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2009 Supreme(Bom) 1094
High Court of Judicature at Bombay
THE HONOURABLE MR. JUSTICE ANOOP V. MOHTA
Jigar Vikamsey, an Indian national
Versus
Bombay Stock Exchange Limited
ARBITRATION PETITION NO.66 OF 2009
Decided on : 28-08-2009
For the Petitioner:Sanjay Kher with Amit Shroff, Advocates.
For the Respondent:Virag Tulzapurkar, Sr. Counsel with Dr. F. Palkhiwala i/b. Wadia Ghandy & Co., Advocates.
Headnote:Arbitration & Conciliation Act, 1996 - Section 34 - Arbitration petition - Challenging award passed by arbitrator, allowing complaint filed by respondent - Respondent/complainant, registered proprietor of trade mark service mark "SENSEX" in U.S. and India - Petitioner created website under disputed domain name ’sensex. in’ - Parties governed by in domain name dispute resolution policy rules of procedure - Held - Award passed by arbitrator just and proper - Disputed domain name identical or confusingly similar to trade mark of complainant - Impugned award well reasoned and bound upon law in accordance with principles of natural justice - Not suffers from any perversity, illegality or jurisdictional error - Warrants no interference - Petition dismissed. - The petitioner’s case that he has registered the domain name "SENSEX IN" on 16.2.2005 and using the same since then, in Courts view, also is in no way sufficient to consider the case of the respondent. The submission that there was no objection raised at the time of registration is also not sufficient to overlook the complaint, based upon the above material. The policy/rules itself provide the procedure for dealing with such situation and the complaint. The respondent has accordingly invoked the same and supported its case. Even the delay in filing the application for registration, even if any in no way sufficient to dislodge their complaint. Though opportunity was available to apply for the trade name and to obtain the domain name accordingly, yet not applied that itself is not sufficient reason to overlook and discard substantive material in support of respondents coined, long used and registered trade mark name "SENSEX". Even otherwise, that itself is not sufficient for the person like the petitioner to grab and use the said coined trademark "SENSEX" for the domain name "Sensex IN" in bad faith (Satyam v. Sifynet), 2004 (6) SCC 145 : AIR 2004 SC 3540.
The use of word "SENSEX" in the domain name as used by the petitioner and as he is doing the similar business and provides similar services in the field of capital markets, definitely cause confusion in the mind of the person/customer/client who is doing the same and similar business through internet. It definitely affects the respondent, its long used well reputed name and trade mark.
The grounds of irregularities by the Arbitral Tribunal are not vital and not substantiated by any material or elucidatory in nature. Such grounds cannot be entertained after the expiry of the statutory period of filing of petition under Section 34 of the Act. There is no case of fraud or suppression of vital documents or facts. Admittedly, no trade mark dispute and/or any domain name dispute between the parties was present in any Court. In the present case, as per the rules all the necessary and supporting documents and evidence were duly filed and exchanged. The respective counsel accordingly presented the case also. The reasoned award was passed by conducting the arbitration proceedings in accordance with principle of natural justice.
1. The petitioner (original Respondent) has invoked Section 34 of the Arbitration and Conciliation Act, 1996 (for short, the Act) and challenged an Award dated 17th August, 2008 passed by the Arbitrator appointed by the Internet Exchange of India, whereby the complaint filed by the respondent (original complainant) has been allowed and it is ordered that the disputed domain name “SENSEX.IN” be transferred to the respondent/company.
2. The basic averments of the complainant are as under:
“3.1 The complainant, a public limited company is the oldest stock exchange in Asia with a rich heritage and is popularly known as “BSE”. The complainant was originally established as “The Native Share &Stock Brokers’ Association” in 1875 and was an Association of Persons (AOP). In 1957, the name was changed to “The Stock Exchange, Mumbai”. In 2002, it was “Bombay Stock Exchange”. Effective from 19th August, 2005, the complainant has come to be known as “Bombay Stock Exchange Limited” by virtue of BSE (Corporatisation and Demutualization) Scheme, 2005 notified by the Securities and Exchange Board of India (SEBI).
3.2 The complainant is an affiliate member of FIBV, the International Federation of Stock Exchanges, an organization devoted to demonstrating the crucial financial role that Exchanges play in the word economy and facilitating international initiatives and cross-border co-operation. Information about BSE appears on the FIBV’s website. Further it may be noted that the complainant is a registered member of the International Organizations such as World Federation of Exchange (WFE), International Organization of Securities Commission (IOSCO), Founder member of South Asian Federation of Exchanges (SAFE). The complainant provides an efficient and transparent market for trading in equity, debt instruments and derivatives. It has an international reach including a presence in 417 cities and towns of India.
3.3 In or around 1986, the complainant coined the word “SENSEX” from the words “sensitive index” for use upon and in relation to its publication and reporting of the most traded or sensitive stocks on the Bombay Stock Exchange. The complainant has been using the name/service mark “SENSEX”, an index of 30 component stocks, from around 1986, which has become the benchmark index of the Indian Capital Market, and is extensively reported in international print and electronic media. “SENSEX” is widely reported in both domestic and international markets through print as well as electronic media. The booms and bust of the Indian equity market can be identified through “SENSEX”. Due to its wide acceptance among the Indian and foreign investors, “SENSEX” is regarded to be the pulse of the Indian Stock Markets and is associated exclusively with the complainant.
3.4 The services provided by the complainant under the said trade mark “SENSEX” are widely advertised and promoted in the print and electronic media and on the internet, and the complainant has expended over Rs.678.35 million on advertising and promotional expenses in respect of the services provided by the complainant for the last 3 years. The complainant has developed an unprecedented level of goodwill and enjoys a very high reputation globally in respect of the services provided under the trade mark “SENSEX”. The trade mark “SENSEX” has been continuously and extensively used on a wide scale since the year of its adoption by the complainant and is well known globally.
3.5 The complainant is the registered proprietor of the trade mark’ service mark “SENSEX” in the United States of America and India.
3.6 The complainant has got the following US registrations for the mark SENSEX. The complainant has filed copies of US registrations.
TABLE
3.7 The complaint has registered its mark SENSEX in India under Application No.1483928 in class 35 in respect of Compilation of mathematical or statistical data services. The said Application was pending at the time of filing of the complaint and wa
