ICICI Case clarifies rights of UDRP complainants


The Delhi High Court has considered a unique question of law in a case involving the domain name 'icicigroup.com' (Case CS (OS) 2606/2008, December 2008). The issue was whether a plaintiff aggrieved by a decision issued by a World Intellectual Property Organization (WIPO) panel under the Uniform Domain Name Dispute Resolution Policy (UDRP) could file a civil suit in India to contest the panel's decision.

In the underlying case, the WIPO panel had refused to transfer the domain name 'icicigroup.com' to ICICI Bank, one of India’s leading private banks (Case D2008-0880). The panel found that ICICI had failed to prove that the respondent, a resident of Beijing, had no rights or legitimate interest in the domain name. The panel also pointed out that "a competent court might provide occasion to assess these matters on a more complete record and in a broader legal context".

ICICI followed up on this observation and challenged the decision of the panel before the Delhi High Court, which is considered to be India’s most experienced IP court. This case raised issues similar to those in Beiersdorf AG v Sukhwani, in which the Delhi High Court interpreted the scope of Rule 3(b)(xiii) of the UDRP. Rule 3(b)(xiii) states that:
the complainant agrees to submit to any challenge that may be made by the respondent to a decision by the administrative panel to transfer or cancel the domain name that is the subject of this complaint to the jurisdiction of the courts in the location of the principal office of the registrar.
In Beiersdorf, the court held that Rule 3(b)(xiii) applies only where the registrant of a domain name decides to challenge a decision of the administrative panel to transfer or cancel the domain name. The court went on to hold that in such cases, the complainant agrees to submit to a court of mutual jurisdiction. The applicability of the rule is thus limited to an action filed by the respondent, and not the complainant. The court also held that when a complaint is dismissed, the rule does not prescribe a particular court of mutual jurisdiction and the complainant is free to take action against the registrant in a court of competent jurisdiction under private international law or municipal law.
In addition, the court highlighted that a WIPO panel decision is not an 'award' or a binding decision and does not operate as res judicata to bar further proceedings pertaining to the domain name. In reaching this conclusion, the court stated that an 'award' of the panel is not an 'adjudication' in a strict sense, since:
  • the parties do not appear;
  • no evidence is recorded; and
  • there is no cross-examination.
Since a decision of the panel is not final, the principle of res judicata does not apply and a civil suit is maintainable. 
In the ICICI Case, the court relied extensively on Beiersdorf and granted an ex parte interim injunction against the use of the domain name 'icicigroup.com' by the respondent.  
The decision thus clarified that the rights of a complainant in UDRP proceedings are not undermined by an adverse UDRP award if the complainant decides to challenge that award in a civil lawsuit. This is due to the fact that an UDRP award does not have the finality required under the Indian Code of Civil Procedure.
Shrawan Chopra, Anand And Anand Advocates, New Delhi

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