BADAR DURREZ AHMED, J.

( 1. ) This order shall dispose of LA. No.6678/05 and LA. 9942/05. In the former application the plaintiff has sought ad interim ex parte injunction restraining the Defendant No.1 from using the Plaintiffs trademark VIAGRAas also ad interim ex parte injunction restraining the Defendant No.l from selling, alienating, transferring to any third party the domain name viagra.inand the URLwww.viagra.inas well as ad interim ex parte injunction restraining defendant No.2 from permitting / accepting such sale, transfer or alienation by the defendant No.1. The latter application filed by the plaintiff carries the prayer that the Defendant No.2 be directed to transfer the domain name viagra.into the plaintiff during the pendency of this suit subject to the condition that in the event the suit is decided against the plaintiff and in favour of the Defendants, the plaintiff would forthwith take all steps to retransfer the domain name viagra.into the Defendant No.1. Additionally, the learned senior counsel, Mr Sudhir Chandra, appearing on behalf of the plaintiff stated at the Bar that in case the suit was to be decided against the plaintiff then the plaintiff would pay for all the costs and expenses for the use of the domain name viagra.induring the pendency of these proceedings and also suitably compensate the defendant No.l for such user as may be determined by the Court.

( 2. ) Arguing both the applications together Mr Sudhir Chandra pointed out that the domain name viagra.com already stands registered in the name of the Plaintiff and that the Plaintiff also possesses further domain name registrations, all of which prominently involve the Plaintiffs trademark VIAGRA. He pointed out by reading the documents downloaded from the .INRegistery website that .IN is Indias top-level domain on the Internet. Like .COM, .IN can be used for e-mail, websites and other applications. But, unlike other domains .IN is a unique symbol of India and its role in the world. He pointed out that the procedures for registering the .IN names were indicated in the Policy Framework and Implementation which was brought out by the Government of India, Ministry of Communication and Technology, Department of Information Technology on 28.10.2004.

( 3. ) Mr Sudhir Chandra, referring to various paragraphs of the plaint, indicated that Viagra is a synthetic compound used to enhance male potency and that the Plaintiff is the owner of the mark-VIAGRA. He submitted that the word Viagra finds place in the Oxford English Dictionary which defines it as a synthetic compound used to enhance male potency. The dictionary also describes it as a trade mark. He further submitted that there is no doubt that the plaintiff (Pfizer) has registered this trade mark qua this product in 147 countries. He further pointed out that an application for registration of this mark in India has also been made and the same is pending. He pointed out that this product has been launched in India on 13.12.2005, shortly after the filing of the present suit. It is important that domain names bearing the said mark Viagra are available to the plaintiff for responding to various queries regarding the product as well as for facilitating commercial transactions on the Internet which has grown substantially in the last few years. He submitted that just as businesses have physical addresses on the terrestrial map from where they conduct business, they also have addresses in cyber-space. There addresses are what are known as domain names. Because of the burgeoning of e-commerce on the Internet, domain names are of grea importance to companies doing business in the modern world. He referred to the decision of a single Judge of this Court in Eicher Limites v. Web Link India: 2002 (25) PTC 322 (Del) [LQ/DelHC/2002/1108] In that case, the plaintiff (Eicher Limited) was the owner of the trade mark EICHER. The defendant had registered the domain name eichertractors.comin their name althoucer they had nothing to do with EICHER or eicher tractors. Initially, an injunction application under Order 39 Rules 1 and 2 was filed in that case and the same had been granted and thereafter an application for transfer of the domain name to the plaintiff had been made. While considering the application, this Court observed as under:

8. Thus the settled position which emerges is that a domain name is of vast importance and is a valuable asset. It is more than an internet address and is entitled to equal protection as a trade mark, and passing off action is maintainable against a provider of service through internet who infringes upon the rights of another service provider.

9. The domain name eichertractors.comgot registered by the defendants, on being used by customers, is bound to cteate confusion as it would take the users to the defendants website which has nothing to do with the plaintiffs goods or business. By getting the aforesaid domain name registered, the defendants have created confusion in the minds of the users as they would take the website of the defendant as that of the plaintiff. In the given facts of this case, the present suit for passing off is maintainable against the defendants.

The Court found that the plaintiffs had made out a prima facie case for the transfer of the domain name in their favour particularly, in view of the fact that the plaintiffs were willing to give an undertaking to the effect that the domain name eichertractors.com, if transferred to them, would be re-transferred to the defendants in the event of plaintiffs not succeeding in the suit. Accordingly, it was directed that the domain name be transferred to the plaintiff during the pendency of the suit. Mr Sudhir Chandra seeks a similar relief.

( 4. ) He also relied upon the decision reported in Acqua Minerals Limited Vs. Pramod Borse and Anr.: 2001 PTC 619 (Del) and Pen Books Pvt. Ltd. Vs. Padmaraj, Emily Estate, Kalpatta: 2004 (29) PTC 137. [LQ/KerHC/2004/217] In Acqua Minerals Limited (supra), a learned Single Judge of this Court held that a registered domain name has the same protection as any trade name or trade mark. Although this decision is not quite applicable to the present factual matrix, there are some observations with regard to the meaning of the words domain name which would be of some relevance. They are:-

15. The word domain as per Chambers 21 Century dictionary means a territory owned or ruled by one person or Government. Websters dictionary defines it in various contexts as under:- 1). A field of action, thought, influence; 2). The territory governed by a single ruler or Government; 3). Region characterised by a specific feature. 4). Law; 5). Land to which their superior title and absolute ownership.

16. Thus, in common parlance any title or name or mark or brand or identity in any field of activity or a trade name over which a particular individual has the exclusive, prior and lone claim is the domain name or trade mark for any kind of activity, Trade mark is at par with a territory and the owner of any trade mark is placed in the same position as owner of a territory.

17. If an owner or possessor of a trade mark has prior and exclusive use and tone claim over the trade mark, he attains not only superior title but absolute ownership thereof. This is what is the genesis of the word domain and when the property or the territory or the activity relates to a trade or commerce and has been given the name or mark under which the commercial activities are identifiable with and carried out under the said name the user or owner thereof has a domain over it and therefore such a domain name has the same protection as any trade name has been provided under the Trade and Merchandise Marks Act, 1958.

18. Any person who traverses into others territory, that is, tries to usurp his domain name or in other words trade name which is used in the course of a trade is guilty of infringement of the said name if it is registered and if not is liable for passing off action. 19. With the advancement of internet communication the domain name" has attained as much legal sanctity as a trade name. Since, the services rendered in the internet are crucial for any business the domain name needs to be preserved so as to protect such provider of services against anyone else trying to traffic or usurp the domain name.

( 5. ) In Pen Books Pvt Ltd (supra), a learned single Judge of the High Court of Kerala was considering, in appeal, the question of ad interim injunction. The Plaintiff / Appellant (Pen Books Pvt Ltd) had brought the Suit (and the appeal) against Padmaraj for permanent injunction and for transfer of the domain name penbooks.com which the defendant (Padmaraj) had managed to get registered in his name with the registering authority (Inter Network Information Centre and/ or Network Solutions Inc.) in the United States of America. The Plaintiff (Pen Books Pvt Ltd) had initially registered the domain name penbooks.com in 1999 but, due to some technical snags could not launch the website. The validity period of registration of the said domain name expired on 02.03.2001, When the Plaintiff sought to launch the website again in 2002, it found that the domain name penbooks.com stood registered in the name of the defendant (Padmaraj) and it was advertised on the Internet for sale. The court found such a registration in the name of the defendant (Padmaraj) to be an abusive registration of domain name in violation of the rights of trademark and service marksof the plaintiff amounting to, what is popularly known as, Cyber Squatting. Considering the Uniform Domain Name Disputes Resolution Policy, the court found that the domain name having been registered by the defendant for the purpose of selling or transferring the same was to be treated as having been registered in bad faith. The court, therefore, restrained the defendant (Padmaraj), by an order of temporary injunction from using the domain name www.penbooks.comor from offering the said domain name for sale or from alienating it to any other persons. Of course, in the present case, Mr Sudhir Chandra, the learned senior counsel for the plaintiff, is asking for not only such an injunction but, something more. He wants a transfer of the domain name Viagra.inin favour of the plaintiff during the pendency of the suit.

( 6. ) He referred to various print outs from the website of the .INRegistry. First of all, he pointed out that the process of applications for registration of .IN domain names were divided into two periods. The first period being a Sunrise periodto enable registered trademark owners, registered companies and owners of intellectual property having a legitimate interest in protecting their brands to secure registration of their Domain Names after verification. These Sunrise applications were to open on 1.1.2005 upto 21.1.2005. The other period which pertained to applications from the general public was to commence on 16.2.2005. For the purposes of registering domain names the .INRegistry provided a list of accredited authorized Registrars. DirectI is one such accredited Registrar. The accredited registrars are permitted to appoint authorised resellers. Defendant No.1 is an authorized reseller of the said accredited registrar-DirectI. The INRegistry brought out an Advisory (No.LA 01) on 15.02.2005 in respect of Sales of .IN names by Registrars. The Advisory was directed against any sort of hoarding, auctioning or selling of the .IN domains at prices higher than they usually charge from their customers. The Registrars were advised through this advisory to desist at all times, from involving themselves or through their re-sellers, in any way in the squatting, grabbing, hoarding, auctioning or selling of the .IN domain names at a higher price than they are regularly charging from the public. Any such involvement of the Registrar would lead to termination of Accreditation, financial penalty and any other legal action as provided under the laws of India.

( 7. ) It is also interesting to note that the .IN Registry had formulated a scheme for dispute resolution with regard to .IN domain names and this was known as the .IN Domain Name Dispute Resolution Policy (INDRP). As per Paragraph 4 of the INDRP 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 premises indicated therein. It would be relevant to set out the entire paragraph 4 of the INDRP as it would have been some bearing on the decision of this case: -

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 domain name is identicai 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 Registrants 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, in compliance with this Policy and Rules thereunder.

( 8. ) Paragraph 6 of the INDRP pertains to Evidence of Registration and use of Domain Name in Bad Faithand it provides as under:-

6. Evidence of Registration and use of Domain Name in Bad Faith For the purposes of Paragraph 5(iii), the following circumstances, in particular but without limitation, if found by the Arbitrator to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the Registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, who bears the name or is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of the Registrants documented out-of-pocket costs directly related to the domain name; or (ii) the Registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Registrant has engaged in a pattern of such conduct; or (iii) by using the domain name, the Registrant has intentionally attempted tq attract Internet users to the Registrants website or other on-line location, by creating a likelihood of confusion with the Complainantname or mark as to the source, sponsorship, affiliation, or endorsement of the Registrants website or location or of a product or service on the Registrant website or location.

(underlining added)

( 9. ) It was pointed out by Mr Sudhir Chandra that although the policy of dispute resolution has been indicated, the same has not been put in place as yet. To establish this, he has placed before me a print out taken on 18th December, 2005 of the web page http://www.inregistry.in/policies/dispsute_resolution/ The web page makes it clear that:- in an upcoming announcement, the .IN Registry will publish the list of Arbitrators who will examine INDRP cases. Until such time as arbitrators are named, the INDRP is for information only, and the .IN Registry will not accept any dispute filings. The .IN Registry is publishing the Policy and Rules now so that registrars and registrants can examine them, and begin preparing complaints if they wish. Thus, according to Mr Sudhir Chandra, this dispute with respect to the domain name ought to have gone before the Arbitrators under the INDRP but, as the system is not in place, the plaintiff has been constrained to approach this Court.

( 10. ) The Learned counsel for defendant No.1, however, submitted that as indicated above, there were two periods prescribed for registration for .IN domain names. The first period was termed as the Sunriseperiod during which registered trademark owners, registered companies and owners of intellectual property having a legitimate interest in protecting their brands were given first preference to select domain names which were suitable or connected with their businesses and products. She submitted that the plaintiff was aware of the scheme but did not apply for any such registration during the Sunrise period. She then referred to the document titled .IN INTERNET DOMAIN NAME Policy Framework and Implementation"published by the Government of India, Ministry of Communications and Information Technology, Department of Information Technology (www.mit.gov.in and nixi.org) on 28.10.2004. In particular, she referred to Clause 3.4.7 thereof, which provided that trade mark owners, registered companies and owners of intellectual property have a legitimate interest in protecting their brand and that in the Internet domain and that this is achieved by having a Sunrise Periodduring which genuine registrations with proper verification will be allowed as per the policy for these registrations, with first preference given to Indian entities. Thereafter, that is, after the Sunrise Period, the registrations were open to public on first come first servedbasis. She also pointed out that the .IN Registry itself was not required to carry out registrations but the same were to be done through the accredited registrars appointed by it. DirectI being an accredited Registrar had appointed defendant No.1 as a reseller. The defendant No.l had, on behalf of its customer one Mr Mubashir Patel, applied for the domain name viagra.inunder the general category upon the commencement of the registration for the general public on 16.02.2005. Referring to the WHOIS search conducted for Viagra.inon the IN Registry Website (www.inregistry.in), she pointed out that the domain name viagra.in was created on 16.2.2005 at 06:32:30 UTC. The sponsoring registrar for this domain name is shown to be DirectI.com (R5-AFIN)and the name of the registrant is disclosed as Mr. Altamash Khan(Defendant No.1). The status of this domain name is shown as a" INACTIVE. She further submitted that the Domain name Viagra.inwas registered by the defendant No.1 for and on instructions from its customer, Mr Mubashir Patel, upon receipt of the requisite fees for registering the domain name. She stated that the defendant No.1 does not have anything to do with the domain name viagra.in except that the domain name is initially registered through defendant No 1. as a reseller of the domain name. She also pointed out that it is not as if the plaintiff did not get any domain name registered under the domain .IN inasmuch as the plaintiff has been able to get the domain name viagra.co.in registered in its name through the Sponsoring Registrar: Online Nic (R8-AFIN)though, under the general category and not under the Sunrise Policy. This domain name was also created on 16.2.2005 though at 07:55:02 UTC. It is further submitted by her that there is another domain name viagra.gen.inbut that is registered in the name of another registrant - Jumar Hakvaf through DirectI.Com (R5-LRMS)as the sponsoring Registrar. According to her, this clearly shows that these domain names were all open to the public and the defendant No.1 on behalf of its customer and acting merely as an authorized reseller registered the domain name for the purpose of resale and, therefore, no order of injunction or order directing the respondent/defendant to transfer the said domain name ought to be passed.

( 11. ) Having considered the rival submissions made by the learned counsel for the parties, it is apparent, prima facie, that the plaintiff (Pfizer Products Inc ) is the owner of trade mark VIAGRA which is registered in 147 countries. It is also an admitted position that the plaintiff has applied for registration in India of this trade mark although according to the learned counsel for defendant No.1 the same is under opposition. The submission made by the learned counsel for the defendant that the plaintiff not having availed of the Sunrise period cannot now seek an order injuncting defendant No. 1 from using or selling the domain name viagra.in, is not quite tenable. The reason for this is that the Sunrise periodwas for those persons who had registered trade marks in India. The plaintiff, at that point of time and even today, did not have a registered trade mark in India in respect of VIAGRA. Its application for the same is pending. Therefore, the plaintiff could not have availed the preference given under the Sunrise policy. It is for this reason that the plaintiff chose to apply for the domain name viagra.co.in under the open category which was open to public on a first come first servedbasis. The plaintiff was fortunate to get the registration in respect of viagra.co.in. However, insofar as viagra.in is concerned, it seems that the defendant No.1 was very quick to act and he got the same registered in his name within two minutes and thirty two seconds of the opening of the domain name registration on 16.2.2005. The position is this: while the plaintiff has been able to get the domain name viagra.co.inregistered in its name, the defendant No.l has beaten it, under the first come first served policy, insofar as the domain name viagra.inis concerned., The question that needs to be answered is this a" Is the Plaintiff entitled to an ad interim injunction and / or ad interim order directing the transfer of the domain name viagra.into the Plaintiff In my view, it is so entitled. There are several reasons for this.

( 12. ) Firstly, the admitted position is that the product viagra belongs to the plaintiff. The plaintiff has registered the trade mark VIAGRA in 147 countries. Its application for registration of the trade mark in India is pending. There is also no doubt that the plaintiff has spent a lot of time, money and effort in developing the product and the trade mark VIAGRA not just in a few countries but worldwide. It can be said with a great degree of certainty that the plaintiff as registered owner of the trade mark VIAGRA in 147 countries and as registered owner of the .com domain namea"www.viagra.com and as an applicant for registration of the said trade mark in India does have a legitimate interest in protecting its brand.

( 13. ) Secondly, the defendant No.1 does not have any interest in the domain name viagra, ina part from putting it up for sale. Neither the defendant No.1 nor its so-called customer have any right to the product VIAGRA. Nor do they make any such claim. It is apparent that the sole object of the defendant No.l for applying for the domain name viagra.inwas its sale to an interested party. If the sale in such a situation was to be for valuable consideration in excess of the registrants documented out-of-pocket costs directly related to the domain name, it would be evidence of the registration being in bad faith as envisaged in paragraph 6 of the INDRP. If not, in any event, the domain name viagra.inis, if not identical, confusingly similar to the trade mark VIAGRA and the domain name viagra.comof which the plaintiff is the proprietor. And, to make matters worse for the defendant No.1, it has no right or legitimate interest in respect of the domain name viagra.in.

( 14. ) Thirdly, the domain name viagra.inis inactive. On the one hand, the plaintiff, having recently launched its product VIAGRA in India, is itchingto put up a web presence with all the .IN names to coincide with the said launch, on the other hand, the defendant No.1 having got the registration of the domain name viagra.in is simply sitting prettyas it were waiting for a suitor, may be the plaintiff or a competitor of the plaintiff, to take its hand but, for a price ! In other words, the conduct of the defendant No.1 is nothing but of cyber squattinga"squatting on an address in cyber space over which the rights and interests of the plaintiff far outweigh those, if at all, of the defendant No.1.

( 15. ) Fourthly, if the domain name viagra.inwere directed to be transferred to the plaintiff even during the pendency of the suit, no serious prejudice or irreparable damage would be caused to the defendant No.1. Admittedly, the defendant No.1 has registered the domain name for sale and not for launching its own website. He can easily be compensated in terms of money in the event the suit is decided in his favour. On the other hand, depriving the plaintiff from using the domain name viagra.inwould result in serious injury in the shape of lost opportunities of commerce, development of the product, interaction with internet users which may not be possible to quantify in terms of money.

( 16. ) Thus, the plaintiff has a strong prima facie case. The balance of convenience is also in its favour. Therefore, it is entitled to an order directing the defendant No.2 to transfer the domain name viagra.into the plaintiff subject to the final decision in the suit and upon the condition that, in case the suit is decided against the plaintiff and in favour of the defendant No.1, the domain name viagra.inshall be re-transferred to the defendant No.1 and the plaintiff would be liable to the defendant No. 1 for the use of the said domain name and shall suitably compensate the defendant No.1 as may be determined by the court. It is so ordered. It is also directed that, simultaneous to the transfer of the domain name viagra.into the plaintiff, the plaintiff shall reimburse the defendant No.1 the costs and expenses incurred by the defendant No.1 in obtaining the registration of the said domain name in his name. The parties shall comply with this order within two weeks. Both the applications stand disposed of.