November 09, 2015
Who Owns The Internet
The Division Bench of the Hon’ble High Court of Delhi, vide its judgment dated November 02, 2015, dismissed the appeal in the case Stephen Koeing v. Arbitrator NIXI and Anr.(Case details FAO (OS) 42/2012)
Brief facts of the Case
The Respondent in the Appeal (Mr. Purohit) is the registered proprietor of the trade mark
INTERNET in class 34 in respect of tobacco, raw or manufactured, smoker’s articles, matches, since the year 2003. The Appellant (Mr. Stephen Koeing) registered the domain name
<internet.in> with the .IN registry on February 16, 2005.
Thereafter, the Respondent had filed a complaint with the National Internet Exchange of India (NIXI) seeking cancellation and transfer of the domain name
<internet.in> to him as it was confusingly similar to his trade mark.
Contentions of the Appellant
The Respondent’s trade mark is not capable of registration as ‘internet’ is a highly descriptive or generic word and the same cannot be monopolized by the Respondent.
The domain name was registered in good faith and intended to be used legitimately as identifier for internet related goods and services on website.
The .IN Domain Name Dispute Resolution Policy (INDRP) did not mandate the Appellant to conduct a trade mark search in all classes before registering the domain name. Since the Respondent did not register any domain name containing the word ‘internet’, the Appellant could not have any indication of his rights in the domain name
The Learned Single Judge failed to appreciate that INDRP itself states that it is modelled in line with the Uniform Domain Name Dispute Resolution Policy (UDRP) and there is no distinction between their provisions. Thus, all three requirements stated in paragraph 4 of INDRP must be proved.
Mere registration in one of the prevailing classes of trade mark will not ipso facto entitle a trade mark owner from preventing others from using the trade mark in its generic sense.
Since the Respondent did not show any internet usage in respect of his mark by offering goods and services in relation to it, there is no legitimacy in his claim.
Contentions of the Respondent
The trade mark INTERNET is being used by the Respondent for over three years and the domain name
is confusingly similar to his trade mark.
The Appellant has also registered several other domain names with the .IN Registry in which he had no right or trade mark such as
<air.in,<usa.in>, <computer.in> etc.
The Appellant intended to sell the impugned domain name either to the Respondent or to any other entity/organization for profit.
The Appellant was making money by luring customers to the website and tricking them into clicking on ads.
Order of the Court and its Rationale
The Learned Arbitrator in its award had held that the domain name
<internet.in> is identical and confusingly similar to trade mark
INTERNET and therefore, the Registrant (Mr. Stephen Koeing) does not have any right or legitimate interest in the said domain name. Further, such registration of the domain name
is as such in bad faith, and is to be struck off from the Registry.
However, the Learned Arbitrator did not accept the prayer of the Complainant (Purohit) to transfer the domain name to him as he did not establish his bonafide rights in the trade mark
INTERNET, which is a generic word. Therefore, the domain name was ordered to be confiscated by the .IN Registry by the Learned Arbitrator.
Concurring with the Arbitrator's award, the learned Single Judge had analyzed the differences between the relevant provisions i.e. para 4 of INDRP and UDRP and observed that the last line in para 4 of UDRP
'the complainant must prove that each of these three elements are present’ is missing from para 4 of INDRP. Thus, the domain name is likely to cause confusion in the minds of consumers with ‘imperfect recollection’. The learned Single Judge also held that the fact that the goods for which Mr. Purohit held registration were different from internet related services which Mr. Stephen Koeing proposed to offer, does not mitigate the possibility of such confusion, given the nature of e-commerce and range of products that can be purchased on the internet. However, the Learned Single Judge differing from the Learned Arbitrator, held that Mr. Purohit had legitimate rights over the trade mark
The Division of the Hon’ble Court in the present appeal held that the three elements in para 4 of INDRP need not be cumulatively established. The contention that URDP provisions are to be read into INDRP provisions is unpersuasive as URDP is not an umbrella legislation to which INDRP is subordinated to a hierarchy.
Further it was also observed that the use of a mark which bears such close resemblance to a registered trade mark as to amount to deceptive similarity results in presumption of infringement of the mark by virtue of Section 29 (3) of the Trade Marks Act, 1999. Therefore, the contention of the Appellant that registration does not confer per se legitimate interest is not acceptable.
Further, the Respondent had discharged his onus of proving that the Appellant had no legitimate interest in the domain name . The Appellant had registered 1747 domain names
for the purpose of selling them. Even though he was experienced in registering domain names, he did not make any effort to check that the domain name is already registered as a trade mark by another party.
The Learned Division Bench the Delhi High Court thus held that there is no ground made out for interference with the findings of the Learned Arbitrator and the Learned Single Judge and dismissed the appeal.
It is observed that courts would interfere with an Arbitrator's Award only if the findings are based on patent legal errors which was not so in the present case.
Additionally, it is surprising how both the parties in the present case are disputing over a generic name i.e., INTERNET by not only asserting trade mark right on it, but also claiming a domain registration to the exclusion of others.