New Delhi: Following a complaint by ICICI Bank Ltd, the Delhi high court has directed a Chinese resident to give up www.icicigroup.com, in an order that could set a precedent for cybersquatting regulation in India.
The order comes after a world body for regulating intellectual property rights rejected a complaint from India’s second largest bank. And while the Chinese entity has complied with the order, Indian experts question the enforceability of similar orders across geographical borders.
Controversy: ICICI Bank’s website and Chuandong Xu’s Icicigroup.com.
Cybersquatting is the act of registering website domain names of popular firms or brands and then selling them to the same firms or brands at exorbitant and often extortionate prices.
In December, justice Sanjiv Khanna passed an order restraining a resident of Beijing, Chuandong Xu, and a Chinese website registrar, HiChina Web Solutions Ltd, from using or selling the site Icicigroup.com.
The order was passed ex parte or in the absence of the defendant. The same court had heard a 2007 case, in which India TV Independent News Service Pvt. Ltd sued US-based India Broadcast Live Llc. over the www.indiatvlive.com domain name. In October, it dismissed India TV’s suit and allowed India Broadcast Live to use the name.
The two cases mark a trend where Indian courts are ruling on cybersquatting cases involving people and firms from different geographies—not all of which may fall under their jurisdiction.
Khanna, while passing his order, reasoned that the high court can decide on ICICI’s suit since the Trade Marks Act, 1999, says that “courts where the plaintiff (in this case ICICI) carries on business have jurisdiction to entertain a suit for infringement.”
Before approaching the high court, ICICI had, in June, filed a complaint with the World Intellectual Property Organization’s Arbitration and Mediation Center (AMC) using the Uniform Domain Name Dispute Resolution Policy, which allows parties to settle disputes related to domain names outside court by mediation and arbitration by a panel of experts. The policy was set up by Internet Corporation for Assigned Names and Numbers, an international body that controls all aspects of Internet protocol addresses and domain names. An AMC panel rejected ICICI’s complaint and held that Chuandong Xu’s use of Icicigroup.com was honest and not in bad faith.
The bank then approached the Delhi high court.
Anuradha Salhotra, partner at law firm Lall Lahiri and Salhotra, said the panel’s order is not binding on the parties and the international dispute resolution mechanism allows parties to approach a court to resolve the dispute.
According to Saikrishna Rajagopal, partner at Saikrishna and Associates, who filed the suit for ICICI, the Chinese defendants have complied with the high court order. “This interesting order sets a strong precedent for Indian intellectual property owners, particularly in domain name disputes, from enforcing their rights under Indian law against foreign violators without the need to approach legal forums overseas,” Rajgopal said.
However, IT experts such as Vijay Mukhi, chairman of the IT committee of industry trade lobby group Federation of Indian Chambers of Commerce and Industry, and Amit Agarwal, a technology blogger and columnist, argue that there could be limits on the enforceability of the order of an Indian court on a foreign entity.
“What would happen if the Chinese party did not obey the Delhi high court order?” asked Agarwal. “How does the court ensure that its order is enforced?” questioned Mukhi.
Legal experts say Indian courts are asking themselves the same questions. Salhotra and Neil Mason, partner at Mason and Associates, point to a 2008 lawsuit, Banyan Tree Holding Ltd v. A. Murli Krishna Reddy, where justice S. Ravindra Bhat referred the question involving the Internet jurisdiction of Indian courts to a larger bench of two judges.
The matter was then heard by a bench headed by chief justice of Delhi high court and judgement has been reserved.
Cyber law expert Rahul Mathan said, “Such orders could help build the basis for the complex area of Internet jurisdiction in Indian jurisprudence.”