An INDRP arbitrator denied Thoughtworks the domain thoughtworks.in, holding the company hadn’t proved its trademark registrations — though the certificate was annexed to the complaint — and that it was incorporated in 2011, when it was actually 1993. The Delhi High Court set the award aside.
The complaint
Thoughtworks Inc., a US company, filed an INDRP complaint on 5 May 2015 to recover the domain thoughtworks.in from Super Software Private Limited, an Indian company, on the ground that the trademark THOUGHTWORKS belonged to it.
Thoughtworks pleaded that it had used the mark globally for over two decades, held registrations in multiple countries including India, and owned and operated thoughtworks.com.
Super Software’s defence was that the mark was generic, and arbitrary in connection with the incubator services it provided; that the .in domain had been available for years without Thoughtworks registering it; and that Thoughtworks had gone straight to an INDRP complaint without attempting an amicable settlement.
The award
The arbitrator denied the complaint — on grounds that turned out not to survive scrutiny.
He held that Thoughtworks had not produced sufficient evidence of its incorporation and of the registration of its trademarks, and that the addresses of the entities holding the marks differed.
On bad faith, he inferred from Super Software’s verification that it had registered the domain six years before the complaint, and considered it significant that Thoughtworks had not objected during that period — treating the six-year delay against the complainant.
The High Court’s view
Thoughtworks challenged the award under Section 34 of the Arbitration and Conciliation Act, 1996, and the Delhi High Court reversed it by judgment dated 12 January 2017.
The court’s reasoning:
- Relying on ONGC Ltd. v. Western Geco International Ltd., (2014) 9 SCC 263, there was non-application of mind by the arbitrator — on the legitimacy of the US company’s trademark registration, on the reasons for the absence of objection over six years, and on proof that the mark belonged to Thoughtworks.
- On the supposedly missing registration certificate, the court noted it was in fact attached to the complaint — nullifying that objection entirely.
- The arbitrator should not have called upon Thoughtworks to justify its omission to object to the domain’s use during the six-year period.
- The arbitrator had inaccurately concluded that Thoughtworks was incorporated in 2011, based on a newspaper report from that year, when the company was incorporated in 1993.
- Most importantly, applying basic logic: since the domain contained the entire name of the US company, the mark evidently belonged to it, and the mere addition of “.in” was deceptively similar.
Two notes on the law since
On the Section 34 ground. The court relied on Western Geco, which read the “fundamental policy of Indian law” ground expansively to include non-application of mind. That approach has since been narrowed considerably — by the 2015 amendment to Section 34, which added Explanations restricting review of the merits, and by Ssangyong Engineering v. NHAI (2019), which held the Western Geco expansion no longer good law under the amended provision. A challenge on these facts today would more likely be framed as patent illegality under Section 34(2A), which remains available for domestic awards. The outcome would very likely be the same — ignoring a document on the record and misdating incorporation by eighteen years is about as clear a case as the ground contemplates.
On delay. The court’s refusal to hold six years of inaction against the complainant reflects settled domain-dispute practice: delay alone is not a defence where the domain incorporates the complainant’s mark in its entirety.
The point
INDRP proceedings are generally used to great effect to retrieve domains, and remain the faster and cheaper route. But arbitrators are mortal and occasionally get it wrong. It is worth knowing that the courts remain a guardian of last resort, able to step in and adjudicate on the spirit of the law — and that an adverse INDRP award is not necessarily the end of the matter.
The takeaways
- An INDRP award can be challenged under Section 34 of the Arbitration Act.
- Ignoring a document on record is fatal — the registration certificate was annexed all along.
- Delay is not a defence where the domain wholly incorporates the complainant’s mark.
- The Section 34 grounds have narrowed since — patent illegality is now the likelier route.
Frequently asked questions
Can an INDRP arbitral award be challenged in court? Yes — under Section 34 of the Arbitration and Conciliation Act, 1996, as Thoughtworks successfully did before the Delhi High Court.
Does delay in objecting to a domain registration defeat a complaint? Not on its own — the court held the arbitrator should not have required Thoughtworks to justify six years of not objecting.
Does adding “.in” to a company’s name avoid infringement? No — the court held that a domain containing the entire company name, with only “.in” added, was deceptively similar.
What grounds are available to set aside an award today? The grounds have narrowed since the 2015 amendment and Ssangyong (2019); patent illegality under Section 34(2A) is now the principal route for domestic awards.
Useful official resources
- NIXI — .IN Registry and INDRP
- The Arbitration and Conciliation Act, 1996