors in order exchange money for their due right. In lay man's terms, cyber-squatting is an act of extortion wherein a third-party, having no genuine right in the trade name/trademark, fraudulently registers a confusingly similar domain name with a view of trading in on the reputation and goodwill of a bonafide proprietor. However, what happens when rightful trademark owners attempt to secure a domain name by falsely making claims of cyber-squatting against a domain name owner? This strategy is referred to as Reverse Domain Name Hijacking wherein trademark/ brand owners use the UDRP proceedings as a means to coerce individual domain name owners to surrender their rights in a domain. Discouragement of this practice is ensconced in Paragraph 3(b)(xiii) of the UDRP Rules which requires each Complainant to furnish the below certification at the time of filing a complaint under the UDRP:
"Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."
Further, Paragraph 15(e) of the UDRP Rules states that,
"If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
The Complainant, Religare Health Insurance Company Limited, a leading health insurance vendor, moved the WIPO Arbitration and Mediation Centre(WIPO) on August 23, 2019 alleging cyber-squatting by the Respondent, namely Frank Schilling's Name Administration. The Complainant claimed to have trademark registrations in India for figurative trademarks for the term CARE (dating back to February 07, 2012) and the country-code top level domains carehealthinsurance.co.in and carehealthinsurance.in (both registered in August 2018).
Whereas the Respondent registered the disputed domain name [carehealthinsurance.com on August 12, 2015 which resolved to an advertising page containing pay-per-click hyperlinks. The question of law as perused by the Panel was in-line with the Uniform Domain Name Dispute Resolution Policy (UDRP) and its Rules, wherein the following three grounds were required to be satisfied in toto:
- the domain name is confusingly similar to the complainant's trademark;
- the registrant has no rights or legitimate interests in the domain name; and that
- the domain name has been registered and is being used in "bad faith"1
Submissions by the Complainant:
The Complainant contended that the impugned domain name incorporates the Complainant's trademark CARE in toto in conjunction with the descriptive words HEALTH INSURANCE which makes carehealthinsurance.com confusingly similar to the Complainant's prior and bonafidely registered trademark. The Complainant also submitted that the Respondent was not making any use of the impugned domain name with a bona fide offering of goods and services and therefore had no rights or legitimate interest in the same. Lastly, the Complainant claimed that the Respondent ought to have been aware of theComplainant and its trademark and is causing harm to the Complainant's business by operating a parked page from the impugned domain. Therefore, the Complainant claimed that the Respondent registered the impugned domain name in bad faith.
Submissions by the Respondent:
The Respondent stated that they specialise in providing advertising services for generic domain names and claimed that the Complainant is only the proprietor of a stylized version of the word "CARE" which in no way can be termed as distinctive of the Complainant's goods and services, especially when followed by the words "HEALTH INSURANCE". Further, the Respondent claimed that the Complainant has failed to demonstrate that the impugned domain is registered in bad faith as the Respondent operates from the Grand Caymen and has no reason to be aware of the Complainant (who has business operations only in India).
The three-person Administrative Panel was of view that even though the Complainant had satisfied the Panel on the first ground of confusing similarity of the Complainant's trademark with the impugned domain, the Complainant failed to establish that the registration of the impugned domain by the Respondent was done in bad faith.,
While referring to the case of GMbH vs. Telepathy Inc.2, the Panel opined that in order to establish bad faith while registering a domain name, it is crucial for the Complainant to show that the Respondent was aware, should have been aware or ought to have been aware of the Complainant and its trademark. The Panel stated that the presence of a coined/arbitrary word as part of the impugned domain name might have been helpful to demonstrate bad faith on the Respondent's part, however "individual dictionary terms" such as CARE, HEALTH and INSURANCE cannot be considered to be distinctive of the Complainant's goods and services. Further, the Panel reasoned that even though the order of the words CARE, HEALTH and INSURANCE is an "odd juxtaposition" (as opposed to the commonly used phrase "health care insurance"), the Complainant would have to tender evidence of extensive use of the same, which the Panel hinted "under certain circumstances" might have overcome the descriptive nature of such a combination of dictionary words. However, the Panel was of the view that since the Complainant has only furnished evidence relating to their use in India and nothing to indicate that they are known anywhere else in the world (despite the global nature of Internet), there is no evidence on record to suggest that the Respondent registered the impugned domain because they were aware of the Complainant and its trademark. As regards use, the Panel stated that the presence of a pay-per-click website advertising the Complainant's competitors does not provide any evidence that the Respondent was specifically targeting the Complainant, as for Internet users not situated in India, this is a bona fide offering of health insurance services. Therefore, the Panel was reluctant to give a finding that the impugned domain name was registered and is being used in bad faith.
It is pertinent to mention here that one of the Panelists, namely, Mr. Richard G. Lyon,arrived at a concurring finding that the above complaint would constitute Reverse Domain Name Hijacking as the Complainant brought the instant complaint in bad faith. The Panelist was of the view that the Complainant and its representatives ought to have known that the Respondent registered the domain carehealthinsurance.com in good faith and hence constitutes an abuse of this administrative proceeding.
The Panelist stated that that filing such a complaint "mocks the certification required by paragraph 3(b)(xiii) of the Rules" and that a quick Internet search and a reading of the WIPO Jurisprudential Overview would have been sufficient to ascertain that the complaint is unwarranted. He unsparingly summarized the Complainant's complaint in the following terms:
"I have a mark, you don't, pay-per-click is involved, and therefore I'm entitled to your domain."
The flip side:
In light of the facts and circumstances of the aforementioned domain dispute, it may be concluded that for domain names incorporating descriptive/ common/ dictionary words, the Complainant has a higher threshold to show that their trademark has acquired a secondary meaning. In the present case, even though the Complainant adopted the trademark CARE in 2012, they could only furnish evidence of adopting the combination in the words CARE, HEALTH and INSURANCE from 2018 (3 years later than the registration of the impugned domain name). Further, the lack of documentary evidence to show that the Complainant is known outside the territory of India was an important facet that was considered by the Panel. In view thereof, given the descriptive nature of the Complainant's trademark coupled with the above factors, it is not surprising that the Panel did not submit a finding in the Complainant's favour. However, what is peculiar about the above judgment is the concurrent finding of Reverse Domain Name Hijacking tendered by one of the Panelists that to some extent goes so far as to question the Complainant and their representatives as to their motives of filing the above complaint based on such flimsy grounds.
The concurrent finding begets the question - is the above a case of a concerned trademark owner or just an overambitious Complainant looking to misuse their rights as a proprietor to coerce a domain owner into surrendering their rights? Most domain owners are individuals who do not have the resources to defend such unwarranted UDRP actions and are left with no choice but to transfer ownership of their domain to avoid legal action.
In disputes such as the above, it is difficult to make a finding on facts that can point to the intention of a Complainant of whether or not they instituted a complaint with a mala fide intent. In most cases, if the Complainant has even some modicum of rights in a trademark that is confusingly similar to a domain, Panelists will not be inclined to make a finding of Reverse Domain Name Hijacking unless there is a direct fact that points to the Complainant's mala fide intent.
Furthermore, the Respondents in these cases are not liable to any relief except retention of their domains. A monetary compensation to the Respondent for bearing the cost of proceedings should be made mandatory in cases of Reverse Domain Name Hijacking. This will not only prevent malicious institution of complaints under the UDRP but will also instil confidence in domain owners who would otherwise settle and transfer their domain for fear of engaging in protracted administrative proceedings under the UDRP. Some relief to the Respondents in such cases will also create balance and provide a stable platform to domain owners for defending themselves under the UDRP.
1 Uniform Domain Name Dispute Resolution Policy- Paragraph 4(a); www.icann.org; https://www.icann.org/resources/pages/policy-2012-02-25-en#4aiii; accessed on January 08, 2020
2 WIPO Case No. D2007-0261
Originally published 14 April 2020
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