Super Cassettes Industries Ltd vs Mr. Wang Zhi Zhu Ce Yong Hu & Others
2008 Latest Caselaw 2217 Del

  *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

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

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

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.

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

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

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

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