O.M.P. No.132 of 2007 Page 1 of 27 IN THE HIGH COURT OF DELHI AT NEW DELHI O.M.P. 132 of 2007 Reserved on: November 24, 2011 Decision on: December 14, 2011 STEPHEN KOENIG ..... Petitioner Through: Mr. Shrawan Chopra with Ms. Kruttika Vijay and Ms. Saukshmya T., Advocates. versus ARBITRATOR, NATIONAL INTERNET EXCHANGE OF INDIA (NIXI) & ANR ..... Respondents Through: Mr. Sushant Singh with Mr. Prakash Arya, Ms. Vasundhara Pathak Masoodi and Mr. V.K. Shukla, Advocates. With O.M.P. No. 928 of 2011 (Arising out of transferred Suit No. 209 of 2006) JAGDISH PUROHIT ….. Petitioner Through: Mr. Sushant Singh with Mr. Prakash Arya, Ms. Vasundhara Pathak Masoodi and Mr. V.K. Shukla, Advocates. versus STEPHEN KOENIG …. Respondent Through: Mr. Shrawan Chopra with Ms. Kruttika Vijay and Ms. Saukshmya T., Advocates. CORAM: JUSTICE S. MURALIDHAR JUDGMENT 14.12.2011 Introduction 1. The dispute regarding the domain name ‘internet.in’ forms the subject O.M.P. No.132 of 2007 Page 2 of 27 matter of the present petitions under Section 34 of the Arbitration & Conciliation Act, 1996 (‘Act’) directed against an Award dated 5th July 2006 passed by the learned sole Arbitrator (Respondent No.1 in O.M.P. No. 132 of 2007) appointed by the National Internet Exchange of India (‘NIXI’) . 2. Respondent No. 2 (in O.M.P. No. 132 of 2007) Mr. Jagdish Purohit filed a complaint before the .IN Registry of NIXI on 31st January 2003, under Para 4 of the .IN Domain Name Dispute Resolution Policy (‘INDRP’) to the effect that the domain name ‘internet.in’ registered by the Petitioner, Mr. Stephen Koenig, was identical and confusingly similar to the registered trade mark ‘internet’ of Respondent No. 2; that the Petitioner had no rights or legitimate interests in respect of the said domain name and that the Petitioner’s domain name had been registered or was being used in bad faith. The Petitioner responded to the notice issued to him and defended the domain name registration in his favour. 3. The learned Arbitrator passed the impugned Award on 5th July 2006 in which inter alia he concluded that the domain name ‘internet.in’ should be struck off and confiscated and kept by the .IN Registry. He rejected the prayer of Respondent No.2 that the domain name should be transferred to him. 4. The Petitioner has in O.M.P. No. 132 of 2007 challenged the impugned Award primarily on the ground that it was contrary to the INDRP inasmuch as Respondent No.2 had failed to prove the ingredients of Para 4 thereof in order to succeed in his complaint and further that the learned Arbitrator exceeded his jurisdiction in ordering the confiscation of the domain name by the .IN Registry when no such remedy is provided in Para 10 of the INDRP. O.M.P. No.132 of 2007 Page 3 of 27 5. Even prior to the Petitioner filing the present petition, Respondent No. 2 filed Suit No. 209 of 2006 in the court of the learned Additional District Judge, Delhi (‘ADJ’) challenging the Award to the extent that the learned Arbitrator had rejected the plea of Respondent No. 2 for transfer of the domain name in his favour. After notice was issued in the present petition, Respondent No. 2 filed Transfer Petition No. 14 of 2007 seeking transfer of the said Suit No. 209 of 2006 to this Court. By an order dated 30th November 2007 this Court allowed Transfer Petition No. 14 of 2007 and directed Suit No.209 of 2006 to be tagged with the present petition. It has been numbered as a separate petition under Section 34 of the Act. For the purposes of the present judgment Mr. Stephen Koenig is referred to as the Petitioner and Mr. Jagdish Purohit as Respondent No.2. Preliminary objection as to limitation 6. Mr. Sushant Singh, learned counsel for Respondent No. 2, raised a preliminary objection that the petition by Mr. Stephen Koenig, O.M.P. No. 132 of 2007, was barred by limitation. He pointed out that the learned Arbitrator by a letter dated 5th July 2006 addressed to NIXI, a copy of which was also sent by email, enclosed a copy of the Award. In the said letter, the Arbitrator stated that he had sent a copy “of the letter and Award to parties also by e-mail.” It is submitted that inasmuch as Respondent No.2 on receiving a copy of the Award filed Suit No. 2009 of 2006 on 6th October 2006 within time, there could not be a different date of commencement of the period of limitation for the purposes of Section 34 (3) as far as the Petitioner was concerned. The present petition was filed only on 9th March 2007 and the explanation offered by the Petitioner that he received a copy of the Award from NIXI only on 13th December 2006 after writing to it was not convincing. Placing reliance on the decisions in Union of India v. Popular Construction Co. AIR 2001 SC 4010 and Union of India v. Tecco Trichy Engineers & Contractors O.M.P. No.132 of 2007 Page 4 of 27 (2005) 4 SCC 239 it was contended that the Petitioner had failed to file the petition within the maximum permissible time as stipulated under Section 34 (3) of the Act read with the proviso thereto. 7. Mr. Shrawan Chopra, learned counsel for the Petitioner, on the other hand, maintained that the Petitioner was not aware of the passing of the impugned Award till he received a notice in Suit No. 209 of 2006. The Petitioner, through his counsel, immediately wrote a letter dated 25th November 2006 to the .IN Registry enquiring about the arbitral Award. By a letter dated 5th December 2006, received in the office of counsel for the Petitioner on 13th December 2006, NIXI informed the Petitioner of the passing of the Award and enclosed a copy of the Award. Thereafter the present petition was filed on 9th March 2007, within the stipulated three month period under Section 34 (3) of the Act. 8. The above submissions have been considered. Under Para 13 of the INDRP Rules of Procedure, the .IN Registry shall, “within five working days after receiving the decision from the Arbitrator”, “communicate the full text of the decision to each Party and shall also communicate to each Party, the date for implementation of the decision.” It is not clear in the present case whether the .IN Registry at any time prior to 5th December 2006 communicated to the parties the full text of the Award in terms of Para 13 of the INDRP Rules of Procedure. There is no provision therein for the Arbitrator to directly communicate the Award to the parties. Secondly, although counsel for Respondent No.2 has placed on record a copy of the letter dated 5th July 2006 of the learned Arbitrator to NIXI, there is nothing to show whether and when the copy sent by e-mail was in fact delivered to either of the parties, more particularly the Petitioner. This assumes significance in light of the denial by the Petitioner of having received a copy of the Award prior to 13th December 2006. As explained O.M.P. No.132 of 2007 Page 5 of 27 by the Supreme Court in Union of India v. Tecco Trichy Engineers & Contractors (SCC @ 242) : “The delivery of an arbitral award under sub-section (5) of Section 31 is not a matter of mere formality. It is a matter of substance. It is only after the stage under Section 31 has passed that the stage of termination of arbitral proceedings within the meaning of Section 32 of the Act arises. The delivery of arbitral award to the party, to be effective, has to be “received” by the party. This delivery by the Arbitral Tribunal and receipt by the party of the award sets in motion several periods of limitation such as an application for correction and interpretation of an award within 30 days under Section 33(1), an application for making an additional award under Section 33(4) and an application for setting aside an award under Section 34(3) and so on. As this delivery of the copy of award has the effect of conferring certain rights on the party as also bringing to an end the right to exercise those rights on expiry of the prescribed period of limitation which would be calculated from that date, the delivery of the copy of award by the Tribunal and the receipt thereof by each party constitutes an important stage in the arbitral proceedings.” (emphasis supplied) 9. The documents placed on record by Respondent No. 2 do not show when precisely a copy of the Award was delivered by e-mail or surface mail to the Petitioner. Given that the Petitioner is a resident of U.S.A, it is not safe to presume, as contended by Respondent No.2, that the date on which the copy was received by Respondent No.2 should be taken to be the date on which it was received by the Petitioner. There is no material placed on record to doubt the assertion of the Petitioner that he received a copy of the impugned Award only on 13th December 2006 from NIXI. Accordingly, this Court rejects the preliminary objection of Respondent No. 2 that the petition of Mr. Koenig is barred by limitation. Background facts 10. Before dealing with the contentions of learned counsel for the parties O.M.P. No.132 of 2007 Page 6 of 27 it is important to notice certain background facts concerning the registration of the domain name ‘internet.in’. 11. It is of some interest, given the dispute involved in the present case, to note that the origins of ‘internet’ as an expression can be traced to a research network titled ‘Advanced Research Project Agency Network’ (ARPANET) established by the United States Department of Defense in the 1970s. ARPANET was meant to link with networks of other government agencies to form a ‘network of networks.’ The Shorter Oxford English Dictionary, (5th Ed., p. 405) defines ‘internet’ to mean “connect or be connected to a computer network; a computer network consisting of or connecting a number of smaller networks, such as two or more local area networks connected by a shared communications protocol.” Internet Protocol (‘IP’) is defined as “a standard that specifies the format and addressing scheme of packets of data sent over the internet or other network.” 12. The above dictionary meaning tells us that ‘internet’ is a now common word. It also acknowledges that to access a ‘site’ on the internet, the user usually has to key in an IP address. This is a combination of four groups of numbers separated by decimals, which is not easy to remember. Domain names on the other hand are ‘mapped’ on to an IP address to facilitate easy access to web sites. Domain names usually relate to the organisation or entity whose website is being accessed and can therefore be easily remembered. For example, the domain name nic.in is meant to indicate it to be that of the National Informatics Centre of the Government of India. A domain name can be divided into levels. For example, the domain name ‘delhihighcourt.nic.in’, has in the first level i.e. “delhi high court” which refers to the entity whose website it is, the second level is ‘nic’ which refers to the entity which hosts the server on which the O.M.P. No.132 of 2007 Page 7 of 27 website is located and ‘.in’ is the top level domain name (‘TLD’) which in this case is indicative of the geographical location of the website i.e. India. ‘.in’ is in fact a country code Top-Level Domain (‘ccTLD’) as contrasted with a generic Top-Level Domain (‘gTLD’) like ‘.com’ or ‘.org’. 13. On account of its uniqueness, a domain name can only map on to one IP address at a time. With the growing volumes of commercial transactions on the net, the intellectual property rights in domain names assume enormous significance. Disputes arise over registration of domain names using trademarks that are known and which are in use and may be registered in different jurisdictions. The root problem stems from the system of assigning domain names on a first-come-first-served basis. This permits well known and established trade names, brand names, company names, names of famous personalities, politicians to be ‘captured’ by a ‘registrant’ with little connection with such name and get it registered as a domain name. The problem is compounded with web browsers and search engines making it easy for a surfer to locate a website by simply typing the name of the company or product. However, where the ‘registrant’ of a domain name has ‘captured’ the trademark associated with that company or product and made it part of the domain name, the surfer is taken to a different location. Among the serious problems of the domain name system (‘DNS’) is “cyber squatting” resulting from deliberate and fraudulent registration of domain names using well-known trademarks with the intention of selling them to the owners of those trademarks at a huge price. Cyber squatters could also sell these domain names to any other person for a price, thus ‘diluting’ a well known trademark or trade name. 14. This and the problems of ‘cyber piracy’, of ‘trademark dilution’ and a O.M.P. No.132 of 2007 Page 8 of 27 host of other issues led to the formulation of the Uniform Domain Names Dispute Resolution Policy (‘UDRP’) as a result of consultations between the World Intellectual Property Organisation (‘WIPO’) and the Internet Corporation for Assigned Names and Numbers (‘ICANN’), a non-profit organisation managing the DNS. The UDRP which was adopted on 24th October 1999, provides for a domain names dispute resolution mechanism before Administrative Panels of the WIPO Arbitration and Mediation Center. 15. The task of registering domain names world-wide has now been divided geographically but the basis of registration continues to be ‘first- come-first served’. In India, NIXI, a company registered under Section 25 of the Indian Companies Act 1956 on 28th June 2005, formulated and adopted the INDRP as well as INDRP Rules of Procedure. NIXI brought out a Sunrise Policy in terms of which owners of registered Indian trademarks or service marks who wished to protect their marks were given the opportunity to apply for .IN domain names before the general public could. The idea of the Sunrise Policy was to give preference to Indian citizens and companies over entities abroad. The applications of owners of Indian trademarks or service marks were to be submitted to the Registry through an accredited Registrar and applications were to be accepted from 1st January 2005 to 21st January 2005. In order to be considered valid, a Sunrise application had to meet the following criteria: “1. The trademark or service mark registration must have been issued by the Registrar of Trademarks, Government of India. The trademark or service mark owner must be eligible for the queue the application was submitted to. 2. The trade mark or service mark registration must be current (non-expired) and valid, and must have been issued in the applicant’s name prior to December 31, 2004. O.M.P. No.132 of 2007 Page 9 of 27 3. The domain name applied for must be identical to the textual or word elements of the trademark or service mark that is registered (discounting any domain extension element). 3a. The domain name applied for must be represented in ASC11 characters only. Only letters, digit, and hyphens will be accepted in a domain name. No applications for domain names in international script (including diacritical marks) shall be accepted. 3b. Spaces or punctuation that appear in trademark registrations can either be represented in the domain name by a hyphen, or can be disregarded. Similarly, ampersands (&) in the trademark can be disregarded, represented by a hyphen, or represented by the letters ‘and’ (or the equivalent term in the language of the trademark registration, subject to 3a above). 4. The applicant must submit proof of its trademark or service mark to the Registry for verification, as per the proof of trademark guidelines.” 16. Certain domain names have been reserved for use by the government, constitutional bodies and the Registry. Only letters, digits and hyphens were to be accepted in a domain name. No applications for domain names in international script (including diacritical marks) would be accepted. Facts of the present case 17. In the instant case Respondent No. 2 on 17th March 2003 applied under the Trade Marks Act, 1999 (‘TM Act’) for registration of its trade mark ‘internet’ in respect of ‘Tobacco, raw or manufactured, smokers articles, matches included in Class 34’. The trade mark certificate was issued on 13th July 2005 which, in terms of Section 23 (1) TM Act, nevertheless related to the date of the making of the application, i.e., 17th March 2003. Therefore, as far as Respondent No. 2 is concerned, it holds registration for the trade mark ‘internet’ under Class 34 with effect from O.M.P. No.132 of 2007 Page 10 of 27 17th March 2003. 18. Admittedly, Respondent No. 2 did not avail of the sunrise policy of NIXI and therefore did not get any domain name registered using its trade mark. Meanwhile the Petitioner, a resident of the U.S.A., got the domain name ‘internet.in’ registered with the .IN Registry on 16th February 2005. Pleas of the parties 19. On 31st January 2006 Respondent No. 2 submitted a complaint to the .IN Registry seeking the cancellation of the registration of the domain name ‘internet.in’ in favour of the Petitioner. Respondent No. 2 contended that he had been using its trade mark ‘internet’ for over three years. The domain name ‘internet.in’ was confusingly similar to his trademark ‘internet’. The Petitioner had registered in the .IN Registry several domain names in which he had no right or trade mark. These included air.in, computer.in, ink.in, internet.in, toner.in, usa.in, wise.in. The Petitioner’s intentions were to sell the domain name to either Respondent No. 2 or to another organization for a profit. It was alleged by Respondent No. 2 that the Petitioner had parked the domain name and was making money by luring customers to the website and tricking them into clicking on ads. 20. In response to the notice issued to him, the Petitioner contended that the burden was on Respondent No. 2 who held registration of a highly descriptive or generic word like ‘internet’ to prove that the word was at all capable of being a trade mark or had acquired a secondary meaning. Respondent No.2 had not adduced a single document of usage of the said trademark, the quantum and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. It was asserted that the Petitioner intends to “legitimately use the domain name as the identifier for internet related goods and services on a O.M.P. No.132 of 2007 Page 11 of 27 website.” The INDRP did not make it mandatory for the Petitioner to conduct a trademark search in all classes before registering a domain name. Further, Respondent No. 2 had provided no evidence to the effect that the Petitioner knew of the rights of Respondent No. 2 in the mark ‘internet’ or ought to have known the same. It was submitted that Respondent No. 2 had not registered any domain names containing the word ‘internet’ in the popular gTLDs e.g., .com,.net, .org etc. so as to raise any inference or assumption, that the Petitioner ought to have had any indication of the rights of Respondent No. 2 in the domain name ‘internet.in’ Enclosing a copy of Whois results of the relevant domain names, the Petitioner pointed out that the domain names like internet.biz, internet.net etc. were all registered by different entities. 21. The Petitioner further asserted that he had not put up the domain name ‘internet.in’ for sale. A letter from SEDO GmbH, Germany confirming that the Petitioner’s domain names, including ‘internet.in’, “are not and have not been sale on our trading platform’ was enclosed with the reply. It was submitted that the Petitioner had over the years developed internet businesses like fax.de and toner.com for legitimate purposes and therefore, was a legitimate and a bona fide trading entity. The Petitioner has registered the domain name ‘internet.in’ in good faith to resolve a website to it for use in relation to internet related goods and services. It was desirous to use the domain name in respect of internet services and “this amounted to merely a generic or descriptive use.” The Petitioner specifically raised the plea of ‘reverse domain name hijacking’ by Respondent No. 2. The Petitioner alleged that the complaint itself was a blatant attempt by Respondent No. 2 to claim exclusive right in the domain name ‘internet.in’. The complaint had been filed with the sole aim to harass the Petitioner and usurp rights beyond the registration of Respondent No. 2. It was stated that Respondent No. 2 was free to register O.M.P. No.132 of 2007 Page 12 of 27 a domain name like internettobacco.in, which related to its alleged activities. There was no proof adduced by Respondent No. 2 to show that the Petitioner’s registration of the domain name ‘internet.in’ was in fact in bad faith or that the Petitioner wished to sell the domain name to Respondent No. 2 or to some other organization. 22. The Petitioner pointed out, on the basis of the information received by the Petitioner from other registrants against whom Respondent No. 2 initiated INDRP proceedings, that Respondent No. 2 had sought to monopolize several generic words such as business, web, jobs, hotels, etc. without a shred of evidence of use of the said words as trademarks. In fact, this was a clear indication of the bad faith of Respondent No. 2. It was, therefore, prayed that (i) the domain name should not be transferred to Respondent No. 2, (ii) finding of reverse domain name hijacking should be made and (iii) costs be imposed on Respondent No. 2 for blatant abuse. The impugned Award 23. The learned Arbitrator, in the impugned Award dated 5th July 2006, concluded as under: (a) The domain name ‘internet.in’ of the Petitioner herein was identical and confusingly similar to a trade mark of Respondent No. 2. However, Respondent No. 2 failed to show/prove that he had a right in the trade mark, which was a generic word; (b) The Petitioner had no right or legitimate interest in the domain name; (c) The Petitioner got registered the domain name ‘internet.in’ in O.M.P. No.132 of 2007 Page 13 of 27 bad faith. He had registered the domain name in order to sell, transfer or rent it or to prevent other owners of the mark from reflecting the mark in a corresponding domain name. (d) Consequently, the Petitioner was not entitled to retain the domain name and it was required to be struck off from the Registry; (e) Respondent No. 2 was also not entitled to transfer of the domain name in his name as he had also not established in his bona fide rights in the trademark; and (f) The Petitioner could not, in the circumstances, allege reverse domain name hijacking by Respondent No. 2. (g) The domain name ‘internet.in’ was to be confiscated by the .IN Registry and kept with it. Scope of the present proceedings 24. The scope of the present proceedings under Section 34 of the Act to interfere with the above reasoned Award of the learned Arbitrator is circumscribed by the grounds in Section 34 of the Act as explained in several judicial decisions. To warrant interference, it would have to be shown that the Award is opposed to the public policy of India as has been explained in ONGC v. Saw Pipes Ltd. (2003) 5 SCC 705. To recapitulate an award could be set aside (SCC, pp 727-728): “if it is contrary to: (a) fundamental policy of Indian law; or (b) the interest of India; or (c) justice or morality, or (d) in addition, if it is patently illegal. Illegality must go to the root of the matter and if the illegality is of trivial nature