If recent statistics are to be believed, IP litigation and disputes, in India, have increased exponentially. The reason behind this upsurge is the growing intellectual property awareness, thereby encouraging people and enterprises to take proactive measures to protect their intellectual property. A recent incident supporting the above statement is the domain recovery complaint filed by Hola S.L. (hereinafter ‘the Complainant’) with National Internet Exchange of India, against Viraj Malik, Percept Knorigin Solutions Pvt. Ltd. (hereinafter ‘the Respondent’). The domain at the centre of controversy is ‘Hellotv.in’
The Complainant is a leading international publisher, having launched its magazine under the name ‘Hola’ in 1994. Subsequently they also launched a magazine under the name ‘Hello!’ in UK. They have successfully registered the trademarks ‘Hola’ and ‘Hello!’ in several countries around the globe. In India itself they have registration for the mark ‘Hello!’ under class 38 while their applications for the mark ‘Hello!’ under class 16 and the mark ‘Hellotv’ under classes 38 and 41 are still pending.
When the Complainant tried to register the domain name ‘Hellotv.in’, they discovered that it was already registered by the Respondent. They contended that the disputed domain name was registered by the Respondent in order to ride on the success of the Complainant. The Respondent claims to have registered the domain name ‘Hellotv.in’ in 2009, in order to provide viewers with multitude of videos. He offered to put a disclaimer on his website, in order to avoid any deception and confusion; this was rejected by the complainant.
According to Rule 4 of the IN Domain Name Dispute Resolution Policy (‘the Policy’), any person who is of the opinion that a registered domain name conflicts with his/her interests, s/he can file a complaint on the following grounds:
- The disputed domain name is identical or confusingly similar to the trademark
- The registrant has no legitimate interests in the dispute domain name
- The domain name has been registered or is being used in bad faith
Taking into account registrations and trademark applications of the Complainant around the globe as well as Complainant’s registration for the domain name ‘hellotv.com’, the arbitrator found that the disputed domain name was confusingly similar to Complainant’s trademark.
Relying on prior trademark applications and registrations, the Complainant argued that the Respondent had no legitimate interest in the disputed domain name. Arbitrator agreed with this reasoning and found that Respondent’s registration was void of any legitimate interest. Furthermore, since the disputed domain name was registered only in 2009, decades after the Complainant registered the trademark ‘Hello!’ in various countries; the arbitrator found that the registration of the domain name ‘Hellotv.in’ was in bad faith and was indicative of the Respondent’s opportunistic behaviour.
The arbitrator passed an award in favour of the Complainant and directed the Respondent to transfer the disputed domain name to the Complainant.