Full Judgment Text
IN THE HIGH COURT OF DELHI AT NEW DELHI
O.M.P. 132 of 2007
Reserved on: November 24, 2011
Decision on: December 14, 2011
STEPHEN KOENIG ..... Petitioner
Through: Mr. Shrawan Chopra with
Ms. Kruttika Vijay and
Ms. Saukshmya T., Advocates.
versus
ARBITRATOR, NATIONAL INTERNET
EXCHANGE OF INDIA (NIXI) & ANR ..... Respondents
Through: Mr. Sushant Singh with
Mr. Prakash Arya, Ms. Vasundhara
Pathak Masoodi and
Mr. V.K. Shukla, Advocates.
With
O.M.P. No. 928 of 2011
(Arising out of transferred Suit No. 209 of 2006)
JAGDISH PUROHIT ….. Petitioner
Through: Mr. Sushant Singh with
Mr. Prakash Arya, Ms. Vasundhara
Pathak Masoodi and
Mr. V.K. Shukla, Advocates.
versus
STEPHEN KOENIG …. Respondent
Through: Mr. Shrawan Chopra with
Ms. Kruttika Vijay and
Ms. Saukshmya T., Advocates.
CORAM: JUSTICE S. MURALIDHAR
JUDGMENT
14.12.2011
Introduction
1. The dispute regarding the domain name ‘internet.in’ forms the subject
O.M.P. No.132 of 2007 Page 1 of 27
matter of the present petitions under Section 34 of the Arbitration &
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Conciliation Act, 1996 (‘Act’) directed against an Award dated 5 July
2006 passed by the learned sole Arbitrator (Respondent No.1 in O.M.P.
No. 132 of 2007) appointed by the National Internet Exchange of India
(‘NIXI’) .
2. Respondent No. 2 (in O.M.P. No. 132 of 2007) Mr. Jagdish Purohit
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filed a complaint before the .IN Registry of NIXI on 31 January 2003,
under Para 4 of the .IN Domain Name Dispute Resolution Policy
(‘INDRP’) to the effect that the domain name ‘internet.in’ registered by
the Petitioner, Mr. Stephen Koenig, was identical and confusingly similar
to the registered trade mark ‘internet’ of Respondent No. 2; that the
Petitioner had no rights or legitimate interests in respect of the said
domain name and that the Petitioner’s domain name had been registered
or was being used in bad faith. The Petitioner responded to the notice
issued to him and defended the domain name registration in his favour.
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3. The learned Arbitrator passed the impugned Award on 5 July 2006 in
which inter alia he concluded that the domain name ‘internet.in’ should be
struck off and confiscated and kept by the .IN Registry. He rejected the
prayer of Respondent No.2 that the domain name should be transferred to
him.
4. The Petitioner has in O.M.P. No. 132 of 2007 challenged the impugned
Award primarily on the ground that it was contrary to the INDRP
inasmuch as Respondent No.2 had failed to prove the ingredients of Para
4 thereof in order to succeed in his complaint and further that the learned
Arbitrator exceeded his jurisdiction in ordering the confiscation of the
domain name by the .IN Registry when no such remedy is provided in
Para 10 of the INDRP.
O.M.P. No.132 of 2007 Page 2 of 27
5. Even prior to the Petitioner filing the present petition, Respondent No.
2 filed Suit No. 209 of 2006 in the court of the learned Additional District
Judge, Delhi (‘ADJ’) challenging the Award to the extent that the learned
Arbitrator had rejected the plea of Respondent No. 2 for transfer of the
domain name in his favour. After notice was issued in the present petition,
Respondent No. 2 filed Transfer Petition No. 14 of 2007 seeking transfer
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of the said Suit No. 209 of 2006 to this Court. By an order dated 30
November 2007 this Court allowed Transfer Petition No. 14 of 2007 and
directed Suit No.209 of 2006 to be tagged with the present petition. It has
been numbered as a separate petition under Section 34 of the Act. For the
purposes of the present judgment Mr. Stephen Koenig is referred to as the
Petitioner and Mr. Jagdish Purohit as Respondent No.2.
Preliminary objection as to limitation
6. Mr. Sushant Singh, learned counsel for Respondent No. 2, raised a
preliminary objection that the petition by Mr. Stephen Koenig, O.M.P.
No. 132 of 2007, was barred by limitation. He pointed out that the learned
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Arbitrator by a letter dated 5 July 2006 addressed to NIXI, a copy of
which was also sent by email, enclosed a copy of the Award. In the said
letter, the Arbitrator stated that he had sent a copy “of the letter and
Award to parties also by e-mail.” It is submitted that inasmuch as
Respondent No.2 on receiving a copy of the Award filed Suit No. 2009 of
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2006 on 6 October 2006 within time, there could not be a different date
of commencement of the period of limitation for the purposes of Section
34 (3) as far as the Petitioner was concerned. The present petition was
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filed only on 9 March 2007 and the explanation offered by the Petitioner
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that he received a copy of the Award from NIXI only on 13 December
2006 after writing to it was not convincing. Placing reliance on the
decisions in Union of India v. Popular Construction Co. AIR 2001 SC
4010 and Union of India v. Tecco Trichy Engineers & Contractors
O.M.P. No.132 of 2007 Page 3 of 27
(2005) 4 SCC 239 it was contended that the Petitioner had failed to file
the petition within the maximum permissible time as stipulated under
Section 34 (3) of the Act read with the proviso thereto.
7. Mr. Shrawan Chopra, learned counsel for the Petitioner, on the other
hand, maintained that the Petitioner was not aware of the passing of the
impugned Award till he received a notice in Suit No. 209 of 2006. The
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Petitioner, through his counsel, immediately wrote a letter dated 25
November 2006 to the .IN Registry enquiring about the arbitral Award.
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By a letter dated 5 December 2006, received in the office of counsel for
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the Petitioner on 13 December 2006, NIXI informed the Petitioner of the
passing of the Award and enclosed a copy of the Award. Thereafter the
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present petition was filed on 9 March 2007, within the stipulated three
month period under Section 34 (3) of the Act.
8. The above submissions have been considered. Under Para 13 of the
INDRP Rules of Procedure, the .IN Registry shall, “within five working
days after receiving the decision from the Arbitrator”, “communicate the
full text of the decision to each Party and shall also communicate to each
Party, the date for implementation of the decision.” It is not clear in the
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present case whether the .IN Registry at any time prior to 5 December
2006 communicated to the parties the full text of the Award in terms of
Para 13 of the INDRP Rules of Procedure. There is no provision therein
for the Arbitrator to directly communicate the Award to the parties.
Secondly, although counsel for Respondent No.2 has placed on record a
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copy of the letter dated 5 July 2006 of the learned Arbitrator to NIXI,
there is nothing to show whether and when the copy sent by e-mail was in
fact delivered to either of the parties, more particularly the Petitioner. This
assumes significance in light of the denial by the Petitioner of having
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received a copy of the Award prior to 13 December 2006. As explained
O.M.P. No.132 of 2007 Page 4 of 27
by the Supreme Court in Union of India v. Tecco Trichy Engineers &
Contractors (SCC @ 242) :
“The delivery of an arbitral award under sub-section (5) of
Section 31 is not a matter of mere formality. It is a matter of
substance. It is only after the stage under Section 31 has passed
that the stage of termination of arbitral proceedings within the
meaning of Section 32 of the Act arises. The delivery of
arbitral award to the party, to be effective, has to be
“received” by the party . This delivery by the Arbitral
Tribunal and receipt by the party of the award sets in motion
several periods of limitation such as an application for
correction and interpretation of an award within 30 days under
Section 33(1), an application for making an additional award
under Section 33(4) and an application for setting aside an
award under Section 34(3) and so on. As this delivery of the
copy of award has the effect of conferring certain rights on the
party as also bringing to an end the right to exercise those
rights on expiry of the prescribed period of limitation which
would be calculated from that date, the delivery of the copy
of award by the Tribunal and the receipt thereof by each
party constitutes an important stage in the arbitral
proceedings .” (emphasis supplied)
9. The documents placed on record by Respondent No. 2 do not show
when precisely a copy of the Award was delivered by e-mail or surface
mail to the Petitioner. Given that the Petitioner is a resident of U.S.A, it is
not safe to presume, as contended by Respondent No.2, that the date on
which the copy was received by Respondent No.2 should be taken to be
the date on which it was received by the Petitioner. There is no material
placed on record to doubt the assertion of the Petitioner that he received a
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copy of the impugned Award only on 13 December 2006 from NIXI.
Accordingly, this Court rejects the preliminary objection of Respondent
No. 2 that the petition of Mr. Koenig is barred by limitation.
Background facts
10. Before dealing with the contentions of learned counsel for the parties
O.M.P. No.132 of 2007 Page 5 of 27
it is important to notice certain background facts concerning the
registration of the domain name ‘internet.in’.
11. It is of some interest, given the dispute involved in the present case, to
note that the origins of ‘internet’ as an expression can be traced to a
research network titled ‘Advanced Research Project Agency Network’
(ARPANET) established by the United States Department of Defense in
the 1970s. ARPANET was meant to link with networks of other
government agencies to form a ‘network of networks.’ The Shorter
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Oxford English Dictionary , (5 Ed., p. 405) defines ‘internet’ to mean
“connect or be connected to a computer network; a computer network
consisting of or connecting a number of smaller networks, such as two or
more local area networks connected by a shared communications
protocol.” Internet Protocol (‘IP’) is defined as “a standard that specifies
the format and addressing scheme of packets of data sent over the internet
or other network.”
12. The above dictionary meaning tells us that ‘internet’ is a now common
word. It also acknowledges that to access a ‘site’ on the internet, the user
usually has to key in an IP address. This is a combination of four groups
of numbers separated by decimals, which is not easy to remember.
Domain names on the other hand are ‘mapped’ on to an IP address to
facilitate easy access to web sites. Domain names usually relate to the
organisation or entity whose website is being accessed and can therefore
be easily remembered. For example, the domain name nic.in is meant to
indicate it to be that of the National Informatics Centre of the Government
of India. A domain name can be divided into levels. For example, the
domain name ‘delhihighcourt.nic.in’, has in the first level i.e. “delhi high
court” which refers to the entity whose website it is, the second level is
‘nic’ which refers to the entity which hosts the server on which the
O.M.P. No.132 of 2007 Page 6 of 27
website is located and ‘.in’ is the top level domain name (‘TLD’) which in
this case is indicative of the geographical location of the website i.e.
India. ‘.in’ is in fact a country code Top-Level Domain (‘ccTLD’) as
contrasted with a generic Top-Level Domain (‘gTLD’) like ‘.com’ or
‘.org’.
13. On account of its uniqueness, a domain name can only map on to one
IP address at a time. With the growing volumes of commercial
transactions on the net, the intellectual property rights in domain names
assume enormous significance. Disputes arise over registration of domain
names using trademarks that are known and which are in use and may be
registered in different jurisdictions. The root problem stems from the
system of assigning domain names on a first-come-first-served basis. This
permits well known and established trade names, brand names, company
names, names of famous personalities, politicians to be ‘captured’ by a
‘registrant’ with little connection with such name and get it registered as a
domain name. The problem is compounded with web browsers and search
engines making it easy for a surfer to locate a website by simply typing
the name of the company or product. However, where the ‘registrant’ of a
domain name has ‘captured’ the trademark associated with that company
or product and made it part of the domain name, the surfer is taken to a
different location. Among the serious problems of the domain name
system (‘DNS’) is “cyber squatting” resulting from deliberate and
fraudulent registration of domain names using well-known trademarks
with the intention of selling them to the owners of those trademarks at a
huge price. Cyber squatters could also sell these domain names to any
other person for a price, thus ‘diluting’ a well known trademark or trade
name.
14. This and the problems of ‘cyber piracy’, of ‘trademark dilution’ and a
O.M.P. No.132 of 2007 Page 7 of 27
host of other issues led to the formulation of the Uniform Domain Names
Dispute Resolution Policy (‘UDRP’) as a result of consultations between
the World Intellectual Property Organisation (‘WIPO’) and the Internet
Corporation for Assigned Names and Numbers (‘ICANN’), a non-profit
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organisation managing the DNS. The UDRP which was adopted on 24
October 1999, provides for a domain names dispute resolution mechanism
before Administrative Panels of the WIPO Arbitration and Mediation
Center.
15. The task of registering domain names world-wide has now been
divided geographically but the basis of registration continues to be ‘first-
come-first served’. In India, NIXI, a company registered under Section 25
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of the Indian Companies Act 1956 on 28 June 2005, formulated and
adopted the INDRP as well as INDRP Rules of Procedure. NIXI brought
out a Sunrise Policy in terms of which owners of registered Indian
trademarks or service marks who wished to protect their marks were
given the opportunity to apply for .IN domain names before the general
public could. The idea of the Sunrise Policy was to give preference to
Indian citizens and companies over entities abroad. The applications of
owners of Indian trademarks or service marks were to be submitted to the
Registry through an accredited Registrar and applications were to be
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accepted from 1 January 2005 to 21 January 2005. In order to be
considered valid, a Sunrise application had to meet the following criteria:
“1. The trademark or service mark registration must have
been issued by the Registrar of Trademarks, Government of
India. The trademark or service mark owner must be eligible
for the queue the application was submitted to.
2. The trade mark or service mark registration must be
current (non-expired) and valid, and must have been issued
in the applicant’s name prior to December 31, 2004.
O.M.P. No.132 of 2007 Page 8 of 27
3. The domain name applied for must be identical to the
textual or word elements of the trademark or service mark
that is registered (discounting any domain extension
element).
3a. The domain name applied for must be represented in
ASC11 characters only. Only letters, digit, and hyphens will
be accepted in a domain name. No applications for domain
names in international script (including diacritical marks)
shall be accepted.
3b. Spaces or punctuation that appear in trademark
registrations can either be represented in the domain name by
a hyphen, or can be disregarded. Similarly, ampersands (&)
in the trademark can be disregarded, represented by a
hyphen, or represented by the letters ‘and’ (or the equivalent
term in the language of the trademark registration, subject to
3a above).
4. The applicant must submit proof of its trademark or
service mark to the Registry for verification, as per the proof
of trademark guidelines.”
16. Certain domain names have been reserved for use by the government,
constitutional bodies and the Registry. Only letters, digits and hyphens
were to be accepted in a domain name. No applications for domain names
in international script (including diacritical marks) would be accepted.
Facts of the present case
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17. In the instant case Respondent No. 2 on 17 March 2003 applied
under the Trade Marks Act, 1999 (‘TM Act’) for registration of its trade
mark ‘internet’ in respect of ‘Tobacco, raw or manufactured, smokers
articles, matches included in Class 34’. The trade mark certificate was
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issued on 13 July 2005 which, in terms of Section 23 (1) TM Act,
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nevertheless related to the date of the making of the application, i.e., 17
March 2003. Therefore, as far as Respondent No. 2 is concerned, it holds
registration for the trade mark ‘internet’ under Class 34 with effect from
O.M.P. No.132 of 2007 Page 9 of 27
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17 March 2003.
18. Admittedly, Respondent No. 2 did not avail of the sunrise policy of
NIXI and therefore did not get any domain name registered using its trade
mark. Meanwhile the Petitioner, a resident of the U.S.A., got the domain
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name ‘internet.in’ registered with the .IN Registry on 16 February 2005.
Pleas of the parties
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19. On 31 January 2006 Respondent No. 2 submitted a complaint to the
.IN Registry seeking the cancellation of the registration of the domain
name ‘internet.in’ in favour of the Petitioner. Respondent No. 2 contended
that he had been using its trade mark ‘internet’ for over three years. The
domain name ‘internet.in’ was confusingly similar to his trademark
‘internet’. The Petitioner had registered in the .IN Registry several domain
names in which he had no right or trade mark. These included air.in,
computer.in, ink.in, internet.in, toner.in, usa.in, wise.in. The Petitioner’s
intentions were to sell the domain name to either Respondent No. 2 or to
another organization for a profit. It was alleged by Respondent No. 2 that
the Petitioner had parked the domain name and was making money by
luring customers to the website and tricking them into clicking on ads.
20. In response to the notice issued to him, the Petitioner contended that
the burden was on Respondent No. 2 who held registration of a highly
descriptive or generic word like ‘internet’ to prove that the word was at all
capable of being a trade mark or had acquired a secondary meaning.
Respondent No.2 had not adduced a single document of usage of the said
trademark, the quantum and amount of sales under the trademark, the
nature and extent of advertising, consumer surveys and media recognition.
It was asserted that the Petitioner intends to “legitimately use the domain
name as the identifier for internet related goods and services on a
O.M.P. No.132 of 2007 Page 10 of 27
website.” The INDRP did not make it mandatory for the Petitioner to
conduct a trademark search in all classes before registering a domain
name. Further, Respondent No. 2 had provided no evidence to the effect
that the Petitioner knew of the rights of Respondent No. 2 in the mark
‘internet’ or ought to have known the same. It was submitted that
Respondent No. 2 had not registered any domain names containing the
word ‘internet’ in the popular gTLDs e.g., .com,.net, .org etc. so as to
raise any inference or assumption, that the Petitioner ought to have had
any indication of the rights of Respondent No. 2 in the domain name
‘internet.in’ Enclosing a copy of Whois results of the relevant domain
names, the Petitioner pointed out that the domain names like internet.biz,
internet.net etc. were all registered by different entities.
21. The Petitioner further asserted that he had not put up the domain name
‘internet.in’ for sale. A letter from SEDO GmbH, Germany confirming
that the Petitioner’s domain names, including ‘internet.in’, “are not and
have not been sale on our trading platform’ was enclosed with the reply. It
was submitted that the Petitioner had over the years developed internet
businesses like fax.de and toner.com for legitimate purposes and
therefore, was a legitimate and a bona fide trading entity. The Petitioner
has registered the domain name ‘internet.in’ in good faith to resolve a
website to it for use in relation to internet related goods and services. It
was desirous to use the domain name in respect of internet services and
“this amounted to merely a generic or descriptive use.” The Petitioner
specifically raised the plea of ‘reverse domain name hijacking’ by
Respondent No. 2. The Petitioner alleged that the complaint itself was a
blatant attempt by Respondent No. 2 to claim exclusive right in the
domain name ‘internet.in’. The complaint had been filed with the sole aim
to harass the Petitioner and usurp rights beyond the registration of
Respondent No. 2. It was stated that Respondent No. 2 was free to register
O.M.P. No.132 of 2007 Page 11 of 27
a domain name like internettobacco.in, which related to its alleged
activities. There was no proof adduced by Respondent No. 2 to show that
the Petitioner’s registration of the domain name ‘internet.in’ was in fact in
bad faith or that the Petitioner wished to sell the domain name to
Respondent No. 2 or to some other organization.
22. The Petitioner pointed out, on the basis of the information received by
the Petitioner from other registrants against whom Respondent No. 2
initiated INDRP proceedings, that Respondent No. 2 had sought to
monopolize several generic words such as business, web, jobs, hotels, etc.
without a shred of evidence of use of the said words as trademarks. In
fact, this was a clear indication of the bad faith of Respondent No. 2. It
was, therefore, prayed that (i) the domain name should not be transferred
to Respondent No. 2, (ii) finding of reverse domain name hijacking
should be made and (iii) costs be imposed on Respondent No. 2 for
blatant abuse.
The impugned Award
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23. The learned Arbitrator, in the impugned Award dated 5 July 2006,
concluded as under:
(a) The domain name ‘internet.in’ of the Petitioner herein was
identical and confusingly similar to a trade mark of Respondent No.
2. However, Respondent No. 2 failed to show/prove that he had a
right in the trade mark, which was a generic word;
(b) The Petitioner had no right or legitimate interest in the domain
name;
(c) The Petitioner got registered the domain name ‘internet.in’ in
O.M.P. No.132 of 2007 Page 12 of 27
bad faith. He had registered the domain name in order to sell,
transfer or rent it or to prevent other owners of the mark from
reflecting the mark in a corresponding domain name.
(d) Consequently, the Petitioner was not entitled to retain the
domain name and it was required to be struck off from the Registry;
(e) Respondent No. 2 was also not entitled to transfer of the domain
name in his name as he had also not established in his bona fide
rights in the trademark; and
(f) The Petitioner could not, in the circumstances, allege reverse
domain name hijacking by Respondent No. 2.
(g) The domain name ‘internet.in’ was to be confiscated by the .IN
Registry and kept with it.
Scope of the present proceedings
24. The scope of the present proceedings under Section 34 of the Act to
interfere with the above reasoned Award of the learned Arbitrator is
circumscribed by the grounds in Section 34 of the Act as explained in
several judicial decisions. To warrant interference, it would have to be
shown that the Award is opposed to the public policy of India as has been
explained in ONGC v. Saw Pipes Ltd. (2003) 5 SCC 705 . To recapitulate
an award could be set aside (SCC, pp 727-728): “if it is contrary to: ( a )
fundamental policy of Indian law; or ( b ) the interest of India; or ( c ) justice
or morality, or ( d ) in addition, if it is patently illegal. Illegality must go to
the root of the matter and if the illegality is of trivial nature it cannot be
held that the award is against public policy. Award could also be set aside
if it is so unfair and unreasonable that it shocks the conscience of the
O.M.P. No.132 of 2007 Page 13 of 27
court. Such award is opposed to public policy and is required to be
adjudged void.” Keeping the above principles in view, the court proceeds
to examine the validity of the impugned Award.
The domain name is identical to the registered trade mark
25. The complaint of Respondent No. 2 before the .IN Registry was under
Para 4 of the INDRP which corresponds to Para 4 (a) of the UDRP. Para 4
of the INDRP reads as under:
“ 4. Types of Disputes
Any person who considers that a registered domain name conflicts
with his legitimate rights or interests may file a complaint to the .IN
Registry on the following premises:
(i) the Registrant’s domain name is identical or
confusingly similar to a name, trademark or
service mark in which the Complainant has
rights;
(ii) the Registrant has no rights or legitimate
interests in respect of the domain name; and
(iii) the Registrant’s domain name has been registered
or is being used in bad faith.”
Para 4(a) of the UDRP reads thus:
“ 4. Mandatory Administrative proceedings.
This Paragraph sets forth the type of disputes for which you
are required to submit to a mandatory administrative
proceeding. These proceedings will be conducted before one
of the administrative-dispute-resolution service providers
listed at http://www.icann.org/dndr/udrp/approved-
providers.htm (each, a “Provider”).
a. Applicable Disputes. You are required to submit to a
mandatory administrative proceeding in the event that a third
party (a “complainant") asserts to the applicable Provider, in
compliance with the Rules of Procedure, that
O.M.P. No.132 of 2007 Page 14 of 27
(i) your domain name is identical or confusingly
similar to a trademark or service mark in which
the complainant has rights; and
(ii) you have no rights or legitimate interests in
respect of the domain name; and
(iii) your domain name has been registered and is
being used in bad faith.
In the administrative proceeding, the complainant must prove
that each of these three elements are present.”
26. There are at least four differences between the above para 4 of the
INDRP and the corresponding Para 4 (a) of the UDRP. The first is the
opening part of Para 4 of the INDRP indicating the ‘premises’ on which a
complaint could be filed is absent in para 4 (a) UDRP. This is significant
when read with the last line at the end of Para 4 (a) UDRP which states:
“In the administrative proceeding, the complainant must prove that each
of these three elements are present.” The said line is absent in Para 4
INDRP. This is the second difference. The third difference is that at the
end of sub-para (i) of Para 4 UDRP, the word ‘and’ figures. The fourth is
that in sub-para (iii) of Para 4 of the UDRP it is to be shown by the
complainant that the Registrant’s domain name has been registered and is
being used in bad faith. It is not for the court to speculate whether these
differences in Para 4 INDRP were intentional or accidental. However, the
court has to interpret the INDRP as it exists. It is not expected to supply
the omissions read into the INDRP words that are absent.
27. The learned Arbitrator proceeded on the basis that in terms of Para 4
(i) INDRP the burden was on the complainant to show that (a) the domain
name was confusingly similar to the trademark of the complainant and
that (b) the complainant has a right in the trademark. As regards the first
O.M.P. No.132 of 2007 Page 15 of 27
limb, it was urged before the Arbitrator, and reiterated before this Court
by Mr. Shrawan Chopra learned counsel on behalf of the Petitioner that
merely because the sentence at the end of Para 4 (a) UDRP was absent in
Para 4 INDRP did not mean that the burden of proof was not on the
complainant. He referred to Sections 101, 102 and 103 of the Evidence
Act, 1872 to urge that the complainant had to show how the domain name
was confusingly identical to the registered trademark. Secondly, it was
submitted that the complainant’s registration was for the logo mark
‘internet’ which did not give him any rights in the word per se . Thirdly,
the complainant had not adduced evidence of use of the trademark
‘internet’ in relation to tobacco, matches or any products. Since ‘internet’
was a generic word and Respondent No. 2 had failed to show that the
word mark had acquired any secondary meaning, he could not be said to
have any rights over the trademark. Lastly, since the Petitioner intended to
use the domain name for internet related services, as a generic word there
could be no confusion with the logo ‘internet’ registered for tobacco.
28. Countering the above submissions, it was urged by Mr. Sushant
Singh, learned counsel for Respondent No. 2 that even if the domain name
were to be used for internet related services, there was bound to be
confusion since it was identical to the registered mark of Respondent No.
2. In any event, Respondent No. 2 had by securing registration of the
trademark in his favour demonstrated his right in the mark, irrespective of
its use or the fact that it was a generic word. Relying on the observations
of this Court in Manish Vij v. Indra Chugh 97 (2002) DLT 1 it is
submitted that where no exclusivity can be granted to marks that are
generic, the Court should permit the registered owner of the trademark to
use it in relation to tobacco, the goods for which it was registered and in
relation to which it would be distinctive rather than permit a domain name
holder of the generic word to use it in a generic sense in relation to
O.M.P. No.132 of 2007 Page 16 of 27
internet related activity.
29. Para 4 INDRP is different from Para 4 (a) UNDRP in a significant
way. While each of the sub-paras (i) to (iii) of Para 4 (a) of UNDRP are
required to be ‘proved’ by the complainant cumulatively, as far as Para 4
INDRP is concerned the complainant can file a complaint on the
‘premises’ outlined in sub-paras (i) to (iii) of Para 4. There is no
requirement that “each of the three elements” are shown to exist. If this is
understood in light of the fact that the conjoint “and” is missing at the end
of sub-para (i) of Para 4 INDRP, then it is possible to interpret Para 4
INDRP to mean that a complainant can succeed if he proves that the
ground in sub-para (i) exists by itself. Alternatively he can succeed if he
proves that the grounds in sub-paras (ii) and (iii) exist.
30. Taking up the ground in Para 4 (i) INDRP, it is seen that Respondent
No. 2 was required to establish that (a) the domain name registered in
favour of the Petitioner was identical or confusingly similar to the
registered trademark of Respondent No. 2 and (b) that Respondent No. 2
had rights in the trademark. By and large Para 4 (i) INDRP mirrors the
law relating to passing off and infringement of trademarks. In Satyam
Infoway Limited v. Siffynet Solutions (P) Limited (2004) 6 SCC 145 the
Supreme Court held that “a domain name may have all the characteristics
of a trademark and could found an action for passing off”. It was observed
that “Ordinary consumers/users seeking to locate the functions available
under one domain name may be confused if they accidentally arrived at a
different but similar website which offers no such services. Such users
could well conclude that the first domain name had misrepresented its
goods or services through its promotional activities and the first domain
owner would thereby lose its custom.” For the purpose of passing off, it
was necessary that the complaint has to establish that there was likelihood
O.M.P. No.132 of 2007 Page 17 of 27
of confusion in the minds of the public (the word ‘public’ being
understood to mean actual or potential customers or users) allowing for
‘imperfect recollection of a person of ordinary memory’.
31. There is little difficulty in concluding in the instant case that the
domain name ‘internet.in’ and the trademark ‘internet’ are identical. The
said domain name is likely to cause confusion in the minds of actual or
potential customers with ‘imperfect recollection’ as regards the source of
the goods and services when going on the net to search for a website using
the said domain name. The mere fact that the goods for which Respondent
No. 2 holds registration is different from internet related services which
the Petitioner proposes to offer using the domain name does not mitigate
the possibility of such confusion, given the nature of e-commerce and the
range of products that can be purchased on the net. The finding of the
learned Arbitrator that Respondent No. 2 complainant had proved the first
limb of Para 4 (i) INDRP that the domain name was identical to the
registered trademark of Respondent No. 2 and was confusingly similar
does not call for interference.
32. The second limb of Para 4 (i) of the INDRP required the complainant
to show that he had a right in the trademark. While in terms of the
opening part of Para 4 INDRP the complainant has to aver that the
“registered domain name conflicts with his legitimate rights or interests”,
what he has to prove in terms of Para 4 (i) is only that he has rights in the
trademark. For the purpose of Para 4 (i) INDRP the fact that Respondent
No. 2 held a registration for the trademark ‘internet’ was sufficient to
show that he had a right in the mark. This position flows from a reading of
Section 28 (1) TM Act, which gives the registered proprietor of a
trademark “the exclusive right to the use of the trade mark in relation to
the goods or services in respect of which the trade mark is registered…”
O.M.P. No.132 of 2007 Page 18 of 27
This read with Section 31 of the TM Act, which raises a presumption of
validity of the registration, places the registered proprietor of a mark in a
better position than a non-registered one for the purposes of Para 4 (i)
INDRP.
33. The learned Arbitrator appears to have proceeded on the basis that
since the word mark was generic, and Respondent No. 2 had not
demonstrated any use of the said mark, Respondent No. 2 had no
‘legitimate’ right in the mark. This Court is unable to appreciate the said
finding which appears to overlook the statutory provisions of the TM Act
referred to above which do confer rights on the registered proprietor of a
mark. These were not proceedings where the Petitioner was challenging
the validity of the registration and therefore the discussion on whether the
mark was generic was not apposite in the context of Para 4 (i) INDRP.
For the purposes of Para 4 (i) it was more than sufficient for Respondent
No. 2 to be a registered proprietor of the trademark in question in order to
show that he had a right in it.
34. The facts in Satyam Infoway Limited v. Siffynet Solutions (P)
Limited show that there the dispute was in relation to registration of two
phonetically similar sounding domain names, and not a dispute involving
a registered domain name and an identical registered trademark. This
explains why the said dispute concerned ‘passing off’ and not
infringement. In Masnish Vij again the dispute concerned passing off and
involved two competing domain names. Further, the decision was
rendered at a time when the INDRP had not been made operational. In the
considered view of the Court, in the present case as long as Respondent
No. 2 was a registered proprietor of the mark ‘internet’ and the validity of
the said registration was not challenged in the manner known to law by
the Petitioner or anyone else, Respondent No. 2 must be held to have
O.M.P. No.132 of 2007 Page 19 of 27
demonstrated his interest and right in the said trademark for the purposes
of the second limb of Para 4 (i) INDRP.
35. In other words, as far as the present case is concerned, Respondent
No. 2 had satisfactorily proved that the domain name was identical to the
registered trade mark; that it was likely to cause confusion and that
Respondent No. 2 had rights in the trade mark.
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.
Petitioner not having right or legitimate interest in the domain name
37. In view of the interpretation placed by this Court on Para 4 INDRP, it
is moot whether, as was required of a complainant invoking Para 4 (a)
UNDRP, Respondent No. 2 was required to further prove the grounds in
Para 4 (ii) and 4 (iii) INDRP as well. Nevertheless, since the learned
arbitrator has dealt with the said grounds as well, and arguments have also
been advanced by learned counsel for the parties, the validity of the
decision of the learned Arbitrator in that regard is also examined.
38. At the outset, this Court concurs with the view of the learned
Arbitrator that once the complainant discharges the initial burden of
showing that the Petitioner had no legitimate interest in the domain name,
the burden of showing that he did have such interest shifted to the
Petitioner. In this context Para 7 INDRP is relevant and reads as under:
“7. Registrant’s Rights to and Legitimate Interests in the
Domain Name
Any of the following circumstances, in particular but without
O.M.P. No.132 of 2007 Page 20 of 27
limitation, if found by the Arbitrator to be proved based on
its evaluation of all evidence presented, shall demonstrate the
Registrant’s rights to or legitimate interests in the domain
name for the purposes of Paragraph 4 (ii):
(i) 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;
(ii) 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
(iii) the Registrant is making a legitimate non-
commercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark
at issue.”
39. The learned Arbitrator has found, and in the view of this Court rightly,
that Respondent No. 2 had discharged the initial burden of showing that
the Petitioner had no legitimate interest in the domain name and that the
Petitioner thereafter failed to prove the existence of any of the ingredients
of Para 7 viz., the Petitioner’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”, that he is
“commonly known by the domain name even if he has no trademark” or
that he is “making a legitimate non-commercial or fair use of the domain
name.” In fact learned counsel for the Petitioner was not able to persuade
this Court to hold to the contrary. This part of the impugned Award
therefore calls for no interference.
Petitioner’s domain name registration was in bad faith
40. As regards the final limb of Para 4 (iii) INDRP the learned Arbitrator
O.M.P. No.132 of 2007 Page 21 of 27
has held that the registration of the Petitioner’s domain name was in bad
faith. Learned counsel for the Petitioner relied on a number of decisions
handed down by the WIPO Arbitral Tribunal to contend that the bulk
registration of domain names for ultimate sale to prospective buyers was
per se not an illegal or illegitimate activity. He reiterated the submission
that even a search of the Trade Marks Registry at the time of the
Petitioner applying for domain name registration would not have shown
that Respondent No. 2 was a registered proprietor of the trade mark
‘internet’. A distinction had to be drawn between ‘cyber squatting’ which
Respondent No. 2 failed to show the Petitioner to be indulging in, and
mere ‘speculative registration’ which was permissible in law. Importantly,
the Petitioner had never offered the domain name for sale either to the
Petitioner or to anyone else and was genuinely interested in offering
internet related services using the domain name.
41. Learned counsel for Respondent No. 2 countered the above
submissions by pointing out that the Petitioner was known to ‘capture’
famous marks by getting domain names registered in thousands and
having them parked with web based domain name selling sites like
SEDO. He too referred to decisions of the WIPO Arbitral Tribunal to urge
that the element of bad faith registration was fully made out in the facts
and circumstances of the present case. He pointed out that with the
registration of the trade mark relating to the date of application, the fact
remained that the Respondent held the registration prior to the registration
of the domain name in favour of the Petitioner.
42. In order to appreciate the above submissions a reference may be made
once again to Para 4 (iii) INDRP which states that a complainant may
seek the cancellation of the registration of a domain name on the premise
that it “has been registered or is being used in bad faith.” What can
O.M.P. No.132 of 2007 Page 22 of 27
constitute “bad faith” is explicated in Para 6 thereof which read as under:
“ 6. Evidence of Registration and use of Domain name in Bad
Faith: For the purposes of paragraph 4 (iii), the following
circumstances, in particular but without limitation, if found by the
Arbitrator to be present, shall be evidence of the registration and
use of a domain name in bad faith:
(i) circumstances indicating that the Registrant has
registered or acquired the domain name primarily for
the purpose of selling, renting, or otherwise
transferring the domain name registration to the
Complainant, who bears the name or is the owner of
the trademark or service mark, or to a competitor of
that complainant, for valuable consideration in excess
of the Registrant’s documented out-of-pocket costs
directly related to the domain name; or
(ii) the Registrant has registered the domain name in
order to prevent the owner of the trademark or service
mark from reflecting the mark in a corresponding
domain name, provided that the Registrant has
engaged in a pattern of such conduct; or
(iii) by using the domain name, the Registrant has
intentionally attempted to attract internet users to the
Registrant’s website or other on-line location, by
creating a likelihood of confusion with the
Complainant’s name or mark as to the source,
sponsorship, affiliation, or endorsement of the
Registrant’s website or location or of a product or
service on the Registrant’s website or location.”
43. The learned Arbitrator has categorically found that the Petitioner as
Registrant “has registered the domain name in order to prevent the owner
of the trademark or service mark from reflecting the mark in a
corresponding domain name” and that the Registrant has engaged in a
pattern of such conduct. The factors that led to this conclusion were that
the Petitioner had registered 1747 domain names in .de Registry for the
purpose of selling such domain names. Secondly, the .in domain names
O.M.P. No.132 of 2007 Page 23 of 27
were parked with SEDO which made it likely that the domain names were
meant to be sold. Thirdly, the meta tags in the page of SEDO where the
domain name internet.in was parked showed that the domain name was
intended for ultimate sale.
44. This Court has examined the impugned Award of the learned
Arbitrator as regards the above conclusions and is unable to discern any
patent illegality, much less a finding that could be said to be contrary to
the public policy of India. The learned Arbitrator was justified in doubting
the purposes of the Petitioner in having to register as many as 1747
domain names to carry on its business. The learned Arbitrator held that
although the Petitioner had countered the allegations of Respondent No. 2
about his indulging in cyber squatting, there was no evidence of the
Petitioner proposing to carry on any business himself using the .in domain
name in question. Additionally, it is difficult to believe that the Petitioner,
who is obviously an experienced hand in registering domain names, did
not do any homework before registering domain names in a series of
generic words like internet, toner, computer, ink etc. with the .IN
Registry. The Petitioner’s plea that even if he had done a search in the
Trade Marks Registry he would not have been able to detect that
Respondent No. 2 was the registered proprietor of the trade mark
‘internet’ fails to convince this Court. As pointed out by Respondent No.
2 there was an obligation cast on the Registrant in terms of Rule 3 INDRP
to ensure that “the registration of the domain name will not infringe upon
or otherwise violate the rights of any third party.” If indeed the Petitioner
was getting a domain name registered using a generic word like ‘internet’
then at the bare minimum in order to demonstrate his bona fide intentions,
he should have been able to show that he did make an effort to ascertain if
he was conforming to the said requirement. The Petitioner appears to have
made no such effort.
O.M.P. No.132 of 2007 Page 24 of 27
45. These factors have also to be examined in light of the fact that within
an hour of the start of the .IN Registry there were around 7000 domain
names registered, of which a vast majority was by a handful of
speculators located outside India. According to Respondent No. 2, 3000
names were registered by only 30 individuals with some speculators
registering over 500 names each. The Petitioner was one such speculator
who was taking a chance at getting a number of .in domain names
registered, using generic words, not with a view to himself conducting
business using any of them. Even if the Petitioner was not going to offer
‘internet.in’ for sale to either Respondent No. 2 or anyone else
immediately, he managed to prevent a registered proprietor of a trademark
in that word using it as part of his domain name or getting a domain name
registered in the said word mark. Further, the Petitioner had been shown
to indulge in a pattern of getting domain names registered in bulk. This
was sufficient in terms of Para 6 (ii) to render the registration as being in
‘bad faith’. In the circumstances, the finding of the learned Arbitrator that
in terms of Para 4 (iii) read with Para 6 (ii) INDRP, the Petitioner’s
registration of the domain name ‘internet.in’ was in bad faith does not
warrant interference.
Consequential order
46. However, this Court finds merit in the contention of learned counsel
for the Petitioner that the operative order of the learned Arbitrator was
beyond the scope of Para 10 of the INDRP which reads as under:
“ 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
O.M.P. No.132 of 2007 Page 25 of 27
Complainant. Costs as may be deemed fit may also be
awarded by the Arbitrator.”
47. In terms of Para 10 of the INDRP if the complaint succeeds then it
should result in the cancellation of the domain name registration in favour
of the Registrant “or” in the transfer of the domain name to the
complainant. In this case, as held by the learned Arbitrator, Respondent
No. 2 had successfully made out a case for cancellation of registration of
the domain name. However, the further order of the learned Arbitrator
directing confiscation and retention of the said domain name by .IN
Registry is without any legal basis. There is no such provision in Para 10
of the INDRP. Going by the law explained by the Supreme Court in MD,
Army Welfare Housing Organization v. Sumangal Servies (P) Limited
(2004) 9 SCC 619, the learned Arbitrator ought not to have transgressed
Para 10 of the INDRP to make such an order.
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
O.M.P. No.132 of 2007 Page 26 of 27
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.
50. The challenge by Respondent No. 2 to the impugned Award in Suit
No. 209 of 2006, which has been transferred to this Court, is hereby
negatived and OMP No. 928 of 2011 is dismissed. OMP No. 132 of 2007
is disposed of by modifying the impugned Award to the limited extent
indicated hereinbefore.
S. MURALIDHAR, J
DECEMBER 14, 2011
rk
O.M.P. No.132 of 2007 Page 27 of 27
O.M.P. 132 of 2007
Reserved on: November 24, 2011
Decision on: December 14, 2011
STEPHEN KOENIG ..... Petitioner
Through: Mr. Shrawan Chopra with
Ms. Kruttika Vijay and
Ms. Saukshmya T., Advocates.
versus
ARBITRATOR, NATIONAL INTERNET
EXCHANGE OF INDIA (NIXI) & ANR ..... Respondents
Through: Mr. Sushant Singh with
Mr. Prakash Arya, Ms. Vasundhara
Pathak Masoodi and
Mr. V.K. Shukla, Advocates.
With
O.M.P. No. 928 of 2011
(Arising out of transferred Suit No. 209 of 2006)
JAGDISH PUROHIT ….. Petitioner
Through: Mr. Sushant Singh with
Mr. Prakash Arya, Ms. Vasundhara
Pathak Masoodi and
Mr. V.K. Shukla, Advocates.
versus
STEPHEN KOENIG …. Respondent
Through: Mr. Shrawan Chopra with
Ms. Kruttika Vijay and
Ms. Saukshmya T., Advocates.
CORAM: JUSTICE S. MURALIDHAR
JUDGMENT
14.12.2011
Introduction
1. The dispute regarding the domain name ‘internet.in’ forms the subject
O.M.P. No.132 of 2007 Page 1 of 27
matter of the present petitions under Section 34 of the Arbitration &
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Conciliation Act, 1996 (‘Act’) directed against an Award dated 5 July
2006 passed by the learned sole Arbitrator (Respondent No.1 in O.M.P.
No. 132 of 2007) appointed by the National Internet Exchange of India
(‘NIXI’) .
2. Respondent No. 2 (in O.M.P. No. 132 of 2007) Mr. Jagdish Purohit
st
filed a complaint before the .IN Registry of NIXI on 31 January 2003,
under Para 4 of the .IN Domain Name Dispute Resolution Policy
(‘INDRP’) to the effect that the domain name ‘internet.in’ registered by
the Petitioner, Mr. Stephen Koenig, was identical and confusingly similar
to the registered trade mark ‘internet’ of Respondent No. 2; that the
Petitioner had no rights or legitimate interests in respect of the said
domain name and that the Petitioner’s domain name had been registered
or was being used in bad faith. The Petitioner responded to the notice
issued to him and defended the domain name registration in his favour.
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3. The learned Arbitrator passed the impugned Award on 5 July 2006 in
which inter alia he concluded that the domain name ‘internet.in’ should be
struck off and confiscated and kept by the .IN Registry. He rejected the
prayer of Respondent No.2 that the domain name should be transferred to
him.
4. The Petitioner has in O.M.P. No. 132 of 2007 challenged the impugned
Award primarily on the ground that it was contrary to the INDRP
inasmuch as Respondent No.2 had failed to prove the ingredients of Para
4 thereof in order to succeed in his complaint and further that the learned
Arbitrator exceeded his jurisdiction in ordering the confiscation of the
domain name by the .IN Registry when no such remedy is provided in
Para 10 of the INDRP.
O.M.P. No.132 of 2007 Page 2 of 27
5. Even prior to the Petitioner filing the present petition, Respondent No.
2 filed Suit No. 209 of 2006 in the court of the learned Additional District
Judge, Delhi (‘ADJ’) challenging the Award to the extent that the learned
Arbitrator had rejected the plea of Respondent No. 2 for transfer of the
domain name in his favour. After notice was issued in the present petition,
Respondent No. 2 filed Transfer Petition No. 14 of 2007 seeking transfer
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of the said Suit No. 209 of 2006 to this Court. By an order dated 30
November 2007 this Court allowed Transfer Petition No. 14 of 2007 and
directed Suit No.209 of 2006 to be tagged with the present petition. It has
been numbered as a separate petition under Section 34 of the Act. For the
purposes of the present judgment Mr. Stephen Koenig is referred to as the
Petitioner and Mr. Jagdish Purohit as Respondent No.2.
Preliminary objection as to limitation
6. Mr. Sushant Singh, learned counsel for Respondent No. 2, raised a
preliminary objection that the petition by Mr. Stephen Koenig, O.M.P.
No. 132 of 2007, was barred by limitation. He pointed out that the learned
th
Arbitrator by a letter dated 5 July 2006 addressed to NIXI, a copy of
which was also sent by email, enclosed a copy of the Award. In the said
letter, the Arbitrator stated that he had sent a copy “of the letter and
Award to parties also by e-mail.” It is submitted that inasmuch as
Respondent No.2 on receiving a copy of the Award filed Suit No. 2009 of
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2006 on 6 October 2006 within time, there could not be a different date
of commencement of the period of limitation for the purposes of Section
34 (3) as far as the Petitioner was concerned. The present petition was
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filed only on 9 March 2007 and the explanation offered by the Petitioner
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that he received a copy of the Award from NIXI only on 13 December
2006 after writing to it was not convincing. Placing reliance on the
decisions in Union of India v. Popular Construction Co. AIR 2001 SC
4010 and Union of India v. Tecco Trichy Engineers & Contractors
O.M.P. No.132 of 2007 Page 3 of 27
(2005) 4 SCC 239 it was contended that the Petitioner had failed to file
the petition within the maximum permissible time as stipulated under
Section 34 (3) of the Act read with the proviso thereto.
7. Mr. Shrawan Chopra, learned counsel for the Petitioner, on the other
hand, maintained that the Petitioner was not aware of the passing of the
impugned Award till he received a notice in Suit No. 209 of 2006. The
th
Petitioner, through his counsel, immediately wrote a letter dated 25
November 2006 to the .IN Registry enquiring about the arbitral Award.
th
By a letter dated 5 December 2006, received in the office of counsel for
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the Petitioner on 13 December 2006, NIXI informed the Petitioner of the
passing of the Award and enclosed a copy of the Award. Thereafter the
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present petition was filed on 9 March 2007, within the stipulated three
month period under Section 34 (3) of the Act.
8. The above submissions have been considered. Under Para 13 of the
INDRP Rules of Procedure, the .IN Registry shall, “within five working
days after receiving the decision from the Arbitrator”, “communicate the
full text of the decision to each Party and shall also communicate to each
Party, the date for implementation of the decision.” It is not clear in the
th
present case whether the .IN Registry at any time prior to 5 December
2006 communicated to the parties the full text of the Award in terms of
Para 13 of the INDRP Rules of Procedure. There is no provision therein
for the Arbitrator to directly communicate the Award to the parties.
Secondly, although counsel for Respondent No.2 has placed on record a
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copy of the letter dated 5 July 2006 of the learned Arbitrator to NIXI,
there is nothing to show whether and when the copy sent by e-mail was in
fact delivered to either of the parties, more particularly the Petitioner. This
assumes significance in light of the denial by the Petitioner of having
th
received a copy of the Award prior to 13 December 2006. As explained
O.M.P. No.132 of 2007 Page 4 of 27
by the Supreme Court in Union of India v. Tecco Trichy Engineers &
Contractors (SCC @ 242) :
“The delivery of an arbitral award under sub-section (5) of
Section 31 is not a matter of mere formality. It is a matter of
substance. It is only after the stage under Section 31 has passed
that the stage of termination of arbitral proceedings within the
meaning of Section 32 of the Act arises. The delivery of
arbitral award to the party, to be effective, has to be
“received” by the party . This delivery by the Arbitral
Tribunal and receipt by the party of the award sets in motion
several periods of limitation such as an application for
correction and interpretation of an award within 30 days under
Section 33(1), an application for making an additional award
under Section 33(4) and an application for setting aside an
award under Section 34(3) and so on. As this delivery of the
copy of award has the effect of conferring certain rights on the
party as also bringing to an end the right to exercise those
rights on expiry of the prescribed period of limitation which
would be calculated from that date, the delivery of the copy
of award by the Tribunal and the receipt thereof by each
party constitutes an important stage in the arbitral
proceedings .” (emphasis supplied)
9. The documents placed on record by Respondent No. 2 do not show
when precisely a copy of the Award was delivered by e-mail or surface
mail to the Petitioner. Given that the Petitioner is a resident of U.S.A, it is
not safe to presume, as contended by Respondent No.2, that the date on
which the copy was received by Respondent No.2 should be taken to be
the date on which it was received by the Petitioner. There is no material
placed on record to doubt the assertion of the Petitioner that he received a
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copy of the impugned Award only on 13 December 2006 from NIXI.
Accordingly, this Court rejects the preliminary objection of Respondent
No. 2 that the petition of Mr. Koenig is barred by limitation.
Background facts
10. Before dealing with the contentions of learned counsel for the parties
O.M.P. No.132 of 2007 Page 5 of 27
it is important to notice certain background facts concerning the
registration of the domain name ‘internet.in’.
11. It is of some interest, given the dispute involved in the present case, to
note that the origins of ‘internet’ as an expression can be traced to a
research network titled ‘Advanced Research Project Agency Network’
(ARPANET) established by the United States Department of Defense in
the 1970s. ARPANET was meant to link with networks of other
government agencies to form a ‘network of networks.’ The Shorter
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Oxford English Dictionary , (5 Ed., p. 405) defines ‘internet’ to mean
“connect or be connected to a computer network; a computer network
consisting of or connecting a number of smaller networks, such as two or
more local area networks connected by a shared communications
protocol.” Internet Protocol (‘IP’) is defined as “a standard that specifies
the format and addressing scheme of packets of data sent over the internet
or other network.”
12. The above dictionary meaning tells us that ‘internet’ is a now common
word. It also acknowledges that to access a ‘site’ on the internet, the user
usually has to key in an IP address. This is a combination of four groups
of numbers separated by decimals, which is not easy to remember.
Domain names on the other hand are ‘mapped’ on to an IP address to
facilitate easy access to web sites. Domain names usually relate to the
organisation or entity whose website is being accessed and can therefore
be easily remembered. For example, the domain name nic.in is meant to
indicate it to be that of the National Informatics Centre of the Government
of India. A domain name can be divided into levels. For example, the
domain name ‘delhihighcourt.nic.in’, has in the first level i.e. “delhi high
court” which refers to the entity whose website it is, the second level is
‘nic’ which refers to the entity which hosts the server on which the
O.M.P. No.132 of 2007 Page 6 of 27
website is located and ‘.in’ is the top level domain name (‘TLD’) which in
this case is indicative of the geographical location of the website i.e.
India. ‘.in’ is in fact a country code Top-Level Domain (‘ccTLD’) as
contrasted with a generic Top-Level Domain (‘gTLD’) like ‘.com’ or
‘.org’.
13. On account of its uniqueness, a domain name can only map on to one
IP address at a time. With the growing volumes of commercial
transactions on the net, the intellectual property rights in domain names
assume enormous significance. Disputes arise over registration of domain
names using trademarks that are known and which are in use and may be
registered in different jurisdictions. The root problem stems from the
system of assigning domain names on a first-come-first-served basis. This
permits well known and established trade names, brand names, company
names, names of famous personalities, politicians to be ‘captured’ by a
‘registrant’ with little connection with such name and get it registered as a
domain name. The problem is compounded with web browsers and search
engines making it easy for a surfer to locate a website by simply typing
the name of the company or product. However, where the ‘registrant’ of a
domain name has ‘captured’ the trademark associated with that company
or product and made it part of the domain name, the surfer is taken to a
different location. Among the serious problems of the domain name
system (‘DNS’) is “cyber squatting” resulting from deliberate and
fraudulent registration of domain names using well-known trademarks
with the intention of selling them to the owners of those trademarks at a
huge price. Cyber squatters could also sell these domain names to any
other person for a price, thus ‘diluting’ a well known trademark or trade
name.
14. This and the problems of ‘cyber piracy’, of ‘trademark dilution’ and a
O.M.P. No.132 of 2007 Page 7 of 27
host of other issues led to the formulation of the Uniform Domain Names
Dispute Resolution Policy (‘UDRP’) as a result of consultations between
the World Intellectual Property Organisation (‘WIPO’) and the Internet
Corporation for Assigned Names and Numbers (‘ICANN’), a non-profit
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organisation managing the DNS. The UDRP which was adopted on 24
October 1999, provides for a domain names dispute resolution mechanism
before Administrative Panels of the WIPO Arbitration and Mediation
Center.
15. The task of registering domain names world-wide has now been
divided geographically but the basis of registration continues to be ‘first-
come-first served’. In India, NIXI, a company registered under Section 25
th
of the Indian Companies Act 1956 on 28 June 2005, formulated and
adopted the INDRP as well as INDRP Rules of Procedure. NIXI brought
out a Sunrise Policy in terms of which owners of registered Indian
trademarks or service marks who wished to protect their marks were
given the opportunity to apply for .IN domain names before the general
public could. The idea of the Sunrise Policy was to give preference to
Indian citizens and companies over entities abroad. The applications of
owners of Indian trademarks or service marks were to be submitted to the
Registry through an accredited Registrar and applications were to be
st st
accepted from 1 January 2005 to 21 January 2005. In order to be
considered valid, a Sunrise application had to meet the following criteria:
“1. The trademark or service mark registration must have
been issued by the Registrar of Trademarks, Government of
India. The trademark or service mark owner must be eligible
for the queue the application was submitted to.
2. The trade mark or service mark registration must be
current (non-expired) and valid, and must have been issued
in the applicant’s name prior to December 31, 2004.
O.M.P. No.132 of 2007 Page 8 of 27
3. The domain name applied for must be identical to the
textual or word elements of the trademark or service mark
that is registered (discounting any domain extension
element).
3a. The domain name applied for must be represented in
ASC11 characters only. Only letters, digit, and hyphens will
be accepted in a domain name. No applications for domain
names in international script (including diacritical marks)
shall be accepted.
3b. Spaces or punctuation that appear in trademark
registrations can either be represented in the domain name by
a hyphen, or can be disregarded. Similarly, ampersands (&)
in the trademark can be disregarded, represented by a
hyphen, or represented by the letters ‘and’ (or the equivalent
term in the language of the trademark registration, subject to
3a above).
4. The applicant must submit proof of its trademark or
service mark to the Registry for verification, as per the proof
of trademark guidelines.”
16. Certain domain names have been reserved for use by the government,
constitutional bodies and the Registry. Only letters, digits and hyphens
were to be accepted in a domain name. No applications for domain names
in international script (including diacritical marks) would be accepted.
Facts of the present case
th
17. In the instant case Respondent No. 2 on 17 March 2003 applied
under the Trade Marks Act, 1999 (‘TM Act’) for registration of its trade
mark ‘internet’ in respect of ‘Tobacco, raw or manufactured, smokers
articles, matches included in Class 34’. The trade mark certificate was
th
issued on 13 July 2005 which, in terms of Section 23 (1) TM Act,
th
nevertheless related to the date of the making of the application, i.e., 17
March 2003. Therefore, as far as Respondent No. 2 is concerned, it holds
registration for the trade mark ‘internet’ under Class 34 with effect from
O.M.P. No.132 of 2007 Page 9 of 27
th
17 March 2003.
18. Admittedly, Respondent No. 2 did not avail of the sunrise policy of
NIXI and therefore did not get any domain name registered using its trade
mark. Meanwhile the Petitioner, a resident of the U.S.A., got the domain
th
name ‘internet.in’ registered with the .IN Registry on 16 February 2005.
Pleas of the parties
st
19. On 31 January 2006 Respondent No. 2 submitted a complaint to the
.IN Registry seeking the cancellation of the registration of the domain
name ‘internet.in’ in favour of the Petitioner. Respondent No. 2 contended
that he had been using its trade mark ‘internet’ for over three years. The
domain name ‘internet.in’ was confusingly similar to his trademark
‘internet’. The Petitioner had registered in the .IN Registry several domain
names in which he had no right or trade mark. These included air.in,
computer.in, ink.in, internet.in, toner.in, usa.in, wise.in. The Petitioner’s
intentions were to sell the domain name to either Respondent No. 2 or to
another organization for a profit. It was alleged by Respondent No. 2 that
the Petitioner had parked the domain name and was making money by
luring customers to the website and tricking them into clicking on ads.
20. In response to the notice issued to him, the Petitioner contended that
the burden was on Respondent No. 2 who held registration of a highly
descriptive or generic word like ‘internet’ to prove that the word was at all
capable of being a trade mark or had acquired a secondary meaning.
Respondent No.2 had not adduced a single document of usage of the said
trademark, the quantum and amount of sales under the trademark, the
nature and extent of advertising, consumer surveys and media recognition.
It was asserted that the Petitioner intends to “legitimately use the domain
name as the identifier for internet related goods and services on a
O.M.P. No.132 of 2007 Page 10 of 27
website.” The INDRP did not make it mandatory for the Petitioner to
conduct a trademark search in all classes before registering a domain
name. Further, Respondent No. 2 had provided no evidence to the effect
that the Petitioner knew of the rights of Respondent No. 2 in the mark
‘internet’ or ought to have known the same. It was submitted that
Respondent No. 2 had not registered any domain names containing the
word ‘internet’ in the popular gTLDs e.g., .com,.net, .org etc. so as to
raise any inference or assumption, that the Petitioner ought to have had
any indication of the rights of Respondent No. 2 in the domain name
‘internet.in’ Enclosing a copy of Whois results of the relevant domain
names, the Petitioner pointed out that the domain names like internet.biz,
internet.net etc. were all registered by different entities.
21. The Petitioner further asserted that he had not put up the domain name
‘internet.in’ for sale. A letter from SEDO GmbH, Germany confirming
that the Petitioner’s domain names, including ‘internet.in’, “are not and
have not been sale on our trading platform’ was enclosed with the reply. It
was submitted that the Petitioner had over the years developed internet
businesses like fax.de and toner.com for legitimate purposes and
therefore, was a legitimate and a bona fide trading entity. The Petitioner
has registered the domain name ‘internet.in’ in good faith to resolve a
website to it for use in relation to internet related goods and services. It
was desirous to use the domain name in respect of internet services and
“this amounted to merely a generic or descriptive use.” The Petitioner
specifically raised the plea of ‘reverse domain name hijacking’ by
Respondent No. 2. The Petitioner alleged that the complaint itself was a
blatant attempt by Respondent No. 2 to claim exclusive right in the
domain name ‘internet.in’. The complaint had been filed with the sole aim
to harass the Petitioner and usurp rights beyond the registration of
Respondent No. 2. It was stated that Respondent No. 2 was free to register
O.M.P. No.132 of 2007 Page 11 of 27
a domain name like internettobacco.in, which related to its alleged
activities. There was no proof adduced by Respondent No. 2 to show that
the Petitioner’s registration of the domain name ‘internet.in’ was in fact in
bad faith or that the Petitioner wished to sell the domain name to
Respondent No. 2 or to some other organization.
22. The Petitioner pointed out, on the basis of the information received by
the Petitioner from other registrants against whom Respondent No. 2
initiated INDRP proceedings, that Respondent No. 2 had sought to
monopolize several generic words such as business, web, jobs, hotels, etc.
without a shred of evidence of use of the said words as trademarks. In
fact, this was a clear indication of the bad faith of Respondent No. 2. It
was, therefore, prayed that (i) the domain name should not be transferred
to Respondent No. 2, (ii) finding of reverse domain name hijacking
should be made and (iii) costs be imposed on Respondent No. 2 for
blatant abuse.
The impugned Award
th
23. The learned Arbitrator, in the impugned Award dated 5 July 2006,
concluded as under:
(a) The domain name ‘internet.in’ of the Petitioner herein was
identical and confusingly similar to a trade mark of Respondent No.
2. However, Respondent No. 2 failed to show/prove that he had a
right in the trade mark, which was a generic word;
(b) The Petitioner had no right or legitimate interest in the domain
name;
(c) The Petitioner got registered the domain name ‘internet.in’ in
O.M.P. No.132 of 2007 Page 12 of 27
bad faith. He had registered the domain name in order to sell,
transfer or rent it or to prevent other owners of the mark from
reflecting the mark in a corresponding domain name.
(d) Consequently, the Petitioner was not entitled to retain the
domain name and it was required to be struck off from the Registry;
(e) Respondent No. 2 was also not entitled to transfer of the domain
name in his name as he had also not established in his bona fide
rights in the trademark; and
(f) The Petitioner could not, in the circumstances, allege reverse
domain name hijacking by Respondent No. 2.
(g) The domain name ‘internet.in’ was to be confiscated by the .IN
Registry and kept with it.
Scope of the present proceedings
24. The scope of the present proceedings under Section 34 of the Act to
interfere with the above reasoned Award of the learned Arbitrator is
circumscribed by the grounds in Section 34 of the Act as explained in
several judicial decisions. To warrant interference, it would have to be
shown that the Award is opposed to the public policy of India as has been
explained in ONGC v. Saw Pipes Ltd. (2003) 5 SCC 705 . To recapitulate
an award could be set aside (SCC, pp 727-728): “if it is contrary to: ( a )
fundamental policy of Indian law; or ( b ) the interest of India; or ( c ) justice
or morality, or ( d ) in addition, if it is patently illegal. Illegality must go to
the root of the matter and if the illegality is of trivial nature it cannot be
held that the award is against public policy. Award could also be set aside
if it is so unfair and unreasonable that it shocks the conscience of the
O.M.P. No.132 of 2007 Page 13 of 27
court. Such award is opposed to public policy and is required to be
adjudged void.” Keeping the above principles in view, the court proceeds
to examine the validity of the impugned Award.
The domain name is identical to the registered trade mark
25. The complaint of Respondent No. 2 before the .IN Registry was under
Para 4 of the INDRP which corresponds to Para 4 (a) of the UDRP. Para 4
of the INDRP reads as under:
“ 4. Types of Disputes
Any person who considers that a registered domain name conflicts
with his legitimate rights or interests may file a complaint to the .IN
Registry on the following premises:
(i) the Registrant’s domain name is identical or
confusingly similar to a name, trademark or
service mark in which the Complainant has
rights;
(ii) the Registrant has no rights or legitimate
interests in respect of the domain name; and
(iii) the Registrant’s domain name has been registered
or is being used in bad faith.”
Para 4(a) of the UDRP reads thus:
“ 4. Mandatory Administrative proceedings.
This Paragraph sets forth the type of disputes for which you
are required to submit to a mandatory administrative
proceeding. These proceedings will be conducted before one
of the administrative-dispute-resolution service providers
listed at http://www.icann.org/dndr/udrp/approved-
providers.htm (each, a “Provider”).
a. Applicable Disputes. You are required to submit to a
mandatory administrative proceeding in the event that a third
party (a “complainant") asserts to the applicable Provider, in
compliance with the Rules of Procedure, that
O.M.P. No.132 of 2007 Page 14 of 27
(i) your domain name is identical or confusingly
similar to a trademark or service mark in which
the complainant has rights; and
(ii) you have no rights or legitimate interests in
respect of the domain name; and
(iii) your domain name has been registered and is
being used in bad faith.
In the administrative proceeding, the complainant must prove
that each of these three elements are present.”
26. There are at least four differences between the above para 4 of the
INDRP and the corresponding Para 4 (a) of the UDRP. The first is the
opening part of Para 4 of the INDRP indicating the ‘premises’ on which a
complaint could be filed is absent in para 4 (a) UDRP. This is significant
when read with the last line at the end of Para 4 (a) UDRP which states:
“In the administrative proceeding, the complainant must prove that each
of these three elements are present.” The said line is absent in Para 4
INDRP. This is the second difference. The third difference is that at the
end of sub-para (i) of Para 4 UDRP, the word ‘and’ figures. The fourth is
that in sub-para (iii) of Para 4 of the UDRP it is to be shown by the
complainant that the Registrant’s domain name has been registered and is
being used in bad faith. It is not for the court to speculate whether these
differences in Para 4 INDRP were intentional or accidental. However, the
court has to interpret the INDRP as it exists. It is not expected to supply
the omissions read into the INDRP words that are absent.
27. The learned Arbitrator proceeded on the basis that in terms of Para 4
(i) INDRP the burden was on the complainant to show that (a) the domain
name was confusingly similar to the trademark of the complainant and
that (b) the complainant has a right in the trademark. As regards the first
O.M.P. No.132 of 2007 Page 15 of 27
limb, it was urged before the Arbitrator, and reiterated before this Court
by Mr. Shrawan Chopra learned counsel on behalf of the Petitioner that
merely because the sentence at the end of Para 4 (a) UDRP was absent in
Para 4 INDRP did not mean that the burden of proof was not on the
complainant. He referred to Sections 101, 102 and 103 of the Evidence
Act, 1872 to urge that the complainant had to show how the domain name
was confusingly identical to the registered trademark. Secondly, it was
submitted that the complainant’s registration was for the logo mark
‘internet’ which did not give him any rights in the word per se . Thirdly,
the complainant had not adduced evidence of use of the trademark
‘internet’ in relation to tobacco, matches or any products. Since ‘internet’
was a generic word and Respondent No. 2 had failed to show that the
word mark had acquired any secondary meaning, he could not be said to
have any rights over the trademark. Lastly, since the Petitioner intended to
use the domain name for internet related services, as a generic word there
could be no confusion with the logo ‘internet’ registered for tobacco.
28. Countering the above submissions, it was urged by Mr. Sushant
Singh, learned counsel for Respondent No. 2 that even if the domain name
were to be used for internet related services, there was bound to be
confusion since it was identical to the registered mark of Respondent No.
2. In any event, Respondent No. 2 had by securing registration of the
trademark in his favour demonstrated his right in the mark, irrespective of
its use or the fact that it was a generic word. Relying on the observations
of this Court in Manish Vij v. Indra Chugh 97 (2002) DLT 1 it is
submitted that where no exclusivity can be granted to marks that are
generic, the Court should permit the registered owner of the trademark to
use it in relation to tobacco, the goods for which it was registered and in
relation to which it would be distinctive rather than permit a domain name
holder of the generic word to use it in a generic sense in relation to
O.M.P. No.132 of 2007 Page 16 of 27
internet related activity.
29. Para 4 INDRP is different from Para 4 (a) UNDRP in a significant
way. While each of the sub-paras (i) to (iii) of Para 4 (a) of UNDRP are
required to be ‘proved’ by the complainant cumulatively, as far as Para 4
INDRP is concerned the complainant can file a complaint on the
‘premises’ outlined in sub-paras (i) to (iii) of Para 4. There is no
requirement that “each of the three elements” are shown to exist. If this is
understood in light of the fact that the conjoint “and” is missing at the end
of sub-para (i) of Para 4 INDRP, then it is possible to interpret Para 4
INDRP to mean that a complainant can succeed if he proves that the
ground in sub-para (i) exists by itself. Alternatively he can succeed if he
proves that the grounds in sub-paras (ii) and (iii) exist.
30. Taking up the ground in Para 4 (i) INDRP, it is seen that Respondent
No. 2 was required to establish that (a) the domain name registered in
favour of the Petitioner was identical or confusingly similar to the
registered trademark of Respondent No. 2 and (b) that Respondent No. 2
had rights in the trademark. By and large Para 4 (i) INDRP mirrors the
law relating to passing off and infringement of trademarks. In Satyam
Infoway Limited v. Siffynet Solutions (P) Limited (2004) 6 SCC 145 the
Supreme Court held that “a domain name may have all the characteristics
of a trademark and could found an action for passing off”. It was observed
that “Ordinary consumers/users seeking to locate the functions available
under one domain name may be confused if they accidentally arrived at a
different but similar website which offers no such services. Such users
could well conclude that the first domain name had misrepresented its
goods or services through its promotional activities and the first domain
owner would thereby lose its custom.” For the purpose of passing off, it
was necessary that the complaint has to establish that there was likelihood
O.M.P. No.132 of 2007 Page 17 of 27
of confusion in the minds of the public (the word ‘public’ being
understood to mean actual or potential customers or users) allowing for
‘imperfect recollection of a person of ordinary memory’.
31. There is little difficulty in concluding in the instant case that the
domain name ‘internet.in’ and the trademark ‘internet’ are identical. The
said domain name is likely to cause confusion in the minds of actual or
potential customers with ‘imperfect recollection’ as regards the source of
the goods and services when going on the net to search for a website using
the said domain name. The mere fact that the goods for which Respondent
No. 2 holds registration is different from internet related services which
the Petitioner proposes to offer using the domain name does not mitigate
the possibility of such confusion, given the nature of e-commerce and the
range of products that can be purchased on the net. The finding of the
learned Arbitrator that Respondent No. 2 complainant had proved the first
limb of Para 4 (i) INDRP that the domain name was identical to the
registered trademark of Respondent No. 2 and was confusingly similar
does not call for interference.
32. The second limb of Para 4 (i) of the INDRP required the complainant
to show that he had a right in the trademark. While in terms of the
opening part of Para 4 INDRP the complainant has to aver that the
“registered domain name conflicts with his legitimate rights or interests”,
what he has to prove in terms of Para 4 (i) is only that he has rights in the
trademark. For the purpose of Para 4 (i) INDRP the fact that Respondent
No. 2 held a registration for the trademark ‘internet’ was sufficient to
show that he had a right in the mark. This position flows from a reading of
Section 28 (1) TM Act, which gives the registered proprietor of a
trademark “the exclusive right to the use of the trade mark in relation to
the goods or services in respect of which the trade mark is registered…”
O.M.P. No.132 of 2007 Page 18 of 27
This read with Section 31 of the TM Act, which raises a presumption of
validity of the registration, places the registered proprietor of a mark in a
better position than a non-registered one for the purposes of Para 4 (i)
INDRP.
33. The learned Arbitrator appears to have proceeded on the basis that
since the word mark was generic, and Respondent No. 2 had not
demonstrated any use of the said mark, Respondent No. 2 had no
‘legitimate’ right in the mark. This Court is unable to appreciate the said
finding which appears to overlook the statutory provisions of the TM Act
referred to above which do confer rights on the registered proprietor of a
mark. These were not proceedings where the Petitioner was challenging
the validity of the registration and therefore the discussion on whether the
mark was generic was not apposite in the context of Para 4 (i) INDRP.
For the purposes of Para 4 (i) it was more than sufficient for Respondent
No. 2 to be a registered proprietor of the trademark in question in order to
show that he had a right in it.
34. The facts in Satyam Infoway Limited v. Siffynet Solutions (P)
Limited show that there the dispute was in relation to registration of two
phonetically similar sounding domain names, and not a dispute involving
a registered domain name and an identical registered trademark. This
explains why the said dispute concerned ‘passing off’ and not
infringement. In Masnish Vij again the dispute concerned passing off and
involved two competing domain names. Further, the decision was
rendered at a time when the INDRP had not been made operational. In the
considered view of the Court, in the present case as long as Respondent
No. 2 was a registered proprietor of the mark ‘internet’ and the validity of
the said registration was not challenged in the manner known to law by
the Petitioner or anyone else, Respondent No. 2 must be held to have
O.M.P. No.132 of 2007 Page 19 of 27
demonstrated his interest and right in the said trademark for the purposes
of the second limb of Para 4 (i) INDRP.
35. In other words, as far as the present case is concerned, Respondent
No. 2 had satisfactorily proved that the domain name was identical to the
registered trade mark; that it was likely to cause confusion and that
Respondent No. 2 had rights in the trade mark.
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.
Petitioner not having right or legitimate interest in the domain name
37. In view of the interpretation placed by this Court on Para 4 INDRP, it
is moot whether, as was required of a complainant invoking Para 4 (a)
UNDRP, Respondent No. 2 was required to further prove the grounds in
Para 4 (ii) and 4 (iii) INDRP as well. Nevertheless, since the learned
arbitrator has dealt with the said grounds as well, and arguments have also
been advanced by learned counsel for the parties, the validity of the
decision of the learned Arbitrator in that regard is also examined.
38. At the outset, this Court concurs with the view of the learned
Arbitrator that once the complainant discharges the initial burden of
showing that the Petitioner had no legitimate interest in the domain name,
the burden of showing that he did have such interest shifted to the
Petitioner. In this context Para 7 INDRP is relevant and reads as under:
“7. Registrant’s Rights to and Legitimate Interests in the
Domain Name
Any of the following circumstances, in particular but without
O.M.P. No.132 of 2007 Page 20 of 27
limitation, if found by the Arbitrator to be proved based on
its evaluation of all evidence presented, shall demonstrate the
Registrant’s rights to or legitimate interests in the domain
name for the purposes of Paragraph 4 (ii):
(i) 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;
(ii) 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
(iii) the Registrant is making a legitimate non-
commercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark
at issue.”
39. The learned Arbitrator has found, and in the view of this Court rightly,
that Respondent No. 2 had discharged the initial burden of showing that
the Petitioner had no legitimate interest in the domain name and that the
Petitioner thereafter failed to prove the existence of any of the ingredients
of Para 7 viz., the Petitioner’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”, that he is
“commonly known by the domain name even if he has no trademark” or
that he is “making a legitimate non-commercial or fair use of the domain
name.” In fact learned counsel for the Petitioner was not able to persuade
this Court to hold to the contrary. This part of the impugned Award
therefore calls for no interference.
Petitioner’s domain name registration was in bad faith
40. As regards the final limb of Para 4 (iii) INDRP the learned Arbitrator
O.M.P. No.132 of 2007 Page 21 of 27
has held that the registration of the Petitioner’s domain name was in bad
faith. Learned counsel for the Petitioner relied on a number of decisions
handed down by the WIPO Arbitral Tribunal to contend that the bulk
registration of domain names for ultimate sale to prospective buyers was
per se not an illegal or illegitimate activity. He reiterated the submission
that even a search of the Trade Marks Registry at the time of the
Petitioner applying for domain name registration would not have shown
that Respondent No. 2 was a registered proprietor of the trade mark
‘internet’. A distinction had to be drawn between ‘cyber squatting’ which
Respondent No. 2 failed to show the Petitioner to be indulging in, and
mere ‘speculative registration’ which was permissible in law. Importantly,
the Petitioner had never offered the domain name for sale either to the
Petitioner or to anyone else and was genuinely interested in offering
internet related services using the domain name.
41. Learned counsel for Respondent No. 2 countered the above
submissions by pointing out that the Petitioner was known to ‘capture’
famous marks by getting domain names registered in thousands and
having them parked with web based domain name selling sites like
SEDO. He too referred to decisions of the WIPO Arbitral Tribunal to urge
that the element of bad faith registration was fully made out in the facts
and circumstances of the present case. He pointed out that with the
registration of the trade mark relating to the date of application, the fact
remained that the Respondent held the registration prior to the registration
of the domain name in favour of the Petitioner.
42. In order to appreciate the above submissions a reference may be made
once again to Para 4 (iii) INDRP which states that a complainant may
seek the cancellation of the registration of a domain name on the premise
that it “has been registered or is being used in bad faith.” What can
O.M.P. No.132 of 2007 Page 22 of 27
constitute “bad faith” is explicated in Para 6 thereof which read as under:
“ 6. Evidence of Registration and use of Domain name in Bad
Faith: For the purposes of paragraph 4 (iii), the following
circumstances, in particular but without limitation, if found by the
Arbitrator to be present, shall be evidence of the registration and
use of a domain name in bad faith:
(i) circumstances indicating that the Registrant has
registered or acquired the domain name primarily for
the purpose of selling, renting, or otherwise
transferring the domain name registration to the
Complainant, who bears the name or is the owner of
the trademark or service mark, or to a competitor of
that complainant, for valuable consideration in excess
of the Registrant’s documented out-of-pocket costs
directly related to the domain name; or
(ii) the Registrant has registered the domain name in
order to prevent the owner of the trademark or service
mark from reflecting the mark in a corresponding
domain name, provided that the Registrant has
engaged in a pattern of such conduct; or
(iii) by using the domain name, the Registrant has
intentionally attempted to attract internet users to the
Registrant’s website or other on-line location, by
creating a likelihood of confusion with the
Complainant’s name or mark as to the source,
sponsorship, affiliation, or endorsement of the
Registrant’s website or location or of a product or
service on the Registrant’s website or location.”
43. The learned Arbitrator has categorically found that the Petitioner as
Registrant “has registered the domain name in order to prevent the owner
of the trademark or service mark from reflecting the mark in a
corresponding domain name” and that the Registrant has engaged in a
pattern of such conduct. The factors that led to this conclusion were that
the Petitioner had registered 1747 domain names in .de Registry for the
purpose of selling such domain names. Secondly, the .in domain names
O.M.P. No.132 of 2007 Page 23 of 27
were parked with SEDO which made it likely that the domain names were
meant to be sold. Thirdly, the meta tags in the page of SEDO where the
domain name internet.in was parked showed that the domain name was
intended for ultimate sale.
44. This Court has examined the impugned Award of the learned
Arbitrator as regards the above conclusions and is unable to discern any
patent illegality, much less a finding that could be said to be contrary to
the public policy of India. The learned Arbitrator was justified in doubting
the purposes of the Petitioner in having to register as many as 1747
domain names to carry on its business. The learned Arbitrator held that
although the Petitioner had countered the allegations of Respondent No. 2
about his indulging in cyber squatting, there was no evidence of the
Petitioner proposing to carry on any business himself using the .in domain
name in question. Additionally, it is difficult to believe that the Petitioner,
who is obviously an experienced hand in registering domain names, did
not do any homework before registering domain names in a series of
generic words like internet, toner, computer, ink etc. with the .IN
Registry. The Petitioner’s plea that even if he had done a search in the
Trade Marks Registry he would not have been able to detect that
Respondent No. 2 was the registered proprietor of the trade mark
‘internet’ fails to convince this Court. As pointed out by Respondent No.
2 there was an obligation cast on the Registrant in terms of Rule 3 INDRP
to ensure that “the registration of the domain name will not infringe upon
or otherwise violate the rights of any third party.” If indeed the Petitioner
was getting a domain name registered using a generic word like ‘internet’
then at the bare minimum in order to demonstrate his bona fide intentions,
he should have been able to show that he did make an effort to ascertain if
he was conforming to the said requirement. The Petitioner appears to have
made no such effort.
O.M.P. No.132 of 2007 Page 24 of 27
45. These factors have also to be examined in light of the fact that within
an hour of the start of the .IN Registry there were around 7000 domain
names registered, of which a vast majority was by a handful of
speculators located outside India. According to Respondent No. 2, 3000
names were registered by only 30 individuals with some speculators
registering over 500 names each. The Petitioner was one such speculator
who was taking a chance at getting a number of .in domain names
registered, using generic words, not with a view to himself conducting
business using any of them. Even if the Petitioner was not going to offer
‘internet.in’ for sale to either Respondent No. 2 or anyone else
immediately, he managed to prevent a registered proprietor of a trademark
in that word using it as part of his domain name or getting a domain name
registered in the said word mark. Further, the Petitioner had been shown
to indulge in a pattern of getting domain names registered in bulk. This
was sufficient in terms of Para 6 (ii) to render the registration as being in
‘bad faith’. In the circumstances, the finding of the learned Arbitrator that
in terms of Para 4 (iii) read with Para 6 (ii) INDRP, the Petitioner’s
registration of the domain name ‘internet.in’ was in bad faith does not
warrant interference.
Consequential order
46. However, this Court finds merit in the contention of learned counsel
for the Petitioner that the operative order of the learned Arbitrator was
beyond the scope of Para 10 of the INDRP which reads as under:
“ 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
O.M.P. No.132 of 2007 Page 25 of 27
Complainant. Costs as may be deemed fit may also be
awarded by the Arbitrator.”
47. In terms of Para 10 of the INDRP if the complaint succeeds then it
should result in the cancellation of the domain name registration in favour
of the Registrant “or” in the transfer of the domain name to the
complainant. In this case, as held by the learned Arbitrator, Respondent
No. 2 had successfully made out a case for cancellation of registration of
the domain name. However, the further order of the learned Arbitrator
directing confiscation and retention of the said domain name by .IN
Registry is without any legal basis. There is no such provision in Para 10
of the INDRP. Going by the law explained by the Supreme Court in MD,
Army Welfare Housing Organization v. Sumangal Servies (P) Limited
(2004) 9 SCC 619, the learned Arbitrator ought not to have transgressed
Para 10 of the INDRP to make such an order.
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
O.M.P. No.132 of 2007 Page 26 of 27
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.
50. The challenge by Respondent No. 2 to the impugned Award in Suit
No. 209 of 2006, which has been transferred to this Court, is hereby
negatived and OMP No. 928 of 2011 is dismissed. OMP No. 132 of 2007
is disposed of by modifying the impugned Award to the limited extent
indicated hereinbefore.
S. MURALIDHAR, J
DECEMBER 14, 2011
rk
O.M.P. No.132 of 2007 Page 27 of 27