Upholds arbitrator’s award directing man to transfer his domain name to Google on grounds of imitation

The Delhi High Court has upheld an arbitrator’s award directing a man who got his domain name registered as ‘Googlee’ to transfer the same to Google Inc. on the grounds that the name of the homepage was a “slavish” imitation of the most widely used search engine.

“Is a ‘googlee’ a wrong one? A cricket enthusiast will say, “Yes of course”. In the virtual world, too, the answer is well, yes..., remarked Justice S. Muralidhar, taking a cue from the cricketing term ‘googly’, which is pronounced as ‘goo-glee’.

The court said so while deciding the petition of one Gulshan Khatri against an award passed by an arbitrator on May 6, 2011.

In 2007, Mr. Khatri had applied to .IN Registry for registering a domain name, ‘Googlee.in’. The registration was granted and renewed in 2008 for four years. In 2010, it was renewed for another eight years.

Notices sent

In September 2010, Google Inc., US, sent Mr. Khatri a cease and desist notice, pointing out that he had not only copied its well-known mark but had also adopted a nearly-identical writing style, font, colour scheme, and layout.

When another legal notice failed to elicit a response, Google filed a complaint against him under the .In Domain Name Dispute Resolution Policy.

The arbitrator then examined the complaint and after finding the domain name ‘Googlee.in’ “confusingly similar” to Google’s mark, directed that the infringing domain name be transferred to Google.

In his petition before the high court, Mr. Khatri, who claimed to be the sole proprietor of M/s TCI Web Gate, said ‘Googlee.in’ was not similar to ‘Google’.

The court, however, dismissed the claim.

“The domain name and mark ‘Google’ is a coined word, distinctive in nature, particularly in relation to the goods and services that it represents. The adoption by Mr. Khatri of a nearly identical domain name, ‘Googlee.in’, is indeed in bad faith and not merely a coincidence. A glance at his web page shows how slavish his imitation is of Google’s writing style, font, colour scheme and layout.”

“Mr. Khatri claims to have put in ‘a lot of research, intellectual capabilities, hard work, resources, lifetime savings and effort to prepare the content of the search engine’. What he does not explain is on what basis he adopted a domain name by simply adding the letter ‘e’ to the well-known domain name ‘Google’,” the court further said.

Popular word

Justice Muralidhar also highlighted how popular the word ‘google’ was.

“..The word ‘google’ has metamorphosed into a verb in the English language. You no longer search for something on the Internet. You ‘google’ it,” he said.

“Mr. Khatri was rightly stopped in his tracks by the arbitrator, who declared him out. He stands bowled by his own ‘googlee’,” the high court added.