The case established that adopting a domain name confusingly similar to a well-known mark in bad faith may lead to transfer of the infringing domain name to the rightful owner.

1. Is a ‘Googlee’ a ‘wrong one’? A cricket enthusiast will say, “Yes of course.” In the virtual world too, the answer is well, yes, as the Petitioner, Mr. Gulshan Khatri found to his consternation, when he used it as a domain name: 'googlee.in'.

2. The cause for Mr Khatri's angst is an Award dated 6th May, 2011 by an Arbitrator appointed by the National Internet Exchange of India (‘NIXI’). The Arbitrator examined a complaint against Mr Khatri by the Respondent Google Inc. USA (hereafter 'Google'). He agreed with Google that the domain name 'googlee.in' registered by Mr Khatri was confusingly similar to Google's domain name. He directed that the infringing domain name 'googlee.in' be transferred to Google.

3. Mr Khatri says Google protests too much about the letter 'e' being added to its domain name. He asserts that 'googlee.in' is not confusingly similar to 'google'. He says the Arbitrator got it wrong. He complains that the Arbitrator did not send him a copy of Google's complaint and therefore violated the principles of natural justice. He wants the Court to exercise its powers under Section 34 of the Arbitration and Conciliation Act, 1996 (‘Act’) and set aside the Award on the ground that it is opposed to the fundamental policy of Indian law. The Court declines. Read on to find out why.

Background facts

4. Mr Khatri claims to be the sole Proprietor of M/s TCI Web Gate. He claims to have "put in a lot of research, intellectual capabilities, hard work, resources, lifetime savings and effort to prepare the content of a search engine." What Mr Khatri does not explain is on what basis he adopted a domain name by simply adding the letter 'e' to the well-known domain name 'google'. Nevertheless he managed to get the domain name with an added 'e' registered with the .IN Registry. This is how it happened.

5. The IN Registry has been created by NIXI which is a Not-for-Profit company under Section 25 of the Indian Companies Act, 1956. It was formed with the objective of facilitating improved internet services in the country. Under NIXI, the IN Registry functions as an autonomous body with the responsibility for maintaining the .IN ccTLD and ensuring operational stability, reliability, and security. At the time of its inception, .IN began with a Sunrise Period to enable the Owners of trademarks or service marks to have domain names matching their marks by applying for .IN domain names before opening the registration for the general public. Sunrise applications were taken for 45 days with effect from 1st January, 2005.

6. On 17th February, 2007 Mr. Khatri applied to the .IN Registry online for registering the domain name ‘googlee.in’ through the web. The registration was granted and renewed in 2008 for four years. In 2010, it was renewed for another 8 years i.e. till 2020. This is how the screenshot of Mr. Khatri's web page looked like:

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7. Google sent Mr Khatri a cease and desist notice dated 10th September, 2010. Google pointed out that by getting ‘googlee.in’ registered, Mr Khatri had not only copied its well-known mark Google but had adopted a nearly identical writing style, font, colour scheme and layout. It was a dishonesty and bad faith in adoption and registration of a nearly identical domain name.

The arbitral proceedings

8. When a further legal notice sent to Mr Khatri on 25th November, 2010 failed to elicit a response, Google filed a complaint against him under the .In Domain Name Dispute Resolution Policy (INDRP). Google asked that the infringing domain name be transferred to it and costs awarded.

9. The arbitral record filed by NIXI in this Court shows that a notice was issued by the Arbitrator on 4th February 2011 at 7.04 pm by email with the subject matter reading "Notice from Arbitrator In re www.googlee.in". The notice was captioned "Dispute of Domain Name: www.googlee.in". Mr. Madan Khatri, the brother of the Petitioner Mr. Gulshan Khatri replied to the said notice by email on 10th February 2011 at 11:01 pm. The said