The National Internet Exchange of India ( hereinafter “NIXI”),
registered on 19/6/2003 u/s 25, Companies Act, 1956 as a Governmental
non-profit organisation, falls under the Ministry of Communication & IT
under the Department of Electronics & Information Technology. NIXI was established
for peering of ISPs for routing the domestic traffic, better quality of
service, reducing latency and bandwidth. Since 2005, NIXI manages the .IN
Registry ensuring operational stability, security and reliability of the domain
names ending ‘.in’. .IN domain name disputes are resolved by the .IN Dispute
Resolution Policy (hereinafter “INDRP”) and INDRP Rules of Procedure. The
other domain name disputes are resolved in accordance with the Uniform Domain-Name Dispute-Resolution Policy (hereinafter “UDRP”).
The present case deals with the dispute between a domain name and a trade mark.
It also talks about the distinction between the two above mentioned policies
and the different domains that they are applicable in.
registered on 19/6/2003 u/s 25, Companies Act, 1956 as a Governmental
non-profit organisation, falls under the Ministry of Communication & IT
under the Department of Electronics & Information Technology. NIXI was established
for peering of ISPs for routing the domestic traffic, better quality of
service, reducing latency and bandwidth. Since 2005, NIXI manages the .IN
Registry ensuring operational stability, security and reliability of the domain
names ending ‘.in’. .IN domain name disputes are resolved by the .IN Dispute
Resolution Policy (hereinafter “INDRP”) and INDRP Rules of Procedure. The
other domain name disputes are resolved in accordance with the Uniform Domain-Name Dispute-Resolution Policy (hereinafter “UDRP”).
The present case deals with the dispute between a domain name and a trade mark.
It also talks about the distinction between the two above mentioned policies
and the different domains that they are applicable in.
Facts:
1. Purohit applied under the Trademarks
Act, 1999 (“the Act”) on 17.03.2003 to register the trademark
‘internet’ relating to ‘Tobacco, raw or manufactured, smokers’ articles,
matches included in Class 34. The trademark certificate, issued on 13.07.2005
as per Section 23 (1) of
the Trademarks Act, related to the application date. The Sunrise policy and
secured domain name registration benefits using trademark were not
availed.
Act, 1999 (“the Act”) on 17.03.2003 to register the trademark
‘internet’ relating to ‘Tobacco, raw or manufactured, smokers’ articles,
matches included in Class 34. The trademark certificate, issued on 13.07.2005
as per Section 23 (1) of
the Trademarks Act, related to the application date. The Sunrise policy and
secured domain name registration benefits using trademark were not
availed.
2. NIXI issued “Sunrise
Policy” for Indian registered trademark proprietors willing to protect
their marks, .IN domain names, before the general public. The rationale was
preference to Indian persons over foreign entities. Indian trademark
proprietors’ applications were to be submitted to the Registry through an
accredited Registrar. Applications were accepted from 01.01.2005 to 21.01.2005.
Policy” for Indian registered trademark proprietors willing to protect
their marks, .IN domain names, before the general public. The rationale was
preference to Indian persons over foreign entities. Indian trademark
proprietors’ applications were to be submitted to the Registry through an
accredited Registrar. Applications were accepted from 01.01.2005 to 21.01.2005.
3. Koening, a U.S.A resident, had domain
name ‘internet.in‘
registered with the .IN Registry on 16.02.2005. On 31.01.2006, Purohit filed a
complaint with the .IN Registry seeking cancellation of the registration of the
domain name ‘internet.in‘ of Koening. Purohit had used the
trademark ‘internet’ beyond three years. The domain name ‘internet.in‘
was confusingly similar to his trademark. Koening had- allegedly, registered in
the .IN Registry, several domain names with no right or trademark like air.in, computer.in,
etc. His intentions were selling the domain name to Purohit or another
organization. Purohit alleged that Koening had parked the domain name and made
money by luring customers to the website and tricking them into clicking on
ads.
name ‘internet.in‘
registered with the .IN Registry on 16.02.2005. On 31.01.2006, Purohit filed a
complaint with the .IN Registry seeking cancellation of the registration of the
domain name ‘internet.in‘ of Koening. Purohit had used the
trademark ‘internet’ beyond three years. The domain name ‘internet.in‘
was confusingly similar to his trademark. Koening had- allegedly, registered in
the .IN Registry, several domain names with no right or trademark like air.in, computer.in,
etc. His intentions were selling the domain name to Purohit or another
organization. Purohit alleged that Koening had parked the domain name and made
money by luring customers to the website and tricking them into clicking on
ads.
4. Purohit filed a complaint with the
.IN Registry seeking cancellation of the registration of the domain name ‘internet.in‘
of Koening. Thereafter the arbitration on the lines of INDRP was initiated on
the request of Koening.
.IN Registry seeking cancellation of the registration of the domain name ‘internet.in‘
of Koening. Thereafter the arbitration on the lines of INDRP was initiated on
the request of Koening.
5. The
Arbitrator, in the Award dated 05.07.2006, held:
Arbitrator, in the Award dated 05.07.2006, held:
(a) The domain name
‘internet.in‘
of the Koeing was identical and confusingly similar to Purohit’s trademark.
Purohit (Complainant) did not establish his trademark over a generic word;
‘internet.in‘
of the Koeing was identical and confusingly similar to Purohit’s trademark.
Purohit (Complainant) did not establish his trademark over a generic word;
(b) Koeing had no right over the domain name;
(c) Koeing registered the domain name ‘internet.in‘
maliciously.
maliciously.
(d) Koeing was not
entitled to retain the domain name. It was to be cancelled from Registry;
entitled to retain the domain name. It was to be cancelled from Registry;
(e) Purohit was not
entitled to transfer the domain name in his name. His bona fide rights were not
established;
entitled to transfer the domain name in his name. His bona fide rights were not
established;
(f) Koeing could not, allege reverse domain name
hijacking by Purohit.
hijacking by Purohit.
(g) The .IN
Registry should confiscate ‘internet.in‘.
Registry should confiscate ‘internet.in‘.
6. Koening then moved to the Delhi High
Court; the impugned order assented the arbitrator’s finding. The fact was the
goods for which Purohit held registration were not internet related services
which Koening proposed to offer using the domain name. The impugned order
stated that in e-commerce confusion can be caused.
Court; the impugned order assented the arbitrator’s finding. The fact was the
goods for which Purohit held registration were not internet related services
which Koening proposed to offer using the domain name. The impugned order
stated that in e-commerce confusion can be caused.
7. The learned Single Judge dissented
the arbitrator’s conclusions in one issue: Purohit did not establish
legitimate interest over the term ‘internet’. The learned Judge concluded that
the arbitrator found the word generic without trademark rights. The reasoning
was, as Purohit held a valid registration over the said mark, which went
unchallenged by the Koening, the former’s rights over the mark stood
established.
the arbitrator’s conclusions in one issue: Purohit did not establish
legitimate interest over the term ‘internet’. The learned Judge concluded that
the arbitrator found the word generic without trademark rights. The reasoning
was, as Purohit held a valid registration over the said mark, which went
unchallenged by the Koening, the former’s rights over the mark stood
established.
8. The main contention of Koening was
that the INDRP itself states that it is modelled in the line of the UDRP and to
carve such a distinction between INDRP and UDRP as done in the impugned
judgment is contrary to the intention and purpose of the INDRP.
that the INDRP itself states that it is modelled in the line of the UDRP and to
carve such a distinction between INDRP and UDRP as done in the impugned
judgment is contrary to the intention and purpose of the INDRP.
Issues:
1. Whether
UDRP conditions are to be read into INDRP
provisions?
UDRP conditions are to be read into INDRP
provisions?
2. Whether the registration of a trademark, indicates an
interest on the part of the Respondent (Purohit)?
interest on the part of the Respondent (Purohit)?
Decision of the Court
1. The Hon’ble Court found Koeing’s submission that the
UDRP conditions should be read into the INDRP provisions, unpersuasive. INDRP applies; its provisions were
to be considered by the arbitrator in the present case undisputedly. UDRP is
not umbrella legislation or constitutional instrument, to subordinate INDRP in norms’ hierarchy. Neither have force of law.
Instead, since INDRP is the enforcement
mechanism of norms governing NIXI, they constitute the norms applicable.
Nothing in the INDRP text supports the Koeing’s contention; there is no other
compulsion.
UDRP conditions should be read into the INDRP provisions, unpersuasive. INDRP applies; its provisions were
to be considered by the arbitrator in the present case undisputedly. UDRP is
not umbrella legislation or constitutional instrument, to subordinate INDRP in norms’ hierarchy. Neither have force of law.
Instead, since INDRP is the enforcement
mechanism of norms governing NIXI, they constitute the norms applicable.
Nothing in the INDRP text supports the Koeing’s contention; there is no other
compulsion.
2. About a trademark registration, having no legitimate
interest of Purohit; the court said that without conditions to execute
trademark registrations’ search could not, according to Koeing, prejudice him.
A trademark registration depends upon statutory conditions’ fulfilment, subject
to the mark not falling within disqualifying conditions or disallowed in use
and on the basis of its use, or proposal of the applicant to use it, subject to
conditions. Therefore, Koeing’s contention that registration does not confer
legitimate interest is unacceptable. In this context, the learned Judge used
the case Satyam Infoway v. Siffynet Solutions (P) Ltd.; Indian
trademark law would apply for domain name use, wherever confusion or similarity
issues arise between web services or domain names usage.
interest of Purohit; the court said that without conditions to execute
trademark registrations’ search could not, according to Koeing, prejudice him.
A trademark registration depends upon statutory conditions’ fulfilment, subject
to the mark not falling within disqualifying conditions or disallowed in use
and on the basis of its use, or proposal of the applicant to use it, subject to
conditions. Therefore, Koeing’s contention that registration does not confer
legitimate interest is unacceptable. In this context, the learned Judge used
the case Satyam Infoway v. Siffynet Solutions (P) Ltd.; Indian
trademark law would apply for domain name use, wherever confusion or similarity
issues arise between web services or domain names usage.
3. The Court noticed that, the arbitrator and the Judge
found that Purohit had discharged the onus upon him showing that Koeing had no
legitimate interest in .IN. He failed to prove the existence of ingredients such as ” 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.” These findings are fact based and not
reviewable in appeal under Section 37.
found that Purohit had discharged the onus upon him showing that Koeing had no
legitimate interest in .IN. He failed to prove the existence of ingredients such as ” 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.” These findings are fact based and not
reviewable in appeal under Section 37.
4. The Court noted, INDRP dispute resolution mechanism through arbitration falls
within under an arbitration agreement u/s7 of the Arbitration
and Conciliation Act, 1996. Therefore, awards made under the INDRP framework shall be tested under the law applicable for
S. 34, the
courts have limited powers to interfere with arbitral tribunal’s
determinations: if the findings are upon patent legal errors, or contrary to
contract terms, or are unreasonable would interference happen.
within under an arbitration agreement u/s7 of the Arbitration
and Conciliation Act, 1996. Therefore, awards made under the INDRP framework shall be tested under the law applicable for
S. 34, the
courts have limited powers to interfere with arbitral tribunal’s
determinations: if the findings are upon patent legal errors, or contrary to
contract terms, or are unreasonable would interference happen.
Critique:
The judgment stands for future disputes
regarding dispute resolution of NIXI regarding .in’ and other domain names. The
judgment supports the distinction between INDRP and UNDRP provisions as the
learned Judge created. The application reading INDRP provisions with UNDRP
provisions was wrong. A party cannot use any non-applicable law to favour its
case nor can it force the courts to do so. The case also very clearly affirms
that the dispute resolution with respect to INDRP falls within
the ambit of the Arbitration and Conciliation
Act, 1996. Therefore we can conclude that it can be an appealable order u/s 37
of the Arbitration and Conciliation Act, 1996 and can be appealed against if it
satisfies the conditions therein.
regarding dispute resolution of NIXI regarding .in’ and other domain names. The
judgment supports the distinction between INDRP and UNDRP provisions as the
learned Judge created. The application reading INDRP provisions with UNDRP
provisions was wrong. A party cannot use any non-applicable law to favour its
case nor can it force the courts to do so. The case also very clearly affirms
that the dispute resolution with respect to INDRP falls within
the ambit of the Arbitration and Conciliation
Act, 1996. Therefore we can conclude that it can be an appealable order u/s 37
of the Arbitration and Conciliation Act, 1996 and can be appealed against if it
satisfies the conditions therein.
