Introduction

Trade secrets are a competitive advantage of any business. The commercial value of trade secrets remains as long as confidentiality is maintained. Trade secrets can be in various forms, like secret recipes, marketing methods, business practice, etc. Companies like Coca Cola, KFC reportedly value their secret recipes, and these recipes are considered as trade secret for their businesses. It is important to note that in India, there is no special statutory protection available for trade secrets.

Trade Secret- the lesser known IP

Article 39.2 of the Trade-related Aspects of Intellectual Property Rights (TRIPS) provides that following three criteria should be taken into consideration to determine if the information is a trade secret – 

1. The information is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons that normally deal with the kind of information in question;
2. The information has actual or potential commercial value because it is secret; and
3. The person lawfully in control of the information has taken reasonable steps under the circumstances to keep it a secret.

A Single Judge Bench (Anil Kumar, J.) of the High Court of Delhi in the case of American Express Bank Ltd. v. Ms. Priya Puri [(2006) IIILLJ 540 Del] defined a trade secret as “…a trade secret is some protected and confidential information which the employee has acquired in the course of his employment and which should not reach others in the interest of the employer…A trade secret can be a formulae, technical know-how or a peculiar mode or method of business adopted by an employer which is unknown to others”. However, the Court also observed that “…routine day-to-day affairs of employer which are in the knowledge of many and are commonly known to others cannot be called trade secrets.”

A Trade secret is valuable to a business as long as it is confidential information. Thereby, the owner of a trade secret needs to make efforts to protect such confidential information. To protect confidentiality of its information, the owner of the trade secret can take measures such as entering into non-disclosure agreements with its employees or with any concerned party to whom disclosure of the trade secret is necessary for the business purpose. 

Judiciary and Trade Secret Protection

It is often hard to determine what kind of information will qualify as a trade secret, or what measures can be taken in case of disclosure of trade secrets but various judicial decisions have shed some light on this issue. In the case of Bombay Dyeing and Manufacturing Co. Ltd. v. Mehar Karan Singh [2010 (112) Bom LR 375], a Single Judge bench (Smt. Roshan Dalvi, J.) of the High Court of Bombay laid down the following factors to determine if an information will qualify as a trade secret:

“i. The extent to which the information is known outside the business;

ii. The extent to which it is known to those inside the business, i.e., by employees;

iii. The precautions taken by the holder of the trade secret to guard the secrecy;

iv. The savings affected and the value to the holder in having the information as against competitors;

v. The amount of effort or money expended in obtaining and developing the information; and

vi. The amount of time and expense it would take others to acquire and duplicate the information.”

The courts have also pointed out that legal protection of a  trade secret is also dependent upon the proven measures taken by the owner of a trade secret. It means the court will also assess if the owner of a trade secret had taken sufficient steps to protect such trade secret in order to determine a breach of confidentiality. In the case of Emergent Genetics India Pvt. Ltd. v. Shailendra Shivam [I.A. Nos. 388/2004 (U/S 39 R 1 & 2), Order dated August 2, 2011 ], a Single Judge Bench (S. Ravindra Bhat, J.) of the High Court of Delhi said observed “With sufficient effort or through illegal acts rivals may access trade secrets…However, if the trade secret or information owner proves that reasonable efforts were made to keep the information confidential, it (the information) remains a trade secret and is legally protected. If, on the other hand, trade secret owners cannot establish reasonable efforts to protect confidential information, they risk losing the quality of confidentiality of the information even if its information is obtained by rivals without permission”.

Non- disclosure agreements and the Indian Contract Act

Non-disclosure agreement is one of the ways by which the owner of a trade secret can protect its confidential information. However, it is important to note that Section 27 of the Indian Contract Act, 1872 (“Contract Act”) provides that any agreement in restraint of trade will be void. Although, any agreement, which bars any formal former employee to disclose any information which he/she had acquired during his/her employment, is not void under Section 27 of the Contract Act. In respect of this, a Single Judge Bench (R Chopra, J.) of the High Court of Delhi in Ambiance India Pvt. Ltd. v. Shri Naveen Jain [122 (2005) DLT 421], stated that, “An employee, particularly, after the cessation of his relationship with his employer is free to pursue his own business or seek employment with someone else. However, during the subsistence of his employment, the employee may be compelled not to get engaged in any other work or not to divulge the business/trade secrets of his employer to others and, especially, the competitors. In such a case, a restraint order may be passed against an employee because Section 27 of the Indian Contract Act does not get attracted to such situation. It is also to be added that a trade secret is some protected and confidential information which the employee has acquired in the course of his employment and which should not reach others in the interest of the employer.”  

Apart from non-disclosure agreements, there are a few other measures that can be adopted by the business to protect their trade secret, for example creating a sense of responsibility and loyalty in the mind of employees, by investing in more safe databases and ensuring limited numbers of employees get access to the database, etc.

Conclusion:

An information is not trade secret if it is not confidential. The quality of the information, the relevance of the information for the growth of the business and measures taken by the owner to maintain the confidentiality, are some of the factors to be considered while determining whether an information qualifies as a trade secret or not.  Even though the Indian courts have played their part by facilitating the business to keep their trade secret protected through various decisions, it can’t be denied that there is a need for  statutory protection in India. 

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

Introduction

As per Section 114 of the Indian Evidence Act, 1872, “The Court may presume the existence of any fact which it thinks likely to have happened…”. As per this provision, the courts may only draw a presumption having regard to the common course of natural events, human conduct and business in the context of the facts of a particular case. To what extent can withholding or lack of evidence lead a court to presume certain facts against Defendants in suits for infringement of intellectual property rights?

Failure to submit material crucial for a decision on infringement

A guiding judgment with respect to presumptions against Defendants in patent infringement matters is Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning a Corporation and Ors. v Unichem laboratories and Ors. [AIR 1969 Bom 255]. The Bombay High Court had to determine whether the process used by the Defendants to produce their drug was infringing the Plaintiff’s patent. The court observed that the Defendants had admitted that their drug was the same as the Plaintiff’s patented drug, and that the Defendants had not led any evidence to show by what precise process their drug is being prepared. The Court placed reliance on the principle that in a patent infringement suit, where the invention relates to the production of a new substance, any substance of the same chemical composition and constitution shall, in the absence of proof to the contrary, be deemed to have been produced by the patented process which it is alleged to be an infringement. Since the Defendants had failed to submit any evidence to show that the process used by them to prepare their drug was different to the Plaintiff’s process, the Court drew a presumption under Section 114 of the Evidence Act, that the Defendants’ process was infringing in nature.   

In the recent copyright infringement matter of M/s. Super Cassettes Industries Private Limited v. Nandi Chinni Kumar [Civil Miscellaneous Appeal Nos. 355-358 of 2020, Telangana High Court], the court drew an adverse inference against the Defendants under Section 114 of the Evidence Act owing to the Defendants’ failure to produce certain evidence. Despite notices being served on them by the Plaintiff, the Defendants had failed to submit the relevant agreement, the script of their allegedly infringing film or a DVD of the same. Accordingly, the court drew a prima facie presumption that the Defendants’ work was infringing in nature and that even if the Defendants had submitted the relevant evidence, it would not have supported their case.

Silence or deflection of issues

In the recent case of Communication Components Antenna Inc. v. Ace Technologies Corp. [2019 (79) PTC 270 (Del)], the Plaintiff had sought a permanent injunction against the Defendant to restrain infringement of its patent for a novel antenna having an asymmetrical beam pattern. During the course of proceedings, the Defendants were asked if their antenna could be made available for inspection by a scientific expert appointed by the Court. The Defendants did not elicit any positive response to this. A perusal of the claims, complete specification and the beam patterns, read with the expert reports placed on record was showing infringement. It was held that – “In a patent infringement action, once the Plaintiff, prima facie establishes infringement, the onus shifts on the Defendants, to disprove the same. The complete silence by the Defendants shows that there is, in fact, withholding of relevant and crucial information from the court… The Defendants’ expert has not dealt with the issues raised head on in respect of the beam patterns, but has sought to deflect the issue. Thus, at this stage the Court has no option but to draw an adverse inference against the Defendants, as the Defendants have withheld and not disclosed the most crucial aspect of this case i.e., the beam patterns of their antennae.” Accordingly, the made a prima facie ruling of infringement by the Defendants.

Conclusion

From the above, it is evident that if a Defendant withholds information and evidence which would be crucial for a determination of infringement, the court is likely to make a presumption of infringement against it. However, such a presumption can only be made if the Plaintiff has discharged its initial burden of establishing, at least on a prima facie basis, its exclusive rights in the relevant intellectual property and that the Defendant has infringed the same. Thereafter, if a Defendant withholds any important information or fails to submit the relevant evidence even after being given the opportunity to do so, the court is entitled to draw an adverse inference against it.

References –

1.      Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning a Corporation and Ors. v Unichem laboratories and Ors., AIR 1969 Bom 255

2.      Communication Components Antenna Inc. v. Ace Technologies Corp., 2019 (79) PTC 270 (Del)

3.      M/s. Super Cassettes Industries Private Limited v. Nandi Chinni Kumar, Civil Miscellaneous Appeal Nos. 355-358 of 2020, Telangana High Court

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

Introduction

A three- judge bench of the Supreme Court [S.A. Bobde, A.S. Bopanna and V. Ramasubramanian, JJ.] dismissed a special leave petition in M/S Super Cassettes Industries Private Limited (T-Series) v. Nandi Chinni Kumar & Ors. [Petition(s) for Special Leave to Appeal (C) No(s).12886-12887/2020] challenging the stay on telecast/streaming of the Amitabh Bachchan starrer Jhund, in India and abroad on 18th November, 2020.

The question of law as to whether copyright can exist is real life events, which arose in this case is one of importance and interest to the field of copyright law in India. This article aims to understand the concept of copyright in real life events through the instant case.

Factual Background:

The Respondent in the instant suit, is a film maker, who, after coming across an interview of Mr. Akhilesh Prakash Paul, a soccer player, on popular TV show, Satyameva Jayathe, hosted by Aamir Khan became interested in Mr. Paul’s life story. Therefore, he approached Mr. Paul and entered into multiple agreements to make a biopic/feature film based on his life story. The Respondent, thereafter, prepared a script with the title ‘Slum Soccer’ by improvising and modifying Mr. Paul’s life story, and registered it with the Telangana Cinema Writers’ Association in July, 2018.

The Respondent came across news that a Hindi film ‘Jhund’ starring Mr. Amitabh Bachchan was in the production/shooting stage, and that Mr. Bachhchan would play the role of Mr. Vijay Barse (Mr. Paul’s coach/mentor), and that the said film would be based on the origins of ‘Slum Soccer’ and Mr. Barse’s life story.

The Respondent issued a legal notice in October, 2019 to the Appellants demanding, inter alia, that they cease and desist from indulging in any infringement of copyright vested in favour of the Respondent in respect of the true-life story events of Mr. Paul, and that they cease and desist from shooting, producing, doing post-production work, marketing and also releasing the said film.

Thereafter, in January 2020, the Respondent came across a teaser of the film Jhund on YouTube in January, 2020 in which he found resemblance with the true life story events of Mr. Paul. He, therefore, filed a suit before the District Court seeking, inter alia, temporary and permanent injunctions against the Appellants from exhibiting, broadcasting and/streaming the film, ‘Jhund’ in India or abroad.

Arguments before the District Judge:

The Respondent argued that he owns the “concept, thought, characterization, image, identity and expression” apart from copyright in respect of true life story events of Mr. Paul and that the Appellants’ making of the said film with a character similar to Mr. Paul constitutes infringement of the copyright of the Respondent’s work. The Appellants contended, inter alia, that (i) no case had been made out by the Respondent, (ii) that they are entitled to use the real life events of Mr. Barse as they had acquired requisite rights from him; (iii) they did not review the script registered by the Respondent; and (iv) that there is no question of copyright infringement.

Decision of the district court:

The district court, vide its order dated September 17, 2020, while allowing the interim application for temporary injunction against the Appellants, held that “the subject matter being in public domain or not, is the controversial aspect in the case and that the observations relating to the matter being in public domain would apply in regard to the right of privacy, but they cannot be applied in relation to copyright infringement; that even according to the defendants their movie story was not available in public domain; and even incidental reference of character of 1st defendant at the present stage would be unlawful copying of the plaintiff’s original.”

The Defendants/Appellants aggrieved by the decision of the district court, approached the High Court of Telangana.

Jurisprudence:

In addressing the question regarding whether copyright vests in real life events or not, the Court looked in to the landmark decision of the Supreme Court in  R.G. Anand Vs. Delux Films [AIR 1978 SC 1613], wherein the Supreme Court [Raja Jaswant  Singh, R.S. Pathak and S. Murtaza Fazal Ali, JJ.] had held that “there can be no copyright in an idea, subject matter, themes, plots or historical or legendary facts and violation of the copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the author of the copyright work.” [Emphasis supplied]

The concept of copyright protection is deeply rooted in the idea-expression dichotomy which lays down that it is the expression of an idea not the idea itself that ought to granted protection. This doctrine was evolved to avoid monopolization and limitations on creativity.

In this regard, the Court observed that while there is a theoretical ‘possibility’ of making a movie without reference to Mr. Paul, the ‘probability’ of the Appellants doing so is low because the marketability of a movie about a celebrity sportsperson is far higher than the that of a movie about his coach without the celebrity pupil/sportsperson, viz. Mr. Paul in this case.

The Court, thereafter, looked into the jurisprudence on the question of publicity rights of a celebrity.

In DM Entertainment Pvt. Ltd. v. Baby Gift House [CS(OS) 893/2002], the Delhi Court [S. Ravindra Bhat, J.] held that “the right of publicity can, in a jurisprudential sense, be located with the individual’s right and autonomy to permit or not permit the commercial exploitation of his likeness or some attributes of his personality”.

In Titan Industries Limited v. Ram Kumar Jewellers [2012 (50) PTC 486 (Del)], the Delhi High Court [Manmohan Singh, J.], while quoting the decision in the DM Entertainment case held that “infringement of right of publicity requires no proof of falsity, confusion, or deception, especially when the celebrity is identifiable”.

Decision of the High Court:

The High Court dismissed the Defendants/Appellants challenge of the district court’s order dated September 17, 2020 and upheld the decision of the district court. The High Court also emphasized that “…findings and observations…in this order are only intended for the disposal of these appeals and are not intended to be final expression of opinion on the respective contentions of the parties and the trial court should decide the suit uninfluenced by them.”

The Court observed that, in the instant case, Mr. Akhilesh Paul would, prima facie, fall in the category of celebrity, and when he entered into a Life Story Rights Agreements with the Respondent after receiving consideration from the Respondent, he also sold the exclusive rights for a motion picture based on his true-life story events.Therefore, the Respondent is entitled to enforce the same as his assignee.

Conclusion:

It is interesting to note that the rights to the real-life events of a person are rooted not only in copyright law, but also in personality rights and publicity rights. Time and again, there have been multiple debates on whether personality/publicity rights arise out of the constitutional rights or whether commercial contracts override such rights.

While the instant case has somewhat clarified the position on the concept of copyright in real-life events, it is yet to be seen how the trial court will adjudicate upon the matter.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Introduction

Elephants are widely regarded as keystone species because of the significant impact which they have on the environment. According to the 2017 census, around only 27, 312 elephants are left in India.[1] To prevent elephant population from dwindling further, the Indian government has taken various measures such as introduction and implementation of elephant corridors.

What is an elephant corridor? 

An elephant corridor is defined as a linear path which facilitates movement of elephants from one habitat to another. An elephant corridor not only helps elephants to move between habitats, but also helps them to intermingle and breed with elephants outside their gene pool. These corridors also reduce the scope of human-animal conflict. However, such corridors face threats from poaching, agricultural activity, mining, vehicular traffic, development of resorts, electrical fences, etc. The Indian government and judiciary have taken a number of steps for protection of the same.

The existing legal framework for protection of wildlife corridors

The Wildlife (Protection) Act, 1972 (“Wildlife Act”), which aims at protecting flora and fauna for safeguarding the country’s ecological and environmental security, contains provisions for protection of wildlife corridors. Section 36A of the Wildlife Act empowers the State Government to declare areas that link protected areas with each other as ‘conservation reserves’. The corridors can also be declared as ‘community reserves’ under Section 36C of the Wildlife Act. As per the Section 2(24A) of the Wildlife Act, conservation and community reserves fall under the category of ‘protected areas’.

Declaration of a corridor as a conservation reserve or a community reserve allows management and maintenance of the same by the State; restriction of activities; prevention of diversion of the same for unsustainable uses; prevention of commission of offences; prohibition on damage; prohibition of wrongful gain; prohibition on use injurious substances, etc.

The Biological Diversity Act, 2002 (“Biological Diversity Act”) also provides for declaration of wildlife corridors as heritage sites, as well as management and conservation thereof.

In 2002, the National Board for Wildlife adopted the Wildlife Conservation Strategy, as per which areas within 10 kilometers of national parks’ and sanctuaries’ boundaries could be notified as ‘Eco-Fragile Zones’ under Section 3(v) of the Environmental Protection Act, 1986 (“EPA”) and Rule 5 of The Environment (Protection) Rules, 1986 (“EPR”). Wildlife corridors can also be notified as Eco-Fragile Zones.

According to Section 3 of the EPA, the Central Government can take measures for protecting as well as improving the quality of environment. Under Section 3(2)(v) of the EPA, the Central Government is empowered to identify the areas in which industries, operations or processes cannot be carried out.

Rule 5(1) of EPR states that while placing restrictions in accordance with Section 3(2)(v) of the EPA, the Central Government may take into account factors such as biological diversity of the area, proximity to protected areas, topographic and climatic features, adverse impact of the activity sought to be restricted, etc.

Under Section 3(1)(i) of The Scheduled Tribes and Other Traditional Forest Dwellers (Recognition of Forest Rights) Act, 2006, certain forest dwellers are allowed to protect community forest resources for sustainable use. A wildlife corridor also falls under the ambit of a community forest resource.

Judicial Measures

The Indian Courts over the years have recognized the importance of elephant corridors and have accorded protection to the same.

Recently, on October 14, 2020, a Single Judge Bench (S. Abdul Nazeer, J.) of the Supreme Court of India in Hospitality Association of Mudumalai v. In Defence of Environment and Animals and Ors. etc. [Civil Appeal Nos.3438-3439 of 2020 arising out of S.L.P. (C) Nos.17313-17314 of 2011] ordered removal of 39 illegal resorts from an elephant corridor in the Sigur plateu in Nilgiris. In this case, the appellants had challenged the Madras High Court’s order which had upheld the Tamil Nadu government’s decision to notify the aforesaid corridor and evict resort owners and private landowners therefrom.

In the appeal, Madras High Court while rejecting the appellant’s contentions that the State Government could not notify the corridor, observed “It is undeniable that the State Government is empowered to take measures to protect forests and wildlife falling within its territory in light of Entries 17A ‘Forest’ and 17B ‘Protection of wild animals and birds’ in the concurrent list and the power of the State Government under the Wildlife Act to notify Sanctuaries and other protected areas…land of the appellants has also been notified as private forest in 1991 under the Tamil Nadu Preservation of Private Forests Act, 1949, which prohibits cutting of trees in private forests… we find no difficulty in holding that the State Government was empowered to protect the habitats situated on the appellants’ land by notifying an elephant corridor thereupon.”

The Supreme Court further observed, “…since the impugned decision of the High Court, the Ministry of Environment, Forest and Climate Change…has declared the entire area in question…as an Eco-Sensitive Zone. Under this Notification, the State Government of Tamil Nadu has been expressly directed to regulate land use generally, as well commercial establishment of hotels/resorts specifically, in the Eco-Sensitive Zone so established. As was held by this Court in M.C. Mehta v. Union of India and Ors. the “Precautionary Principle” has been accepted as a part of the law of our land…The Precautionary Principle makes it mandatory for the State Government to anticipate, prevent and attack the causes of environmental degradation. In this light, we have no hesitation in holding that in order to protect the elephant population in the Sigur Plateau region, it was necessary and appropriate for the State Government to limit commercial activity in the areas falling within the elephant corridor.”

In Rohit Chowdhury v. Union of India [O.A. No. 472/2018 (EZ)], the National Green Tribunal, New Delhi (“NGT”), a three Member Bench (S. P. Wangdi J., K. Ramakrishnan J., De. Satyawan Singh Garbyal) by its order dated February 26, 2019, directed the Railway authorities to free the elephant corridor in Deepor Beel, Assam through construction of an overpass or an underpass. The NGT also directed the authorities to reduce the speed of trains passing through the elephant corridors. Furthermore, the NGT observed, “…the earth is not for humans alone. All creatures including the wild animal have a sacred right. Economic consideration no doubt is important for development but, it should not be at the cost of ecology, bio-diversity and the environment.”

In Dr. Kashmira Kakati v. Union of India and Ors. [O.A No. 19/2014], a four Member Bench (Swatanter Kumar J., Jawad Rahim J., Raghuvendra S. Rathore J., Bikram Singh Sajwan) of the NGT, by its order dated December 8, 2017, issued various directions to the Central and State Government for protection of elephant corridors in Assam. The directions included declaration of the Bogapani Corridor and South Brahmaputra elephant ranges as elephant corridors; conduction of survey of the elephant population in each state, and consequent declaration of the surrounding areas as eco-sensitive zones; prohibition of establishment of permanent structures in and around Golai corridors; provision of legal recognition and status to Golai and Bogpani corridors and other areas in accordance with Wildlife Act and Section 5 of the EPA; and constitution of Core Committee by the Central Government for declaration of elephant corridors.

In 2008, in light of the death of numerous elephants in Mysore, the High Court of Karnataka initiated a suo motu Public Interest Litigation – Suo Motu v. The State of Karnataka [W.P.No.14029/2008 (GM-RES)]. A Division Bench (D. H. Waghela, B. V. Nagarathna, JJ.) of the High Court of Karnataka, by its order dated October 8, 2013, issued various directions to the State and Central government for protection of elephants. The Court directed the State and Central government to, inter alia, renotify the relevant elephant corridors; review environmental clearances given to various projects in the elephant corridors; review non forest activities in elephant corridors; raise and maintain the height of power lines above the ground level for ensuring safety of elephants in corridors, etc.

Conclusion

While legal provisions already accord protection to wildlife corridors, owing to the increasing human-elephant conflict and loss of habitat, a need has been felt for greater legal protection to elephant corridors. Reportedly, the Union Environment Ministry has submitted a proposal to amend the Wildlife Act so as to include specific legal provisions for protection of elephant corridors.[2] It remains to be seen if the proposal is accepted and the population of the already endangered species is prevented from dwindling further. 

[1] Read more at – <https://www.thehindu.com/news/national/kerala/elephants-in-troubled-waters/article31760011.ece>, last accessed on December 8, 2020.

[2] Read more at: <https://www.hindustantimes.com/india-news/environment-ministry-seeks-legal-status-for-elephant-reserve-states-ask-for-the-draft/story-8Gyio5nDJS8fsDSZDzVh3N.html >, last accessed on December 8, 2020.  

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

Introduction

Merriam-Webster defines domain name as “a sequence of usually alphanumeric characters (such as Merriam-Webster.com) that specifies a group of online resources (as of a particular company or person) and that forms part of the corresponding Internet addresses”.[1] Domain names therefore are like addresses on the internet, which enable users to locate the host on the internet in an easy manner. Further, they act like trademarks as they help in identifying and distinguishing goods and services of one from another. This makes domain names very valuable to business owners and a lot of resources are expended for enforcement against cyber-squatters and infringers. This piece will explore the mechanism of domain name dispute resolution for ‘.in’ domain names and in particular, the need to establish legitimate interest.

Resolution of Domain Name Dispute under INDRP

The disputes involving ‘.in’ domain names are governed by the .IN Domain Name Dispute Resolution Policy (“INDRP”). A person interested in filing a complaint with the .IN Registry regarding a conflicting domain name can do so according to the rules and guidelines of the INDRP.

The INDRP has a limited scope and can be understood from WIPO’s Final Report on Internet Domain Name Process[2], which has been referred to in numerous INDRP proceedings. It states “First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith”. Therefore, the narrow scope of INDRP proceedings does not cover issues of infringement of trademarks, priority of rights, etc.

Essential Elements under INDRP

In order to succeed in a complaint under the INDRP, a complainant must prove all three elements mentioned below, conjunctively, as provided in the Rule 4 of the INDRP:

• That the Registrant’s domain name is identical or confusing, similar to a name, trademark or service mark in which the Complainant has rights,

• That the Registrant has no rights or authorized interests in respect of the domain name,

• That the Registrant’s domain name has been registered or is being used in bad faith.

For instance, in the case of Starbucks corporation v. Mohanraj [Case Number INDRP/118, decided on November 26, 2009] before the sole arbitrator – Shri Sanjay Kumar Singh, the registrant’s domain name <starbucks.co.in> was found confusingly similar to the complainant’s domain name <starbuscks.in>.  It was also held that the registrant had no legitimate interest in the domain name and was using it in bad faith. Since the trifecta of requirements was met, the disputed domain name was transferred to the complainant.

What amounts to Legitimate Interest under INDRP

Paragraph 7 of the INDRP lists three factors to determine a right or legitimate interest in a disputed domain name:

• The Registrant has used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a good faith offering of goods or services;
• The Registrant (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
• The Registrant is making a legitimate non-commercial or fair use of the domain name without the intent of commercial gain to divert consumers misleadingly or to tarnish the trademark or service mark at issue.

These factors have been discussed in numerous cases. For instance, in the case of FDC Limited v. Christian Schmidt [Case Number INDRP/913, decided on November 6, 2017] before the sole arbitrator – Harshavardhan Sancheti,the registrant tried to establish legitimate interest by claiming to have registered the disputed domain name <fdc.in> for offering a product called Fluor and Calcium, which was marketed under the initials ‘FDC’. However, the registrant did not produce any evidence to show use of the domain name as claimed and also did not provide any reason behind the abbreviation of Fluor and Calcium to ‘FDC’. The arbitrator relied upon the decision in the case of World Wrestling Federation Entertainment Inc. v. Ringside Collectibles [WIPO Case No. D2000-1306],which held “Respondents seeking to show preparations to make a legitimate use must give Panels some evidence; acceptance evidence may include business plans or documented expenses…the failure to present any credible evidence of demonstrable preparations…is fatal to Respondent’s claim of a legitimate interest in domain names.” Accordingly, the arbitrator held “there is no evidence that the Responded ever made any preparations or attempts to use the domain name FDC.IN for any purpose relating to marketing any product. The Tribunal can only conclude that no such evidence exists…Accordingly, the Tribunal concludes that the Registrant has no legitimate right or interest in the domain name.”

In the case of Sazerac Brands, LLC v. Dean Chandler [Case Number INDRP/1243, decided on September 23, 2020] before the sole arbitrator – C.A. Brijesh, the registrant claimed to have registered <fireball.in> to establish an alumni network for the McMaster Faculty of Engineering, which he claimed was referred to as the ‘Fireball Family’ since at least 1995. The registrant also stated that he was an avid astronomer and fireballs were a frequent occurrence where the college was located. The arbitrator observed that <fireball.in> was identical to the complainant’s mark and that the registrant had failed to establish to show legitimate interest in the said domain name by way of use. Further, the registrant’s justification for adoption of the disputed domain name was appeared to be an afterthought and ingenuine. The arbitrator held “Tribunal is of the view that the Respondent has been unable to prove that it has been using the mark ‘FIREBALL’ or the disputed domain name ‘fireball.in’ in connection with a bona fide offering of goods or services. The Complainant has thus proved that the Respondent has no rights or legitimate interests in the disputed domain name”. Accordingly, the disputed domain name <fireball.in> was transferred to the Complainant.

Apart from establishing use, holding a trademark registration in India for the domain name is also a way of establishing legitimate interest in the domain name. This is because trademark registrations in India either record prior use of the mark or indicate intention of the registrant to use the mark in future. Therefore, it is enough to establish legitimate interest for INDRP proceedings. In the case of Stephen Koeing v. Arbitrator NIXI & Anr. [2015 (64) PTC 406 (Del)], a division bench of the High Court of Delhi reiterated this principle by stating “The registration of a trade mark is dependent upon fulfillment of statutory conditions, and subject to the mark not falling within any disqualifying conditions or being debarred from use. Trade mark registration in India is also on the basis of its use, or proposal of the applicant to use it, subject to conditions. Therefore, the appellant’s contention that registration does not confer per se legitimate interest is unacceptable.”

Conclusion

In the current day and age of internet, it is evident that domain names have become very valuable to brands. Therefore, swift action against cyber-squatters is the need of the hour. INDRP with its limited scope provides a such clear and speedy mechanism for resolutions of domain name disputes, provided the Registrant does not have legitimate interest and is using the domain name in bad faith. From a perusal of the abovementioned cases it is clear that evidence of use or trademark registrations are some of the best defenses for a Registrant to establish legitimate interest in an INDRP proceeding. However, if both parties are able to establish legitimate interest or infringement of trademark/domain names needs to be addressed, parties have to approach the Indian courts, instead of initiating a proceeding under the INDRP.

[1] See – https://www.merriam-webster.com/dictionary/domain%20name, last accessed on November 23, 2020.

[2] See – https://www.wipo.int/amc/en/processes/process1/report/finalreport.html, last accessed on November 23, 2020.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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