The Dilemma OF Floating Domain Names After Non-Renewal

 

In my previous blog, I opined that the trademarks shouldn’t be removed or rectified in the register, if in case of non-use; unless of course, in case in the event of non-renewal. Further, I rather suggested a proposition that the trademarks shall be suspended if in case of non-user, rather being opened for the public at large to assert the rights on it (except in case of honest concurrent user); because, if there’s no need of compulsory license required in the case of trademarks, in the case of designs, or in the case of domain names; then the provision of compulsory USER doesn’t make any sense in case of trademarks, designs and domain names; whereas, if anyone remembers, domain names once used to be FREE; yet, it is understandable, that costs needs to be covered; yet, my proposition as defined below and in my previous blog, could be applicable.

And as the same case could also be applicable for domain names too. Why? As, there’s no provision of compulsory license neither under the UDRP, nor any prosecution under INDRP, or any other local provision wherein, Domain Name Dispute Redressal Boards (like Providers) are being constituted under the Arbitration & Conciliation Act; then why it should made available to the next available USER on the first come first register basis? Shouldn’t such domain names, especially, IF THEY’VE A HISTORY OF MORE THAN 5 YEARS, be placed under the Dormant State DB, in case of non-renewal and non-user? Moreover, a bit concerning part many domain names are being auctioned by the Registrar. Correct?

So what’s my proposition?  

If in the IP, there’s no provision of compulsory license, no provision of rectification on the basis of non-use (albeit in the case of trademark that exists, but I’ve made this proposition that, that shouldn’t be the case either), and if part of such Intellectual Property Rights doesn’t impact the public at large, like needed and required in case of the pharmaceuticals products, or, of the literary works that are being important for the Academic Purposes; then such works shouldn’t be removed and be made available to anyone, especially on the first come first serve basis.

Thus, TWO Proposals of mine both in case of Trademarks and Domain Names are:

1.    Save it in the Dormant Account Database, if it has a history of more than FIVE Years. In any case, even in the Madrid Protocol, a trademark becomes independent, if there’s any change in the BASIC Registration/Application after FIVE years. Thus, make it independent and unavailable, rather, recycling it (except in case of concurrent use);  

2.    If the original Registrant wants to restore or recover it, then it could be made available, with a certain amount of penalty and costs involved.

One more important aspect of the domain names are that one shouldn’t be registering several domain names with the similar phonetic similarity at the same time. The reason for that is indirectly taking the responsibility of several trademarks at the same time. Why? Because, there’s difference between filing an infringement and passing off proceedings at the time of occurrence of such events, VS., owning it and then proving it to be the original proprietor. How? In the case of being a non-user, end up losing it VIA Cancellation or Transfer, if in case, some other person with the similar domain name, files domain name dispute against the registrant, proving that domain name of being not-used as a trademark, in case of cybersquatting proceedings.

NOTICE the two different aspects: Filing the Dispute, VS, Owning the dispute related domain name.

Take another example. You’ve a bank account. You stop using it, or, that account goes into the dormant status, if the minimum balance is not kept, or due to the non-usage, the account is deactivated. Now, you take that account details even after decades, you would come to know the status of it; as that has not been assigned to any third person. Similarly, there’s no need to assign the domain names or even trademarks to anyone else; because that’s again a prima facie evidence of validity, and in no case, the public at large would be affected, if in case, that domain name or trademark is NOT assigned to any other person (except in case of concurrent user). 😊

© Pranav Chaturvedi