Full Judgment Text
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
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Date of Decision: 27 October, 2021
+ O.M.P. (COMM) 37/2021 with I.A. 1403-04/2021
DEAN CHANDLER ..... Petitioner
Through: Mr. Rohit Rattu, Advocate.
versus
SAZERAC BRANDS LLC & ANR. ..... Respondents
Through: Mr. Nitin Sharma, Mr. Kanishk
Kumar and Mr. Sohrab Singh Mann,
Advocates for R-1.
Mr. Devanshu Jain and Mr. R.K. Jain,
Advocates for R-2.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
JUDGMENT
[VIA HYBRID MODE]
SANJEEV NARULA, J. (Oral):
1. The Petitioner, who is termed as a sophisticated ‘domainer’ having
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registered approx. 7500 domain names, is aggrieved by the award dated 23
September 2020 passed by a Sole Arbitrator appointed by Respondent No. 2
- National Internet Exchange of India [ hereinafter referred to as ‘ NIXI ’],
under the ‘.IN Domain Name Dispute Resolution Policy’ [ hereinafter
referred to as ‘ INDRP ’] – allowing the complaint filed by Respondent No. 1
- Sazerac Brands LLC [ hereinafter referred to as ‘ Sazerac ’], and directing
the transfer of the domain name <www.fireball.in> [ hereinafter referred to
O.M.P. (COMM) 37/2021 Page 1 of 12
as ‘ impugned domain name ’] which incorporates the registered trademark–
‘ Fireball ’, in favour of Sazerac.
What is the Controversy and what are the directions of the Arbitrator?
2. Controversy surrounds the impugned domain name registered by the
Petitioner. Sazerac - a company incorporated in Delaware, United States of
America has its registered office in Louisiana, United States of America -
manufactures and markets cinnamon whisky under the name and brand of
‘FIREBALL’, and associated merchandise therewith. It owns the domain
name ‘fireballwhisky.com’ and is also the owner of the registered trade
mark ‘FIREBALL’ under Classes 32 and 33 in India, as well as in more than
70 jurisdictions globally. Sazerac’s predecessor was one of America’s oldest
family–owned and privately–held distilleries. Sazerac itself was founded in
1869 and owns many of America’s most venerable distilling companies –
including Buffalo Trace Distillery, A. Smith Bowman, Glenmore Distillery
and 1792 Barton, et al. The trademark ‘FIREBALL’ is well-known on
account of goodwill acquired by the brand over the years and substantial
marketing, including through the internet as a ready medium of exposure to
consumers apropos their goods and services. Sazerac owns and operates the
websites ‘ www.fireballwhisky.com ’ and ‘ www.sazerac.com ’ and has also
registered numerous domain names containing the word ‘FIREBALL’, that
include, inter alia , ‘ Fireballmusic.co.uk ’ , ‘ Fireballwhiskey.cn ’,
‘ Fireballwhiskey.co.uk ’ , ‘Fireballwhiskey.com ’ , ‘ Fireballwhiskeyindia.com,
‘ Fireballwhisky.cn ’ , ‘ Fireballwhiskybeer.com ’ .
3. Noticing the impugned domain name, Sazerac, in accordance with the
INDRP Rules of Procedure, filed a complaint with NIXI, on the ground that,
O.M.P. (COMM) 37/2021 Page 2 of 12
inter alia , the registration is in bad faith, intended for disrupting its business.
As per paragraph 5(b) of INDRP, the .IN Registry appointed a Sole
Arbitrator, who, after consideration of the complaint and the response, held
that: the impugned domain name is confusingly similar to the mark
‘FIREBALL’ – which is proprietary to the Sazerac; Respondent No. 1 has
no rights or legitimate interests in respect of the disputed domain name; and,
the domain name is registered in bad faith; for which reasons, in accordance
with the Policy and Rules, the Petitioner was directed to immediately
transfer the impugned domain name to Sazerac. Aggrieved by the above, the
Petitioner had filed the present petition under Section 34 of the Arbitration
and Conciliation Act, 1994.
What are the Petitioner’s Claims?
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4. The Petitioner registered the impugned domain name on 3 July,
2018. He is a resident of Ontario, Canada and holds a bachelor’s degree in
Engineering and Management from McMaster Faculty of Engineering,
McMaster University, Hamilton, Ontario, Canada after pursuing a five-year
engineering course from 1995-2000. Petitioner asserts that since 1960, all
students and alumni of such Faculty of Engineering are referred to as the
“FireBall Family”, as the official symbol for McMaster’s Faculty of
Engineering is a ‘fireball’. He has been part of McMaster’s ‘Fireball Family’
since 1995, i.e., well before Respondent registered its Trademark in Canada
in 1997. Petitioner also emphasises that he, along with a batchmate, had
plans for setting up an alumni website for their Class of 2000; they searched
for a single-word domain name, but found that <.com> and other Country
Code Top-Level Domains (‘ccTLD’s’) such as <.net>, <.org> or even
O.M.P. (COMM) 37/2021 Page 3 of 12
<.co>, <.ca>, etc. were not available. Thus, they had to register the
impugned domain name. He also made no bones about the fact that he is
actively involved in investing in domain names as part of his business–
including country code <.in> domain names. Additionally, it is contended
that the current Dean of the Faculty of Engineering is of Indian origin - Mr
Ishwar K. Pun, and therefore, <.in> domain became a preferable choice so
that any approval from the University could have helped at a later stage.
The Impugned award
5. The Arbitrator allowed the complaint, holding as follows:
5.1. Identical or confusingly similar trade/service mark : Sazerac has right
over the mark ‘FIREBALL’ – in India as well as overseas. The impugned
domain name incorporates Sazerac’s mark ‘FIREBALL’ in its entirety.
Thus, impugned domain name is confusingly similar to Sazerac’s prior
registered trade mark ‘FIREBALL’. Sazerac has prior statutory rights over
the mark ‘FIREBALL’.
5.2. Rights and legitimate interests : Petitioner had not commenced use of
the disputed domain name even two years after having registered it. Tribunal
thus took the view that Petitioner has been unable to prove that it has been
using the mark ‘FIREBALL’ or the impugned domain name in connection
with a bona fide offering of goods or services. Sazerac has thus proved that
Petitioner has no rights or legitimate interests in the disputed domain name.
5.3. Bad faith : Petitioner has simply parked the impugned domain name.
The current status of the webpage corresponding to the impugned domain
name is non-operational/inaccessible and the ‘WHOIS’ records do not
indicate the domain being available for sale. Thus, Petitioner has registered
O.M.P. (COMM) 37/2021 Page 4 of 12
the impugned domain name in bad faith.
5.4. Petitioner has failed to show any use of the disputed domain name
with respect to a bona fide offering of goods or services. By registering the
disputed domain name, Respondent has attempted to attract internet users by
creating likelihood of confusion with the Complainant’s mark/source of
origin. Petitioner has registered the disputed domain name in bad faith to
tarnish the trade mark and cause confusion in the minds of the public.
5.5. As no website corresponding to the impugned domain name is
functional till date, it is evident that the objective of registering the
impugned domain name was aimed at preventing the legitimate owner of the
trade mark from reflecting the same in a corresponding domain name.
5.6. Petitioner admitted that he has no connection whatsoever with India
and has adopted the ‘.in’ domain merely because India is growing quickly.
Petitioner’s own admissions, as placed on record by Sazerac, show that
Petitioner chooses domain names that are similar to already existing
products and/ or services to misdirect consumers and the public to his own
parked pages. His practice of buying ‘.in’ domain names in bulk appears to
be a business model to augment and garner profits with little or no regard for
the trade mark rights of legitimate intellectual property right holders.
ETITIONER S ROUNDS OF HALLENGE
P ’ G C
6. Mr. Rohit Rattu, counsel for the Petitioner submits as follows:
6.1. The Arbitrator failed to appreciate the fact that word ‘fireball’ is a
generic term – meaning a large, bright meteor that is visible in the sky and is
a natural phenomenon. The arbitrator also failed to acknowledge that the
Petitioner is fond of astronomy and has been following the happenings in the
O.M.P. (COMM) 37/2021 Page 5 of 12
sky as a hobby since his university days; he has also been mesmerised by the
fireball made by a meteor which is regular in the Canadian sky and occurs
many times in a year; such information is publicly available at the website
‘fireball.amsmeteors.org.’
6.2. The Arbitrator has failed to appreciate that as long as the domain
name is registered by the Plaintff owing to his attraction to ‘fireballs’, in its
dictionary meaning as a generic words, and not because of its value as a
trademark, the same should be upheld as legitimate interests, and lacks the
requisite for a ‘bad faith’ registration, as held in General Machine Products
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Co. Inc. v. Prime Domains . Further, in Fresenius Kabi B.A. v. Domain
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Manager, EWEB Development, Inc. , the Petitioner therein had provided
evidence of other ‘nutri-’ related domain names that it had registered in the
same year as the disputed domain name, or in the preceding two years.
Similarly, in the INDRP matter of Global Car Group Pte Ltd. and Cars24
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Services Pvt Ltd v. Vienna Solutions Pvt. Ltd. , the petitioner therein
showed that he also owned Fly24.in , Parties24.in , Mobile24.in , City24.in,
Estates24.in, Properties24.in and Naukri24.in , and thus, holding similar
domain names was seen to be evidence of interest in generic domain names
and has no intention to target any brand’s trademark. In the present case,
too, this is evident from the fact that Petitioner holds other generic domain
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names, starting with ‘fire-’ such as fireprotection.in (18 July, 2014),
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firewood.in (19 February, 2015), fireresistantclothing.in (8 September,
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2016), firesafe.in (25 May, 2017), firewall.co.in (7 October, 2018),
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firestarter.in (3 February, 2020).
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[FA 92531] National Arbitration Forum, January 26, 2000.
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D2018-0491 (WIPO).
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INDRP/916.
O.M.P. (COMM) 37/2021 Page 6 of 12
6.3. The Arbitrator failed to appreciate that domain name investment is a
legitimate business, as discussed by INDRP in the matter of Tickets
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Worldwide LLP v. India Portals . In Aurelon B.V. v. Abdul Basit
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Makrani , wherein it was held that speculating in domain names is a lawful
business model, regardless of whether the domain names correspond to other
marks, as long as it is established that either: (i) respondents have rights or
legitimate interests in the domain name; or (ii) complainants are unable to
prove ‘bad faith’ registration and use. A similar position has been adopted
under other Country Code Top-Level Domains [‘ccTLD’s’] as well. The
same is also laid down in Nominet’s UK Domain Dispute Resolution
Service (‘DRS’) Policy for UK domain names, under Rule 8.4. which states
that, ‘Trading in domain names for profit, and holding a large portfolio of
domain names, are of themselves lawful activities. ’
6.4. The Arbitrator wrongly held that parking the domain name for sale
constitutes dishonest conduct, in ‘bad faith’ and cannot be held to have any
intention to host an Alumni website. The Arbitrator failed to appreciate
various domain dispute precedents in respect of sale of domain names
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submitted by the Petitioner before it, namely, ‘ printfactory.com’,
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‘digel.om’, ‘tickets.in’, et al . It was very clearly submitted by the Petitioner
that the impugned domain name was registered with the plans for ‘Fireball’
Alumni website. This was always in the back of his mind but plans were
finalized only in early 2020, and proof of the website under development
was also made available along with evidence as to change in name servers,
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INDRP/ 1187, the ‘tickets.in’ matter.
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D-2017-1679 (WIPO), the ‘printfactory.com’ matter.
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D2017-1679 (WIPO).
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D2018-1328 (WIPO).
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INDRP/ 1187.
O.M.P. (COMM) 37/2021 Page 7 of 12
which could not be set up instantly. However, the Arbitrator seems to have
jumped to conclusions.
ANALYSIS AND FINDINGS OF THE COURT
7. The Court has considered the contentions of both parties. It is
undisputed that Petitioner registered the impugned domain name in 2018.
On the other hand, Sazerac’s predecessor has been using the ‘FIREBALL’
mark since 1989 in the United States of America – the rights of which were
then transferred to Sazerac in 2000. Since then, Sazerac has been selling
cinnamon whisky under the mark ‘FIREBALL’ throughout the world.
Respondent No. 1 also has a registered trademark ‘FIREBALL’ in India.
8. INDRP has been adopted by NIXI, incorporated by reference to the
Registry Accreditation Agreement, and sets forth the terms and conditions
which shall govern any or all disputes in connection with .IN or .Bharat
(Available in all Indian Languages) domain name. The dispute before the
Arbitrator was not regrading trademark infringement but whether impugned
domain name conflicted with Sazerac’s legitimate rights or interest under
Paragraph 4 of the same, which is reproduced below:
“4 . Class of Disputes
Any Person who considers that a registered domain name conflicts with his/her
legitimate rights or interests may file a Complaint to the .IN Registry on the
following premises:
(a) the Registrant's domain name is identical and/or confusingly similar to a
Name, Trademark or Service Mark etc. in which the Complainant has rights; and
(b) the Registrant has no rights or legitimate interests in respect of the domain
name; and
(c) the Registrant's domain name has been registered or is being used either in
bad faith or for illegal/unlawful purpose.”
9. Thus, the scope of arbitration related to determination of the
aforenoted aspects. On the aspect of domain name being in conflict with the
O.M.P. (COMM) 37/2021 Page 8 of 12
Registered trademark of Sazerac, the Arbitrator has rightly held that Sazerac
has registered the trade mark ‘FIREBALL’ in India, dating back to the year
2013, as well as internationally dating back to the year 1997 in Canada, and
is continuously doing/operating business thereunder. He also holds that
Petitioner on the other hand registered the impugned domain name much
later on July 03, 2018. The impugned domain name incorporates the
trademark of Sazerac entirely, and thus, there cannot be any doubt that the
impugned domain name is identical and confusing similar to the Sazerac’s
prior registered trade mark ‘FIREBALL’.
10. Nevertheless, as discussed earlier, the dispute before the Arbitrator
was to be examined as per INDRP, in terms whereof, the domain name is
certainly in conflict with the registered trademark of Sazerac, and the
findings of the arbitrator call for no interference.
11. The Arbitrator has considered registrant’s rights and legitimate
interests in the impugned domain name by referring to paragraph 6 of the
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INDRP. On this issue, the Arbitrator noted that Petitioner has not
commenced use of the domain name even two years after having registered
it. There is no evidence on record to suggest that the disputed domain name
is being used by Petitioner in the course of its trade or business, or even that
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“ 6 . Registrant's Rights and Legitimate Interests in the Domain Name -
Any of the following circumstances, in particular but without limitation, if found by the Arbitrator to be
proved based on its evaluation of all evidences presented before him, shall demonstrate the Registrant's
rights to or legitimate interests in the domain name for the purposes of Clause 4(b):
(a) before any notice to the Registrant of the dispute, the Registrant's use of, or demonstrable preparations
to use the domain name or a name corresponding to the domain name in connection with a bona fide
offering of goods or services;
(b) the Registrant (as an individual, business, or other organization) has been commonly known by the
domain name, even if the Registrant has acquired no Trademark or Service Mark rights; or
(c) the Registrant is making a legitimate non-commercial or fair use of the domain name, without the
intention of commercial gain by misleadingly or diverting consumers or to tarnish the Trademark or
Service Mark at issue.”
O.M.P. (COMM) 37/2021 Page 9 of 12
Petitioner has undertaken demonstrable preparations for the same. The
Petitioner has merely averred that he registered the disputed domain name to
build an alumni website, yet has failed to demonstrate any tangible
preparation for use of the impugned domain name. Regarding Petitioner’s
assertion/ claim on the slogan ‘Fireball Family’, the Arbitrator rights
observes that the same cannot be proprietary to the McMaster Faculty of
Engineering and that Petitioner cannot claim any personal interest therein. In
these circumstances, in absence of evidence, the Arbitrator did not find any
right or legitimate interest of the Petitioner in respect of the impugned
domain name. Furthermore, since the domain name was not in use, the
Arbitrator aptly concluded that there cannot be any connection with a bona
fide offering of goods or services.
12. Lastly, the Arbitrator examined the issue of ‘bad faith’ and relied
upon paragraph 4 of INDRP. On this issue, on the basis of material on
record, the Arbitrator took into account the Petitioner’s statement that he is
one of the largest holders of.IN domain names in the world, cumulatively
owning around 7500 .IN domain names, out of which around 900 pertain to
three-lettered .IN domain names; around 450 pertain to ‘.CO.IN’ domain
names; around 180 pertain to three-numbered .IN domain names and around
300 pertain to four numbered .IN domain names. Keeping this in mind,
Arbitrator returned a finding of fact that Petitioner has indulged in a
carefully thought-out practice of selectively registering domain names to
maximise its business and views. That apart, no connection with India is
found, except for the contention that India is gigantic and is growing
quickly. The Arbitrator also analysed the legitimacy of Petitioner’s plea of
the alleged connection with ‘Fireball Family’ alumni, and finds it strange
O.M.P. (COMM) 37/2021 Page 10 of 12
that Petitioner did not register domains such as ‘ fireballfamily.com ’, or
‘ fireballalumni.com’ , etc., but chose to register the impugned domain name.
Interestingly the Arbitrator finds the intention to use the domain name to be
mis-founded, bearing in mind that soon after registration of the impugned
domain name, the same was available for sale to third parties. For this
reason, the Arbitrator correctly held that the offer to sell the impugned
domain name for sale establishes dishonest conduct and bad faith and clearly
demonstrates that the Petitioner never intended to make any bona fide use of
the disputed domain name for any legitimate business interest, let alone an
alumni website. Therefore, the inference is obvious – the domain name was
registered with the aim to prevent the legitimate owner of its trademark from
utilizing a corresponding domain name. The reasons stated by the Petitioner
for registering the impugned domain name, though highly creative and
ingenious, fail to impress. The findings of the Arbitrator discussed above are
based on material produced and evidence placed before him. No ground for
interference is made out.
13. Lastly, Petitioner’s claim that ‘fireball’ is a generic term and cannot
be exclusively attributed to anyone – including Sazerac – is highly
improbable and unimpressive. The word ‘fireball’ is merely a
portmanteau of the words ‘fire’ and ‘ball’, and has been defined by the
popular dictionaries of the day such as Collins and Cambridge, as merely a
“ball of fire”. Merriam-Webster gives it a secondary meaning of a meteor.
Thus, the use of ‘fireball’ in the context of alcoholic beverages, as is being
done by Sazerac, is quite arbitrary, and thus, capable of acquiring
distinctiveness in order to distinguish the goods or services of one brand
from another. In numerous cases, the courts have acknowledged that
O.M.P. (COMM) 37/2021 Page 11 of 12
descriptive words or common words of a language, when used in reference
to a different class of goods, can be registered as a trademark. In any event
the mark ‘Fireball’ is presently registered in India for alcoholic spirits, and
there exists a very strong presumption in law as to the validity of the
registration of the trade mark in favour of Sazerac.
14. For such reasons, the court does not find any ground to interfere with
the Arbitrator’s findings. Dismissed. The pending applications also stand
disposed of.
SANJEEV NARULA, J
OCTOBER 27, 2021
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(corrected and released on 27 November, 2021)
O.M.P. (COMM) 37/2021 Page 12 of 12