Posted By Shrihar on 01 Aug 2017
- The IN registry created by NIXI (National Internet Exchange of India) aims at improving internet services in India. Every domain name ending with .in has to be registered with IN registry.
- At the beginning, the registry started with a sunrise period to enable the already existing trademark/ service mark holders to get an .IN domain name matching their trademarks before opening the registration for general public. The period was of 45 days beginning from 1st January 2005.
- The plaintiff got his domain name googlee.in registered in 2008 and further renewed it in 2010 for another 8 years.
- The defendants sent a cease and desist notice to the plaintiff for infringing their well known trademark ‘google’. Apart from the domain name, the colours and scheme of the logo of plaintiff’s googlee was also deceptively similar to that of defendant’s.
- When the plaintiff did not respond to the notices sent by the defendant, the defendant filed a complaint under Domain Name Dispute Resolution Policy (INDRP) demanding the transfer of plaintiff’s domain name and costs.
- As per the .IN Dispute Resolution Policy (INDRP) and INDRP Rules of Procedure (INDRP ROP), an arbitrator was appointed by .INRregistry.
- A notice was issued by the arbitrator to the plaintiff through an email which was replied by the plaintiff’s brother. In the reply the use of infringing domain name was justified.
- After receiving this reply, the arbitrator proceeded with the matter and declared plaintiff’s domain name to be confusingly similar to that of the defendants and directed the plaintiff to transfer it to google.
- The plaintiff filed a case against the decision of the arbitrator in Delhi High Court.
- The plaintiff contended that there was no agreement of arbitration or ADR between the plaintiff and the defendant.
- Secondly, the plaintiff contended that the principles of natural justice were ignored in the proceedings because no copy of complaint or award was supplied to the plaintiff as per Rule 4(c) and Rule 13 of INDRP.
- The defendant contended that the plaintiff has no valid explanation as to why he chose a domain name which is almost identical to the most popular search engine.
- The defendant also contended that the plaintiff’s interest was not prejudiced.
- Whether principles of natural justice were contravened in arbitration proceedings?
- Should the award by arbitrator be set aside due to want of agreement of arbitration?
The court concurred with the decision of the arbitrator and declared that the plaintiff chose a confusingly similar domain name to google. The petition was dismissed. The court held that no violation of principles of natural justice has taken place.
On the issue of violation of principles of natural justice, the court observed that in the reply while he sought to justify the registration of 'googlee.in' in his favour, Mr Khatri did not ask for a copy of the complaint. Also, he made no effort thereafter to follow up on the proceedings before the Arbitrator or participate in it. He knowingly took a risk. As far as absence of agreement of arbitration is concerned, by getting the infringing domain name registered with the IN Registry, Mr Khatri was bound by the INDRP regime which envisaged a complaints mechanism. The decision on Google's complaint was in terms of the INDRP. The court dismissed all the arguments put forth by the plaintiff
The court rightly held that the plaintiff engaged in trademark infringement and used the confusingly similar domain name in bad faith. The procedure followed by google was in consonance with the provisions of the .IN Registry.