Delhi High Court
Super Cassettes Industries Ltd vs Mr. Wang Zhi Zhu Ce Yong Hu & Others on 11 December, 2008
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
*IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) No.769/2004
%11.12.2008 Date of decision: 11.12.2008
SUPER CASSETTES INDUSTRIES LTD............Plaintiffs
Through: Mr. Dhruv Anand & Mr. K.K.
Khaitan, Advocates
Versus
MR. WANG ZHI ZHU CE YONG HU ....Defendants
& OTHERS
Through: Ex-parte
CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. Whether reporters of Local papers may
be allowed to see the judgment? NO
2. To be referred to the reporter or not? NO
3. Whether the judgment should be reported
in the Digest? NO
RAJIV SAHAI ENDLAW, J.
1. The plaintiff instituted the suit for the relief of permanent injunction restraining the defendants from using the domain name SUPER CASSETTES.COM or from operating any business using the plaintiff's trademark/trade name SUPER CASSETTES or any other name deceptively similar thereto and for transfer of domain name SUPER CASSETTES.COM to the plaintiff from the register of the Registrar GO DADDY SOFTWARE,INC. and for delivery of all impugned material, rendition of accounts and damages in sum of Rs.5 lacs and costs. On an application of the plaintiff, vide ex-parte order dated 23rd July, 2004, the defendants were restrained from using the brand name SUPER CS(OS) 769/2004 Page No.1 of 8 CASSETTES.COM or from operating any business using the plaintiff's trademark or any other mark/name identical to or deceptively similar to the plaintiff's trademark SUPER CASSETTES and which was likely to lead to passing off of the business and goods of the defendants as that of the plaintiff's. The suit was instituted initially against Mr. Wang Zhi Zhu Ce Yong Hu & Mr. Ying ter Wang Ju Le Bu Ltd. both residents of China in whose name the domain name SUPER CASSETTES.COM was stated to be registered. Subsequently, M/s ICL Ltd., USA were impleaded as defendant No.3 on the pleading that in reality it was the defendant No.3 which was behind the impugned domain name. Neither of the defendants could be served in the ordinary way and were vide order dated 18th May, 2007 ordered to be served by publication. Upon the failure any of the defendants to file the written statement or to contest the suit in spite of publication, all of them were vide order dated 14th August, 2007 proceeded against ex-parte and remain ex-parte. The plaintiff has led ex- parte evidence of its Deputy General Manager Shri S.K. Dutta whose affidavit by way of examination in chief has been proved as Exhibit PW1/A and who has tendered the documents Exhibit PW1/1 to PW1/32 into evidence. The ex- parte arguments of the counsel for the plaintiff have been heard.
2. It is the case of the plaintiff and is in evidence that the plaintiff M/s Super Cassettes Industries Ltd. was incorporated in 1983 under the same name and for the purposes of taking over the business being earlier carried on by the promoters of CS(OS) 769/2004 Page No.2 of 8 the plaintiff since the year 1979 in the name of M/s SUPER MUSIC CENTRE; the plaintiff is engaged in the business of consumer electronics, CDs, audio/video, magnetic tapes and cassettes and film production; the plaintiff has rights in over 2000 video titles, about 40,000 Hindi film songs, 30,000 Hindi non-film songs and 50,000 songs in regional languages; M/s Super Cassettes besides being the dominant part of the corporate name of the plaintiff is also the trading style of the plaintiff and it is used by the plaintiff not only in its aforesaid businesses but also in relation to other businesses being carried on by the plaintiff in mineral water, incense sticks, detergent cakes etc.; the plaintiff is also registered owner of the copyright in the artistic logo SCI which denotes SUPER CASSETTES INDUSTRIES. Though the original of the copyright registration has not been proved, photocopy thereof has been filed as "X-50"
and deposition with respect to that has been made and in the absence of any challenge of the defendants, the same is believed. It is further the case of the plaintiff and is in evidence that the trademark and trade name SUPER CASSETTES is always perceived as indicative of the plaintiff; copies of news clippings have been proved as Exhibit PW1/4 to Exhibit PW1/13 wherein the said trade name/trademark is used in the advertisements of the plaintiff.
3. The plaintiff instituted the present suit stating that it learnt in June, 2004 that the domain name SUPER CASSETTES.COM had been registered by the defendant No.2 of which the defendant No.1 was the administrative and contact person; defendants No.1&2 are stated to have further informed the CS(OS) 769/2004 Page No.3 of 8 plaintiff that they are only the virtual office provider and that the real entity behind the said domain name is of the defendant No.3. The website under the domain name www.supercassettes.com was found to be dealing in adult and pornographic images and providing links to other similar hardcore pornographic websites. It is the case of the plaintiff that the activities promoted by the said website are inimical to the corporate image, goodwill and reputation of the plaintiff. It is further the case that the defendants under the impugned domain name were promoting and passing themselves off as the business/associate/affiliate of the plaintiff and passing off their goods and services as that of the plaintiff, in as much as it was the plaintiff alone which was in the trade circles known to be carrying on business in the name and style of SUPER CASSETTES, in which name the defendants had set-up the website aforesaid. It is further the case of the plaintiff that the plaintiff imports a substantial amount of goods from China, where the defendants No.1&2 are situated and the plaintiff's profile also appears in the internet in the website of Chinese Government called China Commodity Net. The defendants are claimed to be cyber pirates whose actions were detrimental to the plaintiff.
4. The witnesses of the plaintiff also deposed that the monetary losses to the tune at least Rs.25 lacs had been caused to the plaintiff owing to the impugned website and the damage to the goodwill and reputation of the plaintiff was immense. The said case/evidence of the plaintiff remains unrebutted. CS(OS) 769/2004 Page No.4 of 8
5. Exhibit PW1/14 shows that the domain name SUPER CASSETTES. COM was created on 27th September, 2003 and was to expire on 27th September, 2004. The plaintiff company with the name SUPER CASSETTES as dominant part thereof was incorporated 20 years prior thereto in 1983. The business being carried on through the website www.supercassetes.com is also of films i.e. same as that of the plaintiff. Even though, the plaintiff is not the registered owner of the trademark SUPER CASSETTES but again it is the unrebutted evidence that SUPER CASSETTES is the corporate name and trade name of the plaintiff. This court in YAHOO,INC VS. AKASH ARORA 1999 PTC (19)201 held that internet is a global collection of computer networks linking millions of public and private computers around the world; internet is now recognized as an international system, a communication medium that allows anyone from any part of the globe with access to the internet to freely exchange information and share data; it provides information about various corporations and products. It was further held that the law relating to passing off is fairly well settled; the principle underlying the action is that no man is entitled to carry on his business in such a way as to lead to the belief that he is carrying on business of another or to lead to the belief that he is carrying on or has any connection with the business carried on by another man; that passing off action is a common law remedy; if the contesting parties are involved in the same line or similar line of business, there is grave and immense possibility for confusion and deception and therefore there is probability of sufferance of damage. It was further held that domain name is more than a mere internet address for it also identifies the CS(OS) 769/2004 Page No.5 of 8 internet site to those who reach it, much like a person's name identifies a particular person or more relevant to trademark disputes, a company's name identifies a specific company. This court also cited with approval MARKS & SPENCER VS. One- in-a MILLION 1998 FSR 265 where it was held that the name Marks & Spencer could not have been chosen for any other reason than that it was associated with the well-known Retailing Group and that where the value of a name consists solely in its resemblance to the name or trademark of another enterprise, the court will normally assume that the public is likely to be deceived, for why else would the defendant chose it. It was further held that anyone coming upon a website called http;//marks&spencer.co.uk would naturally assume that it was that of the plaintiff in that case.
6. Similarly, this court in DR. REDDY'S LABORATORIES LIMITED VS. MANU KOSURI 2001 PTC 859 held the domain name "DR. REDDY'S LAB.COM" as similar to the plaintiff's trademark "DR. REDDY'S". Though both the aforesaid judgments of this court were on applications for interim relief but the law laid down therein would apply at the stage of final disposal of the suit also.
7. This court again in TATA SONS LTD. VS. MANU KOSURI 2001 PTC 432 also held that it is now settled law that with the advent of modern technology domain names or internet sites are entitled to protection as a trademark because they are more than a mere address and passed a decree for permanent CS(OS) 769/2004 Page No.6 of 8 injunction against the defendants in that case from using domain names containing the word "TATA" which was the trademark of the plaintiff in that case.
8. The aforesaid case law squarely applies to the facts of the present case. The creation of the domain name www.supercassetes.com in 2003, by which time the plaintiff had been carrying on business for more than 20 years under the said corporate name, clearly is an attempt to pass off the business/services offered through the said domain name as those of the plaintiff and would be detrimental to the interest of the plaintiff. The services/business being transacted through the said domain name is also contrary to the corporate philosophy and image of the plaintiff and for this reason also is detrimental to the plaintiff. Exhibit PW1/25 which is a copy of the decision of WIPO Arbitration and Mediation Centre shows that the defendants No.1&2 were found guilty of similarly misusing the trademark of the complainant in that case also. The defendants appear to have made it a practice to register domain names with the trademark/trade name of successful businesses so as to reap undue advantage to themselves thereof. Accordingly, the plaintiff is entitled to the decree of permanent injunction as claimed as well as a decree directing the defendants to, if have renewed the registration of the impugned domain name, to transfer the same to the plaintiff.
9. As far as the claim of the plaintiff for damages is concerned, as aforesaid, the document of the plaintiff itself shows that the CS(OS) 769/2004 Page No.7 of 8 registration of the impugned domain name was till 27th September, 2004 only. There is nothing to suggest that the said registration was renewed thereafter. Ordinary, I would have, in the circumstances, not been inclined to award any damages to the plaintiff but considering the fact that the name of the plaintiff has been used for business/services which has been deposed to be anti the corporate philosophy and image of the plaintiff, I also pass a decree for damages in sum of Rs.5 lacs against the defendants jointly and severally.
10. A decree for permanent injunction is, therefore, passed in terms of para 31 A of the plaint and a decree for mandatory injunction is passed directing the defendants to, if still holding the domain name SUPER CASSETTES.COM to transfer the same to the plaintiff. However, in the absence of the plaintiff having impleaded the Registrar of the domain name as party to the suit, no direction can be issued against the Registrar but it is expected that the Registrar shall comply with the order of this court. A decree for damages in the sum of Rs.5 lacs is also passed in favour of the plaintiff and against the defendants jointly and severally. The plaintiff shall also be entitled to costs of the suit from the defendants.
RAJIV SAHAI ENDLAW JUDGE December 11, 2008 PP CS(OS) 769/2004 Page No.8 of 8