The Delhi High Court recently upheld an arbitral award directing transfer of domain name registered as ‘Googlee’ to Google Inc., noting that the former had adopted a “slavish” imitation of Google's writing style, font, color scheme and layout.
“Mr Khatri was rightly stopped in his tracks by the Arbitrator from continuing with his misadventure. He could not have hoped to get away with exploiting Google's goodwill and reputation by merely adding an ‘e’ to its domain name. Google rightly cried foul. The Arbitrator declared Mr Khatri out. The Court's DRS concurs. Mr Khatri stands bowled by his own ‘googlee’,” Justice S. Muralidhar observed.
The Court was hearing a Petition filed under Section 34 of the Arbitration and Conciliation Act, 1996 by one Mr. Gulshan Khatri, challenging an arbitration award issued back in May, 2011. The arbitrator had concluded that ‘googlee.in’ was confusingly similar to Google's domain name and registered mark. He had then directed that it be transferred to Google. This order was sought to be set aside on the ground that it is opposed to the fundamental policy of Indian law.
In his petition before the High Court, Mr. Khatri, who claimed to be the sole proprietor of M/s TCI Web Gate, had contended that ‘Googlee.in’ was not similar to ‘Google’. He had further contended that there could have been no arbitration involving him and Google, as there existed no privity of contract between the two parties. The Court however felt that the objection was misconceived, as by getting the infringing domain name registered with the IN Registry, Mr Khatri was bound by the INDRP regime which envisaged a complaints mechanism.
The Court thereby noted that the adoption was “bad in law and not merely a coincidence”, and observed, “Mr Khatri has no valid explanation why he chose a domain name that is so nearly identical to what is perhaps the most widely used search engine. It is trite that ‘google’ is also a well-known domain name and mark. The word ‘google’ has metamorphosed into a verb in the English language. You no longer search for something on the net. You ‘google’ it,”
Read the Order here.