Delhi High Court - Orders
Designarch Infrastructure Private ... vs John Doe And Others on 18 March, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~40
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 238/2024
DESIGNARCH INFRASTRUCTURE PRIVATE LIMITED
..... Plaintiff
Through: Ms. Shwetasree Majumder, Mr.
Rohan Krishna Seth and Ms. Shilpi
Sinha, Advocates.
versus
JOHN DOE AND OTHERS ..... Defendants
Through: Ms. Nidhi Raman, CGSC with Mr.
Zubin Singh, Advocate for D-8 & 9.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 18.03.2024 I.A. 6352/2024 (u/Section 12A of the Commercial Courts Act, 2015 r/w Section 151 of the Code of Civil Procedure, 1908)
1. As the present suit contemplates urgent interim relief, in light of the judgment of Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.
2. Disposed of.
I.A. 6353/2024 (seeking leave to file additional documents)
3. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
4. If Plaintiff wishes to file additional documents at a later stage, they shall do so strictly as per the provisions of the said Act.
5. Accordingly, the application stands disposed of.
12023 SCC OnLine SC 1382.
CS(COMM) 238/2024 Page 1 of 7This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2024 at 21:49:40 I.A. 6354/2024 (seeking exemption from filing originals, clear copies and documents with proper margins)
6. Exemption is granted, subject to all just exceptions.
7. The Plaintiff shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
8. Disposed of.
CS(COMM) 238/2024
9. Let the plaint be registered as a suit.
10. Issue summons. Ms. Nidhi Raman, CGSC for Defendants No. 8 & 9, accepts summons. Upon filing of process fee, issue summons to the remaining Defendants by all permissible modes. Summons shall state that the written statement(s) shall be filed by the Defendants within 30 days from the date of receipt of summons. Along with the written statement(s), the Defendants shall also file affidavit(s) of admission/denial of the documents of the Plaintiff, without which the written statement(s) shall not be taken on record.
11. Liberty is given to the Plaintiff to file replication(s) within 15 days of the receipt of the written statement(s). Along with the replication(s), if any, filed by the Plaintiff, affidavit(s) of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication(s) shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
12. List before the Joint Registrar for marking of exhibits on 22nd May, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
13. List before Court for framing of issues thereafter.
CS(COMM) 238/2024 Page 2 of 7This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2024 at 21:49:40 I.A. 6351/2024 (u/Order XXXIX Rules 1 & 2 r/w Section 151 of the Code of Civil Procedure, 1908)
14. Ms. Shwetasree Majumder, counsel for the Plaintiffs, presents the following facts and contentions:
14.1. The suit pertains to the Plaintiff's trademark rights in their registered trademark 'DASNAC' and infringement and passing off of the same by the Defendant Nos. 1 to 6.
14.2. The Plaintiff is a part of the DASNAC group, a leader in innovative building construction and smart housing in India. Founded in the year 2006, the group has extensive expertise in engineering, architecture and building construction. Plaintiff and their promoters have over 37 years of experience in the construction business and have been involved in various projects across India, totalling over 15 million sq. ft. of construction property. Plaintiff has completed over 40 large housing projects, and even successfully delivered their own building construction projects such as 'Designarch eHomes' in Vaishali, Ghaziabad, 'Designarch eHomes' in Greater Noida, and 'The Jewel of Noida' in the National Capital Region. 14.3. In connection with their business, Plaintiff has also secured registration of its trademark 'DASNAC' under registration No. 1706809 in Class 37, which covers building construction. The said trademark has been registered since 4th July 2008, with a user claim dating back to 1st January, 2006.
14.4. Further, Plaintiff also owns the domain name 'dasnac.com', which has been registered in their favour since 7th September, 2007. The website contains a detailed background of the Plaintiff and its DASNAC CS(COMM) 238/2024 Page 3 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2024 at 21:49:41 brand, along with all its projects within the residential, industrial, commercial and healthcare sectors.
14.5. The present dispute arises in relation to the Plaintiff's two upcoming and under-construction properties in Sector 146 (residential property) and Sector 93B (commercial complex), Noida ["Project Properties"]. The Project Properties are currently pending approval from Uttar Pradesh Real Estate Regulation Authority (UP RERA) under the Real Estate (Regulation and Development) Act, 2016 ["RE Act"]. Consequently, by virtue of Section 3 of the RE Act, the Plaintiff is prohibited from advertising, marketing, booking, selling or offering for sale any part of these Project Properties. Accordingly, as on date, Plaintiff is not, either directly or through a third-party, engaging in any activity in contravention of the RE Act, and intends to only begin promotion upon receiving requisite approvals from the UP RERA.
14.6. In February 2024, the Plaintiff came across the Defendants No. 1 to 6 websites, as also several third-party URLs, which were not only using the Plaintiff's registered 'DASNAC' trademark but also openly promoting, advertising and offering for sale the Project Properties to the Plaintiff's potential customers. The websites/ URLs that are using the Plaintiffs DASNAC trademark and illegally promoting/ offering for sale the Project Properties, which have been listed in 'Document A' filed along with the plaint, may be broadly categorized in the following manner:
14.6.1. Infringing websites that contain the trademark 'DASNAC' either in the domain name or the sub-domain;
14.6.2. Third-party websites where articles/ write-ups were uploaded, promoting the concerned property, and;CS(COMM) 238/2024 Page 4 of 7
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2024 at 21:49:41 14.6.3. YouTube videos uploaded by 'India Realty News' and 'RISHABH BHATT' promoting the concerned properties. 14.7. Prior to filing the suit, the Plaintiff conducted an investigation into the extent of violation by the Defendants on the impugned websites, all of which utilise the Plaintiff's mark 'DASNAC' entirely in the domain name. Details of the findings from such investigation have been delineated at Paragraph No. 22 of the plaint. It is contended that the Defendants No. 1 to 6, who have been impleaded as 'John Doe', are only few of several infringing websites.
14.8. Defendants are using the Plaintiff's DASNAC trademark as a part of their domain name, on their websites, and on their social media thereby constituting infringement of the Plaintiff's statutory rights vesting in the DASNAC trademark. Further, they are also using the Plaintiff's registered trademark 'DASNAC' to portray themselves to be associated with the Plaintiff in order to promote and offer to sell the Project Properties, which they are not otherwise authorized to sell. Pertinently, Plaintiff has not engaged any third parties to promote or offer to sell the concerned properties. Thus, said Defendants are acting without any authorization from the Plaintiffs and therefore passing off their services as those affiliated/ associated with the Plaintiff in order to mislead consumers and unfairly take advantage of the goodwill and reputation of the Plaintiff. Furthermore, the aforenoted infringing actions of the said Defendants also exposes the Plaintiff to being heavily penalised for non-compliance with the framework of the RE Act. In such circumstances, the Plaintiff has approached this Court seeking protection of their trademark.
CS(COMM) 238/2024 Page 5 of 7This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2024 at 21:49:41
15. The Court has considered the aforenoted submissions. The material placed on record clearly indicates that the Defendants are using the Plaintiff's mark 'DASNAC' in their domain names, and attempting to misrepresent themselves to be affiliated/ associated with the Plaintiff. In view of the above background, the Court finds that the Plaintiff has made out a prima facie case in their favour and in case no ex-parte ad-interim injunction is granted, the Plaintiff will suffer an irreparable loss; balance of convenience also lies in favour of the Plaintiff and against the Defendants.
16. Accordingly, till the next date of hearing, an ex-parte injunction is granted in favour of the Plaintiffs and against the Defendants in the following terms:
16.1. Defendants No. 1 to 6, and/or anybody acting on their behalf, are restrained from using the Plaintiff's registered trademark 'DASNAC' or any deceptively similar variant thereof, as a trademark, trade name, domain name, or on social media, email addresses or in any other manner which amounts to infringement of the Plaintiff's DASNAC trademark and passing off their services as those associated with or affiliated by the Plaintiff. 16.2. Defendant No. 7/ GoDaddy.com LLC is directed to take the following steps:
16.2.1. To reveal the complete address and contact details of the Registrant/s of the impugned domains: dasnac.developerprojects.in, dasnacgroups.com, dasnacsector146noida.com, dasnac.projects.org.in, dasnacsector146noida.in and dasnacsector93bnoida.com; and 16.2.2. To suspend and lock the impugned domains dasnac.developerprojects.in, dasnacgroups.com, dasnacsector146noida.com, CS(COMM) 238/2024 Page 6 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2024 at 21:49:43 dasnac.projects.org.in, dasnacsector146noida.in and dasnacsector93bnoida.com during the pendency of the suit proceedings. 16.3. Defendant No. 8/ Department of Telecommunications (DoT) and Defendant No. 9/ Ministry of Electronics and Information Technology (MeitY) are directed to issue necessary directions to concerned telecom and internet service providers to suspend access to all the websites/ URLs mentioned in the above Paragraph No. 16.2. Plaintiff shall be at liberty to identify any other website(s)/ URL(s) which are infringing their rights in the trademark 'DASNAC' and promoting the Project Properties and apply to the Court for appropriate directions for extending the injunction to the said websites.
17. Issue notice. Ms. Nidhi Raman, CGSC for Defendants No. 8 & 9, accepts notice. Reply, if any, be filed within a period of four weeks from today. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.
18. Issue notice to the remaining Defendants, by all permissible modes, upon filing of process fee, returnable on the next date of hearing. Reply, if any, be filed within a period of four weeks from date of service. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.
19. Compliance of Order XXXIX Rule 3 of CPC be done within five days from today.
20. List before the Court on 22nd August, 2024.
SANJEEV NARULA, J MARCH 18, 2024/as CS(COMM) 238/2024 Page 7 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 21/03/2024 at 21:49:43