Delhi High Court
Tata Sons Limited vs Mr. Manu Kishori & Ors. on 9 March, 2001
Equivalent citations: 2001IIIAD(DELHI)545, 90(2001)DLT659, 2001(58)DRJ306, 2001(2)RAJ311
Author: Mukul Mudgal
Bench: Mukul Mudgal
ORDER Mukul Mudgal, J.
1. This suit, filed on behalf of the plaintiff-Company seeks permanent injunction, restraining the defendants from passing off, dilution of trademarks and for rendition of accounts, damages, delivery-up, etc. The defendant No.1, Mr. Manu Kosuri is the Managing Director of defendant No.2, M/s Ramadasoft, which is engaged in the business of registering domain names in India. Name of defendant No.3-Network Solutions Inc. has already been directed to be deleted from the array of the defendants as per Order dated 30th April, 1999. The defendants were duly served but did not enter appearance and by the Order of this Court dated 23rd August, 1999, the defendants have been proceeded ex-parte.
2. The plaintiff has averred as under:-
(a) The plaintiff is the Registered Proprietor of the trademark TATA since 1917 in relation to various goods, in various classes. The plaintiff also has its trademarks registered in 9 other countries, besides India in various classes. It is further submitted that the plaintiff is one of the oldest and largest business conglomerates in India and its reputation spills globally as it has various business abroad as well.
(b) The suit arises on the account of misappropriation of the plaintiff's trademark TATA by the defendants as a part of a series of domain names that have been registered by them incorporating the well-known and famous trademark TATA. The domain names involved in the present suit are as follows:
"jrdtata.com ratantata.com tatahoneywell.com tatayodogawa.com tatateleservices.com tatassl.com tatapowerco.com tatahydro.com tatawestide.com tatatimken.com"
(c) The learned counsel for the plaintiff has relied upon the judgments reported as Yahoo Inc! Vs Akash Arora 1999 PTC 201; British Telecom Plc. Vs One in a Million 1999 FSR 1 & Rediff Communications Ltd. Vs Cyberbooth AIR 2000 Bombay 27 to submit that the trademark law applies with equal force on the Internet as it does in the physical world.
(d) The plaintiff's case is that since its trademark and names TATA is already perceived as a household name due to the involvement of its companies in almost every form of business activity, a business under identical name would attract actual or potential customers' attention and induce them to subscribe to the service of the said defendants or to deal in some manner with the defendants operating under the domain names believing them to be licensed or authorized by the plaintiff to do the said business. The plaintiff further states that the entire series of domain names that have been registered by the defendants incorporate the trademark TATA of the plaintiff, in complete disregard of the proprietory rights of the plaintiff in the said trademark and defendants not only misappropriated the name of several of the plaintiff's group companies but also registered domain names like "jrdtata.com" and "ratantata.com". It is plaintiff's contention that the defendants cannot under any circumstances claim any rights in the trademark TATA as the plaintiff has not authorised its use by the defendants in any manner whatsoever. That the defendant's use of the impugned mark/name is thus aimed at diverting the business of the plaintiff and would irreparably damage the reputation and goodwill of the plaintiff by tarnishing of the asset, i.e., trademark TATA by the aforesaid activities.
3. The defendants had not put in their appearance despite service. Accordingly, the defendants were proceeded ex-parte by Order dated 23rd August, 1999 and the plaintiff-Company was directed to file ex-parte evidence by way of affidavit. Thereafter the plaintiff-Company has filed evidence by way of affidavits of Mr. Anil Bhasin & Mr. R.R. Shastri to prove its case. The averments made in the plaint have been supported by the contents of the aforesaid affidavits.
4. The plaintiff-Company has filed the following documents to prove its case:-
Sl. Description Exhibit Nos. Nos. 1. Power of Attorney in favor of PW-1/1 Mr. Anil Bhasin 2. Tata enterprises brochure PW-2/1 3. Certificates for use i n legal PW-2/3 proceedings for the trademark TATA 4. Previous orders granted by this Court PW-2/4 in favor of the plaintiff 5. Printouts from the Internet of the PW-2/5 domain name registrations obtained by the defendants 6. Affidavit of the Network Solutions PW-2/6 Inc. submitting title papers of the disputed domain names in this Court
5. By its affidavits of evidence and the documents exhibited, the plaintiff-Company has proved the averments made in the plaint. There is no rebuttal of these pleas.
6. In Yahoo Inc! Vs Akash Arora 1999 PTC 201 while granting an injunction restraining the defendants from using Yahoo either as a part of its domain name or as a trademark, learned Single Judge of this Court applied the law relating to trademark to a dispute regarding Internet. It was further held that considering the vast import of Internet and its user, several Internet users are not sophisticated enough to distinguish between the domain names of the parties. It was also held that with the ease of access from all corners of the world, Courts should take a strict view of copying as the potentiality of the harm is far greater because of the easy access and reach by any one from every corner of the globe. The Court also held after analyzing Section 27 and Section 29 of the Trade & Merchandise Marks Act, that passing off action can be maintained in respect of services as well as goods.
7. In British Telecom Plc. Vs One in a Million 1999 FSR 1 the Court held that in the case of a registration of domain names of third party trademarks of well-known names, there was jurisdiction to grant injunctive relief when the defendant was equipped with or was intending to equip another with an instrument of fraud. It was also held that a name which would by reason of similarly to the name of another, inherently lead to passing off, was such an instrument. It was held that in case it would not inherently lead to passing off but the Court concluded on the facts without regard to the defendant's intention that the name was produced to enable passing off, was adapted to be used for passing off and, if used, was likely to be used fraudulently, an injunction would be appropriate.
8. In Rediff Communications Ltd. Vs Cyberbooth AIR 2000 Bombay 27 the user of the Website "www.radiff.com" was injuncted as it was held deceptively similar to the plaintiff's website "www.rediff.com". In the above decision, the Court held that the Internet domain names are of importance and can be a valuable corporate asset and such domain name is more than an Internet address and is entitled to protection equal to a trade mark. It was held that with the advancement and progress in technology the services rendered by an Internet site have also to be recognized and accepted and are being given protection from passing off.
9. In view of the above decisions, I am satisfied that it is now settled law that with the advent of modern technology particularly that relating to cyberspace, domain names or Internet sites are entitled to protection as a trade mark because they are more than a mere address. The rendering of Internet services is also entitled to protection in the same way as goods and services are, and trade mark law applies to activities on Internet.
10. Accordingly, the plaintiff-Company is entitled to a decree with costs. The suit is decreed in favor of the plaintiff and against the defendants in the following terms:
(i) The defendants, their partners or proprietors, officers, servants, agents and representatives are restrained from using domain names "www.jrdtata.com", "www.ratantata.com", "www.tatahoneywell.com", "www.tatayodogawa.com," "www.tatateleservices.com", "www.tatassl.com", "www.tatapowerco.com", "www.tatahydro.com", "www.tatawestside.com", "www.tatatimken.com" or operating any business, and making, selling, offering for sale, advertising and in any manner dealing in any goods or services under any domain names containing the word TATA or any other mark/name identical with or deceptively similar to the plaintiff's trade mark TATA and
(ii) An order of permanent injunction is passed in favor of the plaintiff and against the defendants, restraining the defendants, their principal officers, servants, representatives and agents or any of them, from using the trademark and name TATA in any manner whatsoever or operating any business, and making, selling, offering for sale, advertising and in any manner dealing in any goods or services, under any other domain names containing the word TATA or any other mark/name which is identical with or deceptively similar to the plaintiff's trademark TATA or containing the word TATA on the Internet or otherwise and from doing any other causing dilution of the trademark TATA.
There shall be no orders as to costs.
Decree sheet be drawn up accordingly.
The suit is accordingly disposed of.