Thanks Mitsu!
For reference purposes, here's the
INDRP decision for Sensex.in. For those who haven't read it, here's a brief summary:
The respondent's main argument was that SENSEX is a
generic term and common to trade.
The argument of the complainant BSE (Bombay Stock Exchange) was that it had
coined the term SENSEX from the words "Sensitive Index" and was the first to adopt this term.
BSE had applied for both US and Indian trademark applications. With regard to the Indian application, the domain was registered
before the date of trademark application. However, I note the Indian application claims a date of first use in Mumbai since
1986.
The Arbitrator did not agree that SENSEX is a generic term. The Arbitrator cited Dow Jones, Nasdaq, Hangsen as examples of trademarks under which similar services are provided by the stock exchanges all over the world.
The respondent had a disclaimer somewhere on the website stating it was in no way connected to BSE. The Arbitrator stated that a disclaimer will "not cure a malfade and dishonest adoption" and was irrelevant.
Moving on...here's a copy of the
decision by the Mumbai High Court.
The High Court ruled that there is "no perversity, illegality and/or jurisdictional error" in the INDRP award. Here are a few highlights from the High Court decision:
the defence of prior registration of domain name is not sufficient to retain the domain name.
In support of this, previous case law was relied upon which states that an owner of a mark can sue for acquired unregistered rights.
Various grounds of procedural INDRP irregularities were raised (however, they weren't specifically pleaded in the Petition). In any event, the High Court indicated that such procedural irregularities wouldn't have been sufficient to declare the INDRP award perverse and/or contrary to the law or public policy.
For example, one argument was that the Arbitrator failed to pass an award within 30 days. However, the High Court stated once the new Arbitrator had been appointed, the petitioner had raised no objection and that the petitioner's counsel had appeared and submitted its case before the Tribunal.
As Mitsu pointed out in the opening post, you can lose a domain even if it involves an
unregistered trademark if that mark is well-known.