O.M.P. (COMM)/188/2019 of MICROSOFT CORPORATION Vs ZOAI FOUNDER

*IN THE HIGH COURT OF DELHI AT NEW DELHI

Decided on: 03.07.2023

+O.M.P. (COMM) 188/2019 & I.A. 6764/2019

MICROSOFT CORPORATION

..... Petitioner

Through:Mr. Ashim Sood, Ms. Anditya,Ms. Jasleen Kaur, Advocates.versus

ZOAI FOUNDER

..... Respondent

Through:Mr.VishalBakshi,Ms.Kanchan Vashisht, Mr. PradeepShukla, Advocates.

%CORAM:HON’BLE MR. JUSTICE PRATEEK JALANJ U M N T

1.By way of this petition under Section 34 of the Arbitration andConciliation Act, 1996 [“the Act”], the petitioner challenges an awarddated 18.02.2019, rendered by learned sole Arbitrator under the “.INDomain Name Dispute Resolution Policy” [hereinafter referred to as“the INDRP”]. By the impugned award, the learned Arbitrator hasdeclined the petitioner’s claim for transfer of the disputed domainname- https://zoai.in/ by the respondent to it.

A. Facts:

2.The petitioner claims to have diverse products and services,including computer software, computer services, devices, and other

Signature Not Verified

technological solutions, for which it is the owner of varioustrademarks, including the trademark “Zo”. It claims to have launchedan artificial intelligence chatbot in December, 2016, named “Zo”.

3.The petitioner, therefore, made complaint before the NationalInternet Exchange of India [hereinafter referred to as “NIXI”] againstthe registration of the disputed domain name by the respondent. Thedispute was to be resolved by an arbitrator appointed by NIXI, interms of the INDRP. By communication of the NIXI dated31.12.2018, Mr. Ankur Raheja was appointed as the Arbitrator toadjudicatedisputesrelatingtothedisputeddomainname-https://zoai.in/.

4.The respondent did not enter appearance in the arbitralproceedings, and was set ex-parte by the order of the learnedArbitrator dated 24.01.2019. The impugned award records that nopersonal hearing was requested or held.

5.The learned Arbitrator thereafter made the impugned award,rejecting the petitioner’s claims.

B. Submissions of learned counsel for the parties:

6.At the outset, Mr. Ashim Sood, learned counsel for thepetitioner, accepted that the present arbitral proceedings constitute an“International Commercial Arbitration”[1], as the petitioner is an entityincorporated outside India. He, therefore, proceeded on the basis thatthe ground of patent illegality, available under Section 34(2A) of theAct, is not available to the petitioner. He, however, urged thefollowing arguments in support of his contention that the impugned

1 As defined under Section 2(1)(f) of the Act.

Signature Not Verified

award is liable to be set aside on the grounds enumerated in Section34(2) of the Act:-

A. Mr. Sood submitted that the impugned award is vitiated by biason the part of the learned Arbitrator, for which purpose hereferred to web page entitled “Hall of Fame” on the websitewww.indrp.com[2]. Mr. Sood submitted that the aforesaid webpage has, in fact, been established, and is maintained by thelearned Arbitrator. He drew my attention to the fact that thename of the learned Arbitrator himself appears in the “Hall ofFame” in the category of “Arbitrators who have denied mostINDRP complaints: 4(four)”[3]. According to Mr. Sood, such acommentbythelearnedArbitratorshowsadistinctpredisposition to deny INDRP complaints, such as the one madeby the petitioner. In support of this submission, Mr. Sood citedthe judgments of the Supreme Court in State of West Bengaland Others vs. Shivananda Pathak and Others[4], and VoestalpineSchienen GmbH vs. Delhi Metro Rail Corporation Limited[5].on the part of the learned Arbitrator, for which purpose hereferred to web page entitled “Hall of Fame” on the websitewww.indrp.com[2]. Mr. Sood submitted that the aforesaid webpage has, in fact, been established, and is maintained by thelearned Arbitrator. He drew my attention to the fact that thename of the learned Arbitrator himself appears in the “Hall ofFame” in the category of “Arbitrators who have denied mostINDRP complaints: 4(four)”[3]. According to Mr. Sood, such acommentbythelearnedArbitratorshowsadistinctpredisposition to deny INDRP complaints, such as the one madeby the petitioner. In support of this submission, Mr. Sood citedthe judgments of the Supreme Court in State of West Bengaland Others vs. Shivananda Pathak and Others[4], and VoestalpineSchienen GmbH vs. Delhi Metro Rail Corporation Limited[5].

B. Mr. Sood referred to paragraphs 7(ii)(E), 7(ii)(F) and 7(ii)(H) ofthe impugned award to submit that the learned Arbitrator hadundertaken independent research, both on factual and legalaspects, to meet the case made out by the petitioner, even in theabsence of the respondent. He submitted that these materialswere never put to the petitioner, which rendered it effectivelythe impugned award to submit that the learned Arbitrator hadundertaken independent research, both on factual and legalaspects, to meet the case made out by the petitioner, even in theabsence of the respondent. He submitted that these materialswere never put to the petitioner, which rendered it effectively

2 Refer page No. 368 of the petitioner’s list of documents.

3 Ibid. Ibid.

4 (1998) 5 SCC 513 [paragraphs 26, 29 and 30].

5 (2017) 4 SCC 665 [paragraph 20].

Signature Not Verified

unable to present its case, contrary to Section 34(2)(a)(iii) of theAct. On this aspect, Mr. Sood placed reliance upon thejudgment of the Supreme Court in Ssangyong Engineering andConstructionCompanyLimitedvs.NationalHighwaysAuthority of India (NHAI)[6], the judgment of Division Benchof the Madras High Court in M/s. Tribol Engineering Pvt. Ltd.vs. Indian Oil Corporation Ltd. & Others[7], and of the HighCourt of Justice, England and Wales, in Fleetwood WanderersLimited vs. AFC Fylde Ltd[8].

C. Mr. Sood submitted that the impugned award was uploaded bythelearnedArbitratoronthesitewww.indrp.comon20.02.2019[9], even prior to its publication by NIXI. In thisregard, hereferred to communication of NIXI dated21.02.2019[10], which stated that the award dated 18.02.2019 hadbeen uploaded, but submitted that it had not, in fact, beenuploaded at that stage.thelearnedArbitratoronthesitewww.indrp.comon20.02.2019[9], even prior to its publication by NIXI. In thisregard, hereferred to communication of NIXI dated21.02.2019[10], which stated that the award dated 18.02.2019 hadbeen uploaded, but submitted that it had not, in fact, beenuploaded at that stage.

D. Mr. Sood submitted that the learned Arbitrator has proceededdirectly contrary to binding judgment of co-ordinate Benchof this Court in Stephen Koenig vs. Arbitrator, National InternetExchange of India (NIXI) & Another[11]on an interpretation ofparagraph 4 of the INDRP, which deals with the pre-requisitesdirectly contrary to binding judgment of co-ordinate Benchof this Court in Stephen Koenig vs. Arbitrator, National InternetExchange of India (NIXI) & Another[11]on an interpretation ofparagraph 4 of the INDRP, which deals with the pre-requisites

6 (2019) 15 SCC 131 [paragraph 52].

7 (1998) (III) CTC 385 [paragraphs 43-48].

8 [2018] EWHC 3318 (COMM).

9 Refer page No. 365 of the petitioner’s list of documents.

10 Refer page No. 366 of the petitioner’s list of documents.

11 (2012) 186 DLT 43.

Signature Not Verified

for an action thereunder[12]. Mr. Sood submitted that this Courthas interpreted paragraph 4 of the INDRP to suggest thatsatisfaction of paragraph 4(a) is itself sufficient for grantingrelief to complainant, whereas the learned Arbitrator haswithheld relief on an interpretation that paragraphs 4(a), (b) and(c) thereof must cumulatively be satisfied. He points out that theimpugned award contains finding in favour of the petitionerwith regard to paragraph 4(a) of the INDRP.

7.Mr. Vishal Bakshi, learned counsel for the respondent, on theother hand, submitted that none of the grounds raised by the petitionerrequire setting aside of the award by the Court under Section 34(2) ofthe Act. On each of the arguments enumerated above, Mr. Bakshisubmitted as follows:-

A. Mr. Bakshi submitted that the comments of an arbitrator on awebsite, which may have been made even after the award waspronounced, cannot justify the setting aside of an award on theground of bias. He disputed Mr. Sood’s characterization of the“Hall of Fame” on the learned Arbitrator’s website as evidenceof predisposition or propensity to decide against the petitioner.He relied upon paragraph 30 of the judgement of the SupremeCourt in Shivananda Pathak[13]to urge that the aforesaidcomment by the learned Arbitrator can, at best, be taken as awebsite, which may have been made even after the award waspronounced, cannot justify the setting aside of an award on theground of bias. He disputed Mr. Sood’s characterization of the“Hall of Fame” on the learned Arbitrator’s website as evidenceof predisposition or propensity to decide against the petitioner.He relied upon paragraph 30 of the judgement of the SupremeCourt in Shivananda Pathak[13]to urge that the aforesaidcomment by the learned Arbitrator can, at best, be taken as 12 The judgment of the learned Single Judge was sustained by the Division Bench in StephenKoeing vs. Arbitrator NIXI & Another (2015) 224 DLT 407 (DB). The judgment of the DivisionBench was carried in appeal in Special Leave Petition (Civil) No 6170/2016, However, theSupreme Court, vide an order dated 11.04.2016, declined special leave to appeal.13 Supra (note 4).Koeing vs. Arbitrator NIXI & Another (2015) 224 DLT 407 (DB). The judgment of the DivisionBench was carried in appeal in Special Leave Petition (Civil) No 6170/2016, However, theSupreme Court, vide an order dated 11.04.2016, declined special leave to appeal.13 Supra (note 4).

Signature Not Verified

general view on law or policy, and does not evidence bias in agiven case.

B. Mr. Bakshi submitted that the proceedings in an arbitration arenot required to be conducted in the same manner as in Courts,and the reliance of the Arbitrator upon material which waspublicly available by means of Google search ought not to beproscribed. He argued that the petitioner’s allegation is basedupon findings in the impugned award with regard to the genericnature of the petitioner’s mark “Zo”, and lack of popularity ofthe brand in India. These facts were required to establish twoelements of the test under Rule 4 of the INDRP, viz. theregistrant’s legitimate interest in the domain name and thequestion of bad faith in the registration, the onus of proof onboth these points being on the petitioner. According to Mr.Bakshi, even in the petition under Section 34 of the Act, thefactual findings of the learned Arbitrator on these points havenot been disputed, which makes it clear that the petitioner was,in fact, not prejudiced as the Arbitrator’s research had no effecton the outcome of the proceedings. To this extent, Mr. BakshidistinguishedthejudgmentinSsangyong[14],andinsteadcommended the approach laid down by the Supreme Court inState of U.P. v. Sudhir Kumar Singh[15].not required to be conducted in the same manner as in Courts,and the reliance of the Arbitrator upon material which waspublicly available by means of Google search ought not to beproscribed. He argued that the petitioner’s allegation is basedupon findings in the impugned award with regard to the genericnature of the petitioner’s mark “Zo”, and lack of popularity ofthe brand in India. These facts were required to establish twoelements of the test under Rule 4 of the INDRP, viz. theregistrant’s legitimate interest in the domain name and thequestion of bad faith in the registration, the onus of proof onboth these points being on the petitioner. According to Mr.Bakshi, even in the petition under Section 34 of the Act, thefactual findings of the learned Arbitrator on these points havenot been disputed, which makes it clear that the petitioner was,in fact, not prejudiced as the Arbitrator’s research had no effecton the outcome of the proceedings. To this extent, Mr. BakshidistinguishedthejudgmentinSsangyong[14],andinsteadcommended the approach laid down by the Supreme Court inState of U.P. v. Sudhir Kumar Singh[15].

C. Mr. Bakshi submitted that the petitioner has failed to establishthat the learned Arbitrator had, in fact, uploaded the award priorthat the learned Arbitrator had, in fact, uploaded the award prior

14 Supra (note 6).

15 2020 SCC OnLine SC 847 [paragraph 36, 37 and 39]

Signature Not Verified

to its publication by NIXI. He submitted that the award was sentto the parties on 18.02.2019 itself.

D. With regard to Mr. Sood’s submission on the interpretation ofClause 4 of the INDRP, Mr. Bakshi submitted that such an errordoes not meet the threshold for challenge of an award in aninternational commercial arbitration. He pointed out that themisinterpretation of the Rules would, at best, constitute anillegality in the award, which is not capable of challenge underSection 34(2) of the Act.

8.In rejoinder, Mr. Sood submitted that the test of prejudicecannot be precondition in the face of Section 18 of the Act, whichincorporates statutory mandate that parties must be given areasonable opportunity of hearing. It is that statutory mandate which,according to Mr. Sood, has been upheld in Ssangyong[16]. Mr. Sood alsocited the decision of the Supreme Court in T. Takano v. SEBI[17]tosubmit that, in such circumstances, the test to be applied is as towhether the material discovered by the learned arbitrator was relevantto his adjudication, rather than test of prejudice alone.

C. Analysis:

I. Re: Challenge on the ground of bias:

9.The assertion of the petitioner is that impugned award is vitiatedby bias, as revealed by the insertion of the learned Arbitrator’s name

16 Supra (note 6).17 (2022) 8 SCC 162.

Signature Not Verified

in the “Hall of Fame” on the website www.indrp.com. This is evidentfrom the following screenshot:-

10.As there was some ambiguity as to the petitioner’s assertionwith regard to the learned Arbitrator’s links with this website, by anorder dated 16.01.2023, notice was issued to the learned Arbitrator tostate as to whether he is, or was, at any point of time, associated withthe said website. The learned Arbitrator has filed an affidavit dated10.02.2023, in which he has categorically stated that the domain name“www.indrp.com” is owned by him since the time before he wasempaneled as an arbitrator with NIXI. He has stated the reasons forwhich he developed the said website in his affidavit, but those are notrelevant to the present dispute. Although the learned Arbitrator hasfiled 20-page affidavit, which is not confined to the questionsindicated in the order dated 16.01.2023, he has not dealt with theallegation of bias premised upon the “Hall of Fame”. As the learnedArbitrator has himself accepted his ownership of the website, it is notnecessary to deal with the documents placed on record for this purpose

Signature Not Verified

by the petitioner, and I proceed on the basis that the learnedArbitrator’s authorship of the contents of the website are established.11.In adjudicating claim of bias against an arbitrator, the Courtmust tread carefully. The independence and impartiality of thearbitrator is undoubtedly central to the very integrity of the arbitralprocess, but claims of bias must be carefully scrutinised to avoidmisuse at the hands of an unsuccessful litigant. The followingprinciples provide guidance as to the approach to be employed todetermine such challenge: -

A. The inviolable requirement of independence and impartiality inarbitral decision making have been emphasised by the SupremeCourt inter alia in Voestalpine[18]and Jaipur Zila DugdhUtpadak Sahkari Sangh Limited v. Ajay Sales & Suppliers[19].arbitral decision making have been emphasised by the SupremeCourt inter alia in Voestalpine[18]and Jaipur Zila DugdhUtpadak Sahkari Sangh Limited v. Ajay Sales & Suppliers[19].

B. In several judgments, the Supreme Court has also held that this”[20]”[20]is an aspect of “public policy.

C. The Supreme Court has drawn distinction between the “actualbias” test and “apparent bias” test in Ranjit Thakur vs. Union ofIndia[21], in the following terms:bias” test and “apparent bias” test in Ranjit Thakur vs. Union ofIndia[21], in the following terms:

“17. As to the tests of the likelihood of biaswhat is relevant is thereasonableness of the apprehension in that regard in the mind ofthe party. The proper approach for the Judge is not to look at hisown mind and ask himself, however, honestly, “Am I biased?”; butto look at the mind of the party before him.”[22]

18 Supra (note 5) (paragraphs 20, 21 at page Nos. 687-688).

19 2021 SCC OnLine SC 730 (paragraph 17).

20 For example, Ranjit Thakur vs. Union of India (1987) 4 SCC 611 (paragraphs 17 and 18) andState of Punjab vs. Davinder Pal Singh Bhullar (2011) 14 SCC 770 (paragraph 31).State of Punjab vs. Davinder Pal Singh Bhullar (2011) 14 SCC 770 (paragraph 31).

21 (1987) 4 SCC 611.

22 Emphasis supplied.

Signature Not Verified

D. This has been explained further by the Supreme Court in Govt.of T.N. vs. Munuswamy Mudaliar[23], in the following terms:of T.N. vs. Munuswamy Mudaliar[23], in the following terms:

“12. Reasonable apprehension of bias in the mind of reasonablemancanbeagroundforremovalofthearbitrator.Apredisposition to decide for or against one party, without properregard to the true merits of the dispute is bias. There must bereasonable apprehension of that predisposition. The reasonableapprehension must be based on cogent materials.See theobservations of Mustill and Boyd, Commercial Arbitration 1982Edn., p. 214. Halsbury's Laws of England, 4th Edn., Vol. 2, para551, p. 282 describe that the test for bias is whether reasonableintelligent man, fully apprised of all the circumstances, would feel”[24]aserious apprehension of bias.

E. In Bihar State Mineral Development Corporation vs. EnconBuilders(I)(P) Limited[25], the Supreme Court held that actualbias would arise “where the decision-maker is shown to have aninterest in the outcome of the case.”[26]The Court cited thefollowing extracts from Russell on Arbitration, 22[nd]Edition:

“4.030. Actual and apparent bias.—A distinction is made betweenactual bias and apparent bias. Actual bias is rarely established, butclearly provides grounds for removal. More often there is asuspicion of bias which has been variously described as apparentor unconscious or imputed bias. In such majority of cases, it isoften emphasized that the challenger does not go so far as tosuggest that the arbitrator is actually biased, rather that some formof the objective apprehension of bias exists.

4.032. Pecuniary interest.—There is an automatic disqualificationfor an arbitrator who has direct pecuniary interest in one of theparties or is otherwise so closely connected with the party that cantruly be said to be judge in his own cause.

5.052. Impartial.—Section 33(1) of the Arbitration Act, 1996 statesthat the tribunal must act ‘impartially’. An arbitrator must also

23 1988 Supp SCC 651.

24 Emphasis supplied.

25 (2003) 7 SCC 418.

26 Ibid (paragraph 18 at page Nos. 423-424).

Signature Not Verified

appear impartial and if there arejustifiable doubts as to hisimpartiality this will provide ground for his removalby thecourt under Section 24(1)(a) of the Arbitration Act, 1996or maymean that the award can be challenged.”[27]

F. In Vinod Bhaiyalal Jain vs. Wadhwani Parmeshwari Cold

Storage (P) Limited[28], the Supreme Court held as follows:-

“9.In the ultimate analysis since we are not adverting to themerits of the claim and in that regard since, we have not advertedto the finding recorded by the learned arbitrator on the merits ofclaim we would not venture to examine with regard to the ultimateconclusion on the claim as to whether it is justified or not.However, in the above background, what is to be seen is that therehas been reasonable basis for the appellants to make claimthat in the present circumstance the learned arbitrator would notbe fair to them even if not biased.It could no doubt be only aperception of the appellants herein. Be it so,no room should begiven for even such feeling more particularly when in thematter of arbitration the very basis is that the parties get theopportunity of nominating Judge of their choice in whom theyhave trust and faith unlike in normal course of litigation wherethey do not have such choice.”[29]

12.In the course of arguments, Mr. Bakshi emphasized thedistinction between predisposition to particular legal view in amatter, and finding of bias. For this purpose, he drew my attention tothe judgments of the Supreme Court in Shivananda Pathak[30]and N.K.Bajpai vs. Union of India[31]. In the judgment in Shivananda Pathak[32],the Supreme Court held inter alia as follows:

27 Emphasis supplied.

28 (2020) 15 SCC 726.

29 Emphasis supplied.

30 Supra (note 4) (paragraph 30 at page No. 525).

31 (2012) 4 SCC 653 (paragraph 48 and 50).

32 Supra (note 4).

Signature Not Verified

“30. These remarks imply distinction between prejudging of factsspecifically relating to party, as against preconceptions orpredispositionsaboutgeneralquestionsoflaw,policyordiscretion. The implication is that though in the former case, ajudge would disqualify himself, in the latter case, he may not. Butthis question does not arise here and is left as it is.

xxxxxxxx

33. Bias, as pointed out earlier, is condition of mind and,therefore, it may not always be possible to furnish actual proof ofbias. But the courts, for this reason, cannot be said to be in acrippled state. There are many ways to discover bias; for example,by evaluating the facts and circumstances of the case or applyingthe tests of “real likelihood of bias” or “reasonable suspicion ofbias”. de Smith in Judicial Review of Administrative Action, 1980Edn., pp. 262, 264, has explained that “reasonable suspicion” testlooks mainly to outward appearances while “real likelihood” testfocuses on the court's own evaluation of the probabilities.”

In the judgment in N.K. Bajpai[33], the Supreme Court applied the “real

danger test” in the following terms:

“48 Bias must be shown to be present. Probability of bias,possibility of bias and reasonable suspicion that bias might haveaffected the decision are terms of different connotations. Theybroadly fall under two categories i.e. suspicion of bias andlikelihood of bias. Likelihood of bias would be the possibility ofbias and bias which can be shown to be present, while suspicion ofbias would be the probability or reasonable suspicion of bias. Theformer lead to vitiation of action, while the latter could hardly bethe foundation for further examination of action with reference tothe facts and circumstances of given case. The correct test wouldbe to examine whether there appears to be real danger of bias orwhether there is only probability or even preponderance ofprobability of such bias, in the circumstances of given case. If itfalls in the prior category, the decision would attract judicialchastisement but if it falls in the latter, it would hardly affect thedecision, much less adversely.

xxxx

50. The element of bias by itself may not always necessarily vitiatean action. The court would have to examine the facts of given

33 Supra (note 31)(It is stated in the reported judgment that paragraph 48 of the judgment wascorrected vide Official Corrigendum No. F.3/Ed.B.J./22/2012 dated 26-3-2012.)corrected vide Official Corrigendum No. F.3/Ed.B.J./22/2012 dated 26-3-2012.)

Signature Not Verified

case. Reverting to the facts of the present case, despite theirabsence from the object and reasons for the amendment of Section129(6) of the Customs Act it cannot be held that the element of biaswas presumptuous or without any basis or object. It may be one ofthe relevant factors which probably would have weighed in themind of the legislature. When you have been member of atribunal over long period, and other members have been your co-members whether judicial or technical, it is difficult to hold thatthere would be no possibility of bias or no real danger of bias.Even if we rule out this possibility, still, it will always be betteradvised and in the institutional interest that restrictions areenforced. Then alone will the mind of the litigant be free from alurking doubt of likelihood of bias and this would enhance theimage of the tribunal. The restriction, as already discussed, leavesthe entire field of legal profession wide open for the appellants and”all persons situated alike except to practise before CESTAT.

13.It emerges from these decisions that an award can be set asideon grounds of “apparent” bias, or propensity to decide one way ratherthan the other. While the test has been formulated in different ways inthe judgments, it is clear that the apprehension of bias has to be testedon the yardstick of reasonableness, as seen from the perspective of theaffected party. Any doubt regarding the arbitrator’s fairness orneutrality must be justifiable, not whimsical or fanciful, and must giverise to real danger of bias or partiality.

14.Having regard to the above principles, I am of the view that thearbitrator’s inclusion of his own name in “Hall of Fame”, based onhis decisions against the complainants in four INDRP disputes, doesgive rise to such justifiable apprehension as to his neutrality.

15.The judgment of the Supreme Court in Shivananda Pathak[34],even while upholding the test of predisposition, prejudice and bias,noted that the pre-conceptions about general questions of policy and

34 Supra (note 4).

Signature Not Verified

discretion may not be sufficient to invalidate judicial adjudication.Although the question has not been conclusively decided in the saidjudgement, even from this perspective, in my view, the present casecrosses the permissible latitude available to an arbitrator. Theinclusion of the name of the learned Arbitrator in the “Hall of Fame”is based upon the fact that he has denied the maximum number ofINDRP complaints. This is not general comment on applicable lawor policy, but specific indication on how such cases should be finallydecided. The learned Arbitrator has expressed view that denial ofINDRP complaints is per se positive achievement, without referenceto the applicable law, policy, or evidence. The very least that litigantis entitled to expect is that an arbitrator would be agnostic to the resultof the arbitral proceedings, whatever his or her predisposition may beon particular points which arise for adjudication.

16.Mr. Bakshi drew my attention to an assertion in the learnedArbitrator’s affidavit dated 10.02.2023, that he has, in fact, decided 23out of 29 arbitration cases in favour of complainants[35]. This, however,does not persuade me to contrary view. The fact that the learnedArbitrator has decided cases in favour of complainants does not findmention on the website established by him. It appears to me quiteevident that, in the opinion of the learned Arbitrator, denyingcomplaints is more laudable achievement.

17.Similarly, I am unable to accept Mr. Bakshi’s submission thatcertain developments subsequent to the publication of the awardcannot vitiate it. It may be that facts relating to an arbitrator’s status or

35 Paragraph 6 of the Arbitrator’s affidavit dated 10.02.2023.

Signature Not Verified

conduct, for example conflict of interests, relationship with one of theparties, or even evidence of fraud or misconduct, are discovered afterthe award has been passed. In given case, it may be that suchinformation was deliberately withheld from the aggrieved party. Nouniversal rule can be laid down that an award cannot be challenged ongrounds which were discovered after it was made.

II. Re: Challenge on the ground of the Arbitrator’s reliance on his

own research:

18.In connection with this challenge, Mr. Sood referred to thefollowing extracts of the arbitral award in Section III(ii)[36];

“(ii)Rights or Legitimate Interests in the Domain Name [Para4(ii) of INDRP Policy]

xxxxxxxx

D.That it seems the services rendered by the Respondent arealso by means of 'Artificial Intelligence' (AI) technology, which isgenerally defined to mean "the theory and development ofcomputer systems able to perform tasks normally requiring humanintelligence,suchasvisualperception,speechrecognition,decision-making, and translation between languages". The onlyconclusion it can lead to is that, the choice of words Zo.Ai may beincidental on the disputed domain and mainly to indicate AItechnology, rather than Complainant's product. Further, the AI(Artificial Intelligence) technology is not something that has beenpatented by the Complainant or exclusively belongs to theComplainant Company, therefore no third party is restricted fromusing AI technology in providing any kind of services, given theweak nature of the mark.

E.Most importantly, mark ZO is not strong mark anddoesn't seem to have gained that much popularity within fewmonths of Trademark registration in India, which is the locationof the Respondent, as per WHOIS information for the disputeddomain name. Further, 'ZO' can mean numerous things and hasnumerous end users, that is, there are limitless potential uses of the

36 Page No. 35 of the petitioner’s list of documents.

Signature Not Verified

term "ZO", which is common acronym. Google search for theexact term "ZO" yielded some 61,60,00,000 results and it hasdifferent meanings elaborated on AcronymFinder.com. In thematter of Electronic Arts Inc. v. Abstract Holdings InternationalLTD/Sherene Blackett, NAF Case, FA1111001415905 (Jan. 4,2012) it was held that “The domain name, <ssx.com>, iscomprised of common or generic letters. Complainant clearly doesnot have an exclusive monopoly on the term.The number of other-persons or entities holding identical if noncompeting marks andthe number of other users with rights in the name are clearevidence of the limited ownership claims of the Complainant.Respondent has established rights or legitimate interests in thedisputed domain name pursuant to Policy para 4(a)(ii)”. Further,in Juraj Kralik-ZAJO v. Deep Frontier, Jay Dove [Case No.02015-1377; www.zajo.com], “a four letter.com domain nameshave inherent value and the disputed domain name was registeredfor use, development, and investment.Thus, it may reasonably beconcluded that the disputed domain name incorporates genericor descriptive word. Returning to the question of rights orlegitimate interests in the disputed domain name, in the absence ofproven bad faith, the Panel finds that the Complainant, whichretains the ultimate burden of proof notwithstanding the provisionsof paragraph 4(c) of the Policy, has failed to prove that theRespondent does not have rights or legitimate interests in thedisputed domain name.”F.A Simple Google search for mark 'ZO' throws numerousresults from few dictionary websites, Youtube as to ZO!,ZOskinhealth.com (2007), few business locations and then toComplainant's website as on date.In the matter of Canned FoodsInc v. Ult. Search Inc. (FA 96320 National Arb. Forum dated 13Feb 2001) it was held "a Trademark that equally describesbusinesses conducted by many other people is not protectableterm". The same proves that even as on date Complainant markhasn't gained that much popularity/reputation.Due to the abovefacts, the Complainant's mark 'ZO' cannot be held as that mayexclusively refer to the Complainant or its product or services andtherefore,thedomaindisputedecisionsreferredbytheComplainant are not applicable to the matter. Otherwise alsocircumstances are quite different in the said matter, as theDisputed Domain name has been put to use and has registrationdate preceding the trademark registration 'ZO' in India and thedomain name registration of <zo.ai>. Further it doesn't seemfeasible that Respondent would have searched for two letterTrademark, also when it registered four letter domain name.

xxxxxxxx

H.While searching for 'ZOAI', it doesn't throw any searchresult as to the Complainant's mark or it's website. Obviously, thekeyword in the disputed domain name 'ZOAI' is generic term,as defined in portuguese dictionary, as 'second-person plural'and also ZOAI is name of many individuals around the world.Further, complainant's mark 'ZO' is also defined in collinsdictionary (as Tibetan breed of cattle, developed by crossing theyak with common cattle), also common acronym and shortcommon words like Zoo, Zone, Zoom, Zodiac and so on. It hasbeen held that where the domain name is common or genericterm, it is difficult to conclude that there is deliberate attempt toconfuse. It is precisely because combination of common or randomletters are incapable of distinguishing one provider from anotherthat trademark protection is denied to them. In the matter ofCanned Foods Inc v. Ult. Search Inc. (FA 96320 National Arb.Forum dated 13 Feb 2001) it was held "a Trademark that equallydescribes businesses conducted by many other people is not aprotectable terms”.”

19.Mr. Sood’s submission that the learned Arbitrator has drawnfactual and legal conclusions from materials accessed by him withoutthe petitioner’s knowledge remains uncontroverted. The learnedArbitrator has clearly indicated that no hearings were held. Therefore,there was no opportunity to put this material to the petitioner. In theabove extracted paragraphs of the impugned award, these includefactual findings, for example that “the choice of the words Zo.Ai maybe incidental on the disputed domain, and mainly to indicate AItechnology rather than the Complainant’s product”[37]. In paragraphIII(ii)(E) of the impugned award extracted hereinabove, the conclusionthat the mark “Zo” is not strong mark, and has not gained popularityafter registration, is based on Google search and independentresearch of the learned Arbitrator on “acronymfinder.com”. The

37 Refer paragraph III(ii)(D) of the impugned award (page No. 39 of the petitioner’s list ofdocuments).

Signature Not Verified

learned Arbitrator himself uses these materials to record that “thesame proves that even as on date Complainant mark hasn’t gainedthat much popularity/reputation”[38]. As far as factual findings areconcerned, I am of the view that it is not open to an arbitral tribunal toconduct independent research to supply evidence which an absentrespondent has not cared to place before it. The principle that anarbitrator should not rely upon evidence which he/she has gathered– atleast, without putting it to the affected party – is, in fact, an aspect offairness, and of giving the party an opportunity to be heard in terms ofSection 18 of the Act.

20.In relying upon material of this nature, the learned Arbitratorhas clearly fallen foul of the mandate of the Supreme Court inSsangyong[39], whereunder it has been held as follows:-

“52. Under the rubric of party being otherwise unable to presentits case, the standard textbooks on the subject have stated thatwhere materials are taken behind the back of the parties by theTribunal, on which the parties have had no opportunity tocomment, the ground under Section 34(2)(a)(iii) would be made”[40]out.

21.Reference may also be made to the judgment of the DivisionBench of the Madras High Court in Tribol[41], which cites the followingparagraph from the judgment of the Court of Appeal (Civil Division)(England and Wales) in Fox vs. Wellfair Limited[42];

“18. I am afraid that the arbitrator fell into error here. He feltthat it was his duty to protect the interests of the unrepresented

38 Para III(ii)(F) of the impugned award (page No. 41 of the petitioner’s list of documents).

39 Supra (note 6).

40 Emphasis supplied.

41 Supra (note 7).

42 1981 (2) Lloyd's Rep. 514 [at page No. 522].

Signature Not Verified

party in much the same way as judge protects litigant inperson.But in case like this, I do not think it is the duty of thearbitrator to protect the interests of the unrepresented party. Ifthe defendants do not choose to turn up to protect themselves, it isno part of the arbitrator's duty to do it for them. In particular, hemust not throw his own evidence into the scale on behalf of the-unrepresented party or use his own special knowledge for the-benefit of the unrepresented party at any rate he must not do so'-without giving the plaintiffs experts chance of dealing with it for they may be able to persuade him that his own view is”[43]erroneous.

Applying the aforesaid principles laid down by the Court of Appeal,the Madras High Court held thus:

“48.It is not the duty of the arbitrator to go to the aid of theparties and state what they could and should have done forthemselves. His function is not to supply his special knowledge,but to play the role of an impartial arbitrator without assumingthe role of an advocate for the defaulting side. At any rate, heshould not use his own knowledge to give them chance ofanswering it and showing the way as to how the matter should bedealt with. This conduct cannot be termed as ‘fair’ and what hadhappened as alleged, when not controverted, can be taken asdeemed to have been admitted. The inevitable conclusion is that theproceedings have been misconducted; and the arbitrator has totake responsibility for it”.”[44]

22.In Fleetwood Wanderers[45]also, the High Court of England and

Wales has relied inter alia upon Fox vs. Wellfair Limited[46]to hold asfollows:

“35. “To comply with its duty under Section 33(1) of theArbitration Act 1996 to act fairly, the tribunal should give theparties an opportunity to deal with any issue that may be reliedupon by it as the basis of its findings. The parties are entitled toassume that the tribunal will base its decision solely on theevidence and argument presented by them prior to the making of

43 Emphasis supplied.

44 Emphasis supplied.

45 Supra (note 8).

46 Supra (note 42)

Signature Not Verified

the award and if the tribunal are minded to decide the dispute onsome other point, the tribunal must give notice of it to the parties toenable them to address the point”.[47]

23.Mr. Bakshi submitted that the present case is distinguishablefrom Ssangyong[48], as the learned Arbitrator’s independent researchwould not have affected the outcome of the decision. According tolearned counsel, the petitioner had not put forth material in support ofspecific elements which it was duty bound to establish, and it is inthese circumstances that the learned Arbitrator was compelled toundertake his own research. In this regard, Mr. Bakshi relied upon thetest of prejudice laid down by the Supreme Court in the judgment inSudhir Kumar Singh[49]. I am unable to agree. In the said judgment, theprejudice test was held to constitute an exception to the generalapplicability of the principles of natural justice, in relation to issuanceof tender by statutory corporation, and not arbitral decisionmaking, governed by Section 18 of the Act. In the latter case, thejudgment of the Supreme Court in Ssangyong[50]squarely applies. It isalso difficult to parse the inadmissible material from material whichcould have been legitimately relied upon by the learned Arbitrator, soas to conclude that he would have, in any event, reached the sameconclusion[51].

47 Emphasis supplied.

48 Supra (note 6).

49 Supra (note 15).

50 Supra (note 6).

51 Refer to the Judgment of the Constitution Bench in Dhirajlal Girdharilal vs. CIT AIR 1955 SC271, and the judgment of Full Bench of the Madras High Court in Swami Motor Transport(Private) Limited vs. Raman and Raman (Private) Limited 1960 SCC OnLine Mad 166.271, and the judgment of Full Bench of the Madras High Court in Swami Motor Transport(Private) Limited vs. Raman and Raman (Private) Limited 1960 SCC OnLine Mad 166.

Signature Not Verified

24.I am, therefore, of the view that the petitioner is entitled tosucceed on this ground also.

III. Other Grounds:

25.It may be noted that in his rejoinder submissions, as well as inthe post-hearing written submissions filed by him, Mr. Sood hasconfined the challenge to grounds (A) and (B), summarised inparagraph 6 hereinabove. I have found in the petitioner’s favour onboth these grounds. I do not, therefore, propose to deal with grounds(C) and (D) enumerated therein.

Conclusion:

26.For the aforesaid reasons, the petition is allowed, and the awardof the learned Arbitrator dated 18.02.2019 is set aside. However, thepetitioner will be at liberty to invoke arbitration afresh for adjudicationof the same claims, in accordance with law, if it is so advised.

JULY, 03, 2023‘Bhupi’/Pv/Faisal/SM/

PRATEEK JALAN, J.

Signature Not Verified