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2024 Supreme(Online)(DEL) 493
HIGH COURT OF DELHI
Prathiba M. Singh, J
MUKESH UDESHI – Appellant
Versus
JINDAL STEEL POWER LTD – Respondent
O.M.P. (COMM)-213/2023
Mr. Hrishikesh Chitaley, Adv., Mr. Gopal Jain Sr. Advocate, Mrs. Gauri Rasgotra, Mr. B. Arutsivan, Mr. Sharad Kumar Sunny, Ms. Priyashree Sharma PH, Ms. Shruti Joshi, Mr. Aniket Kumar Singh, Mr. Gunav Gujral, Mr. Keshav Mann Advs. for R-1, Mr. Ajay Gupta, Advocate for R-2.
Only parties to an arbitration agreement can challenge an arbitral award under Section 34 of the Arbitration and Conciliation Act, 1996.
Headnote:(A) Arbitration and Conciliation Act, 1996 - Section 34 - Challenge to arbitral award - The petition challenges the award dated 4th April, 2023, directing transfer of a domain name to the complainant - The petitioner claims beneficial ownership but was not a party to the arbitration proceedings - The court held that only parties to the arbitration agreement can challenge an award under Section 34. (Paras 2, 18, 21)
(B) Domain Name Dispute Resolution Policy - The complainant must establish three elements: (i) the domain name is identical or confusingly similar to a trademark; (ii) the registrant has no rights or legitimate interests; (iii) the domain name was registered or used in bad faith. (Paras 7, 8)
Facts of the case:
The petitioner challenges an award by the Sole Arbitrator regarding the domain name 'jsplsteel.in', which was awarded to the complainant, Jindal Steel & Power Ltd. The petitioner claims beneficial ownership but was not impleaded in the arbitration. (Paras 2, 5)
Findings of Court:
The court found that the petitioner, not being a party to the arbitration, lacks locus standi to challenge the award under Section 34 of the Act. (Paras 21, 22)
Issues: The main issue was whether the petitioner, as a non-party to the arbitration, could challenge the award under Section 34 of the Arbitration and Conciliation Act, 1996. (Paras 21)
Ratio Decidendi: The court ruled that only parties to the arbitration agreement can invoke Section 34 to challenge an arbitral award, reaffirming the principle that outsiders cannot challenge awards unless they are parties to the proceedings. (Paras 21, 22)
Result: Petition dismissed.
PRATHIBA M. SINGH, J. 1. This hearing has been done through hybrid mode. Background Facts
2. The present petition, filed by the Petitioner-Mukesh Udeshi under Section 34 of the Arbitration and Conciliation Act, 1996 (hereinafter, ‘1996 Act’), challenges the impugned award dated 4th April, 2023 passed by the ld. Sole Arbitrator appointed by Respondent No. 2-NIXI. 3. Respondent No. 1-Jindal Steel& Power Ltd. had filed a complaint in terms of the .IN Domain Name Dispute Resolution Policy (hereinafter, ‘INDRP’) and the INDRP Rules of Procedure, which has been adopted by NIXI. The dispute between the Respondent No. 1 and Respondent No. 3- Nspire Solutions concerns the domain name: ‘jsplsteel.in’. The said complaint was filed by Respondent No. 1 against the said domain name. The WHOIS details in respect of the said domain name is set out below:
4. Upon a complaint being received by NIXI, which administers INDRP in India, notice dated 8th February, 2023 was issued by NIXI to the Registrant i.e. Respondent No. 3-NSPIRE Solutions. A reply was also received from NSPIRE and the matter was heard by the ld. Sole Arbitrator. Though the reply was belated, the ld. Sole Arbitrator took into consideration the stand raised in the reply. Finally, vide the impugned award, the ld. Sole Arbitrator directed transfer of the domain name to the complainant i.e. the Respondent No.1. The operative portion of the award reads:
7. Discussion and Findings The Arbitrator has reviewed the pleadings and annexures filed by Parties and has confined herself to issues directly relevant to the claims under the Policy.
The Policy requires that the Complainant must establish three elements viz. (i) the Registrant's domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; (ii) the Registrant has no rights or legitimate interests in respect of the domain name; and (lii) the Registrant's domain name has been registered or is being used in bad faith. These are discussed hereunder:
- (i) Identical or Confusingly Similar In order for the Complainant to make out a case under this element of the Policy, it must show that (i) it has rights in a trademark at the time of the Complaint; and (ii) that the disputed domain name is identical or confusingly similar to that trademark.
- The Complainant has been using the name Jindal Steel and Power Limited since the year 1998. Even since, it has been called JSPL and this reference is evident from the documents filed by it. The Complainant has considerable reputation and goodwill in JSPL The domain name was registered by the Complainant in November 1999. It also owns other domain names consisting of the JSPL designation.
- Most importantly, the Complainant owns trademark registrations for JSPL variants in India under nos.
2563581, 2563583, 2731001, 2723765, 2723770, 3320811, all of which predate the present Complaint.
The Arbitrator notes that the dominant part of the disputed domain name is JSPL i.e., the disputed domain name wholly incorporates the Complainant's JSPL name and mark and this is also the distinctive part of the same. The Respondent has simply taken the Complainant's JSPL mark and has combined it with steel, a term that indicates the business of the Complainant and this is not sufficient to escape a finding of confusing similarity under the first element.
Steel does not serve to distinguish the disputed domain name from the Complainant's JSPL mark in any way.
Rather, it is indicative of the Complainant's business or services and increases the element of confusion. It has been routinely held that the mere addition of a descriptive term or a non-significant element does not prevent a finding of confusing similarity. See Starbucks Corporation v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1991. Accordingly, the Respondent's assertion that the disputed domain name is different from the Complainant
