Nowadays, many companies are setting up websites to create an online presence. However, quite often, a company looking to use its trademark as a domain name will find that another entity owns/uses that domain name. In such cases, complaints can be filed at the Indian Domain Name Dispute Resolution Policy (INDRP), wherein an arbitrator resolves such disputes.

The same incident occurred with ThoughtWorks, a U.S-based company founded in 1993. ThoughtWorks claimed that in March, 2015, they became aware the domain name ‘ThoughtWOrks.in’ was registered by another company, Super Software, when a ThoughtWorks analyst accessed Super Software’s website after mistaking it to be ThoughtWorks Inc.’s website. Subsequently, ThoughtWorks had filed an INDRP complaint in order to recover the domain name ‘thoughtworks.in’ from. However, in their defence, Super Software claimed that the ‘ThoughtWorks’ trademark was generic in nature, and hence they did not infringe on any existing trademark or copyright. Further, Super Software pointed out that it had registered the domain prior to the complaint and that ThoughtWorks had not registered that domain even though it had been available for a long time.

In this case, the INDRP Arbitrator denied ThoughtWorks’ complaint due to various reasons. The Arbitrator stated that ThoughtWorks was not able to provide sufficient evidence regarding its incorporation and the registration of its trademarks. Further, the Arbitrator mentioned that the addresses of the entities that owned the trademarks were different. The Arbitrator also mentioned that ThoughtWorks had not objected when Super Software registered the domain of ‘thoughtworks.in’.

ThoughtWorks challenged the arbitral award, and won the case when it was brought before the Delhi High Court. The Delhi High Court found that the Arbitrator’s proceedings were in violation of the principles of natural justice. Further, the Delhi High Court reversed the decision of the Arbitrator by highlighting the fact that since the domain mark included the entire name of the US Company, it is obvious that the trademark most definitively belonged to ThoughtWorks, and that it was deceptively similar to the company’s name.

The case file of ThoughtWorks Inc vs Super Software Pvt Ltd. & Anr can be found here. 

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