Delhi High Court
Ebay Inc. vs Mohd. Waseem T/As Shopibay & Ors. on 17 November, 2022
Author: Navin Chawla
Bench: Navin Chawla
Neutral Citation Number: 2022/DHC/004918
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 02.11.2022
Date of decision: 17.11.2022
+ CS(COMM) 466/2019 & I.A. 11762/2019
EBAY INC. ..... Plaintiff
Through: Ms.Nancy Roy, Ms.J.Sharanya,
Advs. (M-9711120868)
versus
MOHD. WASEEM T/AS SHOPIBAY & ORS. ..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
1. The present suit has been filed by the plaintiff seeking a decree of
permanent injunction against the defendants, their partners, directors,
principals, proprietors, officers, employees, agents, distributors,
suppliers, affiliates, subsidiaries, franchisees, licensees, representatives,
group companies and assigns, restraining them from using the marks
'SHOPIBAY/ ' or any other mark deceptively or confusingly
similar to the plaintiff's registered trade marks 'eBay/EBAY/ '
(hereinafter referred to as the 'eBay Marks'), which would amount to
either infringement, passing off, dilution, tarnishment of the plaintiff's
mark; and/or unfair competition.
2. As none had appeared for the defendants in spite of service, vide
order of this Court dated 27.07.2022, the defendants were proceeded ex-
parte.
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FACTUAL BACKGROUND
3. It is the case of the plaintiff that the plaintiff provides an online
marketplace for the sale of goods and services through their e-commerce
platform, which utilises the domain name www.ebay.com. The domain
name was registered in the year 1995 and is accessible to users globally,
including in India. It is asserted that the website of the plaintiff, that is,
www.ebay.com, at the time of filing the present suit, is ranked as the 11th
most visited website in the United States of America and the 42nd most
visited website globally.
4. The plaintiff has country-specific domain names for countries such
as Australia, Hong Kong, Netherlands, Taiwan, Austria, Philippines,
Thailand, Belgium, Ireland, the United Kingdom, Canada, China and
Japan to name a few, to connect local buyers to sellers. The plaintiff also
has a domain name specific for Indian users, that is, www.ebay.in, which
was created on 16.02.2005.
5. It is asserted that as on the date of filing the suit, the plaintiff has
over 180 million active buyers in 190 markets around the world, with
over one billion live listings featuring hundreds of different categories of
goods and services, inter alia, antiques, art, electronics, books, home and
garden as also music. Furthermore, at the time of filing the suit, the
mobile application of the plaintiff has seen 459 million downloads
worldwide.
6. It is asserted that the plaintiff has extensive presence on social
media platforms, including but not limited to Twitter, Facebook, Linkedin
and Google+. The plaintiff has hundreds of thousands of followers on
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each platform, and in the case of social-media platform Facebook, the
plaintiff has almost 11 million followers.
7. The plaintiff has provided in paragraph 13 of the plaint, the figures
of their annual world-wide revenue from the years 2006 to 2018. The
plaintiff also claims to have expended large amounts of money through
various media, including visual and print, without territorial jurisdiction,
in promoting and advertising its trade name/trade marks. The details of
the expenditure for the years 2006 and 2018 have been provided by the
plaintiff in paragraph 14 of the plaint.
8. The plaintiff's 'eBay Marks' have also been extensively discussed
and advertised in major international magazines and newspapers, which
are circulated globally as also in India. The plaintiff-company, including
the plaintiff's corporate name as also trade marks (both containing the
word 'eBay'), have been the subject of books as also newspaper articles,
in publications such as 'Fortune', 'The New York Times', 'The Wall
Street Journal', 'Reuters News Service' and 'Forbes'. The plaintiff's
'eBay Marks' have also been a part of lists such as 'Fortune Magazine's
World's Most Admired Companies' and 'Forbes Magazine List of the
Worlds' Most Valuable Brands.' In the year 2015, 'Interbrand' ranked
the plaintiff's 'eBay Marks' as 32nd of the '100 Best Global Brands',
with an estimated value of USD 13.94 Billion. The plaintiff-company is
also the recipient of an award by the President of India at the 15th
Federation of Indian Export Organizations 'Niryat Shree' and 'Niryat
Bandhu'.
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9. The plaintiff's 'eBay Marks' have been accorded protection under
the provisions of the Trade Marks Act, 1999 (in short, 'the Act') by way
of registrations, the details whereof have been reproduced hereinbelow:
Trade Mark Registration Date No. Class
November 28, 2005 1248689 42
March 5, 2007 1248687 38
November 23, 2005 1248691 1248691
February 22, 2013 2483328 35
March 12, 2013 2494005 9,14,
16,25,
28,41,
42
March 12, 2013 2494004 35,36,
38
EBAY August 12, 2005 851310 25
EBAY November 28, 2005 1248688 42
EBAY November 23, 2005 1248690 35
EBAY July 25, 2006 1241397 41
EBAY November 10, 2005 1248686 38
EBAY May 23, 2007 851307 9
EBAY August 6, 2005 851308 14
EBAY July 25, 2006 851309 16
March 31, 2008 1241399 41
Ebay Edge October 31, 2012 2097401 35
Ebay Edge November 01, 2012 2097400 16
October 31, 2012 2097402 35
November 01, 2012 2097399 16
December 15, 2011 2250574 35
April 20, 2012 2319194 35
10. The plaintiff asserts that it has also been accorded statutory as also
common law protection in its 'eBay Marks' internationally.
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11. The plaintiff has managed to take successful action against
potential infringers internationally, in countries such as Australia, China,
Spain, the United Kingdom and the United States of America.
12. It is the case of the plaintiff that in May, 2017, the plaintiff came
across a trade mark application filed by the defendant no. 1 seeking
registration of the mark 'SHOPIBAY/ ' before the Trade
Marks Registry bearing application no. 3470343 under Class 35, dated
30.01.2017. The said application was opposed by the plaintiff on
20.06.2017. In the said proceedings before the Trade Marks Registry, the
right of the defendants to file their counter-statement to the notice of
opposition under Section 21(2) of the Act and Rule 44 of the Trade
Marks Rules, 2017 stands closed.
13. Upon investigation, it was discovered that the domain names,
www.shopibay.com (registrant country being the United Kingdom) and
www.myshopibay.com (registrant region being Haryana, India) were
both registered in the name of the defendant no. 2. A more thorough
investigation before the Ministry of Corporate Affairs, the Government
of India, revealed that the defendant no. 1 is one of the directors of the
defendant nos. 2 and 3.
14. The plaintiff asserts that the website hosted by the domain name
www.shopibay.com offers consumers links to various e-commerce
platforms, including hosting the plaintiff's domain name www.ebay.com.
The website of the defendants also prominently features the plaintiff's
'eBay Marks' and makes a claim that the plaintiff is one of the partners
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of the defendants and was seen to offer the same services as that of the
plaintiff, that is, e-commerce sales.
15. That upon gaining knowledge of the misuse and mala fide adoption
of 'SHOPIBAY/ ' by the defendants, the plaintiff, through
their counsel, issued multiple cease-and-desist letters in the year 2017 to
the defendants but received no response up until the time of filing the
suit.
16. Between this period, the plaintiff asserts that the defendants
expanded their scope of business and apart from providing e-commerce
services; the defendants had also opened a brick-and-mortar store in
Lucknow, Uttar Pradesh and began promoting their business on
www.indiamart.com.
COURT PROCEEDINGS IN THE MATTER
17. Vide order dated 28.08.2019, this Court granted an ex-parte ad-
interim injunction in favour of the plaintiff and restrained the defendants
from using the impugned trade mark 'SHOPIBAY/ ' or any
other mark deceptively similar to the plaintiff's registered trade marks, as
part of any trade mark/trade name/domain name, until the next date of
hearing. Vide the same order, GoDaddy LLC (the Registrar of the
domain names www.shopibay.com and www.myshopibay.com) were
directed to block the aforementioned domain names, pending further
orders of this Court.
18. Vide order of the learned Joint Registrar (Judicial) dated
20.12.2019, it was noted that the defendants had been duly served by way
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of e-mail, on the ID provided by them on the website of Ministry of
Corporate Affairs. The plaintiff was directed to serve the defendants also
through publication. The substituted service of the defendants was
recorded in the order of the learned Joint Registrar (Judicial) dated
09.09.2020.
19. Thereafter, as noted hereinabove, the defendants, vide order of this
Court dated 27.07.2022, were proceeded ex-parte.
SUBMISSION ON BEHALF OF THE LEARNED COUNSEL FOR THE PLAINTIFF:
20. The learned counsel for the plaintiff, placing reliance on the
judgment of this Court in Satya Infrastructure Ltd. and Ors. v. Satya
Infra & Estates Pvt. Ltd., 2013 SCC OnLine Del 508, submits that in the
event the defendants have failed to appear in the proceedings and
voluntarily chosen not to respond to the plaint, it is indicative of the fact
that the defendants have nothing substantial to urge, by way of a response
to the allegations in the plaint. She submits that this is a fit case where a
Summary Judgment in terms of Order XIII-A of the Code of Civil
Procedure, as applicable to commercial disputes of a specified value, read
with Rule 27 of the Delhi High Court Intellectual Property Rights
Division Rules, 2022 (in short, 'IPD Rules'), deserves to be passed in
favour of the plaintiff and against the defendants.
ANALYSIS AND FINDINGS:
21. I have considered the submissions of the learned counsel for the
plaintiff.
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22. From the averments made in the plaint and the documents filed
therewith, the plaintiff has been able to prove that it is the registered
proprietor of the 'eBay Marks', the details whereof are given herein
above. The plaintiff has also been able to show its goodwill and
reputation in the 'eBay Marks' not only in India but internationally. The
mark adopted by the defendants, that is, 'SHOPIBAY/ ' is
deceptively similar to that of the plaintiff and is clearly intended to ride
on the goodwill and reputation of the marks of the plaintiff. It is an
infringement of the marks of the plaintiff and amounts to passing off the
goods and services of the defendants as that of the plaintiff. The
defendants not only seem to take unfair advantage of the mark of the
plaintiff's reputation and goodwill, but also deceive unwary consumers of
their association with the plaintiff. Such acts of the defendants would also
lead to dilution of the mark of the plaintiff.
23. As far as the domain name/website of the defendants is concerned,
the same is also deceptively similar to that of the plaintiff. It is likely to
deceive an unwary consumer of its association with the plaintiff.
Recently, in Anugya Gupta v. Ajay Kumar and Anr., 2022 SCC OnLine
Del 1922, this Court has held that the right of a proprietor in a domain
name is entitled to equal protection, applying the principles of the trade
mark law. The use of the same or similar domain name may lead to
diversion of users, which could result from such user mistakenly
accessing one domain name instead of another. Therefore, a domain
name may have all the characteristics of a trade mark and could found an
action for passing off.
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24. As far as the claim on the corporate names of the defendant no. 2
and 3, in my opinion, again the plaintiff is entitled to succeed. The use of
the 'SHOPIBAY/ ', being phonetically similar to the mark of
the plaintiff is likely to deceive unwary consumer of the association of
these companies with the plaintiff. [Ref: Cadila Healthcare Ltd. v.
Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73.]
25. In the present case, the defendants have chosen neither to file their
written statements nor to enter appearance in the suit to defend the same.
In my opinion, therefore, this is a fit case where a Summary Judgment in
terms of Order XIII-A of the CPC, as applicable to commercial disputes
of a specified value, read with Rule 27 of the IPD Rules, deserves to be
passed in favour of the plaintiff and against the defendants.
26. In Satya Infrastructure Ltd. and Ors. (supra), this Court has held
has under:-
"5. I am of the opinion that no purpose will be
served in such cases by directing the plaintiffs to
lead ex parte evidence in the form of affidavit by
way of examination-in chief and which invariably
is a repetition of the contents of the plaint. The
plaint otherwise, as per the amended CPC,
besides being verified, is also supported by
affidavits of the plaintiffs. I fail to fathom any
reason for according any additional sanctity to
the affidavit by way of examination-in-chief than
to the affidavit in support of the plaint or to any
exhibit marks being put on the documents which
have been filed by the plaintiffs and are already
on record. I have therefore heard the counsel for
the plaintiffs on merits qua the relief of
injunction."
27. This Court, in Su-Kam Power Systems Ltd. v. Kunwer Sachdev
and Another, 2019 SCC OnLine Del 10764 reiterated as under:
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"90. To reiterate, the intent behind incorporating
the summary judgment procedure in the
Commercial Court Act, 2015 is to ensure disposal
of commercial disputes in a time-bound manner.
In fact, the applicability of Order XIIIA, CPC to
commercial disputes, demonstrates that the trial is
no longer the default procedure/norm.
91. Rule 3 of Order XIIIA, CPC, as applicable to
commercial disputes, empowers the Court to grant
a summary judgement against the defendant
where the Court considers that the defendant has
no real prospects of successfully defending the
claim and there is no other compelling reason why
the claim should not be disposed of before
recording of oral evidence. The expression "real"
directs the Court to examine whether there is a
"realistic" as opposed to "fanciful" prospects of
success. This Court is of the view that the
expression "no genuine issue requiring a trial" in
Ontario Rules of Civil Procedure and "no other
compelling reason.....for trial" in Commercial
Courts Act can be read mutatis mutandis.
Consequently, Order XIIIA, CPC would be
attracted if the Court, while hearing such an
application, can make the necessary finding of
fact, apply the law to the facts and the same is a
proportionate, more expeditious and less
expensive means of achieving a fair and just
result.
92. Accordingly, unlike ordinary suits, Courts
need not hold trial in commercial suits, even if
there are disputed questions of fact as held by the
Canadian Supreme Court in Robert Hryniakv.
Fred Mauldin, 2014 SCC OnLine Can SC 53, in
the event, the Court comes to the conclusion that
the defendant lacks a real prospect of successfully
defending the claim."
28. Applying the above principles, in my opinion, no useful purpose
would be served in insisting upon the plaintiff to file its affidavits of
evidence. This is a fit case where Summary Judgment deserves to be
passed in favour of the plaintiff.
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29. In view of the above, the suit is decreed in terms of the prayers
made in paragraph 65 (A), (B) and (C) of the plaint.
30. As far as the relief of damages and rendition of accounts is
concerned, this Court in Intel Corporation v. Dinakaran Nair &Ors.,
2006 SCC OnLine Del 459has held as under:
"13. The only other question to be
examined is the claim of damages of Rs. 20
lakh made in para 48(iii) (repeated) of the
plaint. In this behalf, learned Counsel has
relied upon the judgments of this Court
in Relaxo Rubber Limited v. Selection
Footwear, 1999 PTC (19) 578; Hindustan
Machines v. Royal Electrical Appliances,
1999 PTC (19) 685; and CS (OS)
2711/1999, L.T. Overseas Ltd. v. Guruji
Trading Co., 123 (2005) DLT 503 decided
on 7.9.2003. In all these cases, damages of
Rs. 3 lakh were awarded in favour of the
plaintiff. In Time Incorporated v. Lokesh
Srivastava, 2005 (30) PTC 3 (Del) apart
from compensatory damages even punitive
damages were awarded to discourage and
dishearten law breakers who indulge in
violation with impunity. In a recent
judgment in Hero Honda Motors
Ltd. v. Shree Assuramji Scooters, 125
(2005) DLT 504 this Court has taken the
view that damages in such a case should be
awarded against defendants who chose to
stay away from proceedings of the Court
and they should not be permitted to enjoy
the benefits of evasion of Court
proceedings. The rationale for the same is
that while defendants who appear in Court
may be burdened with damages while
defendants who chose to stay away from the
Court would escape such damages. The
actions of the defendants result in affecting
the reputation of the plaintiff and every
endeavour should be made for a larger
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public purpose to discourage such parties
from indulging in acts of deception.
14. A further aspect which has been
emphasised in Time Incorporated
case (supra) is also material that the object
is also to relieve pressure on the overloaded
system of criminal justice by providing civil
alternative to criminal prosecution of minor
crimes. The result of the actions of
defendants is that plaintiffs, instead of
putting its energy for expansion of its
business and sale of products, has to use its
resources to be spread over a number of
litigations to bring to book the offending
traders in the market. Both these aspects
have also been discussed in CS(OS) No.
1182/2005 titled Asian Paints (India)
Ltd. v. Balaji Paints and Chemicals decided
on 10.3.2006. In view of the aforesaid, I am
of the considered view that the plaintiff
would also be entitled to damages which
are quantified at Rs. 3 lakh."
31. In the case of Hindustan Lever Ltd. and Anr. V. Satish Kumar,
2012 SCC OnLine Del 1378, this Court again held as under that:
"23. One of the reasons for granting relief of
punitive damages is that despite of service of
summons/notice, the defendant had chosen not to
appear before the court. It shows that the
defendant is aware of the illegal activities
otherwise, he ought to have attended the
proceedings and give justification for the said
illegal acts. Since, the defendant has maintained
silence, therefore, the guilt of the defendant
speaks for itself and the court, under these
circumstances, feels that in order to avoid future
infringement, relief of punitive
33. Damages is to be granted in favour of the
plaintiff."
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32. Applying the above principles and taking into account that the
defendants first chose not to reply to the cease-and-desist notices sent by
the counsel of the plaintiff but expanded the scope of their commercial
activity from the e-commerce space to brick-and-mortar stores; the
defendants have in the meantime failed to appear before this Court, the
plaintiff is entitled to damages of a sum of Rs. 2 Lakh (Rupees Two Lakh
only) in addition to the costs of the Suit.
33. The learned counsel for the plaintiff has filed her Bills of Costs,
which I find to be reasonable. The plaintiff shall be entitled to a decree to
the said sum as well.
RELIEF
34. Accordingly, a permanent injunction in terms of the prayers
mentioned in paragraph 65 (A) to (B) of the plaint is granted in favour of
the plaintiff and against the defendants.
35. The plaintiff is also held entitled to the relief claimed in paragraph
65 (C) of the plaint and the defendant nos. 2 and 3 are directed to change
the name of the companies 'Shopibay Internet Private Limited' and
'Shopibay Ventures Private Limited' so as to remove the mark/word
'SHOPIBAY' from the said company names.
36. As far as prayers made in paragraph 65 (D) and (E) of the plaint,
the plaintiff is held entitled to an award of damages to the tune of Rs. 2
Lakh as also the costs of the suit.
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37. Let a decree-sheet be drawn accordingly.
NAVIN CHAWLA, J.
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