Mr. Mahendra Singh Dhoni and Rhiti Sports Management Private Limited [the company responsible for managing Mr. Dhoni’s trademark portfolio] secured the domain name – www.msdhoni.com. Rodney D. Ryder, cyber law expert and Managing Partner of Scriboard®, a full service law firm based in New Delhi, India, represented Mr. Dhoni and Rhiti Sports.
Scriboard, on behalf of its clients, contended that the mark ‘MS DHONI’ was a well-known and famous mark throughout the world and that the use of the domain name www.msdhoni.com by the Respondent amounted to trademark and personality rights infringement and may also lead to public confusion and mistrust as members of the public may assume that the domain name as well as the content available on it was being made available by Mr. Dhoni or Rhiti Sports.
It was also contended that the term ‘MS DHONI’ was generally referable to Mr. Dhoni and that there was no evidence of anyone else known by that combination of initials and name as being famous or having any commercial activity.Moreover, the fact that the domain name had pay-per-click advertisements and was being offered for sale was also brought to the attention of the Panelist, Mr.Nick J. Gardner.
Interestingly, subsequent to the filing of the domain name complaint, the Respondent wrote to Scriboard®offering to sell the domain name for 1500 US Dollars. This in itself proved the malafide and bad faith intention of the Respondent.
The Panelist held that theeven though the Complainants had trademark registrationsfor the mark ‘MS DHONI’, they had also established unregistered trademark rights in the mark ‘MS DHONI’ due to its active use in trade and commerce. The Panelist further noted that that the Respondent had no legitimate rights or interests in the domain name and had registered and was using the domain name in bad faith.
The fact that the Respondent had registered several other domain names corresponding to other celebrities and the past two eUDRP proceedings where the Respondent was found to have registered the domain name in bad faith, as well as the offer to sell the domain name www.msdhoni.com to the Complainants were all taken on record and considered by the Panelist. The Panelist thus ordered the domain name to be transferred to the Complainants.
Not surprisingly, there are many unauthorised domain name registrations identical to personal names of Indian celebrities and politicians such as Virat Kohli, Rahul Gandhi, the Hon’ble President Pranab Mukherjee, etc. Such unauthorised domain names are a serious issue and it is thus extremely important that celebrities and other well-known personalities take control of domain names identical to their names - just as John Cusack who recently recovered the domain name .
Moreover, such unauthorised domain names are a threat as they can be involved in illegal and damaging activities such as phishing, cyber fraud, identity theft, etc. In many cases, deceptively similar websites have lured users in paying money or divulging their sensitive personal information – including financial information to fraudsters. For instance, in the case of , members of the general public were misled by mails being sent from the said domain name and were cheated of their money on the pretext of paying registration fees for recruitment at General Motors.
The financial impact of such brand abuse is substantial and pervasive, resulting in revenue loss, increased customer service costs and exposure to legal liability. Other impacts of abusive domain name registrations are more dangerous, leading to significant erosion of margins, brand reputation and customer trust.
It is also to be noted that with the 2008 amendments to the Information Technology Act, 2000, it has become important and urgent for a brand owner not to delay in securing its brand on the internet. Section 43A of the Act puts the onus on the right holders [brand owners] to ensure that ‘reasonable security procedures’ are in place at their organisation. Organisations including their employees that are negligent in protecting their brand can face huge penalties under Section 43A read with Section 85 of the Act.
Thus, taking control of such unauthorised domain names prevents any harm or unwarranted attention that may arise from these domain names and also protects celebrities and brand owners from potential legal liability.
According to Rodney D. Ryder, who represented MS Dhoni and Rhiti Sports, it was ‘imperative to secure this important and valuable digital asset’. He added, ‘the securing of the domain name is an important part of the overall brand strategy. There is a serious potential of misuse. This case, from the WIPO Arbitration and Mediation Center, Geneva, is an important global trademark precedent for the already famous and well-known brand, MS Dhoni’.
Courtesy: Rodney D. Ryder
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