Domain Names identify Internet sites. They are the text name of a numeric IP address of a computer on the Internet. The increased popularity of the Internet has demanded an Internet presence and every company/organization wants to have a webpage in their name. This development has lead well-known companies/organizations to become protective of their domain names, as everyone has realized that having a domain name identical or similar to them can establish and increase their Internet presence.
Domain name dispute largely arise from the practice of cyber squatting, i.e. pre-emptive registration of trademarks by third parties as domain names. Since, the registration is relatively simple, inexpensive and done on a first come first served nature, cybersquatters register trademarks and famous names and later on put the domain name for auction. It is only when the actual company or person comes up for registration, they find that the same has already been registered. Settlement of disputes regarding ownership of domain names is generally follows the Uniform Domain Name Dispute Resolution Policy (UDRP) adopted by Internet Corporation for Assigned Names and Numbers (ICANN), a private non-profit corporation body. .IN Registry started the registration of ".in" , the country code top level domain name in 2005 and formulated .IN Domain Name Dispute Resolution Policy (INDRP), for dispute resolution of domain names, on the lines of UDRP.
An interesting question which arose and was addressed in CITI CORP & Anr v. Todi Investors & Anr. 2006 (33) PTC 631 (Del.), in connection with resolution of dispute concerning domain names that whether the Civil Courts jurisdiction is ousted by INDRP, a specific alternate dispute resolution method forms the subject matter of this commentary.
CITICORP is a company incorporated under the laws of State of Delaware, USA with corporate office at New York, USA. They are renowned in banking and financial services business and their renowned trademarks are CITIBANK bank, CITI and a number of other well-known family marks such as CITICORP, CITIGROUP, CITISELECT, CITIBANKING. During the sunrise period of the launch of Country Code Top Level Domain Name (ccTLD) CITICORP obtained registrations of "citicorp.in" and "citibank.in" but they were shocked to find that the domain name ‘citi.in’ was registered in the name of Todi Investors & Anr though they had not launched any website for the said domain name. Aggrieved CITICORP preferred suit, praying for a decree of permanent injunction restraining Todi Investors from using the trademark ‘CITI’, a mandatory injunction for transfer of domain name ‘citi.in’ along with rendition of accounts for passing off and infringement.
Todi Investor’s argument for rejection of the plaint in view of the establishment of .IN Domain Name Dispute Resolution Policy for adjudication of all disputes arising out of the registration and use of .in Internet Domain Name led to the issue of ousting of the jurisdiction of a civil court in presence of an alternate dispute resolution policy.
The main contention raised by Todi Investors was that with the formulation of INDRP, the Civil Court’s Jurisdiction is ousted and hence the suit is not maintainable. In response CITICORP said that Section 9 of the Code of Civil Procedure dealing with ouster of jurisdiction of Civil Court conveys that such ouster must either be expressly expressed or clearly implied.
Placing reliance on a catena of cases decided by the Apex court and Privy Council on the issue of bar of jurisdiction, the Court categorically held that jurisdiction of Civil Courts to try all suits of civil nature is very expansive and the statute which excludes such jurisdiction should be strictly interpreted. Where there is no express bar but statutory provisions imply exclusion of jurisdiction, exclusion still cannot be inferred unless the statute provides adequate and efficacious alternative remedy. The two tests, which were considered relevant in dealing with the question about the exclusion of civil court’s jurisdiction, are: -
- Whether the special statute which excludes such jurisdiction has used clear and unambiguous words indicating that intention; and
- Does that statute provide for an adequate and satisfactory alternative to a party that may be aggrieved by the relevant order under its material provisions?
In the light of the above discussion the Court reaffirmed the following principles while adjudicating an ouster of civil court’s jurisdiction.
- Ordinary civil jurisdiction shall be excluded only if there is any express provision in the special statute barring jurisdiction.
- If there is no express provision, but on examination it leads to the conclusion that civil jurisdiction is excluded, and the Court on being satisfied that there are other alternative remedies provided, then it can be safely concluded that jurisdiction of the civil court is barred. The alternative statute must provide for the determination of all rights and liabilities of the parties.
- Even in cases where the jurisdiction of a civil court is barred expressly or impliedly, the Court would nonetheless retain its jurisdiction to entertain and adjudicate the suit provided the order complained of is a nullity.
The Court thus concluding the law relating to ouster of the jurisdiction of civil court, read-through the provisions of .IN Domain Name Dispute resolution Policy (INDRP) for the purpose of enquiring whether the remedies provided therein deserved the epithet of "adequate" and "sufficient", and whether remedies normally associated with actions in civil courts are prescribed by the provisions of said policy.
On perusal of the scheme of the policy and the rules framed there under, it was found that there is no explicit ouster of the jurisdiction of the civil court and the case is pleaded on an implied bar. Further that no new statutory remedy is provided as such and all that has been formulated is an alternative dispute resolution policy framed, not by the legislature but by the National Internet Exchange (NIXI) thereby leading the whole scheme of the INDRP providing remedy extremely limited in nature – limited to requiring the cancellation of the Registrant’s domain name or transfer of the domain name registration to the complainant - due to its neither being a Statute nor an Act. Further the status of an Arbitrator under the INDRP is neither that of a judge nor that of a Judicial Officer. Therefore, in the light of Section 134 of the Trademarks Act which mandates that only a District Court/District Judge is empowered to adjudicate suit for infringement of a trademark or of passing off and also that the relief claimed by CITI Corp can only be adjudicated in a suit rather than the INDR Tribunal can adjudicate upon due to its greater scope in comparison to insufficient machinery of the INDR Policy.
The Tribunal was held to be not a forum which can provide adequate and effective machinery for the redress of the substantive relief claimed for "infringement of trademark" and "passing off" which includes infringing the use of CITI in any manner or form either as a domain name or as a trademark or trade name or on the website as well as the rendition of accounts.
To conclude, worth noting is the Apex Court ruling in the Satyam Infoway Ltd. V. Sifynet solutions Pvt. Ltd., 2004 (28) PTC 566 (SC) that, the lacunae cropped up by the absence of a legislation explicitly referring dispute resolution in connection with domain names, is filled by the INDRP but that by no means tantamounts to ouster of the jurisdiction of civil courts, more so, in cases where infringement of tradename/trademark and passing off are alleged and rendition of accounts and other reliefs are prayed for.
Thus the INDR Tribunal can only order for cancellation or transfer of the domain names.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.