The Federal Bank Ltd. vs Matt Hiller And Anr.
2007 Latest Caselaw 1762 Del

JUDGMENT

Sanjay Kishan Kaul, J.

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1. The plaintiff has instituted the present suit for declaration and permanent injunction declaring the plaintiff bank to be the exclusive owner of the brand and/or domain name 'federal bank' and restraining the defendants from the use of the domain name/URL 'www.federalbank.co.in' or any other domain name so resembling the said domain name/URL.

2. The plaintiff is a Scheduled Banking Company within the Banking Regulation Act, 1949 and duly registered under the Companies Act, 1956. The certified Memorandum of Association and Articles of Association of the plaintiff have been marked as Ex. PW1/2. The present suit has been instituted by one Shri S.K. Laul, the DGM and Constituted Attorney of the plaintiff by virtue of a Power of Attorney in his favor dated 28-05-1999 (Ex. PW1/1).

3. It is stated that the plaintiff bank was incorporated in 1931 under the name of Travancore Federal Bank Ltd. which was later changed to 'The Federal Bank Limited' with the permission of the Government in 1949. Since 1964, the growth of the plaintiff's bank has accelerated horizontally and vertically whereby it took over the asstes and liabilities of many banks including The Cochin Union Bank Ltd., Trichur, The Alleppey Bank Ltd., Alleppey, The St. George Union Bank Ltd., Puthenpally etc. Recently the plaintiff bank took over Ganesh Bank of Kurundwad having 32 branches as per the scheme of amalgamation sanctioned by the Government of India on the basis of the recommendations of RBI.

4. It is stated that in 1970 the plaintiff bank became a scheduled commercial bank and in 1972 it became an authorized dealer in foreign exchange.

5. It is stated that the growing stature of the Plaintiff Bank stock could be indicated through the accelerated stake of FIIL's in the plaintiff bank from a mere 0.23% to over 7% as on 30-06-2004 It has alos been raked among the top 300 banks in Asia by a Singapore based journal, Asian Banker in 2003.

6. It is stated that the plaintiff bank with 508 branches and 338 ATMs is the largest scheduled bank in the state of Kerela among the private banks. The plaintiff bank is a trusted brand in India as well as abroad with over 4 million customers and around 28.32% of the deposit portfolio which is contributed by the NRIs.

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7. It is stated that the plaintiff bank has been recognized as one of the top bank/financial institution in India and in 2005 was awarded for 'Best Use of Information Technology in Retail Banking' by IBA and Infosys.

8. It is further stated that plaintiff bank was first, among the traditional banks in the country to introduce Internet Banking Service through 'FedNet'. The first Electronic Telephone Bill payment was also done through the plaintiff bank. It was first among the older banks to have an e-shopping gateway, to implement an Express Remittance facility from abroad and to provide RTGS facility in all its braches. It was the first bank to bring technology based delivery channels like ATM, mobile alerts, mobile banking service etc.

9. It is stated that the plaintiff bank was earlier owning and operating its website in the name of Federal Bank under the domain name www.federal-bank.com and later changed the same to www.federalbank.co.in in the year 2003. Documents showing details of the registration of the domain name of the plaintiff bank is exhibited as Ex. PW1/3. It is further stated that owing to its continuous use for the last 75 years the word 'Federal Bank' has built tremendous reputation and acquired secondary meaning and as such is closely associated by the members in the trade, customers and people in India as well as abroad.

10. It is also stated that the plaintiff bank has over the last 75 years invested several crores of rupees in brand building activities, advertising, marketing like online promotions, wall paintings, display of banners etc. which has been detailed in para 16 of the plaint.

11. It is the case of the plaintiff that in August 2006, the plaintiff received the information that defendant No. 1 had started using a deceptively similar domain name i.e. www.federalbank.co.in for promoting domains/websites relating to banking, finance and related services and was further forwarding them to websites of some other Banks. Details of registration of the domain name of defendant No. 1 is marked and exhibited as Ex. PW1/4 and details of the products and services offered by defendant No. 1 is Ex. 1/5. The plaintiff claims to have carried out a search of the data base of the concerned registering authority and it is there from that the domain names were found registered in the name of the defendant No. 1. It was further noticed by the plaintiff bank that defendant No. 1 was not a financial institution or a banking company itself and had chosen the said domain name of the plaintiff only with a malafide intention of taking advantage of the goodwill and reputation of the plaintiff bank.

12. The plaintiff states that the use of such domain name by defendant No. 1 is in direct conflict with the plaintiff's business and misuse of its goodwill. It is also an attempt to appropriate a market so created by the plaintiff as also to create confusion in the market place. This has resulted in causing irreparable loss and damage to the goodwill and reputation of the plaintiff bank.

13. The plaintiff states that the adoption and usage of deceptively and confusingly similar domain name by defendant No. 1 is a malafide attempt to pass off its products/services as that of the plaintiff bank in view of the Page 2512 fact that defendant No. 1 has no plausible reason for adoption of the said country level SLD (domain name) and that too under the 'IN' registry since it has no business establishment in India by the name of 'Federal bank'.

14. In view of the aforesaid, the plaintiff has filed the present suit in terms of Sub-clauses (i) to (v) of the prayer clause of the plaint.

15. Summons were directed to be issued to the defendants vide order dated 18-10-2006 returnable on 17-11-2006. On the same day, ex parte ad interim injunction was granted in favor of the plaintiffs and against defendant No. 1 and defendant No. 2 was directed to suspend its services as a service provider under the said domain name.

16. On service of summons on the defendant none appeared on their behalf. Vide order dated 13-07-2007 the defendant No. 1 was proceeded ex parte and the plaintiff was directed to file affidavit/s by way of evidence. Affidavit of Shri S.K. Laul, authorised representative of the plaintiff was filed and he was examined as PW-1.

17. PW-1 in his affidavit affirmed the various averments made in the plaint. He also proved the copy of power of attorney in his favor given by the plaintiff company as Ex. PW1/1, certified MOA and AOA as Ex. PW1/2, domain name registrations of plaintiff as Ex. PW1/3, domain name registrations of defendant No. 1 as Ex. Nos. PW1/4 and details of the products and services offered by defendant No. 1, as Ex. PW1/5.

18. The aforesaid facts and circumstances show that the plaintiff has the ownership of the said domain name and therefore no other person including defendant No. 1 has any right to adopt and use the said domain name of the plaintiff.

19. The defendants have attempted to copy the domain name of the plaintiff and pass off its products/services as that of the plaintiff. The defendants have no right to use this trade mark/domain name and trade name that too in respect of same products/services.

20. Trade mark includes the trade name. The reputation or the goodwill of the business is often attached to the trade name and if the same is being used and copied by others, it causes injury to such business. In the present case, the plaintiff bank has been carrying on its business for more than 75 years and assiduously built its goodwill and reputation in the market. Defendant No. 1 by getting a deceptively similar domain name registered has attempted to take advantage of the goodwill and reputation of such mark/domain name. This has caused unfair and detrimental loss and damage to the plaintiff as it has resulted in diluting the brand name of the plaintiff. With this, irreparable harm is being caused to the plaintiff since defendant No. 1 is poaching on to the customer base of the plaintiff and deceiving them to believe such services offered by defendant No. 1 to be that of the plaintiff.

21. Various averments made in the plaint have gone unrebutted as the defendant No. 1 has not come forward with any defense. The plaintiff has, therefore, been able to prove that the defendant No. 1 has been infringing the trademark/domain name of the plaintiff.

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22. In view of the aforesaid, the plaintiff is entitled to a decree of permanent injunction against the defendant No. 1 in terms of Sub-clauses (i), (ii) and (iii) and against defendant No. 2 in terms of Sub-clause (iv) of the prayer clause of the plaint. The plaintiff shall also be entitled to costs from defendant No. 1.

23. Decree sheet be drawn up accordingly.