Google picks up 'gmail.co.in' under INDRP
An arbitrator has issued a ruling under the '.in' Domain Name Dispute Resolution Policy (INDRP) and has ordered the transfer of the domain name 'gmail.co.in' to Google Inc.
The INDRP is similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) as implemented by the World Intellectual Property Office. However, there are a few significant differences, including the following:
- Dispute resolution initiated under the INDRP results in a binding arbitration leading to an arbitral award which can be enforced as a decree of the court. The UDRP, on the other hand, is an administrative procedure which is contractually binding, but does not prevent the parties from submitting their dispute to the court of competent jurisdiction.
- A complainant has a choice of either taking recourse under the INDRP or initiating a court action against an '.in' domain name registration. But once a complainant invokes the INDRP, the '.in' domain name registrant is disentitled to object to the jurisdiction of the arbitrator constituted under the policy.
- Unlike the UDRP, an arbitrator under the INDRP is entitled to award costs.
- The arbitrator has a discretion to grant a personal hearing to the parties under the INDRP, whereas the UDRP is purely document based.
INDRP arbitrators have awarded significant costs against domain name registrants. In many cases the costs are higher than would be awarded by most Indian courts. Enthusiastic arbitrators have also awarded damages, although it is doubtful whether the INDRP actually empowers them to do so. It is also interesting to note that apart from ordering the transfer of the disputed domain name registration in favour of the complainant/trademark owner, in certain cases, the domain name registrant has been ordered to cease using the mark in any manner. Again, it is doubtful whether the INDRP actually grants arbitrators such wide powers.
One of the more recent arbitral awards under the INDRP involved a dispute initiated by Google (on the basis of its rights in the mark GMAIL) against the registrant of 'gmail.co.in'. The initial registrant was an individual named Chen Zhaoyang who subsequently transferred it to a company called Gmail Limited.
The arbitrator held that the disputed domain name registration 'gmail.co.in' was confusingly similar to the mark GMAIL over which Google has proprietary rights on account of:
- priority of adoption and use;
- several trademark applications and registrations of the mark GMAIL made by Google in a number of countries, including a pending application in India;
- Google's worldwide reputation in its web mail services rendered under the mark GMAIL via the website www.gmail.com, which commenced in April 2004; and
- Google's transborder reputation in the mark GMAIL, which had penetrated into India.
The arbitrator concluded that the registrant had no rights or legitimate interests in the disputed domain name and had registered and used it in bad faith. The decision was based on the following reasoning:
- The registrant was not commonly known by the name gmail and had failed to furnish any explanation as to why he had adopted a domain name comprising of the mark GMAIL in which Google has legitimate rights.
- The registrant, as per his own admission, provides web services that are similar to those of Google and having regard to the overwhelming reputation of Google in the mark GMAIL, the adoption of the disputed domain name was a deliberate step by the registrant to take the benefit of the identity and reputation of Google.
- Initially, the disputed domain name was registered in the name of an individual. Soon after the initiation of arbitration proceedings under the INDRP by Google, the registrant incorporated an English company by the name of Gmail Limited (of which he was the sole owner) and transferred the domain name to that company. He then claimed that the domain name was based on the name of his company and, under UK law, there is no wrong or infringement if a person uses his own name or address. The arbitrator rejected this argument and held that the circumstances indicated that the registrant had transferred the domain name solely on the basis of creating a defence to the complaint. Citing prior Indian case law, the arbitrator disallowed the 'own name' defence, noting that "even if a man uses his own name so as to be likely to deceive and to divert the business from the plaintiff to the defendant, he will be restrained".
Mustafa Safiyuddin, DSK Legal, Mumbai
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