Indofill Organic Industries Ltd. vs Mr.Amar Vakil & Ors.
2011 Latest Caselaw 93 Del

*             IN THE HIGH COURT OF DELHI AT NEW DELHI

+                     CS(OS) NO.2431/2007

                                         Date of Decision : 07.01.2011

INDOFILL ORGANIC INDUSTRIES LTD.         ......Plaintiff
                      Through: Mr.     Sudhir    Chandra,
                               Sr.Adv. with Mr.P.Bahadur,
                               Advocate.

                                     Versus

MR.AMAR VAKIL & ORS.                                  ...... Defendants
                                Through:      Nemo.


CORAM :
HON'BLE MR. JUSTICE V.K. SHALI

1.     Whether Reporters of local papers may be
       allowed to see the judgment?                         YES
2.     To be referred to the Reporter or not ?              NO
3.     Whether the judgment should be reported
       in the Digest ?                                      NO

V.K. SHALI, J.

1. This judgment shall dispose of the suit for permanent

injunction, mandatory injunction and damages for

infringement and /or passing off, under the Trademarks Act,

1999 against the defendants.

2. Briefly stated the facts of the case, as alleged in the plaint are

that the plaintiff is a company by the name of INDOFILL

ORGANIC INDUSTRIES LTD. which is duly incorporated

under the provisions of The Companies Act, 1956 having its

registered office at Dr. Annie Besant Road, Mumbai-400030

and branch office at 6-FF, Stutee Building, Bank Street, Karol

Bagh, New Delhi-05. The present suit has been filed through

Mr.Mehmood M.Abdi, Chief Manager-Legal who is duly

authorized to sign, verify and institute the suit.

3. The plaintiff is purported to be carrying on business of

manufacturing, buying, selling, importing, exporting and

generally dealing with agricultural chemicals and specialty

and performance chemicals. It is alleged that they have a

website by the name of „indofil.com‟. It is stated that on

22.11.1982 INDOFIL obtained its first trademark registration

for "Indofil" in India under all classes specified, i.e. 1 to 42

(Ex.PW1/3) (colly) to Ex.PW1/5 (colly)). The turnover of the

plaintiff company during the financial year 2006-07 was

stated to be around `403/- crores (Ex.PW1/11) out of which

the export business was approximately of `78 crores

(Ex.PW1/12). The net expenditure towards the advertising

and publicity was alleged to be to the tune of `5.60 crores

(Ex.PW1/9). The various advertisements, reports, newspaper

articles, in relation to indofil are exhibited as

Ex.PW1/18(colly). The website which is operated and duly

registered with the Network Solutions LLC on 31.10.2000 is

exhibited as Ex.PW1/13 and Ex.PW1/14.

4. It is alleged that the plaintiff‟s company, sometime in month

of January, 2006 came across the existence of another

domain name registered as 'Indofil.com' which was

completely defunct. The domain name „Indofil.com‟ was

registered in July, 1998 in the name of defendant no.1 with

defendant no.3 Ex.PW1/19.

5. On discovery of this fact, the plaintiff company was

apprehending that serious damage and prejudice will be

caused to the business and interest by this defunct website

which was alleged to be belonging to a cyber squatter. This

necessitated the plaintiff company taking a recourse to the

mechanism under the Uniform Domain Name Dispute

Resolution Policy of the WIPO by filing a complaint against

the defendant no.1 on 26.6.2006 praying for transfer of the

domain name „indofil.com‟ from defendant no.1 to itself that

is Ex.PW1/15 (colly). The defendant no.1 is stated to have

filed its response to the said complaint of the plaintiff before

the WIPO Centre on 18.7.2006. The defence which is

purported to have been taken by defendant no.1 was that

indofil was a short form of „industries of illinois‟.

6. Defendant no.2 herein was a non-profit Organization and

incorporated on 12.10.2004, for the purpose of promoting

Illinois base business. It was admitted by them that the

domain name adopted by them was defunct as it was being

redesigned and funding for the same was awaited Ex.PW1/16

(colly). On the basis of this complaint and reply, WIPO Centre

is stated to have given its decision vide its Administrative

Panel decision dated 14.8.2006, wherein it was accepted that

the domain name of defendant no.1 was identical to the

plaintiff‟s trademark but rejected the complaint of the plaintiff

(Ex.PW1/17).

7. After the rejection of the complaint of the plaintiff, the

defendants have alleged to have altered the contents on the

disputed website from „temporarily unavailable" to something

new like:-

„We regret to inform that INDOFIL is experiencing financial difficulties. While we await funding from external sources, your orders and/or deliveries may be delayed or cancelled".

8. On the basis of this information being logged in on the

opening of the website, it was alleged by the plaintiff that it

was completely contrary to the stand which defendants had

taken before the WIPO Centre. It was alleged by the plaintiff

that the change in the stance of the defendant gave an

impression that it was a website of manufacturing/trading

company which is like that of the plaintiff which was allegedly

in extreme financial distress and therefore, unable to make

these commitments. It is alleged that no connection

whatsoever was disclosed between the website of defendant

no.2 Ex.PW/1/18 (colly) with that of the plaintiff.

9. The plaintiff had taken the plea that since the defendant is

not a manufacturing or trading concern and has changed the

contents of its website, the only irresistible conclusion which

can be drawn is that this was malicious and was created with

an ulterior motive to attribute as if the impugned website

belonged to the plaintiff and consequently, cause loss and

damage to the plaintiff. It is alleged that since the plaintiff

came to know about the alternative malicious content of the

website, it had issued a formal caution notice on its own

website Ex.PW1/20 to forewarn the defendants and all other

concerned persons, however, in the meantime, it started

receiving queries from various dealers across the country

including dealers from Delhi who used to visit the said

disputed site (Ex.PW1/21) regarding the financial health of

the plaintiff company. It is alleged that this constrained them

to file the present suit against the defendant.

10. The case of the plaintiff is that the present suit has been filed

by the plaintiff against the defendants in this background and

in terms of para 4(k) of the Uniform Domain Name Dispute

Resolution Policy, which reads as under:-

"4(k) Availability of Court proceedings. The mandatory administrative proceeding requirements set forth in paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded....

11. The plaintiff was granted an ex parte ad interim injunction on

8.2.2008 and 29.2.2008, against the defendants prohibiting

them from using the domain name which they were

purportedly using and which was offending and violating the

rights in respect of the website of the plaintiff.

12. It is alleged that the plaintiff had also complied with the

provisions of Order 39 Rule 3 CPC in terms of the directions

passed by the Court and also served copy of the notice on the

defendant both by post and courier but despite this, neither

the defendant no.1 nor defendant no.3 appeared while as the

service report of defendant no.2 was that of refusal. It is

alleged that since the defendants had failed to appear despite

service or file their response/written statement to the suit of

the plaintiff, accordingly, the Court proceeded against all

three of them ex parte vide order dated 5.8.2008.

13. It is now in this background that the plaintiff is alleging that

the defendant on account of the alleged, constant user of the

website belonging to the plaintiff by using a deceptively

similar name is causing immeasurable damage to the

reputation and business of the plaintiff and it has accordingly

prayed for grant of decree restraining the defendants from

using the said domain name of the plaintiffs and transfer of

the same to the plaintiff.

14. The plaintiff has also claimed interest @20% and damages

which have been quantified by him at `58 lacs.

15. The plaintiff in support of its case has filed an affidavit by way

of evidence of Mr.Mehmood M.Abdi by whom the plaint has

been signed, verified and instituted. In addition to this, the

affidavit of one Mr.S.V.Shah has also been filed on record to

identify with regard to the signatures and the documents

Ex.PW1/13 to Ex.PW1/20 which have been proved by the

plaintiff.

16. I have heard the learned senior counsel for the plaintiff and

gone through the evidence.

17. Mr.Chandra, the learned senior counsel for the plaintiff has

also referred to the following authorities:- Times Internet

Ltd. Vs. Belize Domain Whois Service Ltd. & Ors.

MANU/DE/2963/2010, Pfizer Products Inc. Vs.

Mr.Altamash Khan & Ors. Manu/DE/2007/1825,

Beiersdorf A.G. Vs. Ajay Sukhwani & Anr. 156(2009) DLT

83, and Tata Sons Ltd. Vs. Ghassan Yacoub & Ors.

Manu/DE/1150/2004.

18. The testimony of both Mr.Mehmood M.Abdi as well as the

supporting evidence of Mr.Shah fully supports the case of the

plaintiff as set up in the plaint. Various documents have

been duly proved in accordance with law which have been

given the exhibit marks and have been referred to

hereinabove while giving the facts. Since the defendants have

been set ex parte, both these witnesses have not been cross

examined and consequently their testimony goes completely

unchallenged. There is absolutely no reason to doubt the

credibility of both these witnesses. There is an extreme

preponderance of probability in favour of the plaintiff to

establish that the defendant is using the website by the name

of „indofil.com‟ which is also website of the plaintiff and

thereby causing damage to the reputation and goodwill of the

plaintiff by surreptitiously adopting the said website.

19. I accordingly feel that there is no impediment in passing an

ex parte decree in favour of the plaintiff and against the

defendants in terms of the prayer clause made by him.

20. The learned senior counsel for the plaintiff has referred to the

judgments of this Court in case titled Super Cassettes

Industries Ltd. Vs. Mr.Whang Zhi Zhu Ce Yong Hu & Ors.

Manu/DE/2000/2008 in CS(OS) No.769/2004 decided on

11.12.2008, which clearly supports the case of the plaintiff.

21. I accordingly, decree the suit in terms of the prayer clause

restraining the defendants from using the domain name

indofil by way of following manner:-

(i) "By way of a decree of permanent and mandatory injunction direct defendant nos. 1, 2 and 3 to forthwith remove the website operated under the disputed domain name "indofil.com‟, as well as the contents of the said website.

(ii) By way of a decree of permanent and mandatory injunction restraining defendant no.1, defendant no. 2 and its Directors, employees, office bearers, agents and representatives from, in any manner, operating website under the dispute domain name - "indofil.com" or any other website having the domain name "indofil" in any combination whatsoever.

(iii) By way of a decree of permanent and mandatory injunction defendant no. 1, defendant no. 2 and its Directors, employees, office bearers, agents and representatives from selling, transferring, alienating, assigning or in any other manner creating third party rights with regard to its website under the disputed domain name "indofil.com".

(iv) By way of a decree of permanent and mandatory injunction restraining defendant no. 3 from permitting the defendant no. 1 and defendant no. 2 from operating, selling, transferring, alienating, creating third party rights or in any other manner dealing with the website under the disputed domain name "indofil.com", which is registered with the defendant no. 3.

(v) By way of a decree of permanent and mandatory injunction restraining defendant no. 3 from registering any domain name having the word "indofil" in any combination whatsoever, in favour of any person or organization, other than the plaintiff herein.

              (vi)    By way of a decree of permanent and
                       mandatory      injunction    directing     the

defendant no. 3 to transfer the disputed domain name, "indofil.com", from defendant no. 1 to the plaintiff company, on its regular terms, conditions and charges.

(vii) Grant damages of Rs.20,00,000/- along with pendente lite and future interest @9% per annum till receipt of money, against the defendant nos. 1 and 2 and in favour of the plaintiff company, for causing financial loss to the Indofil Chemicals Company, unit of plaintiff company on account of the contents on the disputed website i.e. "indofil.com". The interest which has been claimed by the plaintiff is at the rate of 18% which is admittedly at a very high rate. The normal rate of interest on the FD‟s even for the fairly long tenure is @ 7 to 8% or so. Therefore, I feel the interest of justice would be met in case interest @ 9% is granted, both pendente lite as well as future interest.

(viii) Pass such further and other orders as this Hon‟ble Court may deem fit and proper in the facts and circumstances of the present case."

22. Decree sheet be drawn accordingly.

23. File be consigned to the Record Room.

V.K. SHALI, J.

JANUARY 07, 2011 RN