The registration of a domain name incorporating a well-known trademark in bad faith, with no legitimate interests evidenced, constitutes grounds for its transfer to the legitimate trademark owner.

JUDGMENT

[VIA HYBRID MODE]

Sanjeev Narula, J. (Oral)--The Petitioner, who is termed as a sophisticated `domainer' having registered approx. 7500 domain names, is aggrieved by the award dated 23rd September 2020 passed by a Sole Arbitrator appointed by Respondent No. 2 - National Internet Exchange of India [hereinafter referred to as `NIXI'], under the `.IN Domain Name Dispute Resolution Policy' [hereinafter referred to as `INDRP'] - allowing the complaint filed by Respondent No. 1 - Sazerac Brands LLC [hereinafter referred to as `Sazerac'], and directing the transfer of the domain name [hereinafter referred to as `impugned domain name'] which incorporates the registered trademark- `Fireball', in favour of Sazerac.

What is the Controversy and what are the directions of the Arbitrator?

2. Controversy surrounds the impugned domain name registered by the Petitioner. Sazerac - a company incorporated in Delaware, United States of America has its registered office in Louisiana, United States of America - manufactures and markets cinnamon whisky under the name and brand of `FIREBALL', and associated merchandise therewith. It owns the domain name `fireballwhisky.com' and is also the owner of the registered trade mark `FIREBALL' under Classes 32 and 33 in India, as well as in more than 70 jurisdictions globally. Sazerac's predecessor was one of America's oldest family-owned and privately-held distilleries. Sazerac itself was founded in 1869 and owns many of America's most venerable distilling companies - including Buffalo Trace Distillery, A. Smith Bowman, Glenmore Distillery and 1792 Barton, et al. The trademark `FIREBALL' is well-known on account of goodwill acquired by the brand over the years and substantial marketing, including through the internet as a ready medium of exposure to consumers apropos their goods and services. Sazerac owns and operates the websites `www.fireballwhisky.com' and `www.sazerac.com' and has also registered numerous domain names containing the word `FIREBALL', that include, inter alia, `Fireballmusic.co.uk', `Fireballwhiskey.cn', `Fireballwhiskey.co.uk', `Fireballwhiskey.com', `Fireballwhiskeyindia.com, `Fireballwhisky.cn', `Fireballwhiskybeer.com'.

3. Noticing the impugned domain name, Sazerac, in accordance with the INDRP Rules of Procedure, filed a complaint with NIXI, on the ground that, inter alia, the registration is in bad faith, intended for disrupting its business. As per paragraph 5(b) of INDRP, the .IN Registry appointed a Sole Arbitrator, who, after consideration of the complaint and the response, held that: the impugned domain name is confusingly similar to the mark `FIREBALL' - which is proprietary to the Sazerac; Respondent No. 1 has no rights or legitimate interests in respect of the disputed domain name; and, the domain name is registered in bad faith; for which reasons, in accordance with the Policy and Rules, the Petitioner was directed to immediately transfer the impugned domain name to Sazerac. Aggrieved by the above, the Petitioner had filed the present petition under Section 34 of the Arbitration and Conciliation Act, 1994.

What are the Petitioner's Claims?

4. The Petitioner registered the impugned domain name on 3rd July, 2018. He is a resident of Ontario, Canada and holds a bachelor's degree in Engineering and Management from McMaster Faculty of Engineering, McMaster University, Hamilton, Ontario, Canada after pursuing a five-year engineering course from 1995-2000. Petitioner asserts that since 1960, all students