Decision could dramatically facilitate retrieval of domain names

India

In Koenig v Arbitrator, National Internet Exchange of India (OMP 132 of 2007, December 14 2011), the Delhi High Court has dismissed an appeal against a decision of an arbitrator appointed by the National Internet Exchange of India in a dispute involving the domain name 'internet.in'.

The domain name 'internet.in' was owned by Stephen Koenig. Jagdish Purohit had been the registered proprietor of the trademark INTERNET in respect of tobacco, smokers' articles and other goods in Class 34 of the Nice Classification since March 17 2003, claiming use since March 1 2003. Koenig registered the domain name ‘internet.in’ in February 2005. Purohit filed a complaint against Koenig under the '.in' Domain Name Dispute Resolution Policy (INDRP), requesting the transfer of the domain name on the basis of its trademark registration. The arbitrator concluded that the domain name 'internet.in' should be struck off and confiscated by the '.in' Registry. However, the arbitrator rejected Purohit’s request that the domain be transferred to him. Both parties appealed to the Delhi High Court.

Koenig argued as follows:

  • Purohit had not filed any document to show use of the mark INTERNET. Therefore, he had failed to demonstrate its rights in the mark.
  • Koenig had registered the domain name in good faith for use in connection with internet-related goods and services.
  • He had no knowledge of Purohit’s rights in the mark INTERNET. Other domain names like 'internet.biz' and 'internet.com' were registered in the name of third parties.
  • Purohit’s trademark registration was for a logo mark, which did not give him any rights in the word 'internet' per se.
  • Purohit had failed to show that Koenig had registered the domain name in bad faith.

Purohit argued as follows:

  • There was bound to be consumer confusion, since the domain name was identical to its registered trademark.
  • Koenig had registered several domain names in which he had no legitimate interests. Koenig was a cybersquatter.

The court compared Paragraph 4 of the INDRP and Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (UDRP) and, in particular, examined the three conditions laid down in Paragraph 4(a) of the UDRP - that is:

  • The domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
  • The registrant has no rights or legitimate interests in respect of the domain name; and
  • The domain name has been registered and is being used in bad faith.

These conditions are cumulative.

The court observed that, while the conditions were the same in the INDRP, the word 'and' was missing in the third condition (the domain name has been registered or is being used in bad faith).

The court observed as follows:

  • A complainant can succeed if it can prove that the conditions set out in Paragraph 4(i) of the INDRP are met. Alternatively, it must prove that the conditions set out in Paragraphs 4(ii) and 4(iii) are met.
  • The domain name 'internet.in' and the trademark INTERNET were identical. The fact that the goods covered by Purohit's registration are different from internet-related services did not mitigate the risk of confusion.
  • Purohit demonstrated that he had rights in the INTERNET mark.
  • Koenig had no legitimate interests in the domain name.
  • Koenig had registered the domain name in bad faith.
  • The domain name 'internet.in' should be struck off the register, but Purohit was not entitled to the transfer of the domain name.
  • The confiscation of the domain name by the '.in' Registry was illegal under the INDRP. Accordingly, the order that the domain name be confiscated was set aside.

The decision has sharpened the debate as to whether the differences between the INDRP and the UDRP are intentional or accidental. If the rationale of this judgment is applied to all future INDRP disputes, it would make the INDRP one the most liberal dispute resolution policies in the world, with a definite tilt in favour of brand owners - the latter would only have to show that the domain name is identical, or confusingly similar, to a trademark in which they have rights, without having to establish the other two conditions.

Abhishek Nangia, Advocate Ranjan Narula Associates, Delhi

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