India: .IN Domain Name Dispute Resolution Policy Under Scrutiny

Last Updated: 23 February 2007
Article by Manisha Singh

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.

  1. Ordinary civil jurisdiction shall be excluded only if there is any express provision in the special statute barring jurisdiction.
  2. 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.
  3. 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.

© Lex Orbis 2007

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions