Trademark

arunjaitley.com – A Case of Cybersquatting


In this post, I will cover the decision of the Delhi High Court in the cybersquatting case relating to the domain name www.arunjaitley.com

FACTS OF THE CASE:
The plaintiff in this case, Arun Jaitley, is the well known politician and leader of the BJP. He wished to register the domain www.arunjaitley.combut found that the domain had already been registered as of the year 2009. The plaintiff sent a letter to Network Solutions (the 2nd defendant) requesting registration on 16th July, 2009. At the time of sending this letter to the defendant, the domain name was ‘pending deletion’.  The next day he received a reply asking him to purchase the domain name from them, or wait for the domain to be deleted.
However, two important points need to be mentioned at this point. (1) The domain www.arunjaitley.com according to the WHOIS report had expired on 12th June, 2009. (2) According to the Domain Deletion Policy of the defendants, the domain ought to have been deleted after the expiration of 35 days.
ARGUMENTS OF THE PLAINTIFF
Monetary gain
Based on the above, it was argued that there was mala fide intention on the part of the defendants in not deleting the domain name and refusing to transfer the domain name to him, and instead asking him to purchase the domain from them at a cost of anything between $11,725 to $14,475 based on the defendants’ assessment. Thus, the plaintiff argued that monetary gain was the objective of the defendants. 
Collusion amongst defendants
Since Network Solutions thereafter proceeded to transfer the domain to Portfolio Brains, an auction site for domain names. The indication of collusion stems from the fact that although on 27th August, 2009, the domain was shown as pending deletion, but it was thereafter transferred to Portfolio Brains, on tat day, and more importantly, a full 85 days after the date of expiration. Another indication was the fact that the plaintiff was not informed of this transfer despite writing to the transferor, Network Solutions as early as mid-July. Not only was this a violation of their own internal policy, but also the URDP and ICANN policy, both of which are binding on Network Solutions and Portfolio Brains. The current registrar of the domain is Domain Park Block, operating from the same address as Portfolio Brains and controlled by the same body, Oversee.net, clearly indicating dishonest manoeuvring by the concerned parties by floating new entities.
Violation of Injunction order
It was also argued that the dishonest intention of the defendants is illustrated by the violation of the injunction order dated 15th April, 2009, restraining Portfolio Brains from transferring the said domain name, and it ought to have cooperated with the plaintiff to enable him to retrieve the domain name. 
Right to use the name ‘Arun Jaitley’
Counsel for the plaintiff also sought to establish that the name ‘Arun Jaitley’ is protectably under trademark law in India by demonstrating it to be a rare combination of two words added to his renowned fame and achievements.  Thus, it no longer remains a personal name, but a source indicator which identifies the persona of the eminent politician, advocate and world, and thereby, the right to use the name ‘Arun Jaitley’ vested with the plaintiff alone.
By relying on the Satyam case, it was also shown that domain names are to be given the same protection despite not being explicitly mentioned as a mark under the Trademarks Act.
ARGUMENTS OF THE DEFENDANTS
The counsel for the first two defendants argued that they had been wrongly added in the array of parties although they are not the Registrar of the domain name in question. He also argued that it continues to keep the domain name associated with the most recent registrar on record until it deletes the name from its records, which is why their names appeared as registrars as of August 27th 2009. He thus argued that it was always the intention of Network Solutions to cooperate with the plaintiff, and had advised him as to the remedies for retrieval of the domain name. 
It was also argued that the defendants were not at liberty to transfer the domain name to the plaintiff, since they had given a command for deletion of the same and the domain name was, therefore, available to the public and the new registrant was able to register it on August 27, 2009.
DECISION OF THE COURT
Trademark protection
The court rightly held that domain names are protected under the law of passing off and personal names constituting domain names would be granted similar protection. Further, the name is inherently distinctive and being a popular name, deserves trademark protection. Thus, despite the personal right to use his personal name, the plaintiff managed to satisfy the court that it is distinctive with sufficient popularity to qualify for commercial trademark protection.
 
ICANN Policy
The court then referred to Rule 4(a) and (b) of the Uniform Domain Name Disputes Resolution Policy (UDNDR Policy). Essentially the rules provide for a complaint mechanism in case of bad faith registration of a domain name. The court found the conduct of the defendants to be violative of the ICANN policy on the grounds of bad faith registration as well as insufficient cause to keep the domain name in its possession after the period of expiry.
Registrar of the Domain
The court rejected the claims that Network Solution was not the registrar of the domain. Merely because another entity was made in charge of facilitating the deletion, does not absolve the former of the responsibility and it continues to be the registrar of the domain name.
Dishonest Intention
In making observations about the defendants’ conduct, the court noted that the demand for $11,725 to $14,475 as auction price for the domain, a ridiculous sum, was a clear indication of their dishonest intention. Further, Portfolio Brains, the third defendant, over and above violating the injunction order retraining transfer of the domain, has also failed to appear before the High Court. The Court also found that Oversee.net was an entity recently floated that controlled both, Portfolio Brains (the third defendant) as well as Domain Park Block (the current registrar of the domain), operating from the same address. The court found the above to be sufficient evidence of collusion on the part of the defendants with the objective of extracting commercial gain from the plaintiff for sale of the domain name.
Thus, the court found mala fide intention on the part of the defendants in trafficking the domain name, with the objective of extracting a hefty auction price from the plaintiff. It thus granted punitive damages to the tune of Rs.5 lakhs to the plaintiff for “causing hardship and harassment and mental torture to the plaintiff in getting back the domain name”. The court further restrained Portfolio Brains from adopting, or using the mark in any manner whatsoever in cyberspace. It also directed the transfer of the said domain to the plaintiff with immediate effect. It made a direction under the ICANN rules to block the domain name and immediately transfer this domain name to the plaintiff with requisite charges and formalities and ordered the first two defendants to co-operate in above actions.

4 comments.

  1. Avatarkarthikeyan.N

    Dear Sirs,

    We would be grateful to you if you could provide us the fair order copy of the Arunjaitely.com case

    Sincerely,
    Karthikeyan.N
    Advocate, Chennai

    Reply

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