Sensex.in Won by BSE ?

[RetiredMember]

Yesterday Mumbai High Court ruled in favor of Bombay Stock Exchange (BSE) for domain sensex.in and kept arbitration ruling as valid.

So our point which we raised in our post that even if somebody donot have registered TM but his/her mark is popular and widely in used can be the reason for loosing you .IN domains are proved.

 

[wot]

Not just .in of course-applies to all extensions.

 

[domainerin]

not really @ wot, BSE couldnt have claimed sensex.com

 

[Jeff]

Thanks for the news Mitsu!

Does the court publish its decisions online?

I found this news article referencing the decision, plus talking about another interesting ongoing dispute:
Net domain name battle surfs into a legal web - Mumbai - City - NEWS - The Times of India

 

[Ceres]

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.

 

[RetiredMember]

"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."

Yes ! in some case we found that attorneys when file application for TM after domain registration date they use to show date of first use prior to the domain registration date. And when TM get registered they use this date of first use as main defense.

In this particular case of sensex.in owner Jigar came to us for filling reply before the .In registry when INDRP process started against him but we clearly told him at that time also that his case is weak and he didnot seek our services, and he lost his domain name Not only because of the TM but because of the USE OF DOMAIN sensex.in see this line

"The use of word "SENSEX" in the domain nameas used by the petitioner
and as he is doing the similar business and provides similar services
in the field of capital markets, definitely cause confusion in the mind
of the person/customer/client who is doing the same and similar business
through internet.
It definitely affects the respondent,its long used well reputed name and
trademark."

 

[wot]

not really @ wot, BSE couldnt have claimed sensex.com

I should clarify:


I was not specifically referring to sensex but to names in general eg "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."

 

[Jeff]

Thanks for finding the case Ceres!