CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.1 of 47 THE HIGH COURT OF DELHI AT NEW DELHI % Judgment delivered on: 4th July, 2011 CS(OS) 1745/2009 & I.A. No. 11943/2009 & 17485/2010 MR. ARUN JAITLEY ..... Plaintiff Through : Ms Pratibha M. Singh, Adv. with Mr. Sudeep Chatterjee and Mr. Sudeep Bhandari, Advs. versus NETWORK SOLUTIONS PRIVATE LIMITED & ORS. ..... Defendants Through : Mr C.M. Lall, Adv. with Ms. Ekta Sarin and Ms. Nancy Roy, Adv. for defendant Nos. 1-2. CORAM:- HON’BLE MR JUSTICE MANMOHAN SINGH 1. Whether Reporters of local papers may be allowed to see the judgment ? YES 2. To be referred to the Reporter or not ? YES 3. Whether the judgment should be reported in Digest ? YES MANMOHAN SINGH, J 1. The plaintiff Mr. Arun Jaitley has filed the present suit for permanent injunction restraining the defendants from misuse and immediate transfer of domain name WWW. ARUNJAITLEY.COM. CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.2 of 47 2. The name of defendant No.1 Network Solutions Private Limited was deleted vide order dated 15.04.2009. Amended memo of parties is already filed on record and defendant Nos. 2 to 4 have been numbered as defendant Nos. 1, 2 and 3 respectively. Mr C.M. Lall is appearing on behalf of defendant Nos. 1 and 2 as per amended memo of parties. The defendant No.3 namely Portfolio Brains LLC was proceeded ex-parte vide order dated 06.01.2010. 3. When the suit along with interim application was listed, the court passed the interim order in favour of the plaintiff. The operative portion of the interim order passed is as under: “It is directed that till the next date of hearing the Defendant No.3, Portfolio Brains LLC or its principal officers, servants, agents or anyone who may be acting for and for and on its behalf, shall not in any manner advertise the domain name arunjaitley.com, use the said domain name for auction purposes or for any other purpose. Defendant No.3 is restrained from transferring, alienating or offering for sale the said domain name “arunjaitley.com” to any third party and from creating any third party interest in the said domain name „arunjaitley.com‟. Defendant No.3 is directed to maintain status quo in relation to the said domain name. This is subject to the Plaintiff complying with the requirements of Order XXXIX Rule 3 CPC within one week.” CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.3 of 47 4. The matter was listed before the court on 25.04.2011 for consideration of I.A. No. 11943/2009 (Order 39 Rule 1&2 read with Section 151 CPC) and I.A. No. 17485/2010 (Order 1 Rule 1 CPC). Both the parties have given their consent if the main suit along with these applications be also decided. 5. Before considering these pending applications, I feel it is necessary to refer the facts which reads as under: (i) The plaintiff is a prominent leader of the Bhartiya Janata Party which is currently the largest opposition party in India and is the leader of Opposition in the Rajya Sabha. The plaintiff has been a Member of Parliament for the last ten years. He was a prominent leader of a movement against corruption launched in the year 1973 by Late Shri Jai Prakash Narayan. He was the Convenor of the National Committee for Students and Youth Organization appointed by Late Shri Jai Prakash Narayan. (ii) The plaintiff was a delegate on behalf of the Government of India to the United Nations General Assembly session in June, 1998 where the Declaration on laws relating to Drugs and Money Laundering was approved. The plaintiff was appointed CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.4 of 47 as the Minister of State for Information and Broadcasting (Independent Charge) in 1999. In the year 2000, the plaintiff was also appointed as the Minister of State for Disinvestment to give effect to the policy of disinvestments under the World Trade Organization (WTO) regime and was also given the additional charge of the Ministry of Law, Justice and Company Affairs and was elevated to rank of a Cabinet Minister on 7th November, 2000 with the Law, Justice & Company Affairs under his charge and also given the charge of the Ministry of Shipping. (iii) Thereafter the plaintiff demitted the office to join the Bhartiya Janta Party as its Secretary General and also as its national spokesman in the year 2001. In the year 2003, the plaintiff again became the Union Cabinet Minister as the Minister of Commerce & Industry and Law & Justice before rejoining the Bhartiya Janata Party as its General Secretary. (iv) The name “ARUN JAITLEY”, being the personal name of the plaintiff, immediately gets associated with the plaintiff and no one else. The plaintiff‟s name carries enormous goodwill and reputation and is exclusively associated with the plaintiff. the CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.5 of 47 plaintiff is a household name not only in India but also globally for the last more than 35 years. In the public perception, whenever the name of Mr. Arun Jaitley is mentioned, it is immediately identified and related with him and no one else. 6. The plaintiff wanted to book the domain www.arunjaitley.com. Since it was not becoming possible to register through the website of the defendants, a letter dated 16.07.2009 was addressed to the defendant No.2 namely Network Solutions, LLC (previously defendant No.3) through email by the counsel for the plaintiff. That on 17th July, 2009 a reply was received that the said domain was already taken. It was also asked the plaintiff to make an offer for purchasing the said domain through its Certified Offer Service. When the plaintiff visited the website of the defendant No.3 he found that the said domain was “Pending Deletion” as it had not been renewed by the previous owner. 7. The counsel for plaintiff again wrote an email dated 23rd July, 2009 to the defendants wherein, the plaintiff requested the defendants to transfer the said domain in the plaintiff‟s name as the said domain was pending deletion and had not been renewed by any person. CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.6 of 47 8. The defendant No.2 vide an email dated 25th July, 2009 reverted back by stating that the matter was escalated to the Executive Department for review and that someone would be contacting them. Later on an email dated 27th July 2009 was received by the counsel for the plaintiff from Mr. Jeffrey Visgaitis, Executive Support of the defendant No.2, wherein the plaintiff was asked to either wait for the domain to be deleted for non-payment or make a certified offer for purchasing the domain. 9. The domain www.arunjaitley.com according to the WHOIS report had expired on 12th June, 2009. Further according to the Domain Deletion Policy of the defendants, the domain ought to have been deleted after the expiration of 35 days as per the Policy. It is argued that even after the expiration of the said 35 days, the domain continued to be under the Pending Deletion status and the same was not transferred as referred by the plaintiff. The domain name www.arunjaitley.com being a Global Top Level Domain name, the defendants are bound by the Uniform Dispute Resolution Policy (UDRP). The validity and binding nature of UDRP has been discussed and affirmed by the Hon‟ble Supreme Court in Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd. reported as (2004) 6 CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.7 of 47 SCC 145. Further the defendants are also bound by the Domain Deletion Policy if ICANN wherein any expired domain is bound to be deleted within 45 days. Domain Deletion Policy of ICANN is also filed by the plaintiff and the same is available at page 23 of the documents. 10. The contention of the plaintiff is that the defendants with mala fide intentions did not delete the said domain and not transferred the same to the plaintiff as they had asked the plaintiff to purchase the domain through their Certified Offer Service. The Certified Offer Service of the defendants is nothing but an auction service wherein the person who bids the maximum amount would be entitled for the domain name. The cost for booking a domain for one year is $35. However, the minimum bid amount for Certified Offer Service is over $100. Further there is no guarantee that the domain name would be transferred to the bidder. Further the price assessment to procure the domain name www.arunjaitley.com according to the website of the defendants is ranging from $11,725 to $14,475. Certified offer for the domain www.arunjaitley.com of the defendant No. 1 and 2 is available on record. Thus according to the counsel it is clear that the intention of the defendants CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.8 of 47 was to have a monetary gain by collecting sums of money for the domain name. 11. It is informed by the counsel that the defendant No.2 thereafter transferred the said domain to the defendant No.3 which is an auction site for domain names. The defendant No.3 company acquires domains and auctions them to the general public. Thus it is obvious that the defendants are colluding with each other in order to make money on the domain name and not permitting the bona fide use of the same by the plaintiff as the defendant Nos. 1 and 2, in spite of having knowledge transferred the domain name to the defendant No.3 for its commercial gains which is a mere auction site. It is further submitted that even on 27th August, 2009, the domain was shown as “PENDING DELETE”. But it was thereafter transferred on the same day i.e. 27th August, 2009 to the defendant No.3 after 85 days. By an interim order passed on 15.09.2009, the court restrained defendant No.3 from transferring, alienating or offering for sale the said domain name www.arunjaitley.com to any third party and from creating any third party interest in the said domain name www.arunjaitley.com. The defendant No.3 was also directed to maintain status quo in relation to the domain name. CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.9 of 47 12. It is alleged that the Registrars of the domain names including Network Solutions, VeriSign, Portfolia Brains LLC, etc. are all operating under the ICANN and all these Registrars are in collusion with each other and it is being done deliberately in order to defeat rights of bona fide holders in a domain name. 13. Further the transfer was done without the notice or knowledge of the plaintiff who was expecting a positive reply in view of the letter dated 27th July, 2009 and thus the transfer is made to Portfolio Brains LLC the defendant No.3 contrary to their own rules and in order to violate the orders of the court and keep the rightful person in dark, though all these Registrars are bound under the UDRP Policy. Violation of the UDRP Policy in fact is to be construed very strictly by the ICANN. 14. The right to file the written statement on behalf of the defendant Nos. 1 and 2 was closed vide order dated 23.04.2010. No written statement was filed by defendant No.3. Mr. Lall appearing on behalf of defendant Nos. 1 and 2, on instructions, made the statement before the court on 23.04.2010 that he would have no difficulty if the domain name is transferred in the name of plaintiff. Mr. Lall made another statement on 15.12.2010 that the defendant Nos. 1 and 2 are no longer the CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.10 of 47 Registrar of the said domain name and the defendant Nos. 1 and 2 have not allowed the auction or transfer of the said domain name. In view of statement made by Mr. Lall, time was granted to the plaintiff to implead the new Registrar and to initiate proceedings against them. It appears from record that no such application was filed by the plaintiff to implead the new Registrar and to initiate proceedings against them except the oral submissions made by the learned counsel for the plaintiff. 15. Later on, the defendant Nos. 1 and 2 filed the application under Order 1 Rule 10 read with Section 151 CPC being I.A. No. 17485/2010 for deletion of the name of defendant Nos. 1 and 2 from the array of parties. The said application along with the interim application was filed by the plaintiff before the court. Both the applications were heard. Learned counsel appearing on behalf of the parties have raised no objection if the suit itself is decided. This court has allowed the consent given by them to determine the entire matter even otherwise since none of the parties has filed the written statement, this court can pronounce the judgment by involving the provision of order 8 Rule 10 CPC. 16. In the application the defendant Nos. 1 and 2 have tried to explain their stand. The explanation given by them is that the defendant CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.11 of 47 Nos. 1 and 2 have been wrongly added in the array of parties as proforma parties by the plaintiff when the said defendants are not the Registrar of the domain name in question. They are neither the Registrar nor the Registrants of the domain name in question and therefore cannot assist the court in effectively adjudicating the present dispute. In the application the details of general practice is also given. 17. The plaintiff opposed this application and filed the reply. The main reply to the application is that the Registrars of the domain names including Network Solutions, VeriSign, Portfolio Brains LLC, etc. are all operating under the ICANN. When the plaintiff had already put Network Solutions LLC on notice in this matter, they ought not to have transferred the domain name. This transfer was not within the knowledge of the plaintiff. The transfer made to Portfolio Brains LLC was contrary to their own rules. Despite there being an order of injunction as on date by this court, repeated transfers continue to take place. This is clear that these Registrars keep floating new companies under new names, operating from the same address. The Registrar and Registrant of the domain www.arunjaitley.com is the same entity. It is submitted that the defendant No.3 i.e. M/s Oversee Domain Management, LLC which is controlled by CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.12 of 47 M/s Oversee.net. The Registrar of the domain www.arunjaitley.com is DOMAINPARKBLOCK which is also controlled by M/s Oversee.net. Internet printouts from Network-tools.com showing that www.arunjaitley.com, DOMAINPARKBLOCK & M/s Oversee Domain Management, LLC are controlled by M/s Oversee.net. The fact that the Domain name is being squatted upon with mala fide intent is further evident of an intention to monetarily earn from the same. 18. Ms Pratibha M. Singh argued that instead of deletion of Network Solutions, LLC from the array of defendants, the Court should direct ICANN, which is the supervisory authority, to take appropriate action against Network Solutions LLC for acting contrary to their own Policy and ICANN Policy and also action to be taken against Portfolio Brains LLC for transferring the Domain name during the pendency of suit and despite the order of injunction having been informed to them. 19. On merit, learned counsel Ms. Pratibha M Singh appearing on behalf of the plaintiff has made her submissions which can be enumerated as under: a) Ms. Singh firstly submitted that the name Arun Jaitley is the rare combination of two words and the same is protectable under the CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.13 of 47 provisions of the trade mark Act. Furthermore, she submitted that the fame and the achievements of Mr. Jaitley adds value to such personal name which does merely remain a personal name but becomes a source indicator which identifies the persona of the eminent politician, advocate, leader who is world renown. She submitted that the right to use the name Arun Jaitley vests with the plaintiff and does not accrue to anyone else. b) Secondly, Ms. Singh submitted by placing reliance on the domain name policy particularly Rule 4(a) and 4(b) and submits that the domain name Arunjaitley.com has been registered in the bad faith and sufficiently qualifies the tests of determining the domain name to be called as registered in bad faith. She submitted that the there is no just reason behind the English entity to retain the domain involving the personal name and after putting to notice, the defendants more specifically defendant no. 3 is not even transferring the domain name which makes it completely in bad faith as per the requirement of Rule 4(a) (iii). Further, the defendant is intending to trade with the domain name arunjaitley.com by putting the same on website and asking CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.14 of 47 Mr. Jaitley to pay huge sum of the money which itself means that there is unfair attempt on the part of the defendant to indulge into cyber squatting against which the domain name policy is made. She submitted that the present case is squarely a case involving cyber squatting. c) Thirdly, Ms. Singh argued that the conduct of the defendants is malafide as the defendant no. 1 and 2 went on to alienate or part with the domain name immediately upon putting to the notice on 16th July 2009 by the plaintiff. Learned counsel for the plaintiff contended that the defendant no. 1 and 2 ought to have cooperated with that of the plaintiffs in order to enable the plaintiff to retrieve the domain rather than to keep the deletion of the domain name in abeyance and ultimately parting with them to third party which is defendant no. 3. Likewise, the learned counsel for the plaintiff vehemently contended that the conduct of the defendant No.3 is equally bad and dishonest one. This is due to the reason that the defendant no. 3 has also parted with the domain after this court passed an injunction order dated 15.04.2009. The said domain name is now assigned to CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.15 of 47 another entity namely M/s Oversee Domain Management LLC and also the registrar is also changed which is some Domainparkblock. The said new assignee as well as the defendant no. 3 operates from the same address. Further, the new registrar as well as the assignee is controlled by the entity namely Oversee.net. As per the counsel for the plaintiff, all this leads to only one conclusion which is that the said acts are done consciously only to earn monetary gains so that the domain name may be sold at the high price rather than to return to the legitimate owner. Thus, the defendants may be dealt with appropriately so that they may not further frustrate the claims of the plaintiffs. d) Learned counsel for the plaintiff further submitted that the domain name protection is amply given by the courts as that of the trade mark. Even if the word domain name is not mentioned in the definition of the mark under the trade marks, the judicial opinion is well settled that the domain names are to be given the protection under the law of passing off under the common law remedy. Learned counsel for the plaintiff reled upon the dicta of Satyam Infoway Ltd. Vs.Sifynet Solutions Pvt. Ltd,(2004)6 SCC 145 in CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.16 of 47 support of her contention. Further the learned counsel relied upon certain decisions of ICANN Panel to contend that the personal names are given protection under the regime of the domain name. 20. Learned counsel finally submitted that the defendant no. 3 has not filed the written statement and is also not appearing before this court despite service but is assigning the domain name even after the orders of the court. The defendant no. 1 and 2 are seeking wash their hands off by way of putting the stand that the domain registrar is different and they are not the incharge of the domain name and infact they were aware and put to notice by the plaintiff counsel by way of notice dated 16th july 2009. Thus, the court may disallow the application seeking striking of the names of the defendant no. 1 and 2 from the array of the parties as the said defendants were involved in the part of the transaction of transfer of domain name one way or the other. Therefore the suit may be decreed in terms of the prayers with the direction to ICANN to immediately transfer the domain name to the plaintiff. 21. Per contra, Mr. Chander Lall, learned counsel for the defendant no. 1 and defendant no. 2 has resisted the claims of the plaintiff qua defendant no. 1 and 2 by making his submissions which are as under: CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.17 of 47 a) Firstly, Mr. Lall contended that the defendant no. 1 and 2 were not the registrar of the said domain name and the domain name in question was supposed to expire on 12th June 2009 and thereafter there is a procedure which is prescribed for the deletion of the domain name after the expiry. The said procedure has been explained by Mr. Lall involving following steps:  On 21st June 2009, the defendant no. 1 sent the delete command to Verisign for deletion which was the 39th day after expiry of the term of the domain name.  However, as a general trade practice, Verisign continues to keep the domain name associated with the most recent registrar on record until it deletes the name from its records. In the present case, Verisign did not delete the domain name until August 27th 2009 when it was apparently registered by the current registrant.  The name of the defendants in the whois data kept appearing since they remained the registrar on record at the registry despite communicating the deletion to the registry. CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.18 of 47  Further, it was informed that there is a procedure for deleted domain name when it is deleted by the registrar which goes into redemption grace period for 30 days.  After the redemption grace period, the verisign again waits for 5 more calendar days which means that the domain goes for pending delete mode.  In the present case, the database continued to display the name of the defendant despite the fact that the defendant had sent the delete command. Thus, Mr. Lall submitted that thereafter the control of the domain name after the deletion command by the defendant vests with Verisign which has not deleted the same timely and the domain was available to another registrant for consideration. Due to all these reasons, the defendant no. 1 and 2 even though intending to cooperate with the plaintiff were left helpless so far as the retrieval of the domain to the plaintiff is concerned. Consequently, the defendant no. 1 and 2 were right in advising the plaintiff to pursue his remedies with the appropriate forum. CS(OS) No. 1745/2009 & I.A. Nos. 11943/2009 & 17485/2010 Page No.19 of 47 b) Secondly Mr. Lall submitted that there is no malafides which can be attributed to the defendant no. 1 and 2 as the said defendants as and when they were informed about the plaintiffs rights wrote to the plaintiff that they will cooperate with him. Further, the said defendants have infact informed the plaintiff the information available with them and thereafter asked the plaintiff to go for their remedies. The defendant