Domain name protection: Broadening horizons

By Pravin Anand and Shrawan Chopra, Anand and Anand
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A domain name technically is an internet address identifying a computer site or a website to the internet. In commercial parlance, a domain name can be described as a virtual platform where a brand conducts business and takes up residence.

Pravin AnandManaging partnerAnand and Anand
Pravin Anand
Managing partner
Anand and Anand

However, there have been various incidents where entities have incorporated names of established brands and well-known trademarks in their domain names with an aim to exploit the goodwill and reputation attached to such brands. This dishonest practice of copying or incorporating established and well known brand names or trademarks in domain names has been considered a violation of intellectual property rights of the proprietor of such brands/trademarks.

Evolving process

The administration of domain names within the “.in” (India) category is overseen by the National Internet Exchange of India (NIXI). Under NIXI, the IN Registry functions as an autonomous body with primary responsibility for maintaining the .IN ccTLD (country code top-level domain) in accordance with the .IN Dispute Resolution Policy (INDRP), formulated in line with UDRP rules and procedure passed by the Internet Corporation for Assigned Names and Numbers (ICANN).

Under the INDRP, a sole arbitrator is appointed to decide on complaints filed against infringing/illegitimate domain names. The Indian judiciary has been proactive in protecting the trade interests involved in domain names and in a recent landmark judgment of Thoughtworks vs Super Software & Anr, passed by the Delhi High Court, the scope of public policy under section 34 has been interpreted to include that when an arbitral award fails to appreciate the trademark rights of a proprietor against an illegitimate/infringing domain name, the same would be against the fundamental policy of India under the new arbitration law regime.

Facts of the case

Thoughtworks, the petitioner, has been engaged in the business of IT consulting, software development services and sale of proprietary software under its trademark ThoughtWorks, since 1993. The petitioner had registered the same in India on 22 June 2001 under class 9, and has been using it since then. In March 2015, the petitioner became aware that a domain name, “thoughtworks.in”, had been registered by Super Software (the respondent) to propagate its business and services similar to the petitioner. The petitioner filed a complaint before NIXI under the INDRP and the Procedure Rules of NIXI.

Shrawan ChopraPartnerAnand and Anand
Shrawan Chopra
Partner
Anand and Anand

The arbitrator presiding vide its order dated 12 July 2015, and rejected the petitioner’s complaint on the following grounds:

(1) Discrepancies in the addresses given with the complaint made it difficult to ascertain that the petitioner was the owner of the trademark “ThoughtWorks”;

(2) No copy of the registration certificates of any country, including India, was submitted and no date of registration of the trademark “ThoughtWorks” was provided. So the impugned domain name could not be held as similar to the petitioner’s trademark;

(3) The respondent made fair and legitimate use of the impugned domain name;

(4) The petitioner did not claim the impugned domain name for more than three years, when the same was not registered by the respondent and was freely available.

Aggrieved by the decision of the arbitrator, the petitioner filed a petition under section 34 of the Arbitration and Conciliation Act, 1996. The Delhi High Court vide its order dated 12 January 2017, held the award passed by the arbitrator to be without application of mind and opposed to the fundamental policy of India, as the same was ex-facie erroneous on account of the following:

(1) The arbitrator did not seek clarification from the petitioner regarding the confusion in addresses, which was a fatal error and a procedural lapse on the part of the arbitrator;

(2) The arbitrator failed to notice the trademark registrations provided with the complaint in the first place;

(3) Relying on the judgment of the division bench of the Delhi High Court in Stephen Koenig vs Arbitrator, NIXI, the court held that a delay in filing the complaint would not disentitle the aggrieved party from proceeding against the infringing entity. The petitioner also showed that it lodged the complaint as soon as it knew about the respondent;

(4) The arbitrator gave no finding on confusion and deception despite the fact that the impugned domain name incorporated the entire name of the petitioner and was bound to erroneously indicate a connection of the respondent with the petitioner.

The above interpretation of the term public policy under the arbitration law regime is a welcoming step taken by the Indian judiciary because it recognizes the well established judicial precedents and policy in relation to traditional trademark law and to some extent bridges the gaps between IP law, domain name disputes and arbitration law.

Pravin Anand is the managing partner of Anand and Anand and Shrawan Chopra  is a partner at the firm 

Anand and Anand

Anand and Anand

B-41, Nizamuddin East,

New Delhi 110013, India

www.anandandanand.com

Contact details:

Tel: +91 120 405 9300

Email: pravin@anandandanand.com

Email: shrawan@anandandanand.com