The High Court Of Delhi At New Delhi has just upheld an arbitrators determination that the domain name Internet.in should be taken away from the domain holder, its registration cancelled and ordered the domain to be held at the registry level, based on an Indian trademark for the term “Internet”.
It’s a complicated case but to the extent any of you have any .in domain names you should really read the opinion.
.In have become somewhat popular as a Hack outside of India.
Also you should keep in mind that many ccTLD’s are governed by different rules than TLD’s and this is a prime example.
The take big take away from the case is that if you park a domain and offer it for sale (not necessary to the TM owner) your registration is in bad faith under the .In rules.
Basically .In has a UDRP like system but it has some differences which the Court explains in its opinion.
The basic facts of the case is that someone has a trademark on the term Internet bought the equivalent of a UDRP on the domain against the domain holder who has parked the domain and offered it for sale on Sedo.com
The Arbitrator based off the trademark held that the domain should be cancelled and held at the registry level, not given to the trademark holder or the domain holder and the High Court agreed.
Here are the edited facts and findings of the Court
“”The dispute regarding the domain name ‘internet.in’
Respondent Mr. Jagdish Purohit filed a complaint before the .IN Registry of NIXI on 31st January 2003, under Para 4 of the .IN Domain Name Dispute Resolution Policy (‘INDRP’) to the effect that the domain name ‘internet.in’ registered by the Petitioner, Mr. Stephen Koenig, was identical and confusingly similar to the registered trade mark ‘internet’ of Respondent No. 2; that the Petitioner had no rights or legitimate interests in respect of the said domain name and that the Petitioner’s domain name had been registered or was being used in bad faith.
The learned Arbitrator passed the impugned Award on 5th July 2006 in which inter alia he concluded that the domain name ‘internet.in’ should be struck off and confiscated and kept by the .IN Registry.
He rejected the prayer of Respondent No.2 that the domain name should be transferred to him.
‘internet’ is a now common word. It also acknowledges that to access a ‘site’ on the internet, the user usually has to key in an IP address. ”
In the instant case Respondent No. 2 on 17th March 2003 applied under the Trade Marks Act, 1999 (‘TM Act’) for registration of its trade mark ‘internet’ in respect of ‘Tobacco, raw or manufactured, smokers articles, matches included in Class 34’. The trade mark certificate was issued on 13th July 2005
Admittedly, Respondent No. 2 did not avail of the sunrise policy of NIXI and therefore did not get any domain name registered using its trade mark.
Meanwhile the Petitioner, a resident of the U.S.A., got the domain name ‘internet.in’ registered with the .IN Registry on 16th February 2005.
On 31st January 2006 Respondent No. 2 submitted a complaint to the .IN Registry seeking the cancellation of the registration of the domain name ‘internet.in’ in favour of the Petitioner.
Respondent No. 2 contended that he had been using its trade mark ‘internet’ for over three years.
The domain name ‘internet.in’ was confusingly similar to his trademark ‘internet’. The Petitioner had registered in the .IN Registry several domain names in which he had no right or trademark.
These included air.in, computer.in, ink.in, internet.in, toner.in, usa.in, wise.in.
The Petitioner’s intentions were to sell the domain name to either Respondent No. 2 or to another organization for a profit.
It was alleged by Respondent No. 2 that the Petitioner had parked the domain name and was making money by luring customers to the website and tricking them into clicking on ads.
In response to the notice issued to him, the Petitioner contended that the burden was on Respondent No. 2 who held registration of a highly descriptive or generic word like ‘internet’ to prove that the word was at all capable of being a trade mark or had acquired a secondary meaning.
Respondent No.2 had not adduced a single document of usage of the said trademark, the quantum and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.
The Petitioner further asserted that he had not put up the domain name ‘internet.in’ for sale.
A letter from SEDO GmbH, Germany confirming that the Petitioner’s domain names, including ‘internet.in’, “are not and have not been sale on our trading platform’ was enclosed with the reply.
It was submitted that the Petitioner had over the years developed internet businesses like fax.de and toner.com for legitimate purposes and therefore, was a legitimate and a bona fide trading entity
The Petitioner has registered the domain name ‘internet.in’ in good faith to resolve a website to it for use in relation to internet related goods and services.
It was desirous to use the domain name in respect of internet services and “this amounted to merely a generic or descriptive use.”
The Petitioner specifically raised the plea of ‘reverse domain name hijacking’ by Respondent No. 2.
The Petitioner alleged that the complaint itself was a blatant attempt by Respondent No. 2 to claim exclusive right in the domain name ‘internet.in’. The complaint had been filed with the sole aim to harass the Petitioner and usurp rights beyond the registration of Respondent No. 2. It was stated that Respondent No. 2 was free to register
There was no proof adduced by Respondent No. 2 to show that the Petitioner’s registration of the domain name ‘internet.in’ was in fact in bad faith or that the Petitioner wished to sell the domain name to Respondent No. 2 or to some other organization.
The learned Arbitrator, in the impugned Award dated 5th July 2006, concluded as under:
(a) The domain name ‘internet.in’ of the Petitioner herein was identical and confusingly similar to a trade mark of Respondent No. 2. However, Respondent No. 2 failed to show/prove that he had a right in the trade mark, which was a generic word;
(b) The Petitioner had no right or legitimate interest in the domain name;
(c) The Petitioner got registered the domain name ‘internet.in’ in bad faith. He had registered the domain name in order to sell, transfer or rent it or to prevent other owners of the mark from reflecting the mark in a corresponding domain name.
(d) Consequently, the Petitioner was not entitled to retain the domain name and it was required to be struck off from the Registry;
(e) Respondent No. 2 was also not entitled to transfer of the domain name in his name as he had also not established in his bona fide rights in the trademark; and
(f) The Petitioner could not, in the circumstances, allege reverse domain name hijacking by Respondent No. 2.
(g) The domain name ‘internet.in’ was to be confiscated by the .IN Registry and kept with it.
The domain name is identical to the registered trade mark
Any person who considers that a registered domain name conflicts with his legitimate rights or interests may file a complaint to the .IN Registry on the following premises:
(i) the Registrant’s domain name is identical or confusingly similar to a name, trademark or
service mark in which the Complainant has
(ii) the Registrant has no rights or legitimate
interests in respect of the domain name; and
(iii) the Registrant’s domain name has been registered or is being used in bad faith.”
Para 4(a) of the UDRP reads thus:
“4. Mandatory Administrative proceedings.
This Paragraph sets forth the type of disputes for which you are required to submit to a mandatory administrative proceeding. T
There are at least four differences between the above para 4 of the INDRP and the corresponding Para 4 (a) of the UDRP.
The first is the opening part of Para 4 of the INDRP indicating the ‘premises’ on which a complaint could be filed is absent in para 4 (a) UDRP. This is significant when read with the last line at the end of Para 4 (a) UDRP which states: “In the administrative proceeding, the complainant must prove that each of these three elements are present.” The said line is absent in Para 4 INDRP. This is the second difference. The third difference is that at the end of sub-para (i) of Para 4 UDRP, the word ‘and’ figures. The fourth is that in sub-para (iii) of Para 4 of the UDRP it is to be shown by the complainant that the Registrant’s domain name has been registered and is being used in bad faith. It is not for the court to speculate whether these differences in Para 4 INDRP were intentional or accidental. However, the court has to interpret the INDRP as it exists. It is not expected to supply the omissions read into the INDRP words that are absent.
The learned Arbitrator proceeded on the basis that in terms of Para 4 (i) INDRP the burden was on the complainant to show that (a) the domain name was confusingly similar to the trademark of the complainant and that (b) the complainant has a right in the trademark. As regards the first
2. In any event, Respondent No. 2 had by securing registration of the trademark in his favour demonstrated his right in the mark, irrespective of its use or the fact that it was a generic word.
Relying on the observations of this Court in Manish Vij v. Indra Chugh 97 (2002) DLT 1 it is submitted that where no exclusivity can be granted to marks that are generic, the Court should permit the registered owner of the trademark to use it in relation to tobacco, the goods for which it was registered and in relation to which it would be distinctive rather than permit a domain name holder of the generic word to use it in a generic sense in relation to
O.M.P. No.132 of 2007 Page 16 of 27 internet related activity.
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.
There is little difficulty in concluding in the instant case that the domain name ‘internet.in’ and the trademark ‘internet’ are identical.
The said domain name is likely to cause confusion in the minds of actual or potential customers with ‘imperfect recollection’ as regards the source of the goods and services when going on the net to search for a website using the said domain name. The mere fact that the goods for which Respondent No. 2 holds registration is different from internet related services which the Petitioner proposes to offer using the domain name does not mitigate the possibility of such confusion, given the nature of e-commerce and the range of products that can be purchased on the net. The finding of the learned Arbitrator that Respondent No. 2 complainant had proved the first limb of Para 4 (i) INDRP that the domain name was identical to the registered trademark of Respondent No. 2 and was confusingly similar does not call for interference.
The learned Arbitrator appears to have proceeded on the basis that since the word mark was generic, and Respondent No. 2 had not demonstrated any use of the said mark, Respondent No. 2 had no ‘legitimate’ right in the mark.
This Court is unable to appreciate the said finding which appears to overlook the statutory provisions of the TM Act referred to above which do confer rights on the registered proprietor of a mark.
As far as the present case is concerned, Respondent No. 2 had satisfactorily proved that the domain name was identical to the registered trade mark; that it was likely to cause confusion and that Respondent No. 2 had rights in the trade mark.
Petitioner not having right or legitimate interest in the domain name
At the outset, this Court concurs with the view of the learned Arbitrator that once the complainant discharges the initial burden of showing that the Petitioner had no legitimate interest in the domain name, the burden of showing that he did have such interest shifted to the Petitioner.
Evidence of Registration and use of Domain name in Bad Faith:
For the purposes of paragraph 4 (iii), the following circumstances, in particular but without limitation, if found by the Arbitrator to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the Complainant, who bears the name or is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of the Registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding
domain name, provided that the Registrant has engaged in a pattern of such conduct; or
(iii) by using the domain name, the Registrant has intentionally attempted to attract internet users to the Registrant’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Registrant’s website or location or of a product or service on the Registrant’s website or location.”
The learned Arbitrator has categorically found that the Petitioner as Registrant “has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name” and that the Registrant has engaged in a pattern of such conduct. The factors that led to this conclusion were that the Petitioner had registered 1747 domain names in .de Registry for the purpose of selling such domain names. Secondly, the .in domain names were parked with SEDO which made it likely that the domain names were meant to be sold. Thirdly, the meta tags in the page of SEDO where the domain name internet.in was parked showed that the domain name was intended for ultimate sale.
This Court has examined the impugned Award of the learned Arbitrator as regards the above conclusions and is unable to discern any patent illegality, much less a finding that could be said to be contrary to the public policy of India.
The learned Arbitrator was justified in doubting the purposes of the Petitioner in having to register as many as 1747 domain names to carry on its business.
The learned Arbitrator held that although the Petitioner had countered the allegations of Respondent No. 2 about his indulging in cyber squatting, there was no evidence of the Petitioner proposing to carry on any business himself using the .in domain name in question.
Additionally, it is difficult to believe that the Petitioner, who is obviously an experienced hand in registering domain names, did not do any homework before registering domain names in a series of generic words like internet, toner, computer, ink etc. with the .IN Registry.
These factors have also to be examined in light of the fact that within an hour of the start of the .IN Registry there were around 7000 domain names registered, of which a vast majority was by a handful of speculators located outside India. According to Respondent No. 2, 3000 names were registered by only 30 individuals with some speculators registering over 500 names each. The Petitioner was one such speculator who was taking a chance at getting a number of .in domain names registered, using generic words, not with a view to himself conducting business using any of them. Even if the Petitioner was not going to offer ‘internet.in’ for sale to either Respondent No. 2 or anyone else immediately, he managed to prevent a registered proprietor of a trademark in that word using it as part of his domain name or getting a domain name registered in the said word mark. Further, the Petitioner had been shown to indulge in a pattern of getting domain names registered in bulk. This was sufficient in terms of Para 6 (ii) to render the registration as being in ‘bad faith’. In the circumstances, the finding of the learned Arbitrator that in terms of Para 4 (iii) read with Para 6 (ii) INDRP, the Petitioner’s registration of the domain name ‘internet.in’ was in bad faith does not warrant interference.
The remedies available to a Complainant pursuant to any proceeding before an Arbitrator shall be limited to requiring the cancellation of the Registrant’s domain name or the transfer of the Registrant’s domain name registration to the Complainant. Costs as may be deemed fit may also be awarded by the Arbitrator.”
In terms of Para 10 of the INDRP if the complaint succeeds then it should result in the cancellation of the domain name registration in favour of the Registrant “or” in the transfer of the domain name to the complainant.
In this case, as held by the learned Arbitrator, Respondent No. 2 had successfully made out a case for cancellation of registration of the domain name. However, the further order of the learned Arbitrator directing confiscation and retention of the said domain name by .IN Registry is without any legal basis.
The cancellation of the registration of the domain name ‘internet.in’ in favour of the Petitioner would not automatically entitle Respondent No. 2 to its transfer in his favour.
Clearly Respondent No.2 was unable to show that he was actually using the trademark ‘internet’ in his business. Additionally, the fact that the word ‘internet’ is generic and that the trademark ‘internet’ of Respondent No. 2 is therefore a weak one, are relevant considerations that support the decision of the learned Arbitrator to decline the prayer of Respondent No.2 for transfer of the domain name ‘internet.in’ in his favour.
Consequently, the impugned Award is upheld to the extent that registration of the domain name ‘internet.in’ in favour of the Petitioner has been directed to be struck off. The Award is also upheld to the extent that it holds that Respondent No.2 is not entitled to the transfer of the said domain name in his favour.
However, the direction in the impugned Award that the domain name ‘internet.in’ should be confiscated and kept by the .IN Registry is hereby set aside.”