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 <internet.in>.
- 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
<internet.in> 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 <internet.in> 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 INTERNET.
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 <internet.in>. 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.
Concluding Remarks
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.
has been filed by HM MEGABRANDS PRIVATE LIMITED.
