The Delhi High Court recently passed an order reversing the holding of a INDRP complaint where the Arbitrator passed an award against Thoughtworks Incorporated, a US company in favour of Super Software Private Limited, an Indian company with regard to the ownership and use of the domain www.thoughtworks.in

The INDRP Complaint

Thoughtworks Inc. filed an INDRP complaint on the 5th of May, 2015 to recover the domain [thoughtworks.in] from the Super Software on the grounds that the trademark Thoughtworks belonged to them. For more on the INDRP proceedings and how it works please click here.

Thoughtworks in their complaint alleged to have been using their trademark globally for over two decades and had registered their trademarks in multiple countries including India. They also relied on the fact that they owned and operated the domain thoughtworks.com.

Super Software in their defense claimed that the trademark thoughtworks was generic and that it was arbitrary in connection with the incubator services that they were providing. Moreover, they claimed that the .IN domain was available for such a long time and the Thoughtworks hadn’t registered it. They even went as far as claiming that Thoughtworks directly filed an INDRP complaint without trying to settle this dispute amicably.

The Arbitrators Award

Oddly enough the Arbitrator denied the complaint on the grounds that Thoughtworks Inc. was not able to give enough evidence suggesting its incorporation and registration of their trademarks and that the address of the entities holding the trademarks were different.

On the issue of bad faith, the Arbitrator inferred from the verification produced by Super Software that it had registered the domain name six years prior to the present complaint. The Arbitrator was interested to note that Thoughtworks did not object to the registration during such span and that there was a delay of six years.

The High Court’s opposing view

Thoughtworks challenged the arbitral award, under Section 34 of the Arbitration and Conciliation Act, 1996 12th of January, 2017, the Delhi high Court reversed the order in its judgement of January 12, 2017 c[1].

The High Court reversed the decision with the following taken into consideration:

  1. It relied on the judgement provided in ONGC Ltd. v. Western Geco International Ltd., (2014) 9 SCC 263, to prove that there laid non-application of mind by the Arbitrator to clarify the legitimateness of the US company’s trademark registration, the reasons for Thoughtworks for not objecting during the six years of the use of the domain by Super Software, and the proof that the trademark did in fact belong to Thoughtworks.
  2. Concerning the trademark registration certificate [or the absence of it claimed by the arbitrator], the Court stated that the certificate was, in fact, attached with the complaint and thus, the objection under that ground was nullified.
  3. The Arbitrator should not have not called upon Thoughtworks to justify its omission to object the use of the domain name by Super Software during the six year period.
  4. It was asserted that the Arbitrator inaccurately verified that Thoughtworks was incorporated in 2011 based on a newspaper report in the same year when in fact, the company was incorporated in 1993.
  5. More importantly, the Court relied on the basic logic that since the domain mark included the entire name of the US Company, it is obvious that the trademark most definitively belonged to it and the mere addition of the .IN was deceptively similar.

While the INDRP proceedings are generally used to great effect to retrieve domains, there are occasions where Arbitrators prove their mortality and get it wrong. It’s good that the Courts still remain a clear guardian of the law and step in with clear logic and adjudicate on the basis of the spirit of the law.

This article has been authored by Anjana Mohan a law student based out of Pune, India. She is pursuing law at Symbiosis Law School, Pune and is currently interning with us here at Selvam & Selvam.