CHAPTER 5shodhganga.inflibnet.ac.in/bitstream/10603/71803/9/chapter 5.pdf · Resolution of Domain...

Resolution of Domain Name-Trademark Disputes in India

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CHAPTER 5:

RESOLUTION OF DOMAIN

NAME-TRADEMARK

DISPUTES IN INDIA


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5.1 Introduction

The influence of the Internet and the World Wide Web has not

spared the developing country like India. With the expansion of the global

trade, the online medium is increasingly used for manifold commercial

uses.1 The developing countries are experiencing a greater impact of

Internet misuses, since on the one hand, their consumers are misled and on

the other hand, their traders are losing their trademark / domain name rights

as against the big players of the developed world. Though the Indian

economy had a boom with the e-commerce activities, the relative advantage

gained by India is not free from burns. With the realization of the

commercial potential of the Internet, the disputes on the domain names in

India have come to the forefront in the past two decades.

India, unlike the United States (US) has no separate law to deal with

the domain name disputes. Though India has passed Information

Technology Act in 2000, the Act is silent on the domain name disputes. To

start with, the Trade Marks Act 1999 (or its predecessor, Trade and

Merchandise Marks Act 1958) was the only legislation in India to deal with

1 V. K. Unni, Trade Marks and the Emerging Concepts of Cyber Property Rights, (Kolkata:

Eastern Law House, 2002) p. 5 (Foreword by Cyriae Joseph).


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the domain name disputes. The parties had no option but to proceed to the

courts under the Trade Mark Act against the unlawful domain name

registrations, which have infringed the trademarks. However, with the

drafting of the Uniform Domain Name Dispute Resolution Policy (UDRP),

the parties started to avail the services of the international forums under the

UDRP. Finally, the last stage of development in the domain name dispute

resolution in India happened in the form of adoption of .IN Domain Name

Dispute Resolution Policy (INDRP) by the .IN Registry in India.

Thus, the persons aggrieved by the wrongful use of the domain

names in India have three options to settle their disputes. First, a court

litigation under the (Indian) Trade Mark Act. Second, moving to the dispute

resolution service providers (panels) under the UDRP. Third, in case of

registration of the domain name under the IN Registry, resort to the INDRP

to invoke the process of arbitration.

The purpose of this chapter is to analyse the working of the above

three parallel domain name dispute resolution systems, which are available

to the Indian litigants. The primary focus is on the judicial responses in

India relating to the more expansive interpretation of the trademark laws to


226

accommodate the domain name disputes. The general trends in approaching

the UDRP panels and Arbitration under INDRP are also probed into.

5.2 Dealing under the Traditional Trademark Law

In the absence of a separate legislation, the domain name disputes are

dealt under the traditional trademark law by the Indian judiciary.2 Since

India, being a common law country, recognizes both the trademark

infringement actions3 and passing off actions

4, the Courts have decided the

cases under both provisions of the Trade Mark Act 1999. In the cases of

trademark infringements on the Internet to deceive the public in India, the

courts have exercised the jurisdiction to protect the trademark rights and

also to prevent the public deception. However, such an exercise of

2 In Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. AIR 2004 SC 3540, the honorable Supreme

Court has observed that “As far as India is concerned, there is no legislation which explicitly refers

to dispute resolution in connection with domain names. But although the operation of the Trade

Marks Act, 1999 itself is not extra territorial and may not allow for adequate protection of domain

names, this does not mean that domain names are not to be legally protected to the extent possible

under the laws relating to passing off.”

3 Sec. 29, Trade Mark Act 1999.

4 Sec. 27(2), Ibid.


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jurisdiction is often confined to the cases involving the parties situated in

India or carrying on trade in India in respect of same products.5

5.2.1 Beginning with the Yahoo Inc.

The initial trend in the domain name litigation in India reveals the

significant reliance on the passing off actions, since most of the trademarks

were not registered.6 The first and the most significant case in this regard is

Yahoo Inc. v. Akash Arora and Another7. In this case, the plaintiff moved to

the Delhi High Court against the defendants seeking a permanent injunction

to restrain the defendants from operating business under the trademark /

domain name „yahooindia.com‟ or under any other mark / domain name,

which is deceptively similar to the plaintiff‟s trademark „Yahoo!‟.

The plaintiff contended that it is the owner of the trademark „Yahoo!‟

and the domain name „yahoo.com‟, which are well known worldwide and

acquired distinctive reputation and goodwill. By adopting the domain name

5 Rahul Matthan, The Law Relating to Computers and the Internet, (New Delhi: Butterworths,

2000) p. 371.

6 A. K. Chakravarti and R. C. Tripathi, „Exploring Possibilities in e-Enabled Legal Profession in

IPR‟, in Kamlesh N. Agarwala and Murli D. Tiwari (ed.s), IT and Indian Legal System, (New

Delhi: Mac Millan, 2002) pp. 147 - 159 at p. 155.

7 1999 PTC (19) 201.


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„yahooindia.com‟ and rendering the services similar to the plaintiff, the

defendants are argued to be passing off the services in the name of plaintiff.

According to the plaintiff, its domain name is also entitled to equal

protection against the passing off like in the case of a trademark. The

plaintiff submitted that the defendants‟ domain name is identical or

deceptively similar to that of its trademark and domain name. Since the web

users are accustomed to the habit of typing www.(company name).com or

www.(product name).com while searching for the unknown website, there

is every possibility of people searching for India-specific content in the

Yahoo! site to type yahooindia.com and thereby reaching the defendants‟

website unintentionally. The defendants are also involved in rendering

services similar to the plaintiff and as such, the dishonesty is argued to be

apparent on the face of their activities.

The defendants refuted the above arguments on several counts. First,

Sections 27(2) and 29 of the Trade and Merchandise Marks Act 19588

relating to the passing off are argued to be confined to trade in goods, and

the present case, which involves trade in services, is not covered within the

ambit of those provisions. Similarly, an infringement action is also not

8 This case was under the 1958 Act, since the 1999 Act was still in the making.


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maintainable, since the plaintiff has not registered its trademark. Second, the

„Yahoo!‟ is not invented, but a general dictionary word, and therefore, the

plaintiff cannot appropriate it as a domain name or trademark. It was also

argued that „Yahoo!‟ could not acquire any distinctiveness or reputation,

since it is a common dictionary word.

Third, the defendants argued that there is no deception caused to the

public by their use of „yahooindia.com‟. This is because, the Internet users

are the sophisticated and technically educated persons, who cannot

mistakenly reach the defendants‟ website while in search of the plaintiff. In

addition, the two domain names are distinguished by the word „India‟, and

also the defendants highlighted the disclaimer in their website, which,

according to them, would remove the possibility of any deception.

The Court rejected all the contentions of the defendants. It started

with the observation that the passing off actions under the Trade and

Merchandise Marks Act applies to goods as well as services, since it is

based on the common law jurisprudence, which allowed actions relating to

trade in services. In arriving at this conclusion the Court referred to

Monetary Overseas v. Montari Industries Ltd.9, Neev Investments and

9 1996 PTC 142.


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Trading Pvt. Ltd. v. Sasia Express Couriers10

, Ellora Industries v. Banarsi

Dass and Others11

, Reddaway v. Banham12

and Marks & Spencer v. One-

in-a-Million13

.

The High Court found that the plaintiff had a global presence under

the domain name / trade name „Yahoo!‟. The domain name „yahoo.com‟

was registered by the plaintiff in 1995 and its trademark was registered or

pending registration in 69 countries. There was also a pending application

for registration in India. These factors coupled with wide popularity of the

plaintiff are indicative of the distinctiveness or goodwill acquired by the

domain name / trade name „Yahoo!‟. Thus, the Court observed that the

dictionary words can acquire the distinctiveness or uniqueness over the

period of time, and they are entitled to protection under the laws relating to

passing off. The Court referred to the Supreme Court‟s verdict in N. R.

Dongre v. Whirlpool Corporation14

, wherein the „Whirlpool‟ was protected

10

1993 PTC 184.

11 1981 PTC 46.

12 1696 A.C. 199.

13 1998 FSR 265.

14 1996 PTC 583.


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as a distinctive mark regarding the washing machines, though it is a

dictionary word.

The third limb of the defendants‟ argument that the Internet users are

the sophisticated consumers and hence, there is no possibility of consumer

confusion was also disapproved by the Court. According to the Court, even

though the individual may be a sophisticated user of Internet, he may be an

unsophisticated consumer of information. Therefore, the possibility of such

consumers perceiving the defendants‟ website, which provides almost

similar type of information, as that of the plaintiff cannot be ruled out.

While rejecting the defence of disclaimer in the defendants‟ website, the

Court held that due to the nature of the Internet, the defendants‟

misappropriation of plaintiff‟s mark cannot be remedied by a mere

disclaimer.

The Court also found that the use of the word „India‟ by the

defendants has not distinguished their domain name from that of the

plaintiff‟s trademark / domain name. The Court relied on Ruston and

Hornby Ltd. v. Zamindara Engineering Co.15

, wherein the Supreme Court

has clearly stated that “if there be close resemblance between the two marks

15

AIR 1970 S.C. 1649.


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and they are deceptively similar to each other, the word „India‟ added to one

mark is of no consequence.” The Court further found that the plaintiff was

also using regional names after „Yahoo!‟ like „yahoo.ca‟ (for Canada) and

„yahoo.fr‟ (for France), and therefore, there is every possibility of people

believing „yahooindia‟ as part of Yahoo marks / domain names leading to

the consumer confusion. In light of these factors, the Court granted

injunction against the defendants from using the said trademark / domain

name or a variant of them.

The ratio of Yahoo Inc. was subsequently followed in several cases

before the Indian judiciary, cementing the position of trademark law as the

basis of domain name litigations. Rediff Communications Ltd. v. Cyber

booth and Another16

immediately followed the Yahoo case. In this case, the

plaintiff was carrying on the business of communication and rendering

services through their registered domain name „rediff.com‟. Upon the

defendants‟ registration of „radiff.com‟, the plaintiff filed a suit for

permanent injunction restraining the defendants from using radiff.com and

any mark/domain name, which is deceptively similar to that of the plaintiff.

16

AIR 2000 Bom. 27.


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The plaintiff‟s contention was that in registering radiff.com, the

defendants clearly intended to cause the members of public to believe that

the defendants were associated with the plaintiff and / or were part of the

Rediffusion group. This, according to plaintiff, is done deliberately to pass

off the defendants‟ business, goods and services as that of the plaintiff.

Thus, though there was no registration of the trademark by the plaintiff, the

passing off was invoked as the basis for action against the defendants.

In reply, the defendants argued the absence of similarity between

„rediff‟ and „radiff‟ on the basis of dissimilarity in the services rendered,

and look and feel of the websites. While the plaintiff‟s website was like a

web newspaper and provided various services from news to shopping, the

defendants‟ website provided hypertext links to its advertisers‟ websites.

The users of the website, being educated persons and skilled in the use of

computers, were argued to be not deceived by the defendants‟ website and

thus, there is no possibility of confusion. The defendants also argued that

there is no evidence of „rediff‟ being well-known, which is an essential

element of passing off action. In addition, the „radiff‟ was contended to be

coined by taking the first three letters of the word „radical‟ and first letters


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of words „information‟, „future‟ and „free‟, which they are genuinely

entitled.

The Bombay High Court began its analysis by recapitulating the

well-established principles of passing off. Lord Diplock‟s observation in the

famous Advocates’ case17

outlines the following elements of passing off.

(1) mis-representation, (2) made by a person in the course of trade,

(3) to prospective customers of his or ultimate consumers of goods or

services supplied by him, (4) which is calculated to injure the

business or goodwill of another trader (in the sense that this is a

reasonably foreseeable consequence and (5) which causes actual

damage to a business or goodwill of the trader by whom the action is

brought or (in a quia timet action) will probably do so...

The Court also relied on the Indian jurisprudence of passing off

evidenced in its Division Bench‟s verdict in Aktiebolaget Volvo of Sweden

v. Volvo Steels Ltd. of Gujarat18

. The relevant portion of the decision reads

as follows.

17

Erven Warnink v. Townend, 1980 R.P.C. 31.

18 1998 PTC 18.


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...that the crux of the passing off action lies in actual or possible or

probable deception. The plaintiff necessarily has to establish

reputation and goodwill. In quia timet action he must also show the

probability of the plaintiffs suffering damage either in trade or to his

goodwill and reputation. Deception may be of several kinds i.e. that

the public may think that the goods manufactured by the defendants

are in fact manufactured by the plaintiffs. ....

In light of the above principles, the High Court looked into the

factual circumstances in the present case and found it to be a fit case of

passing off. To start with, the Court found that the kind of services rendered

by the plaintiff and the defendants are quite similar, since both offered the

facility of sale of books, music cassettes, compact discs and flowers. In

addition, both offered chat lines and cricket opinion poll. The business of

the plaintiff is also well known with its group‟s turnover being more than

Rs. 250 crores.

The Court found that the two marks/domain names in question,

„rediff‟ and „radiff‟ are almost similar and there is every possibility of the

Internet users being confused and deceived. Though the web users are

educated, the possibility of them accessing the defendants‟ website


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believing it to be that of plaintiff cannot be ruled out especially in the light

of striking similarity between the two domain names in question. Moreover,

a first time visitor cannot possibly distinguish one website from another,

neither of which he has visited earlier. The contention that the word „radiff‟

was derived from four words mentioned above was rejected by the Court

stating that it is a fictitious creation to answer the claim of the plaintiff.

Thus, the Court was satisfied that the object of registering the domain name

„radiff.com‟ was to trade upon the reputation of the plaintiff and nothing

else. It went on to observe that “once the intention to deceive is established,

the Court will not make further enquiry about likelihood of confusion.”

Lastly, the Court noted that from May 1998 to January 1999, the

same webpage along with the above-mentioned services were offered by the

defendants on the website „indianservice.com‟. The said website was still

continuing with the same kind of services at the time of the dispute. This,

according to the Court, is the clear indicator of the fact that the defendants

have adopted the domain name radiff.com with the intention to trade on the

plaintiff‟s reputation. The Court granted the injunction against the

defendants, and the subsequent special leave petition before the Supreme

Court was also dismissed.


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The trend in upholding the rights of the trademark holders continued

with a number of subsequent cases, especially before Delhi High Court. In

Titan Industries Ltd. v. Prashant Koorapati19

, the plaintiff‟s trademark

„tanishq‟ was protected with an order restraining the defendant from

registering or using the said trademark or its variant on the Internet or

otherwise. In Dr. Reddy’s Laboratories Limited v. Manu Kosuri and

Another20

, the defendant‟s domain name „drreddyslab.com‟ was found by

the Delhi High Court to be deceptively similar to the plaintiff‟s well-known

trademark, „Dr. Reddy‟s‟. While upholding the passing off action, the Court

issued a permanent injunction against the defendant.

In Tata Sons Limited v. Mr. Manu Kishori & Others21

, the

defendants‟ registration of series of domain names with „tata‟ as a part of

each of them was held to be the infringement of trademark rights of the

plaintiffs, who were the registered proprietors of trademark „Tata‟ since

1917 and were also well-known in various business activities. The attempts

19

See Tan Tee Jim, „Trade Mark Use on the Internet‟, available at

<http://www.ficpi.org/library/montecarlo99/tminternet2.html> Last visited, 18 December 2013.

20 2001 PTC 859.

21 2001 PTC 432.


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to misappropriate the Tata‟s business reputation by others continued despite

the above decision, leading to several litigations not only in Indian courts

but also before UDRP panels.22

In Acqua Minerals Ltd. v. Pramod Borse23

,

the plaintiff‟s registered trademark „Bisleri‟ was protected with an

injunction against the defendant from using the domain name „bisleri.com‟.

In Info Edge India Pvt. Ltd. & Another v. Shailesh Gupta &

Another24

, the plaintiff‟s domain name „naukri.com‟ was conferred with the

trademark protection, since it has acquired the status of a trademark with the

popularity. Though „Naukri‟ is a generic Hindi word, it was held to be

bestowed with secondary meaning over the period of time. The Court

ordered the defendants to refrain from using their deceptively similar

domain name, „naukari.com‟.

22

See, for example, Tata Sons Limited v. Ghassan Yacoub and Others, 2004 (29) PTC 522 Del.,

wherein the Court ordered the transfer of „tatagroup.com‟ to the plaintiff. See also Tata Sons Ltd.

and Another v. Fashion Id Ltd., 117 (2005) DLT 748, wherein the Court decreed the transfer of

„tatainfotecheducation.com‟ to the plaintiff.

23 2001 PTC 619.

24 2002 PTC 355.


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In Casio India Co. Limited v. Ashita Tele Systems Pvt. Limited25

, the

Japanese subsidiary, Casio India, could get an order of injunction against

the defendants from using www.casioindia.com. Similarly, in Penbooks Pvt.

Ltd. v. Padmraj26

, the defendant‟s registration of www.penbooks.com was

held to be an act of cybersquatting and an order of restraint was imposed on

the defendant.

Two significant cases, wherein the trend of favouring the trademark

rights was not followed, during early twenty-first century are Online India

Capital Co. Pvt. Ltd. v. Dimensions Corporate27

and Manish Vij and Others

v. Indra Chugh and Others28

. In Online India Capital case, the plaintiffs

had „www.mutualfundsindia.com‟ as their registered domain name and

were rendering services relating to mutual funds. They contended that the

registration of „www.mutualfundindia.com‟ by the defendant is done

mischievously and fraudulently to deceive the public.

25

106 (2003) DLT 554.

26 2004 (29) PTC 137.

27 2000 VAD Delhi 860.

28 AIR 2002 Delhi 243.


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The defendant contended that the term mutual fund is a

descriptive/generic word and cannot posses trademark right. The defendant

also brought forward the facts that the plaintiffs were new company with

less than one year existence and defendant had more than six years of

existence with an enviable track record in corporate finance and allied

services. The plaintiff‟s domain name was also registered just six to seven

months prior to the defendants. In light of all the above factors, the Court

held that the plaintiffs failed to make a prima facie case to grant injunction

against the defendant. The Court emphasised on the descriptive nature of

the term, and held that it has not acquired secondary meaning to grant any

trademark protection.

Similarly, in Manish Vij case, the plaintiffs requested permanent

injunction against the defendants from using „www.kabaribazaar.com‟,

which, according to them, violates their rights in „www.kabadibazaar.com‟.

The Court initially granted the ex-parte injunction in favour of the plaintiffs,

but the defendants applied for the revocation of injunction on the ground

that „kabadibazaar‟ is a generic term. In Hindi, „Kabadi‟ is a person who

takes away unwanted goods from the house, and „Bazaar‟ is the place where

the trading takes place. Thus, „kabadibazaar‟ is not a newly coined word;


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rather it means the market place of second hand goods. The Court finally

agreed with the defendants‟ contention and concluded that the said domain

name is descriptive in nature and there is no evidence of it acquiring any

secondary meaning. Hence, the ex-parte injunction against the defendants

was revoked.

5.2.2 Apex Court‟s Verdict in Satyam Infoway

Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.29

is the first

domain name case before the Supreme Court of India. The appellant in this

case had registered several domain names including sifynet.com,

sifymall.com, sifyrealestate.com etc. The respondent started the business of

Internet marketing via siffynet.net and siffynet.com, which were registered

by it in 2001 and 2002 respectively. The appellant moved to the City Civil

Court against the respondent on the ground that the respondent is passing

off the business and services under its name. In support of this contention,

the appellant also claimed wide reputation and goodwill in the name „Sify‟,

which it contends to have invented by using the elements of its corporate

name „Satyam Infoway‟.

29

Supra note 2.


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The City Civil Court held in favour of the appellant by observing that

the respondent‟s domain names are deceptively similar to that of the

appellant‟s domain names and this would result in confusion in the minds of

the public. The respondent filed an appeal to the High Court, which

reversed the decision of the City Civil Court. In upholding the respondent‟s

contentions, the High Court held that merely because the appellant had

started the business first, one cannot decide in its favour without

considering the balance of convenience. The High Court doubted the

appellant‟s acquisition of reputation or goodwill in „Sify‟, and went on to

observe that the respondent was doing an entirely different business from

that of the appellant. Hence, there is no possibility of customer confusion.

The High Court concluded with its observation on the balance of

convenience. It found that the respondent had already made huge

investment in its business and enrolled about 50,000 members by then.

Therefore, the respondent would be subject to great hardship and

inconvenience as well as irreparable injury, if the injunction is granted

against it. However, according to the High Court, the appellant had a

separate trade name in the form of „Satyam Infoway‟ and as such, no injury

or hardship would be caused to it in the absence of injunction.


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The appellant preferred an appeal to the Supreme Court against the

High Court‟s verdict. The respondent put forward many arguments before

the Supreme Court. First, the respondent argued that the domain name is

merely address in the Internet and registration of domain name does not

confer any property right like trademarks. Therefore, the domain names

would not come within the definition of „trade mark‟ under the (Indian)

Trade Marks Act 1999. Second, there is no goodwill attached to the

appellant in the name „Sify‟. Third, the word „Siffy‟, according to the

respondent, is derived from the combination of first letter of its five

promoters, namely Saleem, Ibrahim, Fazal, Fareed and Yusuf. Thus, the

respondent claims its genuine use coupled with the argument that it never

knew about the appellant‟s trade name „Sify‟. Lastly, the respondent says

that the confusion is unlikely, since their sphere of operation is entirely

different from that of the appellant.

The Supreme Court rejected each of the above arguments of the

respondent on the following grounds. A preliminary and the most crucial

issue addressed by the Supreme Court in this case is the possibility of

granting protection to the domain names under the Trade Mark Act. The


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Court looked into the definitions of „trade mark‟30

, „mark‟31

, name,32

„goods‟33

and „services‟34

under the Act to address the question. By

analysing cumulatively, the Supreme Court observed that the domain

names, with the increase in online commercial activities, are used as

business identifiers on Internet. Each domain name owner in the

commercial field provides information/services, which are associated with

such domain name. Thus, the domain name may pertain to provision of

services as stipulated under Section 2(z) of the Trade Mark Act. Since the

30

Sec. 2(zb): „Trade mark‟ means “a mark capable of being represented graphically and which is

capable of distinguishing the goods or services of one person from those of others and may include

shape of goods, their packaging and combination of colours”.

31 Sec. 2(m): „Mark‟ includes “a device, brand, heading, label, ticket, name, signature, word, letter,

numeral, shape of goods, packaging or combination of colours or any combination thereof”.

32 Sec. 2(k): „Name‟ “includes any abbreviation of a name”.

33 Sec. 2(j): „Goods‟ means “anything which is the subject of trade or manufacture”.

34 Sec. 2(z): „Services‟ means “service of any description which is made available to potential users

and includes the provision of services in connection with business of any industrial or commercial

matters such as banking, communication, education, financing, insurance, chit funds, real estate,

transport, storage, material treatment, processing, supply of electrical or other energy, boarding,

lodging, entertainment, amusement, construction, repair, conveying of news or information and

advertising”.


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domain names may have the trappings of trademarks, the Supreme Court

observed that the legal norms applicable to the trademarks are squarely

applicable to domain names.

Having said this, the Supreme Court started to probe into the passing

off claim. It first observed that plaintiff in a case need not prove the long

use to establish the reputation or goodwill, rather what is crucial for such

proof is the volume of sales and extent of advertisement. In the present case,

the appellant had brought before the Court the press clipping of

articles/newspapers in which the appellant has been referred to as „Sify‟ and

also the evidence of it being listed as the first Indian Internet company with

NASDAQ35

under the trade name „Sify‟, which according to the Supreme

Court were sufficient to establish the goodwill or reputation claimed by the

appellant in the trade name „Sify‟.

The two words in question, „Sify‟ and „Siffy‟, are both visually and

phonetically similar, and the addition of „net‟ to „Siffy‟ does not make much

change in the position. The contention of the respondent that „Siffy‟ was

derived from the combination of first letter of its promoters was rejected by

the Supreme Court in the light of suspicious circumstances. The facts

35

Appellant was listed in 1999 and it was also published in several newspapers.


246

revealed that the original written statement included only four names of the

partners and the fifth was added in the counter affidavit before the Supreme

Court. In addition, the domain name was initially registered in the name of

another person by name C. V. Kumar, who apparently was described as a

former partner. Thus, the Court found that the respondent‟s contention had

no merit and was a post facto argument to defend itself. It also refused to

take the argument that the respondent did not know the presence of

appellant as „Sify‟.

On the contention that the respondent‟s business is nothing to do

with the appellant‟s business, the Court on the one hand found some overlap

in the businesses. The respondent‟s website advertises itself as the provider

of inter alia software solution, integrating and management solutions and

software development, which were also done by the appellant. On the other

hand, the Supreme Court observed that the domain name is accessible by all

Internet users and need to maintain exclusivity is crucial for all the business

enterprises. Existence of a deceptively similar domain name may not only

lead to the consumer confusion but also act as a source of receiving

unsought for services.


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Finally, on the balance of convenience, the Supreme Court observes

that the nature of business in this case requires the exclusive identity via

domain name. Therefore, either „Sify‟ or „Siffy‟ should exist, and not both.

In light of this, the appellant‟s claim must prevail, since it has placed

sufficient evidence of prior use as well as the public perception of „Sify‟

being associated with it. The High Court‟s finding that there would not be

any prejudice to the appellant in the absence of injunction due to the

existence of its another name was rejected, given the absence of bonafide

concurrent use by the respondent. The Court concluded that the respondent

was trying to encash the reputation of the appellant as an Internet service

provider. Therefore, the injunction was granted against the respondent.

5.2.3 Developments after Satyam Infoway

Further development in the Indian jurisprudence relating to domain

name-trademark conflicts can be seen in Times Internet Ltd. v. Just Flowers

and Another36

and Super Cassettes Industries Ltd. v. Mr. Wang Zhi Zhu Ce

Yong Hu37

. In both the cases, the Delhi High Court awarded the damages to

36

MANU/DE/2909/2007.

37 CS(OS) No. 769/2004, available at <http://indiankanoon.org/doc/69410/> Last visited, 18

December 2013.


248

the plaintiffs. In Times Internet Ltd., the plaintiff‟s mark „indiatimes‟ and

domain name „indiatimes.com‟ were hijacked by the defendants with the

subsequent registration and use. Though the plaintiff did not lead evidence

with regard to extent of damage incurred by the defendants‟ use, the Court

went on to award the punitive damages to the extent of Rs. 3 lakhs in favour

of the plaintiff.

In Super Cassettes Industries Ltd., the plaintiff was carrying on its

business under the corporate name „Super Cassettes‟, since its incorporation

in 1983. In 2003, the defendants registered the domain name

supercassetes.com to carry on the business of films, which was also the

plaintiff‟s business. The evidences indicated that there was a monetary loss

to the plaintiff to the tune of at least Rs. 25 lakhs owing to the impugned

website coupled with the loss of goodwill and reputation in the trade name.

The above facts and the evidence as to the defendants‟ practice of

registering the domain names with the trademarks/trade names of the

successful business enterprises were sufficient enough to hold the

defendants guilty, and a permanent injunction was imposed against them. In

addition, since the acts of defendants were against the corporate philosophy


249

and image of the plaintiff, the judge awarded compensation of Rs. 5 lakhs

against the defendants.

The next significant case in the domain name jurisprudence of India

is Rolex Sa v. Alex Jewellery Pvt. Ltd. and Others38

. The plaintiff in this

case was a Switzerland company dealing with the premium quality watches

and related instruments. It had first registered the trademark „Rolex‟ in 1908

at Switzerland and also had registered subsequently in 140 jurisdictions

across the world, including India. The defendants were Bombay and Delhi

based companies, who began the business of artificial jewellery under the

mark „Rolex‟. They also registered the domain name

„rolexjewelleryhouse.com‟ in 2007. Having aggrieved by this, the plaintiff

brought an action against the defendants for their trademark infringement.

The defendants put forward the following defences in the case. First,

the suit is argued to be barred by limitation, since the plaintiff was aware of

the use of „Rolex‟ by the defendants at least from 2001. This was evident

from the fact that the defendants‟ application for the trademark registration

of „Rolex‟ was opposed by the plaintiff long back. Second, the inaction of

the plaintiff for such a long period has allowed the defendants to develop

38

MANU/DE/0796/2009.


250

their business in and around „Rolex‟ as trademark. Therefore, the

defendants invoked principle of estoppel coupled with laches and

acquiescence against the plaintiff.

Third, the business of the plaintiff is entirely different from that of

the defendant, since the former is carrying on the business in watches and

the latter is dealing with artificial jewellery. Due to this, the defendants

argued, there is no possibility of consumer confusion or deception. Fourth,

the „Rolex‟ is a common word with more than 25 parties having registration

for different classes of goods from 1953 onwards. In addition, there are also

a large number other users of the mark „Rolex‟ in the course of trade of

different goods, which is reflected in the telephone directory listing 150

such parties. The defendants were of the view that the mark of the plaintiff

is not distinctive in the presence of many registrations and users, and the

reputation, if any, in the mark was diluted with the inaction of plaintiff.

Fifth, the defendants contended that they have acquired reputation in

trademark with an annual turnover ranging from 2 crores to 4 crores, of

which 70% to 80% of sales are affected through the trademark „Rolex‟. The

defendants also contended the ignorance about the famousness of the

plaintiff‟s mark.


251

The Court rejected all the contentions of the defendants. Most

significantly, the Court held that the infringement is a continuous cause of

action and the defence of Limitation Act is not available. The estoppel

argument was found baseless, since there cannot be any estoppel against

statute. The defence of acquiescence or laches is available only when there

is any evidence of positive act of encouragement to do something by the

plaintiff. The Court not only found the absence of such positive act by the

plaintiff, but also observed that the opposition filed by the plaintiff for

trademark registration by the defendants is the evidence of plaintiff

challenging the act of defendants.

The Court also observed a close connection between the watches and

jewellery, especially in the light of changing trends. The modern day use of

watch is not confined to know the time, but extends as an ornament. Thus,

the expensive brands of watches are also sold at the retail outlets of

jewellers. Hence, there is every possibility of consumer confusion by the

defendants‟ use of the mark „Rolex‟. The Court further went on to hold that

the use of the mark „Rolex‟ by many others is completely immaterial in the

present case. Such use cannot be the basis for holding the loss of

distinctiveness of the mark in this case. Merely the fact that the plaintiff did


252

not take any action against others is not a ground to deny relief to it in the

present case.

Finally, the Court rejected the contention of ignorance by the

defendants. The facts clearly indicated a more than 90 years of prior use of

the mark by the plaintiff, which should have been known to the defendants.

Even if at the time of commencing the use of the mark, the defendants did

not know the inherent risk in using the mark, at least, immediately after the

opposition by the plaintiff for the defendants‟ registration of trademark, they

must have become aware of the risk. Had the intention been bona fide, the

defendants would have immediately changed their name. In the absence of

such bona fide act, the defendants have taken the unfair advantage of

reputation and the goodwill of the plaintiff‟s mark, and they cannot contend

any reputation or goodwill earned out of their mala fide act. Therefore, the

Court held that the defendants are neither entitled to use the mark „Rolex‟

nor the domain name „rolexjewelleryhouse.com‟.

The passing off actions outlined in the above cases is advantageous

to the plaintiff, since it is maintainable against even the registered owner of

the trademark. Unlike in case of UDRP and INDRP proceedings, there is no

requirement of proving the bad faith of the defendant. Even if the domain


253

name is registered in good faith or innocently, the trademark owner has got

remedies against the registrant.39

Therefore, the protection under the Trade

Mark Act is stronger than under other mechanisms. However, the

geographical limitation of the Trade Mark Act is a concern for the

protection of the domain names, which require the world wide exclusivity.40

5.3 Resorts to UDRP

The national limitations of the trademark laws coupled with the

delays in the court litigations have motivated the development of

international dispute resolution mechanism in the form of UDRP. The

delays in the Indian courts and the cost involved in the litigation are always

a matter of general concern among the Indian litigants. In order to overcome

these problems, a growing number of Indian companies are proceeding

under the UDRP to settle their domain name disputes. The general trend in

39

Praveen Dalal, „Securing Domain Name Protection in India‟, available at

<http://tlnind.blogspot.in/2011/04/securing-domain-name-protection-in.html> Last visited, 05

December 2013.

40 „Protection of Domain Name by Indian Judiciary‟, available at

<http://legalservices.co.in/blogs/entry/-Protection-of-domain-name-by-Indian-judiciary> Last

visited, 05 December 2013.


254

India shows that the WIPO Arbitration and Mediation Centre is the most

preferred forum under the UDRP.

In Bennett Coleman & Co. Ltd. v. Steven S. Lalwani41

and Bennett

Coleman & Co. Ltd. v. Long Distance Telephone Company42

, the

complainants had to move to the WIPO Panel, since the respondents were

US residents. This is one of the cases wherein the WIPO Panel has

consolidated the complaints in accordance with Paragraph 4(f) of the

UDRP. The complainants were the well-known publisher of The Economic

Times and The Times of India, both of which were their registered

trademarks in India. They had also registered domain names in the form of

economictimes.com and timesofindia.com for the electronic publication of

their respective newspapers. Upon the registration of theeconomictimes.com

by the respondent in the first case and thetimesofindia.com by the

respondent in the second case, the complainants sought remedy under the

UDRP against the bad faith registrations. The respondents‟ contentions of

absence of trademark registration in US and the absence of likelihood of

41

WIPO Case No. D2000-0014 (11 March 2000).

42 WIPO Case No. D2000-0015 (11 March 2000).


255

confusion were rejected by the WIPO Panel, and the respondents were

directed to transfer the domain names to the complainants.

In Philips India Ltd. v. Proton Engineers43

, the complainant, an

electronics giant in India, had engaged a Pune-based company (the

respondent) for developing a website on behalf of its electronics division.

However, the respondent registered the domain name „philipsindia.com‟ in

its own name instead of complainant‟s name. Subsequently, the complainant

assigned the work of developing a website for the entire company to

Rediffusion Communications and asked the respondent to stop working on

the website of electronics division. Upon the rejection of the respondent, the

complainant approached the National Arbitration Forum under the UDRP.

The panellists held in favour of the complainant and ordered the respondent

to transfer the domain name in favour of Philips India.

In Tata Sons Ltd. v. The Advanced Information Technology

Association44

, the complainant challenged the registration of tata.org by the

respondent on the ground of bad faith registration. The WIPO Panel relied

on the earlier decisions of the Indian courts involving the complainant to

43

National Arbitration Forum File No. FA#0001000092529 (07 March 2000).

44 WIPO Case No. D2000-0049 (4 April 2000).


256

find out the popularity of the name Tata. It also found that Tata is a rare

surname with no obvious meaning, and as such, it is entitled to high degree

of protection. The respondent belonged to the same city of complainant and

obviously was aware of the reputation in the name Tata. In addition, the

respondent was merely hoarding the domain name and did not activate it. In

light of these factors the bad faith was proved, and the respondent was

asked to transfer the domain name to the complainant.

In Mahindra & Mahindra Limited v. Neoplanet Solutions45

, a well-

known business house in India, Mahindra and Mahindra, has approached

the WIPO Panel to get back the domain name mahindra.com. The

respondent had registered the said domain name and transferred his original

address in India to one in the US, presumably to escape the jurisdiction of

the Indian Courts. Upon the receipt of notice from WIPO, the respondent

added a page to the website welcoming web users to the official website of

Dr. Mahindra and describing his fight against poverty. In addition, the

respondent contended that the Network Solutions Inc. (NSI) had earlier

recognised his complete rights in the said domain name. While rejecting

these arguments, the WIPO Panel observed that the NSI had only the power

45

WIPO Case No. D2000-0248 (02 June 2000).


257

to „keep on hold‟ a disputed domain name before the entry into force of the

UDRP. Thus, the earlier judgment of NSI had not conferred any conclusive

rights to the respondent, and since the domain name in this case is identical

to the trademark of the complainant, the respondent was asked to transfer

the domain name to the complainant.

In Oberoi Hotels Pvt. Ltd. v. Arun Jose46

, the complainant was the

established business group owning several hotels in India under the names

„The Oberoi‟ and „The Trident‟. Respondent registered the domain name

tridenthotels.com and did not use it for a long time. The failure of the

respondent to use the domain name was perceived by the Panel as the

evidence of both bad faith registration and use. Further the respondent‟s

contention that he was planning to start hotel business in the near future

went against him, as the Panel concluded that the respondent was trying to

pass off his goods and services as those of the complainant‟s.

In Maruti Udyog Ltd. v. Maruti Infotech47

, the complainant, a well-

known car manufacturer, sought for the transfer of the domain name

„maruti.org‟, which was registered by the respondent. The complainant

46

WIPO Case No. D2000-0263 (07 June 2000).

47 WIPO Case No. D2000-0520 (26 July 2000).


258

established the fact that a person of average intelligence and imperfect

recollection would be confused with the domain name as something relating

to the complainant. This consumer deception would damage the goodwill

associated with their trademark „maruti‟. In addition, it was proved that the

respondent sought to sell the domain name for a valuable consideration.

Thus, the panellists found an intent on the part of the respondent to make

unmerited profit from the registration of the domain name.

Subsequent to the above discussed initial decisions in favour of the

trademark holders, hundreds of Indian cases have approached the UDRP

panels in the last decade. Unfortunately, the trend in the recent past unveils

differing interpretations by the UDRP panels resulting in the

unpredictability of decisions. Some of the significant (may also be

controversial) decisions in the recent past are as follows.

In Volunteering Travel Solutions Pvt. Ltd. v. Puran Tours48

, the

respondent‟s registration of volunteeringindia.org was challenged by the

complainant as violation of its common law right of trademarks and also

confusingly similar to its own domain name volunteeringindia.com. The

complainant produced the income tax returns, newspaper write-ups and

48

WIPO Case No. D2011-0865 (04 July 2011).


259

testimonials from its customers to establish the common law trademark

rights. The respondent countered the complainant‟s claim on the ground of

absence of trademark rights of the complainant. According to him, the word

„volunteering‟ is descriptive and „India‟ is geographic name, and the

combination of two cannot grant any exclusive right in the absence of

secondary meaning, which is not attained in this case. Moreover, the

respondent‟s domain name was registered three year prior to that of the

complainant, and therefore, it is argued to be a case of reverse domain name

hijacking.

The Panel observed that in the cases involving descriptive words, a

greater degree of proof is required, and thus, the onus on the complainant in

establishing the rights acquired through the secondary meaning is

proportionately higher. The inherently weak mark of the complainant in the

present case required a higher standard of proof, which according to the

Panel is not established by the documents submitted by the complainant.

But again, the Panel found that the respondent‟s claim of bad faith litigation

was also not proved sufficiently with the evidences. Hence, the complaint

was denied, but no finding on the reverse domain name hijacking was made

by the Panel.


260

One more significant controversy involved in this case was regarding

the acceptance of the unsolicited supplemental filings from the parties.

Though the supplemental filings of the parties are not generally accepted

under the UDRP, the general trend shows that the Panel has the discretion to

accept or reject them based on the facts and circumstances.49

In the present

case, the complainant filed the supplemental submissions on the ground of

respondent‟s forgery and fabrication of the document relating to the

contended prior registration, and also about the possible trademark rights in

the common dictionary words. Respondent submitted the supplemental

filings refuting both limbs of complainant‟s claims in the supplemental

filings. However, the Panel rejected to entertain the supplemental

submissions on the ground that the parties had enough opportunity to make

those submissions in their initial submissions. It also held that the forgery

claims are not entertained under the UDRP proceedings.

49

See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No.

D2001-1447 (20 February 2002); See also Can I Do Better Internet Corp. v. Blastapplications,



261

The Tata Sons Ltd. v. Tata Massage50

is an instance of conflicting

decisions by the municipal court and the UDRP Panel due to the possibility

of parallel litigations. In this case, the complainant filed a UDRP complaint

and then proceeded with a court case at Delhi High Court challenging the

registration of tatamassage.com by the respondent as violation of its

trademark rights in „Tata‟. The High Court passed an order of restraint

against the respondent, which was a US company.

Before the WIPO Panel, the complainant, a well-known business

enterprise in India and across the world, argued that they have an

established business presence in US along with fourteen registered

trademarks in US featuring „Tata‟ as part of them. Further, they also carryon

business in massage services through an associated company by name Jiva

Spas, which categorically state that they are a „TATA Enterprise‟. In light

of this, the complainant‟s contention was that the respondent had registered

the domain name in bad faith to profit from the good will of the

complainant.

While analysing the three requirements of the UDRP to win the case,

the Panel, though controversially, observed that the second requirement

50



262

relating to the absence of respondent‟s rights or legitimate interests in the

domain name was not established by the complainant. For this, it heavily

relies on the assertions made by the respondent that his wife is commonly

known amongst her family and friends as „Tata‟, which prompted him to

use impugned domain name.

It is interesting to note, the Panel observes that “in administrative

proceedings of this kind, a panel does not have the burden nor the benefit of

cross-examination to test the veracity of such claims. Even so, the panel is

not of course bound to accept the assertions of either party uncritically.”

But, then it proceeds with the analysis of the media reports and interviews,

business of the respondent, absence of complainant‟s registration of

trademark in the US on the massage services and insufficient nexus between

the Jiva Spas and the complainant. However, in the course of discussion, the

Panel fails to ascertain the veracity of the main contention of the respondent

relating to the nickname of his wife. Thus, the Panel ends up with a decision

against the complainant.

In WIPRO Ltd. v. Igarashi, Katsuhisa51

, the Japanese respondent

registered the domain name wiprocorporate.com in 2001. The complainant,

51

WIPO Case No. D2013-0073 (25 February 2013).


263

though well-known and was in existence world over much before (including

in Japan), brought the complainant only in 2013. Thus, despite this is a

simple case of domain name misuse, a complicated issue of delay in

bringing the complaint was before the Panel to address. The Panel, while

addressing this issue, made an initial remark that the delay, in itself, is not a

reason to deny the complaint. However, a long delay of twelve years may be

construed as complainant‟s passive consent for using his mark in

respondent‟s domain name. But again, in the present case, the Panel held in

favour of the complainant on the basis of respondent‟s registration of many

other domain names relating to other companies. The Panel found the

conduct of respondent reflecting his knowledge of complainant.

Similarly, in Surya Roshni Ltd. v. tq6 Inc., Domain Registration

Dept.52

, the respondent‟s contention of complainant‟s acquiescence due to

twelve years‟ lapse after the registration of domain name was rejected by

the Panel, and he was directed to transfer the domain name suryaroshni.com

to the complainant. However, in Reliance Telecom Ltd. v. Domains

ByProxy.com and Sukhraj Randhawa53

, the sixteen years‟ delay in filing the

52

WIPO Case No. D2013-0627 (16 August 2013).

53 WIPO Case No. D2013-1470 (08 October 2013).


264

complaint was considered as one of the key factors in denying the remedy to

the complainant, despite the absence of any response from the respondent.

In reaching such a conclusion, the Panel relied on the observation in AVN

Media Network, Inc. v. Hossam Shaltout54

that “The longer the time a

disputed domain name has been registered, the more difficult it is for a

complainant to prove bad faith registration”. This higher burden of proof, as

per the Panel, was not discharged by the complainant, Reliance Telecom

Ltd.

Thus, the experience of Indian litigants under the UDRP proceedings

in the recent past has been mixed. Sometimes, it may be due to the failure of

the Panellists to comprehend the aspects of common law rights in

trademarks available in India. In most other times, it may be due to the

improper advice to the parties by the counsels as evidenced and condemned

by the WIPO Panel in Infiniti Retail Ltd. v. John Cromwell / Croma Web

Services55

.

54

WIPO Case No. D2007-1011 (13 September 2007).

55 WIPO Case No. D2013-1360 (06 September 2013). The complainant in this case challenged the

registration of domain name by the respondent made ten years‟ before the complainant‟s

commencement of the business. While criticising this and finding the attempt at reverse domain


265

5.4 Resolution Through .IN Domain Name Dispute Resolution

Policy (INDRP)

India‟s top level domain is „.in‟, which was open to the public for

booking since 16 February 2005. Before opening the registration to the

public, an opportunity to register „.in‟ domains was given to the prior

registered Indian trademarks or service marks between 1 January 2005 and

21 January 2005, which is popularly known as sunrise period, with an

object of minimising the subsequent disputes. „.in‟ domain is overseen by

National Internet eXchange of India (NIXI), which is a not-for-profit

company registered under Section 25 of the (Indian) Companies Act 1956.

Under NIXI, the IN Registry has the primary responsibility to maintain the

.in domain and also to ensure operational stability, reliability and security.56

It has also got the obligation of implementing the policies of Government of

India from time to time.

name hijacking, the Panel observed that it is difficult to believe that the complainant, who is

represented by expert counsel, was not advised properly.

56 „Domain Name, Cybersquatting & Domain Name Dispute Resolution‟, available at

<http://www.legalserviceindia.com/articles/cddisp.htm> Last visited, 05 December 2013.


266

The IN Registry does not carry on the function of registration of the

domain names, but it accredits registrars through a process of selection

based on fixed criteria.57

The domain names under .in domain may be

registered for a minimum period of one year and a maximum period of five

years, subject to renewal at the end of the term. The Registry is entitled to

deny or suspend a registration, if the registration conflicts with sovereign

national interest or public order.58

The IN Registry has come out with its own dispute resolution policy

in the form of INDRP, which is formulated in line with the UDRP,

internationally accepted guidelines as well as the Information Technology

Act 2000.59

Supplementary Rules are also formulated to lay down the

procedure.60

Unlike the UDRP, INDRP‟s application is confined to the

57

The recognised registrars are; National Informatics Centre for gov.in domains, ERNET for res.in

and ac.in domains, and Ministry of Defence for mil.in domains.

58 Supra note 56.

59 „India: Cyber Squatting Laws in India‟, available at

<http://www.mondaq.com/india/x/208840/Trademark/CYBER+SQUATTI+NG+LAWS+IN+INDI

A> Last visited, 05 December 2013.

60 The INDRP Rules describe; (a) how to file a complaint; (b) how to respond to a complaint; (c)

the fees; (d) communications; and (e) other procedures.


267

disputes between the registrant of the domain name and the complainant

arising out of .in domain. The complainant needs to establish the following

factors to win a case under the INDRP.

(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.61

There are three significant differences between the UDRP and

INDRP in this regard. First, the INDRP expressly protects a name along

with the trademark and service mark, which is not expressly provided under

the UDRP. Though the UDRP panels have adopted the practice of

protecting certain names, it is confined to famous names. Second, the

INDRP requires the proof of either the bad faith registration or bad faith use

of the domain name as against the proof of both under the UDRP. Third, the

UDRP uses „and‟ between the first and the second clause above, which is

61

Para 4, INDRP.


268

missing under the INDRP. This has led to a debate that under INDRP, the

complainant may win a case by merely establishing the first clause or

alternatively by establishing the second and the third clauses together.62

In

other words, the establishment of all the three factors are not essential under

the INDRP, which is essential under the UDRP to win a case.63

In light of

these factors, one can safely conclude that the INDRP has got a greater

scope of coverage than that of the UDRP.

The non-exhaustive list of evidences of registration and use of

domain name in bad faith mentioned under the INDRP64

are more or less

similar to that of the UDRP. The non-exhaustive list of evidences to

demonstrate the rights and legitimate interests of registrants in the domain

62

See generally Shamnad Basheer, „A Distinct IP Domain for India?‟, available at

<http://spicyip.com/2012/01/distinct-ip-domain-for-india.html> Last visited, 20 December 2013.

63 There is a controversy as to whether this difference is intentional or accidental. This controversy

has been furthered by some of the decisions, which are discussed subsequently in this chapter.

64 See para 6, INDRP. The only difference is that the INDRP does not expressly mention the

registration of the domain name primarily for the purpose of disrupting the business of a

competitor as an evidence of bad faith, however, there is no prohibition on the adjudicating body to

look into it, since the list is non-exhaustive.


269

name under the INDRP65

is also the replica of the UDRP. Thus, the INDRP

derives heavily from the UDRP.

Unlike the administrative proceedings under the UDRP, the INDRP

provides for arbitration to settle the domain name disputes. The parties

under the INDRP are also devoid of any choice to move to the court of

competent jurisdiction, which is available under the UDRP.66

The arbitrator

is appointed by the IN Registry out of the list of arbitrators maintained by

it.67

This is instrumental in avoiding the forum shopping by the

complainants.

The arbitrator must issue the notice to the respondent within three

days from the receipt of the complaint. Then, he should conduct the

proceedings in compliance with the Arbitration and Conciliation Act 1996

65

See para 7, Ibid.

66 In the Indian context, it is said to be significant by Krishna Jayakar, since the provision has the

effect of taking off the appeal “to the notoriously inefficient Indian courts, where the case could

languish for years while the infringing domain name continues to be used by the respondent.”

Krishna Jayakar, „India‟s Domain Name Dispute Resolution Process: An Empirical Investigation‟,

available at <http://www.researchgate.net/publication/256017032_

Indias_Domain_Name_Dispute_Resolution_Process_An_Empirical_Investigation> Last visited,

19 December 2013.

67 Para 4, INDRP.


270

and INDRP along with its Rules. There is no in-person hearing, unless the

arbitrator finds the hearing is absolutely necessary to decide the case.

However, the INDRP pleadings are more detailed than the UDRP, since it is

based on the Arbitration and Conciliation Act 1996.68

The arbitrator is duty bound to provide a reasoned award within 60

days from the commencement of the arbitration proceedings. Only in

exceptional circumstances, with the reasons in writing, the period may be

extended by a maximum of 30 days. As per Paragraph 10 of the INDRP, the

remedies to be provided by the arbitrator are limited to cancellation of the

domain name or transfer of the domain name registration in favour of the

complainant. It is also pertinent to note here that neither the IN Registry nor

the recognised registrars are allowed to participate in the domain name

dispute resolution proceedings in any capacity, except providing

information about registration and use of domain name, if requested by the

68

„Indian Domain Law - Interview with Pravin Anand‟, available at

<http://inforum.in/blog/2008/05/14/indian-domain-law/> Last visited, 20 December 2013.


271

arbitrator.69

This is hailed as crucial in the elimination of registries‟ bias in

the decision making process.70

The first case to proceed under the INDRP is Rediff.com India Ltd. v.

Abhishek Verma71

. In this case, the Rediff.com, a well-known online media

company challenged the registration of rediff.in by the respondent. It

contended the bad faith registration of the domain name by the respondent

and also that the respondent was willing to sell the domain name to the

complainants on payment of money.

The respondent‟s defence in this case was primarily on the failure of

the complainant to use the sunrise period provided by the Department of

Technology of Government of India to register the said domain name.

According to the respondent, the absence of positive steps from the

complainant to register the disputed domain name within the sunrise period

is the evidence of its lack of interest in the domain name, and therefore,

69

Para 9, INDRP.

70 See generally Lucy Rana and Rishu Srivastava, „Balancing the odds: An evaluation of the .IN

domain name dispute resolution policy‟, available at

<http://www.worldipreview.com/article/balancing-the-odds-an-evaluation-of-the-in-domain-name-

dispute-resolution-policy> Last visited, 09 January 2014.

71 INDRP/001 (03 April 2006).


272

once the domain name was opened for the public registration, it was very

much justified for the respondent to register it.

Though the Arbitrator agreed with the contention that the domain

name was open for the public registration due to the failure of complainant

to utilize the sunrise period, the respondent was held to be not entitled to it.

This is because, the Arbitrator found that the respondent has registered the

domain name without any genuine interest and was also willing to sell it to

the complainant for monitory consideration. In light of this, the respondent

was ordered to transfer the domain name to the complainant, and the

complainant was asked to pay the actual fees and other direct expenses

incurred by the respondent in the registration of the disputed domain name.

In Bloomberg Finance L.P. v. Kanhan Vijay72

, the complainant

challenged the registration of Bloomberg.net.in by the respondent, a partner

of Nagpur-based registered partnership firm „Bloomberg Computers‟. The

complainant claimed rights in Bloomberg since its registration as trademark

in 1986, which has also established widespread reputation and goodwill

worldwide, including in India. The respondents argued that they are not

engaged in online business and had never used their website for marketing

72

INDRP/110 (08 September 2009).


273

purposes, but the domain name is used only for the mail and helpdesk

services.

The Arbitrator analysed the case under the three elements of

Paragraph 4 of the INDRP. First, the Arbitrator found that the disputed

domain name is identical to the complainant‟s trademark. Second, on the

aspect of rights or legitimate interests, the Arbitrator controversially holds

that the respondent has no legitimate interest in the domain name, since he

is not using the domain name for his business. Though the respondent

provided the evidence of using the domain name for mail and helpdesk

services, the Arbitrator found it to be not sufficient for proving the

respondent‟s right or legitimate interest in the domain name. Third, on the

bad faith element, the Arbitrator found that the respondent knew about the

complainant and its prior registration of domain names under .in ccTLD

incorporating „Bloomberg‟ as the name. This was found to be sufficient by

the Arbitrator to uphold the existence of bad faith, despite his conclusion

that the respondent did not register the domain name for selling, recruiting

or transferring the domain name registration to the complainant. Thus,

according to the Arbitrator, the respondent‟s lack of due diligence in

registering the domain name incorporating the mark „Bloomberg‟


274

established the bad faith of the respondent and hence, he was asked to

transfer the domain name to the complainant.

While the Bloomberg decision started the controversy about the

requirements of Paragraph 4 of the INDRP73

, it is carried forward by the

Delhi High Court‟s decision in Stephen Koenig v. Arbitrator, National

Internet Exchange of India and Another74

, which was a petition under

Section 34 of the Arbitration and Conciliation Act 1996 against the arbitral

award under INDRP in Jagdish Purohit v. Stephen Koenig75

. In the initial

case before the INDRP Arbitrator, Mr. Jagdish Purohit, a registered owner

of the trademark „internet‟ in respect of tobacco and related products,

challenged the registration of „internet.in‟ by Mr. Stephen Koenig. He

contended that Mr. Koenig has registered several trademarks as domain

names under the IN Registry without any right or legitimate interest, and

Mr. Koenig‟s intention was to sell them to the respective trademark owners.

73

See Shouvik Kumar Guha, „Cybersquatting gets Sharp Rap from INDRP Arbitration: Bloomberg

Finance Wins‟, available at <http://spicyip.com/2009/11/cybersquatting-gets-sharp-rap-from.html>

Last visited, 20 December 2013.

74 O.M.P. 132 of 2007, 14 December 2011.

75 INDRP/006, 05 July 2006.


275

The Arbitrator, in his award found that the domain name registered

by Mr. Koenig is identical or confusingly similar to the trademark of Mr.

Purohit and Mr. Koenig had no right or legitimate interest in the said

domain name. In addition, the domain name was registered in bad faith,

since there were evidences to the effect that Mr. Koenig is intending to sell,

transfer or rent the domain name. However, the Arbitrator also found that

Mr. Purohit is not entitled to the transfer of domain name, since the word

„internet‟ is a generic name and Mr. Purohit has failed to establish that it has

obtained any secondary meaning conferring trademark rights to him, which

is essential under second part of Paragraph 4(i). In light of these factors, the

Arbitrator ordered that the domain name „internet.in‟ has to be confiscated

by the IN Registry and kept with it.

It was against this order of the Arbitrator that Mr. Koenig

approached the Delhi High Court, contending that Mr. Purohit had failed to

prove all the three factors under Paragraph 4 of the INDRP and Arbitrator

exceeded his jurisdiction in ordering the confiscation of the domain name,

which is not permissible under the relevant provision of INDRP76

. While

addressing the first question on the proof of all the three factors under

76

Para 10, INDRP.


276

Paragraph 4 of the INDRP, the Delhi High Court made the following

observation, which has far-reaching impact on the settlement of disputes

under the INDRP;

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.

Thus, the High Court hinted the possibility of winning a case by the

claimants under INDRP by discharging a lesser burden of proof, though the

Court in the present case analysed all the three elements and found the proof

of them. While it agreed with most of the views of the Arbitrator, it differed


277

with the arbitrator on the second limb of Paragraph 4(i). The Court observed

that the registration of the trademark „internet‟ was sufficient to show that

Mr. Purohit had a right on the mark as per Paragraph 4(i). For arriving at

this conclusion, the Court referred to Section 28(1) of the Trade Mark Act

1999, 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...”

The Court agreed with the contention that the Arbitrator has

exceeded his authority under Paragraph 10 of the INDRP. Since the

provision confers only the right to cancel or transfer the registration of

domain name, the order to confiscate and retain the domain name was found

without any legal basis. However, given the absence of use of trademark

„internet‟ in the business of Mr. Purohit and also the generic nature of the

word „internet‟, the Court found it appropriate to cancel the registration of

domain name instead of transferring the domain name to Mr. Purohit.

Thus, the Delhi High Court‟s decision in Stephen Koenig has

sharpened the debate relating to the differences between the INDRP and

UDRP. One of the moot questions under debate is, whether these

differences are intentional or accidental? Going by the rationale of the


278

above judgement, INDRP may be found as one of the most liberal dispute

resolution policies favouring the trademark holders.77

This fact is also

depicted by the increasing number of successful cases by the trademark

owners under the INDRP. The following chart shows the statistics of

successful cases from 2006 to 2011.78

Year Total Number of

Cases

Number of Cases Decided in

Favour of the Complainants

2006 22 17

2007 25 25

2008 29 28

2009 45 44

2010 50 50

2011 84 84

77

Abhishek Nangia, „Decision could dramatically facilitate retrieval of domain names‟, available

at <http://www.rouse.com/media/128017/wtr_daily_17_february_decision_

could_dramatically_facilitate_retrieval_of_domain_names.pdf> Last visited, 20 December 2013.

78 Available at <http://www.ssrana.in/Intellectual%20Property/Domain%20Names/

DomainName_Statistics.aspx> Last visited, 20 December 2013.


279

The above chart indicates an overall more than 95% success rate in

the INDRP litigations including 100% success in 2010 and 2011. This has

prompted in more number of cases being directed to INDRP in 2012 and

2013; with approximately more than 150 cases each. Of late, the Arbitrators

under the INDRP have also found a way to compensate the trademark

owners in the form of awarding additional costs, since Paragraph 10 of the

INDRP allows the arbitrators to award “costs as may be deemed fit”.79

This

seems to be an offshoot of the concerted efforts to popularise the INDRP in

resolving the disputes relating to .in domain. However, this trend may be

dangerous, since it may completely erode the legitimate rights of the

domain name holders in the hands of unscrupulous trademark owners acting

under bad faith.

Another significant problem is that unlike in case of UDRP, the

INDRP does not provide for the consolidation of multiple disputes between

the same parties.80

The need for filing separate complaints poses serious

79

One of the recent examples of this trend is Shaklee Corporation v. Shaklee Wong, INDRP/551

(18 November 2013), wherein the Arbitrator ordered the respondent to pay Rs. 10 lakh to the

complainant in the form of cost.

80 Para 3(c), INDRP Rules.


280

problem to the complainant whose rights are violated by registering

multiple inter-related domain names by one person. This is not only

problematic in terms of cost involved81

but also from the perspective of

possible inconsistent decisions by different arbitrators with respect to same

trademarks.

In 2012, Dell Inc. witnessed such a problem with ten domain names

comprising of its trademark/name „Dell‟ being registered by one person,

Jack Sun. Dell contacted NIXI to ascertain the possibility of filing a

consolidated complaint. Though, NIXI was of the view that there is a

requirement of amending the existing provisions to circumvent the

multiplication of proceedings, it did not allow the deviation from the

express provision of the INDRP Rules. Dell subsequently filed ten separate

complaints, and requested NIXI to assign all the complaints to same

arbitrator to avoid any inconsistency. Unfortunately, it found that NIXI

assigned the complaints to ten different arbitrators, though, fortunately for

81

Each complaint under INDRP costs around $ 200. See Pravin Anand and Raunaq Kamath,

„Domain name dispute resolution: an Indian perspective‟, available at

<http://www.worldipreview.com/article/domain-name-dispute-resolution-an-indian-perspective>

Last visited, 20 December 2013.


281

Dell, all the ten arbitrators ordered for the transfer of domain names, some

with the order for cost and some others without.82

However, every

subsequent litigant under INDRP might not be enjoying the same position

as enjoyed by Dell in its ten verdicts.

Finally, the process of selection of panellists under the INDRP is also

criticised for absence of transparency.83

Bringing the transparency in this

process would help in building confidence among the disputing parties to

approach the INDRP. Added to this, the absence of appeal from the INDRP

decisions is perceived as a major problem, since resorting to INDRP may be

risky for the disputing parties. Thus, it may lead to be a forum for only those

who are ready to take the calculated risk.

82

See Dell Inc. v. Jack Sun, INDRP/307 (04 October 2012); Dell Inc. v. Jack Sun, INDRP/308 (16

March 2012); Dell Inc. v. Jack Sun, INDRP/309 (21 May 2012); Dell Inc. v. Jack Sun, INDRP/310

(07 January 2013); Dell Inc. v. Jack Sun, INDRP/312 (18 February 2012); Dell Inc. v. Jack Sun,

INDRP/313 (29 April 2012); Dell Inc. v. Jack Sun, INDRP/314 (09 June 2012); Dell Inc. v. Jack

Sun, INDRP/315 (13 March 2012); Dell Inc. v. Jack Sun, INDRP/316 (07 February 2012); Dell

Inc. v. Jack Sun, INDRP/317 (06 March 2012).

83 Supra note 68.


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5.5 Chapter Conclusion

Indian tussle with the domain name-trademark disputes has

witnessed the three phases of developments in the form of judicial

settlement, resorts to the UDRP and the development of the INDRP. The

judicial settlements are made under the Trade Marks Act 1999, with a more

expansive interpretation of the provisions relating to infringement of

trademarks and more particularly that of the passing off. However, such an

approach has its own limitations in the absence of specific legislation

relating to the domain name protection. In addition, the geographical

limitation of the Trade Mark Act has also been a matter of concern to Indian

litigants.

In light of the above factors, increasing number of Indian cases are

finding their ways to the UDRP panels. The limitations of the UDRP as a

dispute settlement mechanism (outlined in the previous chapter) have

resulted in the search for an alternative in the form of INDRP. But again,

the INDRP, being heavily influenced by the UDRP, could not fully win the

trust of Indian litigants in the initial stage. This may also be due to the

inherent bias towards the judicial settlement embedded in the Indian mass


283

coupled with their scepticism towards the alternative dispute resolution

mechanisms.

INDRP also has some serious problems regarding the proof of

different factors by the complainants to win the case and also in the

consolidation of complaints. As illustrated above, the arbitrators are trying

to overcome these difficulties by the liberal interpretation favouring the

trademark owners. However, this trend may result in a slippery slope of

INDRP becoming a tool of trademark owners to coerce the legitimate

domain name holders. A major concern of the day is to prevent the diagonal

shift in the historical trademark owners‟ victimization to the future domain

name owners‟ victimization in the increasing zeal to protect the trademark

owners.

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