Delhi High Court
Rational Intellectual Holdings ... vs Mr. Sunny Karira, & Anr. on 11 April, 2018
IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on : 11.04.2018
+ O.M.P. (COMM) 446/2017
RATIONAL INTELLECTUAL HOLDINGS
LTD. ..... Petitioner
versus
MR. SUNNY KARIRA, & ANR. ..... Respondents
Advocates who appeared in this case:
For the Petitioner :Mr Neeraj Kishan Kaul, Senior Advocate
With Mr Ashish Kabra, Mr Brijesh Kumar.
For the Respondent :Mr P. Sinha with Ms Reshmi Rea Sinha
And Mr Rudra Dutta, Advocates for R-1.
Mr Neel Mason and Ms P. Vennela for
R-2.
CORAM
HON'BLE MR JUSTICE VIBHU BAKHRU
JUDGMENT
VIBHU BAKHRU, J
1. The petitioner, a company organized under the laws of the Isle
of Man, has filed the present petition under Section 34 of the
Arbitration and Conciliation Act, 1996 (hereafter „the Act‟) impugning
the arbitral award dated 21.08.2017 (hereafter „the impugned award‟)
delivered by the Arbitral Tribunal constituted under the .IN Dispute
Resolution Policy and Rules of Procedure framed thereunder.
2. By the impugned order, the Arbitral Tribunal has rejected the
petitioner‟s complaint in regard to the registration of the domain name
www.starpoker.in (hereafter „the disputed domain name‟) which is
registered in the name of respondent no.1.
3. The claim filed by the petitioner was not controverted by
respondent no.1 and remained uncontested. However, the Arbitral
Tribunal considered the claim and found that the disputed domain
name did not offend any of the three conditions as set out in paragraph
4 of the .IN Dispute Resolution Policy (INDRP). The Arbitral
Tribunal, accordingly, rendered the impugned award rejecting the
petitioner‟s claim.
4. The principal ground urged on behalf of the petitioner to assail
the impugned award is that the Arbitral Tribunal has founded the
arbitral award on the research and material found on its own - and not
the evidence and material placed by the parties - therefore, the
petitioner had no opportunity to contest or controvert the same.
5. Briefly stated, the relevant facts necessary to address the
controversy are as under:-
6. The petitioner claims to be a part of the Group of companies of
the Stars Group Inc. The said group is engaged in the business of
offering online service, such as poker rooms and platforms for the
hosting of skill-based card game of poker. It is also stated that the
group owns the trademark "PokerStars" (hereafter "PokerStars Mark").
7. Respondent no.1 is an individual and a resident of Kolkata. He
is the registered owner of the disputed domain name. Respondent no.2
(National Internet Exchange of India - hereafter "Nixi") is a „not for
profit‟ company of the Government of India. It is stated that Nixi is a
designated and appointed body, which is responsible for the purposes
of .IN country code, top level domain name. The .IN Registry also
functions under the control of Nixi.
8. .IN Domain Name Dispute Resolution Policy (INDRP) and the
Rules framed thereunder (INDRP Rules of Procedure) have been
framed for resolution of domain name disputes. INDRP Rules of
Procedure provides for a dispute resolution mechanism in regard to
disputed domain names.
9. The petitioner filed a complaint, which was registered as INDRP
Case No. 901 with Nixi disputing the rights of respondent no.1 in
respect of the disputed domain name. In terms of the INDRP Rules of
Procedure, the said dispute was referred to the Arbitral Tribunal
constituted by the Sole Arbitrator appointed by Nixi.
10. In its complaint, the petitioner alleged that its trademark,
PokerStars mark, was a well-known trademark and was recognized
world over. The petitioner claimed that the said mark was first used in
the year 2001, when a website with the address www.pokerstars.com
was launched. It is stated that the first major online poker tournament
was launched by the petitioner‟s group in 2002. Subsequently, the
petitioner‟s group also launched several websites including
www.pokerstars.net, which provide a platform for the live game of
Poker. It is claimed that the petitioner‟s group has held several poker
events such as „POKERSTARS CHAMPIONSHIP‟, „POKERSTARS
FESTIVAL‟ and „POKERSTARS MEGATACK‟ in various countries
across the globe.
11. The petitioner claimed that the petitioner‟s group of companies
had spent substantial time, efforts and resources in developing the
trademark and the brand name "PokerStars" alongwith other variants.
It is further claimed that the petitioner (and its group) had applied for
and had obtained registration of trademarks containing the word
Pokerstars in over 30 jurisdictions across the world.
12. The petitioner claimed that in and about 2016, it became aware
of the web site, www.starpoker.in, which was apparently being used by
a company, K.D. Gaming Solutions Private Limited (hereafter „K.D.
Gaming Solutions‟). The petitioner issued notices to K.D. Gaming
Solutions calling upon them to cease and desist from using any mark,
trade name, service mark or the website, www.starpoker.in, as the
same infringed its right in the trademark, PokerStars mark as well as
its right in respect of websites that included the word „PokerStars‟ as a
part of the domain name.
13. Since the dispute remained unresolved, on 12.06.2017, the
petitioner filed a complaint before Nixi alleging that three conditions
as indicated in paragraph 4 of the INDRP were satisfied in respect of
the disputed domain name. On 13.07.2017, the petitioner removed the
procedural objections with respect to the complaint. And, on
04.07.2017, Nixi appointed the Sole Arbitrator for adjudication of the
disputes in accordance with INDRP and INDRP Rules of Procedure.
Thereafter, on 10.07.2017, a copy of the complaint was served on
respondent no.1 and he was called upon to file a reply by 18.07.2017.
Admittedly, respondent no.1 did not file any reply to the said
complaint.
14. The Arbitral Tribunal proceeded to examine the complaint on
the anvil of the tests as set out in paragraph 4 of INDRP. The Arbitral
Tribunal conducted a research on the website of the Office of the
Registrar of Trademarks and found that respondent no.1 had registered
the trademark (hereafter „Starpoker Logo‟) under Registration No.
3001142 in class 41 in respect of services of "Online Gaming,
Operation And Coordination Of Game Tournaments, Leagues And
Tours For Recreational Computer Game Playing Purposes."
15. The research conducted by the Arbitral Tribunal on the internet
also indicated that an Examination Report dated 31.12.2016 was issued
in relation to petitioner‟s application for registration of a trademark
(Application No. 3415037), which cited the respondent‟s registered
trademark (Application no. 3001142) ‒ Starpoker Logo. This led the
Arbitral Tribunal to conclude that the petitioner was "seized of this
registration". The Arbitral Tribunal also noted that the petitioner had
filed a response to the Examination Report dated 05.12.2016 (in
respect of Application no. 2446932), inter alia, stating that no one can
monopolize generic / descriptive work like Poker and the said word is
devoid of distinctiveness. The Arbitral Tribunal reasoned that in view
of the petitioner‟s stand that no one could monopolize descriptive word
like Poker, the disputed domain name could not be considered as
identical or confusingly similar to the PokerStars Mark.
16. Next, the Arbitral Tribunal proceeded to examine the allegation
that respondent no.1 did not have legitimate interest or right in the
disputed domain name. The Arbitral Tribunal observed that respondent
no.1 held the registered Mark Starpoker Logo. It further held that the
evidence provided by the petitioner indicated that respondent no.1 was
offering services and was using the disputed domain name in
connection with the purpose relating to Poker and, therefore, such use
could be considered as bonafide under the policy. The Arbitral
Tribunal held that the petitioner had failed to demonstrate that
respondent no.1 had any malicious intent to trade off the petitioner‟s
trademark. The Arbitral Tribunal also rejected the contention that the
impugned domain name was used in bad faith.
Submissions
17. Mr Kabra, the learned counsel appearing for the petitioner
contended that the impugned award was liable to be set aside as the
Arbitral Tribunal had not provided any opportunity to the petitioner to
counter the material on the basis of which the Arbitral Tribunal has
founded the impugned award. He submitted that the Arbitral Tribunal
had misinterpreted the petitioner‟s response to the Examination
Report. He referred to the Examination Report dated 19.01.2017,
which indicated that there were three other marks that had been
registered in Class 9, namely, POKER, POKERCON and
POKERIST.COM. He pointed out that the petitioner had responded to
the said Examination Report by a letter dated 17.07.2017. In the said
letter, the petitioner had commented on the trademark "POKER"
(Registration No. 2091585) by stating that "This mark has been
opposed by playtech software Ltd. Of Isle of Man. Further, no one can
be monopolize generic/ descriptive word like poker. The said word is
devoid of distinctiveness." He emphasized that the above comment
was only made in response to the trademark POKER and not in respect
of other trademarks.
18. Mr Kabra further contended that the Arbitral Tribunal had also
erred in proceeding on the basis that the petitioner was aware of the
registration of respondent no.1‟s trademark Starpoker Logo. He
submitted that the petitioner had applied for registration of PokerStars
mark (Application no. 3415037) and had became aware of the
registration of the mark Starpoker Logo on receipt of the Examination
Report, which - although dated 31.12.2016 - was received on
21.06.2016, that is, after the petitioner had filed the complaint with
Nixi. Therefore, at the time of filing the complaint, the petitioner was
not aware of the registration of the trademark Starpoker Logo in favour
of respondent no.1. He submitted that immediately on becoming aware
of this registration, the petitioner had filed a rectification application
with the Trademark Registry. However, the petitioner had no
opportunity to bring the same to the knowledge of the Arbitral
Tribunal.
19. Mr Sinha, learned counsel appearing for respondent no.1
submitted that the present petition was not maintainable as K.D.
Gaming Solutions had not been made a party to the petition. He
submitted that K.D. Gaming Solutions is vitally interested in the
subject matter of the dispute since the disputed domain name (website)
is being used by K.D. Gaming Solutions. He also advanced
contentions in support of the findings of the Arbitral Tribunal.
Reasons and Conclusion
20. As noticed above, the Arbitral Tribunal had proceeded to
examine whether the disputed domain name fell foul of the premises as
set out in paragraph 4 of INDRP. There is no dispute that this was the
correct approach and the Arbitral Tribunal was required to do so.
21. Paragraph 4 of INDRP is set out below:-
"4. Types of Disputes
Any Person who considers that a registered domain
name conflicts with his legitimate rights or interests
may file a Complaint to the .IN Registry on the
following premises:
(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
(iii) the Registrant‟s domain name has been
registered or is being used in bad faith. The
Registrant is required to submit to a mandatory
Arbitration proceeding in the event that a
Complainant files a complaint to the .IN Registry,
incompliance with this Policy and Rules
thereunder."
22. Concededly, respondent no.1 had not placed any material before
the Arbitral Tribunal to address the petitioner‟s complaint. Thus, apart
from the complaint filed by the petitioner, there was no other material
before the Arbitral Tribunal to arrive at the conclusion that it did.
However, the Arbitral Tribunal has founded its decision based on the
research conducted by the Arbitrator. This is apparent from paragraph
7.3.3 of the impugned award, which reads as under:-
"7.3.3. Brief research by the Arbitrator shows that:
7.3.3.1. The Respondent has registered the trademark
[Star Poker logo] with trademark no 3001142 claiming
user date as 01/07/2015. The trademark is registered in
class 41 over the servies "Online Skill Gaming Portal;
Providing A Web-Based System And On-Line Portal For
Customers To Participate In On-Line Gaming, Operation
And Coordination Of Game Tournaments, Leagues And
Tours For Recreational Computer Game Playing
Purposes".
7.3.3.2. The Examination Report dated dated 17/12/2016
issued in relation to the Complainant's trademark
application number 3415037 cites the Respondent
registered the trademark [Star Poker logo] with
trademark no 3001142, accordingly the Complainant is
seized of this registration.
7.3.3.3. Further, the Complainant in its response
Examination Report dated 05/12/2016 issued in relation to
the Application Number-2446932 registration of the
trademark "PokerStars", has stated that "We further submit
that no one can be monopolize generic I descriptive word
like poker. The said word is deviod of distinctivness".
23. It is apparent from the above that the Arbitral Tribunal had
referred to the Examination Report dated 17.12.2016 relating to
Application no. 3415037. Although the Examination Report is stated
to be issued on 17.12.2016, the petitioner states that the date is
incorrect and the Examination Report is, in fact, dated 31.12.2016 and
was received by the petitioner on 21.06.2017. Thus, the said Report
was furnished to the petitioner after the petitioner had filed the
complaint and, therefore, the same could neither be referred to by the
petitioner in its complaint nor was the petitioner provided any
opportunity to indicate its response to the same. The Arbitral Tribunal
merely proceeded on the basis that the petitioner was seized of this
registration thereby implying that the petitioner was aware of the same.
24. The Arbitral Tribunal also proceeded to note the petitioner‟s
response to the Examination Reports in relation to Application no.
2446932, that is, reports dated 05.12.2016 and 19.01.2017. The
Arbitral Tribunal had premised its finding on the assumption that the
petitioner had claimed, in the aforesaid response, that Poker was a
generic or descriptive word and, therefore, could not be monopolized
by anyone. At this stage, it would be relevant to refer to the
petitioner‟s response dated 17.07.2017 to the Examination Report
dated 05.12.2016 and 19.01.2017 submitted to the Trademark
Registry. The said letter is set out below:-
"VOHRA & VOHRA
To,
Registrar of Trade Marks,
Trade Marks Registry,
Sector 14, Dwarka, New Delhi-110075. 17.07.2017
SUBJECT: Reply to the examination report for the trade
mark Application no. 2446931 for the marks
PokerStars in Classes 9, 36,41,42
We refer to subject matter:
We have received examination report for subject mark.
The examination has raised the following objections:
(i) The mark is identical with and similar to earlier marks
in respect of identical or similar description of goods or
services and because of such identity or similarity there
exists a likelihood of confusion and deception and the
marks is open to objection on relative grounds of refusal
under section 11 f the Trade Marks Act, 1999.
Our reply to the above mentioned objections raised by
examiner is as follows:-
We submit that the examiner has not cited any marks in
classes 36, 41, and 42 and therefore the subject mark is
clear for registration in these classes.
The examiner has cited below mentioned marks for Class
9:
Class TRADE TRADE DATE STATUS REMARKS
MARK MARK OF
NO. USE
9 2091585 POKER 14/12/ Opposed This mark has been
2010 opposed by playtech
software Ltd. Of Isle of
Man. Further, no one
can be monopolize
generic/ descriptive
word like poker. The
said word is devoid of
distinctiveness.
9 2182684 Pokerist 27/05/ Objected Marks co-exist in other
.Com 2010 jurisdictions and
therefore can co-exist
in India
9 2361032 Pokerist 27/05/ Objected Marks co-exist in other
.Com 2010 jurisdictions and
therefore can co-exist
in India
With regard to the aforesaid objection under Section 11,
we will submit that the same are not sustainable for
following reasons:
We submit that the cited mark under the application no.
2091585 for the trademark Poker has been opposed by
Playtech Software. This Mark has been opposed by
Playtech Software Ltd. of Isle of Man. We further submit
that no one can be, monopolize generic/ descriptive word
like poker. The said word is devoid of distinctiveness.
The cited mark under the Trade Mark Application no.
2182684 for the mark POKERCON in the name of Zynga
Inc is co-exist with the Applicant in EU, Australia, China
and Canada. We submit that the mark co-exist in other
jurisdictions and therefore can co-exist in India.
The cited mark under the Trade Mark Application no.
2361032 for the mark POKERIST.COM, We submit that
the marks co-exist in south Korea, Japan, Australia and
Ukraine and therefore can co-exist in India and therefore
can co exist in India.
We request the Learned Registrar to take our aforesaid
submissions on record and advertise the mark else give us
an opportunity of being heard before final order is passed.
Yours Sincerely,
Sd/-
Dr. SheetalVohra
(Enrl : D/669/2000)
Vohra&Vohra
(Agent code- 19275)
Office: L-4073, DevinderVihar, Sector -56, Gurgaon-
122011, NCR, India
Mobile +919911277418] [email protected]
www.vohraandvohra.com"
25. It is apparent from the above that the petitioner had not objected
to registration of trademarks POKERCON and POKERIST.COM on
the ground that Poker was a generic term. On the contrary, the
petitioner‟s response was that its trademark PokerStars mark could co-
exist with the other two marks mentioned in the Examination Report
dated 05.12.2016 (namely, POKERCON and POKERIST.COM). The
petitioner‟s objection that „Poker‟ was a generic term was only in
respect of the trademark POKER. Thus, it was the petitioner‟s case
that the word „Poker‟ could not be registered as a trademark in favour
of any person; it was not its case that other trademarks that use the
word Poker as a part of the trademark were not registrable. It is
apparent that the Arbitral Tribunal has completely misread the
petitioner‟s response as conceding that the petitioner‟s did not have
any exclusive right to use its trademark, PokerStars Mark, since it
included the word „Poker‟.
26. There is also much merit in the petitioner‟s contention that the
impugned award falls foul of Section 34(2)(a)(iii) of the Act since the
petitioner was not given an opportunity to present its case. The
petitioner had no opportunity to deal with any of the material collected
pursuant to the research conducted by the Arbitral Tribunal including
(a) the registration of trademark Starpoker Logo in favour of
respondent; (b) submission of the Examination Report; and (c) the
petitioner‟s response to the Examination Report.
27. This Court is also of the view that the procedure adopted by the
Arbitral Tribunal offends Chapter V of the Act. In terms of Section 18
of the Act, the Arbitral Tribunal was required to give each party a full
opportunity to present its case. In the present case, the petitioner was
provided no opportunity to deal with any of the research conducted by
the Arbitral Tribunal, which ‒ as is apparent from the plain reading of
impugned award ‒ formed the substratal foundation of the impugned
award.
28. Section 23 of the Act provides for filing Statement of claim and
Statement of Defence and Section 24 of the Act provides for conduct
of the Arbitral proceedings. It is apparent from the plain reading of
Section 23 and 24 of the Act that access to the material relied upon by
the other party and sufficient notice to meet the same is mandatory.
29. Section 25(c) of the act makes it expressly clear that if a party
fails to appear at an oral hearing or to produce documentary evidence,
the Arbitral Tribunal would continue the proceedings "and make the
arbitral award on the evidence before it". Admittedly, respondent no.1
did not file any response to the petitioner‟s complaint and, thus, the
Arbitral Tribunal was required to examine the evidence produced by
the petitioner and decide accordingly. It was not necessary for the
Arbitral Tribunal to embark on a quest to seek out evidence to counter
the complaint filed by the petitioner. However, if the Arbitral Tribunal
found itself compelled to, sou moto, make a detailed inquiry, it was
necessary for the arbitral Tribunal to provide a full opportunity to the
petitioner to respond to the evidence or the material collected by the
Arbitral Tribunal.
30. The procedure adopted by the Arbitral Tribunal is also in
violation of the principles of natural justice for the reasons stated
above. Thus, the impugned award was also falls foul of Section
34(2)(b)(ii) of the Act read with Explanation 1 thereto, since it is in
contravention with the fundamental policy of Indian law which
requires that the party be given full opportunity to meet the case being
set up against it.
31. This Court finds no merit in the contention that the present
petition is not maintainable, as K.D. Gaming Solutions has not been
made a party thereto. It is not disputed that the impugned domain name
is registered in favour of respondent no.1. More importantly, K.D.
Gaming Solution was not a party to the arbitral proceedings and,
therefore, was not required to be impleaded in the present petition.
32. In view of the above, the petition is allowed and the impugned
award is set aside. The parties are left to bear their own costs.
VIBHU BAKHRU, J
APRIL 11, 2018
RK
