CITICORP Vs. TODI INVESTORS

JUDGEMENT

(1.) Plaintiffs have filed the above suit claiming a decree of permanent injunction against the defendants from using the trademark 'CITI' of the plaintiffs as a domain name, a decree of mandatory injunction for transfer of the domain name "citi.in" of the plaintiffs and for rendition of accounts for passing off and infringement of the aforesaid registered trademark of the plaintiffs.

(2.) The plaintiffs in filing the above suit have stated that the plaintiff No. 1 is a company organized and existing under the laws of State of Delaware, United States of America and plaintiff No. 2 is a wholly owned subsidiary of the first plaintiff. Plaintiffs No. 1 & 2 have a corporate office at New York, USA. The plaintiffs are well- renowned and world leaders, inter alia, in banking and financial services and their renowned trademarks are CITIBANK bank, CITI and a number of other well-known family marks such as CITICORP, CITIGROUP, CITISELECT, CITIBANKING, CITICARD, CITIONE, CITIPHONE, CITIGOLD, CITISERVICE, CITILIFE, CITITREASURY. During the sunrise period (January 1,2005 to January 21, 2005), the Country Code Top Level Domain (ccTLD)) ".in" were made available for registered proprietors of trademarks only, and later, on February 16, 2005 for the general public on a first to apply basis. The plaintiffs during this period obtained registration of the domain names "citicorp.in" and "citibank.in" as they had registration for these trademarks in India. For the remaining trade names, the plaintiff No. 1 applied for registration of domain names "citi.in", "citifinancial.in" and "citigroup.in" with one of the accredited Registrars, namely, Net4India, appointed by the National Internet Exchange of India (NIXI) as early as January 28, 2005. However, the plaintiffs were shocked to learn that the defendants had applied for and were granted the domain name "citi.in", though the defendants had not launched any website for the said domain name. The plaintiffs accordingly instituted the above suit.

(3.) Defendants have filed the present application for rejection of the above plaint in view of the subsequent development relating to establishment of .In Domain Name Disputes Resolution Policy (hereinafter referred to as INDRP) for adjudication of all disputes arising out of the registration and use of .in Internet Domain Name. The contention of the defendants is that with the formulation of the INDRP, the present proceedings are liable to be terminated as the subject matter of suit is covered by the said Policy (Annexure-A to the application) and the Rules framed thereunder. As such, the suit be dismissed as no longer maintainable in view of the provisions contained in Section 2(2) and 5 of the Arbitration & Conciliation Act, 1996 read with Section 9 of the Code of Civil Procedure.