Delhi High Court - Orders
Jockey International Inc vs Domain Administrator & Ors on 13 December, 2023
Author: C.Hari Shankar
Bench: C. Hari Shankar
$~35
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 891/2022
JOCKEY INTERNATIONAL INC ..... Plaintiff
Through: Mr. Saif Khan, Mr. Shobhit
Agarwal and Mr. Prajjwal Kushwaha, Advs.
versus
DOMAIN ADMINISTRATOR & ORS. ..... Defendants
Through: Mr. Kushagra Kumar and Ms.
Manaswini Kondepudi, Advs. for
Department of Telecom
Mr. Neel Meson, Mr. Vihan Dang, Mr.
Ujjawal Bhargava and Ms. Pragya Jain,
Advs. for D-8, Google LLC
Mr. Darpan Wadhwa, Sr. Advocate with Mr.
Mrinal Ojha, Mr. Debarshi Datta & Ms.
Tanya Choudhry, Advs. for D-9
Mr. Manas Shukla, Mr. Arun Kumar Shukla
and Mr. Naman Shukla, Advs for D-13
(PNB)
Mr. Ramesh Babu and Ms. Jagriti Bharti,
Advs. for D-16
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
ORDER
% 13.12.2023 I.A. 25016/2023 (Order XXXIX Rule 2A of the CPC)
1. By this application the plaintiff alleges disobedience, by Defendant 9, of order dated 19 October 2023, read with order dated 4 December 2023. Mr. Khan points out that, as per the order dated 4 December 2023, there was a clear restraint against the defendants making available, for registration, the domain names CS(COMM) 891/2022 Page 1 of 5 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 20/12/2023 at 20:30:44 www.jockeyconnect.com, www.jockeydealership.com, www.jockeydealership.org, www.jockeystorefranchise.com, www.jockeydealer.in, www.jockeyshops.com, www.jockeyshops.in. Despite this, injunction being in place, Mr. Khan submits that the Defendant 9 is, even now, making available the domain name www.jockeystorefranchise.com for sale.
2. Issue notice, returnable on 6 February 2024, the date already fixed.
3. Notice is accepted on behalf of Defendant 9 by Ms. Tanya Choudhary.
4. Reply be filed within four weeks with advance copy to learned Counsel for the plaintiff, who may file rejoinder thereto, if any, within four weeks thereof.
5. One of the contentions which was advanced by Mr. Wadhwa, learned Senior Counsel for Defendant 9, when a similar application came up the day before yesterday with respect to the domain name www.jockeyshops.com, was that Defendant 9 is not offering the said domain name for registration, but is only facilitating transfer of the domain name from one registrant to another, which is officially permissible.
6. Once this Court has recorded a prima facie finding that the domain names www.jockeyconnect.com, www.jockeydealership.com, www.jockeydealership.org, www.jockeystorefranchise.com, CS(COMM) 891/2022 Page 2 of 5 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 20/12/2023 at 20:30:44 www.jockeydealer.in, www.jockeyshops.com and www.jockeyshops.in are infringed the plaintiff's registered trade mark, the Trade Marks Act, 1999 would proscribe the use of the said domain names in any manner, so long as the interim order is in force.
7. Section 2(2)(c)1 of the Trade Marks Act explains the concept of "use of a mark" by stating that, in the Trade Marks Act, any reference to the use of a mark, in relation to the services would be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services. Section 29(6) is also relevant in this context. It explains when a registered trade mark can, for the purposes of Section 29, be said to be used, and reads thus:
"(6) For the purposes of this section, a person uses a registered mark, if, in particular, he -
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising."
8. Facilitation of the transfer of a domain name from one 1 (2) In this Act, unless the context otherwise requires, any reference -
*****
(c) to the use of a mark,--
(i) in relation to goods, shall be construed as a reference to the use of the mark
upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services;
CS(COMM) 891/2022 Page 3 of 5This 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 20/12/2023 at 20:30:44 registrant to another for a price would, therefore, prima facie constitutes use of the domain name, both by the registrant as well as by the facilitator.
9. The aforesaid domain names were, moreover, found to be resolving to websites through which they are offering fake franchises of the plaintiff to the customers, on the basis of which the public were made to invest moneys in the hope of obtaining such franchises.
10. It is clarified, therefore, that the compliance of the order dated 19 October 2023 read with the order dated 4 December 2023 would require the defendants not to use the aforesaid domain names in any manner whatsoever, which would include making the domain names available to the public for any purpose. The defendant would thereby stand injuncted not only from making the domain names available for registration, but also facilitating transfer of the domain names from one registrant to another or making them available for purchase.
11. The Court is aware of the fact that it is dealing with an application under Order XXXIX Rule 2A of the CPC, in which ordinarily, supplemental directions are not expected to be issued. However, the facts of the present case are peculiar and we find that the plaintiff is having to repeatedly approach this Court by application after application, complaining that despite this Court having prima facie returned a finding that the domain names www.jockeyconnect.com, www.jockeydealership.com, www.jockeydealership.org, www.jockeystorefranchise.com, www.jockeydealer.in, www.jockeyshops.com, www.jockeyshops.in, CS(COMM) 891/2022 Page 4 of 5 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 20/12/2023 at 20:30:44 infringe the plaintiff's registered trade mark, the domain names registrants are, one way or the other, dealing with the said domain names to their own commercial advantage.
12. Dealing with the said domain names in respect of which there is prima facie finding of infringement by this Court can obviously not be permitted. It is only so as to avoid repeated applications under Order XXXIX Rule 2A of the CPC being filed before this Court that I have deemed it appropriate to clarify the position.
13. Mr. Wadhwa points out that there is an error in the spelling of the domain name forming subject matter of this application as reflected in the order dated 19 October 2023, which records the domain name www.jockeystorefranshise.com instead of www.jockeystorefranchise.com. The domain name stands corrected accordingly.
14. Mr. Wadhwa also points out that the domain name www.jockeystorefranchise.com, when clicked, does not appear to be accessible. The submission is noted.
C.HARI SHANKAR, J DECEMBER 13, 2023 rb Click here to check corrigendum, if any CS(COMM) 891/2022 Page 5 of 5 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 20/12/2023 at 20:30:44