Full Judgment Text
$~9
* IN THE HIGH COURT OF DELHI AT NEW DELHI
th
Date of decision: 24 January, 2018
+ OMP(COMM) 223/2016
LENS. COM, INC. ..... Petitioner
Through Mr.Jai A. Dehadrai, Mr.Shivangini
Gupta, Mr.Sidharth Arora, Mr.David
George & Mr.Anil Mishra, Advs.
versus
JU J FRIEND INTERNATIONAL ..... Respondent
Through None.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
NAVIN CHAWLA, J. (Oral)
1. This petition under Section 34 of the Arbitration and
Conciliation Act, 1996 has been filed by the petitioner, Lens. Com,
th
Inc challenging the arbitral award dated 29 June, 2015 passed by the
Sole Arbitrator. The arbitration was conducted under the ‘.In Domain
Name Dispute Resolution Policy (INDRP)’ published by the National
Internet Exchange of India (NIXI).
2. The petitioner, claiming itself to be a renowned Multinational
Company incorporated in USA and dealing in online business of
selling contact lenses to the consumers in North America and
globally, filed a complaint before NIXI against the respondent seeking
transfer of the domain name ‘lens.in’ registered in favour of the
OMP (Comm.) 223/2016 Page 1 of 8
respondent.
3. In the complaint, it was alleged that the petitioner has been
operating the portal ‘www.lens.com’ from 1999 in the United States
of America and various other countries. It was further alleged that the
petitioner is the registered proprietor of the trademark/service mark
and domain name ‘lens.com’ in various countries. The petitioner filed
the complaint invoking para 4 of the INDRP to seek the transfer of the
domain name ‘lens.in’ from the respondent to the petitioner.
4. In the arbitration proceedings, the respondent failed to appear
or even file a reply to the notice regarding the complaint. The Sole
Arbitrator in its impugned award has passed the following direction:-
“Decision
The disputed domain name is not identical and confusingly
similar to trademark of the Complainant. The Complainant also
has failed to prove that the Respondent does not have any right
or legitimate interest in the domain name. The Respondent has
not registered the disputed domain name in bad faith. Therefore
the Complainant is not entitled to transfer of domain name to
him, as he has also not established his bonafide rights in the
disputed domain name as per law discussed above. However,
the Respondent through the third party has categorically
claimed that they are not the owners of the disputed domain
name and the dispute is unrelated to them. Also it is pertinent to
note that despite repeated reminders the third party did not
submit the requisite documents. The situation that has arisen is
the Complainant has failed to prove its rights in the disputed
domain name and the Respondent does not want to be related to
the domain name.
Hence it is the decision of the panel that the Domain name may
be confiscated by registry and the same may be kept with it. In
accordance with Policy and Rules, the Panel directs that the
OMP (Comm.) 223/2016 Page 2 of 8
disputed domain name [www.lens.in] be cancelled.”
5. The petitioner is aggrieved by the final direction given by the
Arbitrator confiscating the domain name. It is submitted by the
counsel for the petitioner that in terms of INDRP, the Arbitrator has
no power to order confiscation of the domain name; the power of the
Arbitrator is limited only to order the cancellation of the registrant’s
domain name or to transfer the registrant’s domain name registration
to the complainant. It is submitted that once the arbitrator had
concluded that the respondent was not the owner of the disputed
domain name and the third party claiming rights thereof had not filed
the requisite documents in spite of repeated reminders, the Sole
Arbitrator should have ordered cancellation of the respondent’s
domain name and could not have ordered confiscation thereof.
6. As the respondent had failed to appear in spite of service of
notice in the present petition, it was proceeded ex parte vide order
th
dated 20 November, 2017. Even today, none appeared for the
respondent.
7. I have considered the submissions made by the counsel for the
petitioner. A Single Judge of this Court in Stephen Koenig vs.
National Internet Exchange of India (NIXI) 2011 SCC Online Del
5384 after examining the INDRP has held that in terms of para 10 of
the INDRP, if the complainant succeeds then, it should result in the
cancellation of the domain name registration in favour of the
registered owner or in the transfer of the domain name to the
complainant, however, further order of the arbitrator directing
OMP (Comm.) 223/2016 Page 3 of 8
confiscation and retention of the domain name is without any legal
basis as there is no such provision in para 10 of the INDRP. Relying
upon the judgment of the Supreme Court in MD, Army Welfare
Housing Organization vs. Sumangal Servies (P) Limited, (2004) 9
SCC 619 , it was held that the Arbitrator, while ordering confiscation
of the domain name, had transgressed para 10 of the INDRP.
8. This judgment of the learned Single Judge of this Court was
upheld by the Division Bench in Stephen Koeing vs. Arbitrator Nixi
2015 SCC Online Del 13237.
9. In view of the above, the direction of the Sole Arbitrator to the
registry to confiscate the domain name ‘www.lens.in’ cannot be
sustained.
10. This would, however, still leave the question, whether upon
cancellation of the domain name ‘www.lens.in’, the same was to be
transferred in favour of the petitioner. The Arbitrator in the impugned
award has refused such transfer inter alia on the ground that the
petitioner has failed to prove that the domain name ‘lens.in’ is
identical or confusingly similar to the trade name of the petitioner; or
that the respondent does not have any right or legitimate interest in the
domain name; or that the disputed domain name was registered in bad
faith or use in bad faith. It has, therefore, been held that the petitioner
had failed to prove its rights in the disputed domain name.
11. Counsel for the petitioner submits that once the Arbitrator had
ordered cancellation of the domain name in favour of the respondent,
the transfer of the same in favour of the petitioner was only a
consequential order that was necessarily required to be passed. I am
OMP (Comm.) 223/2016 Page 4 of 8
afraid that I cannot agree to such a submission. Para 10 of the
INDRP gives the remedies that are available to the complainant
pursuant to any proceeding before an Arbitrator. The same is quoted
hereinbelow:-
“10) Remedies
The remedies available to a Complainant pursuant to any
proceeding before an Arbitrator shall be limited to requiring
the cancellation of the Registrant's domain name or the transfer
of the Registrant's domain name registration to the
Complainant. Costs as may be deemed fit may also be awarded
by the Arbitrator.”
12. A reading of the above would show that the Arbitrator has the
power to order cancellation of the registrant’s domain name or the
transfer of registrant’s domain name registration to the complainant
apart from awarding costs. Therefore, cancellation of registrant’s
domain name automatically does not result in the transfer of the
registrant’s domain name registration to the complainant.
13. The complainant would, even upon cancellation of the
registrant’s domain name, independently have to establish his right to
such domain name. The learned Single Judge of this Court in
Stephen Koeing (supra ) on this aspect has held as under:-
“36. At this stage it is necessary to clarify that while this might
suffice for the purposes of Para 4(i) INDRP, it would not ipso
facto entitle Respondent No. 2 to ask for transfer of the domain
name in his favour under Para 10 INDRP, which aspect is
discussed later.
OMP (Comm.) 223/2016 Page 5 of 8
xxxxxx
48. The cancellation of the registration of the domain name
'internet.in' in favour of the Petitioner would not automatically
entitle Respondent No. 2 to its transfer in his favour. Clearly
Respondent No. 2 was unable to show that he was actually
using the trademark 'internet' in his business. Additionally, the
fact that the word 'internet' is generic and that the trademark
'internet' of Respondent No. 2 is therefore a weak one, are
relevant considerations that support the decision of the learned
Arbitrator to decline the prayer of Respondent No. 2 for
transfer of the domain name 'internet.in' in his favour.
49. Consequently, the impugned Award is upheld to the extent
that registration of the domain name 'internet.in' in favour of
the Petitioner has been directed to be struck off. The Award is
also upheld to the extent that it holds that Respondent No. 2 is
not entitled to the transfer of the said domain name in his
favour. However, the direction in the impugned Award that the
domain name 'internet.in' should be confiscated and kept by the
.IN Registry is hereby set aside.”
14. In the present case also, the Arbitrator in his impugned award
has inter alia held that the word ‘lens’ is generic in nature and is not
entitled to protection as a trademark. In this regard, relevant finding
from the award is quoted herein below:-
“However this panel is of the view that the request to
ownership to the same has to be denied on the grounds of no
proof of trademark registration for “lens.in” or “lens” in India
with regard to the same [(Relevant decisions: Jagdish Purohit
v. Mr.Stephen Koeing INDRP/6) July 7, 2006); Suresh Kumar
Sareen v. Jim J INDRP/007 (October 4, 2006); Pepsico, Inc. v.
Bijon Chatterji INDRP/014 (June 24, 2006); Pheonix IT
th
Solution Ltd. v. Mr. M. Ramesh INDRP/495 (28 September,
2013); Gokul Kalyansundaram v. Eternal Softwares
OMP (Comm.) 223/2016 Page 6 of 8
INDRP/564 (February 2, 2014)].
However, it is only some types of commercial domain names
that qualify for trademark protection. For instance, while
domain names that use common or descriptive terms, may work
very well to bring users to a website, they usually do not qualify
for much trademark protection. This means that owners of such
domain names generally won’t be able to stop the use of these
words and phrases in other domain names. In other words, by
using common terms that are the generic name for the service
or by using word that merely describe the service or some
aspect of it, the owner of the name will have less trademark
rights against the users of similar domain names than she
would if her domain name was distinctive. Hence, it is a
generic name and Complainant has not been able to prove that
he has acquired any secondary meaning in the word “lens” /
“lens.in”. [{Relevant decisions: Mr. Shevaldas C. Raghani v.
Mr.Stephen Koeing INDRP/008 (May 3, 2006); Jagdish
Purohit v. Mr. Stephen Koeing INDRP/6 (July 7, 2006); Suresh
Kumar Sareen v. Jim J INDRP/007 (October 4, 2006); Pepsico,
Inc. v. Bijon Chatterji INDRP/014 (June 24, 2006); Pheonix IT
th
Solution Ltd. v. Mr. M. Ramesh INDRP/495 (28 September,
2013); Gokul Kalyansundaram v. Eternal Softwares
INDRP/564 (February 2, 2014)].”
15. In any case, it is for the petitioner to show in an appropriate
proceedings that with its continued use of ‘lens.com’ it has acquired a
right over the generic word ‘lens’.
16. In the present case, such evidence was not led before the
arbitrator. However, as the confiscation of the domain name has
been set aside by this Court by the present order, it would always be
open to the petitioner to claim registration to the domain name
‘lens.in’ in accordance with the Rules of NIXI.
17. In view of the discussion above, the impugned order is set aside
OMP (Comm.) 223/2016 Page 7 of 8
only to the extent that it orders that the domain name ‘www.lens.in’
be confiscated by the registry and the same may be kept with it.
There shall be no order as to costs.
NAVIN CHAWLA, J
JANUARY 24, 2018
RN
OMP (Comm.) 223/2016 Page 8 of 8
* IN THE HIGH COURT OF DELHI AT NEW DELHI
th
Date of decision: 24 January, 2018
+ OMP(COMM) 223/2016
LENS. COM, INC. ..... Petitioner
Through Mr.Jai A. Dehadrai, Mr.Shivangini
Gupta, Mr.Sidharth Arora, Mr.David
George & Mr.Anil Mishra, Advs.
versus
JU J FRIEND INTERNATIONAL ..... Respondent
Through None.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
NAVIN CHAWLA, J. (Oral)
1. This petition under Section 34 of the Arbitration and
Conciliation Act, 1996 has been filed by the petitioner, Lens. Com,
th
Inc challenging the arbitral award dated 29 June, 2015 passed by the
Sole Arbitrator. The arbitration was conducted under the ‘.In Domain
Name Dispute Resolution Policy (INDRP)’ published by the National
Internet Exchange of India (NIXI).
2. The petitioner, claiming itself to be a renowned Multinational
Company incorporated in USA and dealing in online business of
selling contact lenses to the consumers in North America and
globally, filed a complaint before NIXI against the respondent seeking
transfer of the domain name ‘lens.in’ registered in favour of the
OMP (Comm.) 223/2016 Page 1 of 8
respondent.
3. In the complaint, it was alleged that the petitioner has been
operating the portal ‘www.lens.com’ from 1999 in the United States
of America and various other countries. It was further alleged that the
petitioner is the registered proprietor of the trademark/service mark
and domain name ‘lens.com’ in various countries. The petitioner filed
the complaint invoking para 4 of the INDRP to seek the transfer of the
domain name ‘lens.in’ from the respondent to the petitioner.
4. In the arbitration proceedings, the respondent failed to appear
or even file a reply to the notice regarding the complaint. The Sole
Arbitrator in its impugned award has passed the following direction:-
“Decision
The disputed domain name is not identical and confusingly
similar to trademark of the Complainant. The Complainant also
has failed to prove that the Respondent does not have any right
or legitimate interest in the domain name. The Respondent has
not registered the disputed domain name in bad faith. Therefore
the Complainant is not entitled to transfer of domain name to
him, as he has also not established his bonafide rights in the
disputed domain name as per law discussed above. However,
the Respondent through the third party has categorically
claimed that they are not the owners of the disputed domain
name and the dispute is unrelated to them. Also it is pertinent to
note that despite repeated reminders the third party did not
submit the requisite documents. The situation that has arisen is
the Complainant has failed to prove its rights in the disputed
domain name and the Respondent does not want to be related to
the domain name.
Hence it is the decision of the panel that the Domain name may
be confiscated by registry and the same may be kept with it. In
accordance with Policy and Rules, the Panel directs that the
OMP (Comm.) 223/2016 Page 2 of 8
disputed domain name [www.lens.in] be cancelled.”
5. The petitioner is aggrieved by the final direction given by the
Arbitrator confiscating the domain name. It is submitted by the
counsel for the petitioner that in terms of INDRP, the Arbitrator has
no power to order confiscation of the domain name; the power of the
Arbitrator is limited only to order the cancellation of the registrant’s
domain name or to transfer the registrant’s domain name registration
to the complainant. It is submitted that once the arbitrator had
concluded that the respondent was not the owner of the disputed
domain name and the third party claiming rights thereof had not filed
the requisite documents in spite of repeated reminders, the Sole
Arbitrator should have ordered cancellation of the respondent’s
domain name and could not have ordered confiscation thereof.
6. As the respondent had failed to appear in spite of service of
notice in the present petition, it was proceeded ex parte vide order
th
dated 20 November, 2017. Even today, none appeared for the
respondent.
7. I have considered the submissions made by the counsel for the
petitioner. A Single Judge of this Court in Stephen Koenig vs.
National Internet Exchange of India (NIXI) 2011 SCC Online Del
5384 after examining the INDRP has held that in terms of para 10 of
the INDRP, if the complainant succeeds then, it should result in the
cancellation of the domain name registration in favour of the
registered owner or in the transfer of the domain name to the
complainant, however, further order of the arbitrator directing
OMP (Comm.) 223/2016 Page 3 of 8
confiscation and retention of the domain name is without any legal
basis as there is no such provision in para 10 of the INDRP. Relying
upon the judgment of the Supreme Court in MD, Army Welfare
Housing Organization vs. Sumangal Servies (P) Limited, (2004) 9
SCC 619 , it was held that the Arbitrator, while ordering confiscation
of the domain name, had transgressed para 10 of the INDRP.
8. This judgment of the learned Single Judge of this Court was
upheld by the Division Bench in Stephen Koeing vs. Arbitrator Nixi
2015 SCC Online Del 13237.
9. In view of the above, the direction of the Sole Arbitrator to the
registry to confiscate the domain name ‘www.lens.in’ cannot be
sustained.
10. This would, however, still leave the question, whether upon
cancellation of the domain name ‘www.lens.in’, the same was to be
transferred in favour of the petitioner. The Arbitrator in the impugned
award has refused such transfer inter alia on the ground that the
petitioner has failed to prove that the domain name ‘lens.in’ is
identical or confusingly similar to the trade name of the petitioner; or
that the respondent does not have any right or legitimate interest in the
domain name; or that the disputed domain name was registered in bad
faith or use in bad faith. It has, therefore, been held that the petitioner
had failed to prove its rights in the disputed domain name.
11. Counsel for the petitioner submits that once the Arbitrator had
ordered cancellation of the domain name in favour of the respondent,
the transfer of the same in favour of the petitioner was only a
consequential order that was necessarily required to be passed. I am
OMP (Comm.) 223/2016 Page 4 of 8
afraid that I cannot agree to such a submission. Para 10 of the
INDRP gives the remedies that are available to the complainant
pursuant to any proceeding before an Arbitrator. The same is quoted
hereinbelow:-
“10) Remedies
The remedies available to a Complainant pursuant to any
proceeding before an Arbitrator shall be limited to requiring
the cancellation of the Registrant's domain name or the transfer
of the Registrant's domain name registration to the
Complainant. Costs as may be deemed fit may also be awarded
by the Arbitrator.”
12. A reading of the above would show that the Arbitrator has the
power to order cancellation of the registrant’s domain name or the
transfer of registrant’s domain name registration to the complainant
apart from awarding costs. Therefore, cancellation of registrant’s
domain name automatically does not result in the transfer of the
registrant’s domain name registration to the complainant.
13. The complainant would, even upon cancellation of the
registrant’s domain name, independently have to establish his right to
such domain name. The learned Single Judge of this Court in
Stephen Koeing (supra ) on this aspect has held as under:-
“36. At this stage it is necessary to clarify that while this might
suffice for the purposes of Para 4(i) INDRP, it would not ipso
facto entitle Respondent No. 2 to ask for transfer of the domain
name in his favour under Para 10 INDRP, which aspect is
discussed later.
OMP (Comm.) 223/2016 Page 5 of 8
xxxxxx
48. The cancellation of the registration of the domain name
'internet.in' in favour of the Petitioner would not automatically
entitle Respondent No. 2 to its transfer in his favour. Clearly
Respondent No. 2 was unable to show that he was actually
using the trademark 'internet' in his business. Additionally, the
fact that the word 'internet' is generic and that the trademark
'internet' of Respondent No. 2 is therefore a weak one, are
relevant considerations that support the decision of the learned
Arbitrator to decline the prayer of Respondent No. 2 for
transfer of the domain name 'internet.in' in his favour.
49. Consequently, the impugned Award is upheld to the extent
that registration of the domain name 'internet.in' in favour of
the Petitioner has been directed to be struck off. The Award is
also upheld to the extent that it holds that Respondent No. 2 is
not entitled to the transfer of the said domain name in his
favour. However, the direction in the impugned Award that the
domain name 'internet.in' should be confiscated and kept by the
.IN Registry is hereby set aside.”
14. In the present case also, the Arbitrator in his impugned award
has inter alia held that the word ‘lens’ is generic in nature and is not
entitled to protection as a trademark. In this regard, relevant finding
from the award is quoted herein below:-
“However this panel is of the view that the request to
ownership to the same has to be denied on the grounds of no
proof of trademark registration for “lens.in” or “lens” in India
with regard to the same [(Relevant decisions: Jagdish Purohit
v. Mr.Stephen Koeing INDRP/6) July 7, 2006); Suresh Kumar
Sareen v. Jim J INDRP/007 (October 4, 2006); Pepsico, Inc. v.
Bijon Chatterji INDRP/014 (June 24, 2006); Pheonix IT
th
Solution Ltd. v. Mr. M. Ramesh INDRP/495 (28 September,
2013); Gokul Kalyansundaram v. Eternal Softwares
OMP (Comm.) 223/2016 Page 6 of 8
INDRP/564 (February 2, 2014)].
However, it is only some types of commercial domain names
that qualify for trademark protection. For instance, while
domain names that use common or descriptive terms, may work
very well to bring users to a website, they usually do not qualify
for much trademark protection. This means that owners of such
domain names generally won’t be able to stop the use of these
words and phrases in other domain names. In other words, by
using common terms that are the generic name for the service
or by using word that merely describe the service or some
aspect of it, the owner of the name will have less trademark
rights against the users of similar domain names than she
would if her domain name was distinctive. Hence, it is a
generic name and Complainant has not been able to prove that
he has acquired any secondary meaning in the word “lens” /
“lens.in”. [{Relevant decisions: Mr. Shevaldas C. Raghani v.
Mr.Stephen Koeing INDRP/008 (May 3, 2006); Jagdish
Purohit v. Mr. Stephen Koeing INDRP/6 (July 7, 2006); Suresh
Kumar Sareen v. Jim J INDRP/007 (October 4, 2006); Pepsico,
Inc. v. Bijon Chatterji INDRP/014 (June 24, 2006); Pheonix IT
th
Solution Ltd. v. Mr. M. Ramesh INDRP/495 (28 September,
2013); Gokul Kalyansundaram v. Eternal Softwares
INDRP/564 (February 2, 2014)].”
15. In any case, it is for the petitioner to show in an appropriate
proceedings that with its continued use of ‘lens.com’ it has acquired a
right over the generic word ‘lens’.
16. In the present case, such evidence was not led before the
arbitrator. However, as the confiscation of the domain name has
been set aside by this Court by the present order, it would always be
open to the petitioner to claim registration to the domain name
‘lens.in’ in accordance with the Rules of NIXI.
17. In view of the discussion above, the impugned order is set aside
OMP (Comm.) 223/2016 Page 7 of 8
only to the extent that it orders that the domain name ‘www.lens.in’
be confiscated by the registry and the same may be kept with it.
There shall be no order as to costs.
NAVIN CHAWLA, J
JANUARY 24, 2018
RN
OMP (Comm.) 223/2016 Page 8 of 8