India: "VIAGARA.IN" Goes Back To Pfizer

Pfizer Products Inc., leading pharmaceutical company and manufacturers of VIAGRA filed an application for the grant of an interim injunction to restrain Altamash Khan and another party from using its registered trademark as under the domain name ‘viagra.in’ and URL www.viagra.in. Altamash Khan claims to have acquired the domain name for sale and not to launch his own website. A latter application prayed that the domain name "viagra.in" be transferred back to Pfizer, subject to the condition that incase the suit went against Pfizer, they would retransfer the domain name back to Altamash Khan. Pfizer also stated that in such an occurrence, they would bear all costs and expenses for the use of the domain name during the pendency of the suit and that they would suitably compensate them as may be determined by the Court.

The Counsel for Pfizer stating the nature of Viagra as a drug enhancing male potency, submitted that they were the owners of the mark. They contended that the Oxford dictionary too described the drug as stated alongside describing it as a trademark. They further submitted that the mark was registered in 147 countries and that their application in India was pending. The product’s recent launch further made it essential for the domain name to be available in order to respond to various queries regarding the product and to facilitate commercial transactions on the Internet. The counsel strengthened this contention by stating that just as businesses have physical addresses, they have a place in cyber space known as domain names. Placing reliance on Eicher Limited v. Web Link India, wherein the domain name was transferred back to Eicher Ltd., the Plaintiff prayed for similar relief.

Pfizer stated that the domain name, viagra.in was already registered and that they possessed further domain name registrations, all of which prominently involved the trademark ‘VIAGRA’. They further contended, citing downloads from the .IN registry website, that .IN was a unique symbol of India; procedures for registering under the .IN domain were indicated in the Policy Framework and Implementation brought out by the Govt. of India under the Dept. of Information Technology.

Referring to various print outs from the IN Registry, he pointed out that the process of applications for registration of .IN domain names were divided into two periods. The first "Sunrise period" enabled registered trademark owners, companies and owners of intellectual property to protect their Domain names after verification. Thereon, the second period, enabled the general public to register their domain names. "DirectI", an accredited Registrar, had authorized Altamash Khan as its reseller. Altamash Khan had acquired the domain name in contention for this very resale purpose.

In order to prevent hoarding, auctioning, or selling .IN domain names at prices higher than usually charges, and to resolve other related disputes, a scheme known as .IN Domain Name Dispute Resolution Policy (INDRP) had been formulated. Any person who considered his legitimate rights or interests to be conflicted by a certain domain name could file a complaint under this scheme. The dispute though must have been referred to the arbitrators under INDRP; this system not having been in place was brought forth the High Court of Delhi.

The counsel for Altamash Khan contended that Pfizer though was aware of its capability to register in the ‘Sunrise’ period, such a procedure not being carried out was a failure on their part. It was further contended that the scheme been thrown open to the general public, Altamash Khan had taken quick action. Further it was contended that the registrations under the second module were made through accredited registrars, on a ‘first come first serve’ basis, and the same was done for and on the instructions of a customer. Altamash Khan stated that he had nothing more to do with the domain name except that he was a channel for the customer to register the same.

Altamash Khan further stated that the status of the domain ‘viagra.in’ applied for, was shown to be inactive. They further submitted that it was not that Pfizer did not get any domain name, rather was capable of registration under the viagra.co.in domain, and that too under the general policy. They also stated that the domain viagra.gen.in was registered with another applicant. They concluded that the domain names were open to the public and hence no order directing them to transfer the said domain name ought to be passed.

The Court took note of the fact that Pfizer was the owner of the trademark VIAGRA in 147 countries and its application in India was pending. Admitting that Pfizer had spent a lot of time, money and effort in developing the product and the trademark worldwide. The court held that with such genuine reputation worldwide and being the registered owner of the domain name www.viagra.com, Pfizer did possess a legitimate interest in protecting its brand.

The court further stated that Altamash Khan had no interest in the domain name apart from putting it up for sale. Neither Altamash Khan nor his customer possess any interest whatsoever in VIAGRA as a product. The domain name viagra.in was said to be confusingly similar to Pfizer’s viagra.com and that they held no legitimate interest in respect of the domain viagra.in

The domain name ‘viagra.in’ being inactive, it was stated by the Hon’ble court that Altamash Khan was cyber squatting, over an address over which the rights and interests of Pfizer outweighed those of Altamash Khan. On these accounts, the domain name was ordered to be transferred back to Pfizer during the pendency of the suit, since no damages as such would be caused to Altamash khan. On the other hand, Pfizer in the event of the transfer being denied would have suffered serious injury in the shape of lost opportunity of commerce, development of the product, and interaction with Internet users, which might not be quantified in monetary terms.

Stating that Pfizer had a strong prima facie case, and the balance of convenience being in its favour, the court ordered the transfer of the domain name subject to the final decision. A condition was laid down that in case the final suit got decided against Pfizer, they would be liable to re-transfer the same and compensate the opposing party as directed by the Court. The Court also directed Pfizer to reimburse all costs and expenses incurred by Altamash Khan in obtaining the said domain name.

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