Delhi High Court
Bharti Airtel Ltd & Ors vs Mr Rajeev Kumar & Ors on 17 October, 2011
Author: Manmohan Singh
* HIGH COURT OF DELHI : NEW DELHI
Judgment decided on: 17.10.2011
+ CS (OS) No.576/2007
Bharti Airtel Ltd & Ors ...Plaintiffs
Through : Ms. Pratibha M. Singh, Adv.
Versus
Mr Rajeev Kumar & Ors ...Defendants
Through: None
Coram:
HON'BLE MR. JUSTICE MANMOHAN SINGH
1. Whether the Reporters of local papers may
be allowed to see the judgment? Yes
2. To be referred to Reporter or not? Yes
3. Whether the judgment should be reported Yes
in the Digest?
MANMOHAN SINGH, J. (Oral)
1. Plaintiff No. 1 is Bharti Airtel Ltd. (earlier known as Bharti
Televenture Ltd.). The plaintiff No. 2 is Bharti Overseas Trading
Company now known as Bharti Enterprises is a registered partnership firm.
The plaintiff No. 3 is Bharti Retail Pvt. Ltd.
2. The plaintiffs have filed the present suit for permanent
injunction restraining infringement of registered trade mark "BHARTI" by
registration of domain names "BHARTIRETAIL.COM" &
"BHATIRETAIL.IN" and for passing off, acts of unfair competition,
dilution and damages against the defendants.
CASE OF THE PLAINTIFFS
3. The plaintiffs are a part of the business group known as the
Bharti group of Companies.
4. The Mark BHARTI was adopted by the plaintiffs in the year
1983 and the same has been in continuous use since then. The total
numbers of companies at the time of filing of the present suit with the
word/mark "Bharti" as the prominent part of the trading style/corporate
name are more than fifteen.
5. The details of names of the said companies and the respective
date of incorporation are as under:-
Bharti Overseas Trading Company 1980
Bharti Infotel Private Ltd 4.3.1983
(formely known as Bharti
Enterprises Pvt Ltd and name
changed to Bharti Infotel Pvt w.e.f
3.6.2006
Bharti Telecom Ltd. 29.7.1985
Bharti Cellular Ltd 20.3.1992
(merged with Bharti Airtel Ltd
w.e.f 2005)
Bharti Broadband Ltd 10.11.1993
(formely known as Comnet Max
Limited and name changed to
Bharti Broadband Limited w.e.f
23.6.2005)
Bharti Hexacom Limited 28.4.1995
Bharti Airtel Limited 7.7.1995
(formerly known as Bharti Tele-
Ventures Limited and name
changed to Bharti Airtel Limited
w.e.f. 24.4.2006)
Bharti Global Ltd 2.9.1997
Bharti Comtel Ltd 5.12.1997
Bharti Teletech ltd 30.3.1999
Bharti Telesoft Ltd 7.5.1999
Bharti Aquanet Ltd 3.10.2000
Bharti Axa Life Insurance 27.10.2005
Company Ltd
Bharti Telemedia Ltd 30.11.2006
Bharti Infratel Ltd 30.11.2006
Bharti Retail Pvt Ltd 7.2.2007
Bharti Resources Pvt Ltd 7.2.2007
6. It is submitted by the plaintiffs that the Bharti Group of
Companies is one of the leading private sector companies in the country.
Its businesses vary from telecommunications, insurance, manufacture of
telephone equipment, information technology, Agri-products exports etc.
7. The trade mark "Bharti" after adoption in 1983 and has since
then formed a prominent, inalienable and important part of the plaintiffs‟
group and its businesses.
8. The Bharti Group is a leader in the field of telecommunications
in India with more than 37.25 million customers. The plaintiffs group
provides various kinds of telecommunication services including cellular
services, landline services. It also provides broad-band and internet
services. The plaintiffs‟ business and growth is one of the success stories
of Indian business and the Group is now expanding from
telecommunications in India to international operations as also following
into various other businesses.
9. Apart from incorporating the company i.e., plaintiff No.3, the
plaintiffs also registered the domain name "bharti-retail.com" and "bharti-
retail.in". The original printouts of WHOIS search result of the plaintiffs‟
domain name "bharti-retail.com" and "bharti-retail.in" have already been
filed. These were created on 20.02.2007. The same have now been
renewed as well and, therefore, the original print of WHOIS search result
showing the present position of plaintiffs‟ domain name "bharti-
retail.com" and "bharti-retail.in" have been filed.
10. It is alleged by the plaintiffs that the plaintiffs are the
proprietors of the mark BHARTI since the year 1983. The plaintiffs have
spent enormous amounts of money in advertising and promoting their
activities under the name/ mark BHARTI and have sponsored numerous
events including cricket matches. The mark BHARTI is the most essential
and prominent feature of the complainant‟s/plaintiffs‟ trade and corporate
name. The word BHARTI has become synonymous with the business of
the plaintiffs and is associated exclusively with them. The said word
BHARTI has in the context of any business in India acquired a secondary
meaning and is exclusively associated with the plaintiffs.
11. The mark BHARTI is the exclusive property of the plaintiffs
and no other party has a right to adopt the said mark or any other mark
either as a trademark, or as a domain name or as a name of any
company/firm. The plaintiffs have applied for the registration of the
trademark BHARTI under various classes and the same are now registered.
It is further submitted that the details of the trade mark registrations in the
mark "BHARTI" in various classes in favour of the plaintiffs‟‟ are as
follows:-.
S.No T.M. No Particulars Class Date STATUS
1. 890359 I‟m PROUD 9 7.12.1999 Registered
TO BE A
BHARTI-
Label
2. 993500 BHARTI(labe 5 28.2.2001 Registered
l New
Corporate
logo)
3. 993494 BHARTI(labe 9 28.2.2001 Registered
l New
Corporate
logo)
4. 993498 BHARTI(labe 16 28.2.2001 Registered
l New
Corporate
logo)
5. 993501 BHARTI 28 28.2.2001 Registered
6. 993495 BHARTI 9 28.2.2001 Registered
(label)
building
telecom-
building
partnerships
7. 993499 BHARTI 16 28.2.2001 Registered
8. 993502 BHARTI 28 28.2.2001 Registered
9. 1256049 BHARTI 38 18.12.2003 Registered
10. 1291327 BHART 38 21.6.2004 Registered
LIVE-word
per se
12. It is stated that the use of the mark BHARTI by any third party
constitutes infringement of trademark under section 28, 29 of the Trade
Marks Act, 1999. The plaintiffs not only have common law rights but also
a statutory right to protect the mark BHARTI.
13. As per plaintiffs, they also have various domain name
registrations in their favour which consist of the word BHARTI. Original
printout of WHOIS search of plaintiffs‟ domain name www.bharti.com has
already been filed. The same has now been renewed as well and therefore,
the original printout of WHOIS search showing present position of the said
domain name have been annexed.
14. A list of few such domain names of the plaintiffs are set out
hereunder:
S.No Name
1. Bharti.com
2. Bhartient.com
3 Bhartitelesoft.com
4. Bhartienterprises.com
5. Bhartigroup.com
6. Bharticellular.com
7. Bhartimobile.com
8 Bhartifoundation.com
9. Bhartihealthcare.com
10. Bhartiteleventures.com
11. Bhartiindiaone.com
12. Bhartiinfotrac.com
13. Bhartiinfotech.com
14. Bhartibroadband.com
15. Bharti-infotel.com
16. Bhartiteletech.net
17. Bharti-indiaone.com.
18. Bhartifoundation.org
19. Bhartienterprises.info
20. Bhartitelesonic.com
21. Bharti.co.in
22. Bharti.in
23. Bhartilive.in
24. Bhartifoundation.net
25. Bhartifoundation.in
26 Bhartifoundation.org.in
27 Bhartiairtel.in
28. bhartiairtel.co.in
29. bhartiairtel.org
30. bhartiairtel.org.in
31. bhartiairtel.net
32. bhartiairtel.net.in
33. bharti-airtel.in
34. bharti-airtel.co.in
35 bharti-airtel.org
36. bharti-airtel.org.in
37. bharti-airtel.net
38. bharti-airtel.net.in
39. Bhartiairteltd.in
40. Bhartiairteltd.com
41. Bhartiairteltd.co.in
42. Bhartiairteltd.org
43. Bhartiairteltd.org.in
44. Bhartiairteltd.net
45. Bhartiairteltd.net.in
46. Bharti-comtel.in
47. Bharticomtel.in
48. Bharticomtel.co.in
49. Bharticomtel.net
50. Bharti-retail.com
51. Bharti-retail.in
15. It is submitted by the plaintiffs that the trade mark "Bharti" has
also achieved a huge goodwill and reputation in view of the large section
of the public which has invested in the company which is also a listed
company on the Bombay Stock Exchange and the National Stock
Exchange. The turnover of the plaintiffs‟ Group for the last financial year
(i.e. year ended March 31, 2006) exceeded Rs.11,725.50 crores. The
corresponding expenditure on marketing and sales for last year is
approximately Rs.833.5 crores.
16. The trade mark "Bharti" and "Bharti" logo is used almost in all
the advertisement and the publicity material, corporate brochures, etc. The
mention of the word "Bharti" today clearly associates with the plaintiffs‟
group and its businesses. Even the first page of the Google search on the
words "Bharti" and "Bharti Retail" shows direct association with the
plaintiffs group companies.
17. The plaintiffs‟ Bharti group have partnership /business
ventures/ alliances with several world leaders in the field of IT and
telecommunications. These include Seimens, Singapore Telecom, IBM,
Nokia, etc. The plaintiffs have also entered into agreements for cash and
carry business with Wal-Mart, which is the 2nd biggest retail corporation in
the world.
CASE AGAINST THE DEFENDANTS
18. The case against the defendants as alleged by the plaintiffs is
that in February 2007, when the plaintiffs were in the process of trying to
register domain names for the retail business they were shocked and
surprised to see that the defendant No.1 had registered the 2 domain names
with the words "Bharti" & "Retail" viz. "bhartiretail.com" &
"bhartiretail.in". This came to the knowledge of the plaintiffs in the 2nd
week of February and immediately on 19.02.2007 the plaintiffs addressed
a notice to the defendant No.1 calling upon him to transfer the domain
names to the plaintiffs. Original Print outs of the first notice vide e-mail
dated 19.2.2007 sent to the defendant No.1 along with original
letter/envelope received from the post office with the inscription
"Addressee Refused" are already on record.
19. Later on the plaintiffs received a one line reply from the
defendants on 05.03.2007 that the defendant No.1 will reply through his
legal counsel. Original Printout of the said e-mail is already on record.
However, no such reply through his legal counsel has been received till
date.
20. It is alleged by the plaintiffs that the plaintiffs‟ legal manager
also spoke to the defendant No.1 on a couple of occasions; however,
despite repeated attempts no progress had been made in relation to the
transfer. Original printouts of the e-mails dated 16.3.2007 and 22.3.2007
addressed in this regard by the plaintiff to the defendant No.1 have been
filed. The defendant No.1 has expressed his intention of demanding a huge
sum of money for transferring the domain names.
21. It is submitted by the plaintiffs that defendant No. 1 is an illegal
and unauthorized holder/squatter of two domain names
"bhartiretail.com" and "bhartiretail.in". "Bhartiretail.com" is registered
by defendant No. 1 through defendant No. 2 which is the registering
authority. Bhartiretail.in has been registered through defendant No. 3
which is the National Internet Exchange of India, located at Delhi.
22. It is also alleged that the Bad Faith in the registration of this
domain name "bhartiretail.com" is also evident from the fact that though
initially the defendant No.1 was shown as the registrant of this domain
name, after receiving the notice from the plaintiff, the defendant No.1 has
chosen for a privacy scheme by which his contact details on the said
domain name were hidden. The original print out of WHOIS search result
of the domain name "bhartiretail.com" registered by defendant No. 1 is
already on record.
23. It is averred by the plaintiffs that though WHOIS search today
does not reveal the defendant No.1‟s name as the registrant but the
plaintiffs have clear knowledge of the fact that the defendant No.1 had
registered it and the plaintiffs had, in fact, addressed a notice based on this.
This is not even denied by the defendants in their one line reply. On typing
Bhartiretail.com, one reaches to the website which is hosted by Netfirms.
24. It is stated that no bonafide use is being made by the defendants
of the said two domain names. The defendant No.1 is obviously a squatter
who is expecting to make money by squatting on the two domain names.
Such squatting and blocking of domain names is completely illegal and
unlawful. The same is illegal not only under the common law of passing-
off but also under the well know Dispute Resolution Policy which is
applicable to all .com domain names(UDRP) and also under the INDRP
under which the .in are registered.
25. It is also stated that the use of mark BHARTI by the defendants
or any third party constitutes passing-off of the defendents website as
being associate with the plaintiffs. The plaintiffs are the lawful owners and
properiotrs of the mark „Bharti‟ and thus they are the only legitimate
claimants to the domain names "bhartiretail.com" & "bhartiretail.in".
26. The present suit was filed on 29.03.2007 and on 30.03.2007 an
ad interim ex-parte injunction order was passed in favour of the plaintiffs
and against the defendants. Thereafter, vide order dated 03.11.2008 the
said interim order dated 30.03.2007 was made absolute and the defendant
No.1 was proceeded ex-parte and on 08.09.2008 the learned counsel for
the plaintiffs Ms. Pratibha M. Singh had also made a statement in court
that the claim would not be pressed against the defendant Nos. 2 and 3.
The plaintiffs filed the ex-parte evidence by way of affidavit of PW-1 Ms
Vijaya Sampath.
27. In her affidavit which is marked as Ex. PW-1/A, PW-1 Ms.
Vijaya Sampath has proved the following documents:
(a) Copy of certificate of change of name of Plaintiff No 2
company. Exhibit PW1/1.
(b) Certified true copy of Board of Resolution authorizing Ms
Vijaya Sampath, Director(Legal) on behalf of Plaintiff No 1.
Exhibit PW1/2.
(c) Copy of Board of Resolution authorizing Vijaya Sampath on
behalf of Plaintiff No 3, Exhibit PW1/3.
(d) Copy of Power of Attorney authorizing Vijaya Sampath on
behalf of Plaintiff No 2, Exhibit PW1/4.
(e) Various coloured copies of press clippings & original print
outs evidencing the national and international acclaim and
expansion of business relating to the Plaintiff and its group
companies including the retailing business. Exhibit PW1/5.
(f) Copy of Certificate of Incorporation of Bharti Retail Pvt. Ltd
along with Memorandum of Association and Article of
Association. Exhibit PW1/6.
(g) Original printout of WHO IS Search result of the Plaintiffs
domain name bharti-retail.com and bharti-retail.in. Exhibit
PW1/7.
(h) Original printout of WHO IS search result showing the
present position of Plaintiffs domain name bharti-retail.in i.e.
after renewal, Exhibit PW1/8.
(i) Original printout of WHO IS search result showing the
present position of Plaintiffs domain name bharti-retail.in i.e.
after renewal, Exhibit PW1/9.
(j) Copies of trade mark registration certificates and various
applications of the Plaintiffs containing the trade mark
BHARTI(already on record- pgs 2 to 9 of the list of
documents) Exhibit PW1/10(colly)
(k) Some of the copies of trade mark registration certificates of
the Plaintiffs, a legal processing certificate along with original
printouts of trade mark application status showing Plaintiffs
registered trade mark "BHARTI"(annexed) Exhibit
PW1/11(colly)
(l) Original printout of WHO IS search report of plaintiffs
domain name bharti.com(already on record-pgs 10 to 12 of
the list of documents) Exhibit PW1/12
(m) Original printout of WHO IS search showing the present
position of Plaintiffs domain name bharti.com(annexed)
Exhibit PW1/13
(n) Original printouts from the Plaintiffs website bhartiairtel.in
(already on record- pgs 13 to 15 of the list of documents)
Exhibit PW1/14(colly)
(o) Original printout of first page of google search on Bharti and
Bharti Retail (already on record- pgs 112 to 113 of the list
of documents) Exhibit PW1/15(colly)
(p) Original printout of the first notice vide e-mail dated 19-2-
2007 addressed to the defendant no 1 along with original
letter/envelope sent and received from the post office with the
inscription "Addressee Refused" (already on record - pgs
116 to 119 of the list of documents) Exhibit PW1/16(colly)
(q) Original printout of the reply vide e-mail dated 5.3.2007 by
defendant no 1 to the notice of the plaintiff (already on
record - pgs 120 to 122 of the list of documents) Exhibit
PW1/17
(r) Original printouts of the e-mails sent by the plaintiff dated
16.3.2007 and 22.3.2007 to the defendant no 1 (already on
record- pgs 123 to 128 of the list of document) Exhibit
PW1/18(colly)
(s) Original printout of WHO IS search result of defendants
impugned domain name bhartiretail.com(already on record-
pgs 141 to 142 of the list of documents) Exhibit PW1/19
(t) Original Printout of WHO IS search result showing the
present position of defendants impugned domain name
bhartiretail.com i.e. after renewal (annexed) Exhibit PW1/20
(u) Original Printout on Domain Privacy Group Inc(already on
record- pgs 129 to 134 of the list of documents) Exhibit
PW 1/21
(v) Original Printout of the status of the website bhartiretail.com
which shows the opening page of net firms (already on
record - pg 114 of the list of document) Exhibit PW1/22
(w) Original Printout of WHOIS Search result of the defendants
impugned domain name bhartiretail.in (already on record -
pg 143 of the list of documents) Exhibit PW1/23
(x) Original printout of the WHOIS Search Result showing the
present position of the defendants impugned domain name
bhartiretail.in i.e. after renewal (annexed) Exhibit PW1/24
(y) Original printout of status of bhartiretail.in where the website
is under construction (already on record - pg 115 of the list
of documents) Exhibit PW1/25
(z) UDRP Policy (already on record- 135 to 140 of the list of
documents) Exhibit PW1/26
(aa) Original printout of INDRP Policy (annexed)) Exhibit
PW1/27
(bb) Certified copy of the order in Suit No 103/2004, Bharti
Televentures & Ors vs Anil Kohli & Ors (annexed) Exhibit
PW1/28
(cc) Copy of the Judgment in CS(OS) 245/04 , Bharti- Televenture
& ors vs Vijay K Bharti & Ors (annexed) Exhibit PW1/29
(dd) Certified copy of the order dated 2nd March 01 in CS(OS)
246/2001, Bharti Cellular Ltd & Ors vs Mr Santosh Birajdar
& Ors(annexed) Exhibit PW1/30
(ee) Certified copy of the order dated 29.11.2002 in
CS(OS)895/2001, Bharti Televentures Ltd vs Somnath Bharti
Ltd & Ors(annexed) Exhibit PW1/31
(ff) Certified copy of the order and judgment dated 15th March
2007 in CS(OS)279/2006 Bharti Televentures Pvt Ltd vs
Agri, Lacus & CaelmLLC & Anr(annexed) Exhibit PW1/32
(gg) Certified copy of the order dated 21.8.2006 in CS(OS)
1101/2006 Bharti Airtel Ltd vs Michael welt & Ors(annexed)
Exhibit PW 1/33
(hh) Copy of the letter dated 7th May 2007 from counsel for
defendant no 2 to the counsel for Plaintiffs(annexed) Exhibit
PW1/34
28. The defendant No.3 has also been proceeded ex parte vide order
dated 02.11.2007 of this Court. Learned counsel for the plaintiffs received
a letter dated 07.05.2007 on behalf of counsel for defendant No.2, stating
that they are ready to abide by any orders passed by this Court .
29. Despite service, the defendants chose not to appear in the Court
neither they have filed the written statement. The ex-parte evidence
advanced by the plaintiffs has gone unrebuted, as the defendants have
failed to cross-examine the plaintiffs‟ witness. Thus, the case of the
plaintiffs is taken as proved.
30. No doubt, the trade mark "Bharti" is a well known mark in
India and abroad. The reputation of the said mark is unquestioned. Any
illegal use of the mark is liable to be curbed by the orders of this Court.
The use of the word "Bharti" results in violation of the statutory rights and
the common law rights of the plaintiffs. Such use constitutes :
(a) Infringement of the registered trade mark;
(b) Passing-off and bad faith registrations; and
(c) Unfair Competition and Dilution.
31. Infringement of registered trade mark: It is submitted that
the trade mark "Bharti" is registered in class 38 including various other
classes. The application for retail business is also pending. The trade
mark "Bharti" being a registered trade mark, the use of the said trade mark
in relation to any similar goods or services results in infringement of the
registered trade mark. The word "Bharti" combined with the word "retail"
is exclusively associated with the plaintiffs and their Group. The
registration of the said domain names is in complete infringement of the
rights of the plaintiffs apart from constituting infringement of the trade
marks of the plaintiffs.
32. Passing-off and Bad Faith registrations- It is submitted that
the use of the mark BHARTI by any third party constitutes passing off of
the defendants‟ website as being associated with the plaintiffs. The
defendant No.1 herein has registered the domain name bhartiretail.com and
bhartiretail.in illegally and without any authorization by the plaintiffs. The
use of the combination of words Bharti and Retail is likely to cause
confusion among the internet users especially in light of the fact that the
plaintiff is expanding the retail business as a separate business. The
domain names would cause confusion and the internet users may think that
the defendants are associated with the plaintiffs in some manner. If the
domain name is taken by any competing interest, the same could
irreparably harm the plaintiff and its business. It is obvious that the
registration of the impugned domain names are completely bad faith
registrations as defined in the UDRP and INDRP. It is argued that the
domain names registered by the defendants can be misused in the
following manner:
i. If the domain name is taken by any competing interest, the
same could irreparably harm the plaintiffs and their business.
ii. The domain name could be used to host a website criticizing
the plaintiffs or defaming the plaintiffs in some manner or the
other.
iii. The domain name could be used to hyperlink to any other
website which cannot be prevented by the plaintiffs in any
manner whatsoever.
iv. Any consumer may presume that the website hosted on such a
domain name belongs to the plaintiffs.
33. It is also argued that from the response of the defendant No.1 it
is also evident that the defendant No.1 is expecting to monetarily gain
from the domain names and he has no bonafide interest in the same. Such
blocking merely for monetary gain or to block the legitimate use by the
plaintiffs is a Bad Faith Registration.
34. Unfair competition and Dilution: It is stated that the use of
the mark BHARTI by the defendants constitute Acts of Unfair
Competition, in as much as the defendant No.1 has registered it to gain
monetarily or to unfairly compete with the plaintiffs by selling the same to
some competitor. It is in fact in the interest of the public that the
defendant No.1 is not allowed to use the mark BHARTI in any manner
whatsoever, as a remote chance of confusion can be dangerous for internet
users.
35. The use of the mark BHARTI by the defendant No.1 is also
likely to result in blurring & tarnishment. The defendant No.1 has no
connection whatsoever with the plaintiffs. It is well established that
blurring between two trade domain names results in dilution of the mark.
Moreover, the plaintiffs have carefully and vigilantly ensured that there is
no illegal use of the mark BHARTI by registering their trade marks in
India. Under such circumstances, the blurring of the plaintiffs‟
mark/business with the defendant will enormously prejudice the time and
effort expended by the plaintiffs in the mark BHARTI. The same also
results in dilution of the well-known plaintiffs‟ mark BHARTI.
36. The plaintiffs have diligently protected the mark BHARTI by
taking action against illegal use of the same. Details of some of such
proceedings filed by the plaintiffs and their status is set out as hereunder .
S.No Name of the Relevant Domain Status
Case Name
1. Bharti Bhartiglobal.com The Hon‟ble High
Televentures Court of Delhi
vs Anil granted an ex-parte
Kohli injunction in favour
of Bharti Group on
Bhartiglobal.com on
3.5.2001. Suit was
decreed as per
compromise on
18.8.2005.
2. Bharti Bharti.com and A final judgment was
Televentures Bharti.net passed by S.K.
vs Vijay Kr Savaria , ADJ. The
Bharti, Suit defendants were
No 245/04 proceeded ex-parte
and a decree of
mandatory injunction
was passed
restraining the
defendants from
using the domain
names BHART.COM
& BHARTI.NET.
The Plaintiffs were
also awarded
damages of Rs
5,50,000/- as well as
costs.
3. Bharti vs Bharticellular.com The suit was disposed
Santosh Bhartmobile.com off in terms of a
Birajdar, Bhartifoundation. compromise in
Suit No com 2001.The domain
246/2001 Bhartihealthcare.c names
om bharticellular.com,
bhartimobile.com,
bhartifoundation.com
and
bhartihealthcare.com
were transferred to
the plaintiff.
4. Bharti Bhartiinfotech.co The suit was disposed
Televentures m and off in terms of a
vs Somnath bhartigroup.com compromise in 2002.
Bharti & The domain names
Ors, Suit No bhartiifotech.com and
895/2001 bhartigroup.com have
been transferred in
the name of plaintiffs.
5. Bharti Bhartiairtel.com Vide order dated 15th
Televentures March 2007suit was
Pvt Ltd vs decreed in favor of
Agri, Lacus the Plaintiffs and
& against the defendant
CaelumLLC for permanent
& Anr injunction restraining
CS(OS) infringement of
279/06 registered trade mark,
passing off, dilution
and damages in
relation to the domain
name
"BHARTIAIRTEL.C
OM"
6. Bharti Bharti-airtel.com On 1.2.2006 Court
Televentures granted injunction
P.Ltd vs restraining use of the
Marco domain name bharti-
Signorini & airtel.com or any
Another other domain name
CS(OS) No consisting of marks.
272/06 Subsequently the suit
was decreed in terms
of the settlement
7. Bharti Airtel Bhartilive.com The Hon‟ble High
Ltd vs Court of Delhi passed
Michael an ex parte interim
Welt & Ors injunction on 23.5.06
CS(OS) restraining the
1101/2006 defendants, or anyone
who may be acting
for and on his behalf
in any manner from
using the domain
name bhartilive.com
or any other domain
name consisting of
the marks bharti in
any form whatsoever
and further restrain
the defendant from
continuing to use the
domain name for the
website which is
completely
unconnected with
Bharti. Subsequently
vide order dated
21.8.2006, suit was
disposed off in terms
of the settlement and
the impugned domain
was transferred to the
plaintiffs
37. The certified copies of orders in the aforementioned suits are
being annexed herewith and marked as follows:-
1. Bharti Televentures& Ors vs Anil Kohli & Ors (Suit no 103/2004) -
order dated 18-8-2005 - Exhibit PW1/28
2. Bharti Televentures Ltd& Ors vs Sh. Vijay K Bharti & Ors(Suit No
245/04)- judgement dated 3-1-2005- Exhibit PW1/29
3. Bharti Cellular Ltd & Ors vs Mr Santosh Birajdar & Ors(Suit no
246/01) - order dated 2-3-2001 - Exhibit PW1/30
4. Bharti Televentures Ltd vs Mr Somnath Bharti & Ors(suit no
895/2001)- order dated 29-11-2002 - Exhibit PW1/31
5. Bharti Televentures Ltd vs Agri Lacus& Caelum LLC& Ors(suit no
279/2006)- order and judgement dated 15-3-2007 - Exhibit
PW1/32
6. Bharti Televenture Ltd& Ors vs Mr Michael Welt & Ors- order
dated 21-8-2006 - Exhibit PW1/33
38. In view of the above, it appears that the plaintiffs are the lawful
owners and proprietor of the marks "Bharti" and thus the only legitimate
claimants to the domain name "bhartiretail.com" and "bhartiretail.in".
Under such circumstances, the defendants are liable to be restrained by an
order of permanent injunction as prayed for. The plaintiffs are also entitled
to damages as prayed in the plaint. The said domain names are also liable
to be transferred in favour of the plaintiffs.
39. Thus, the plaintiffs are entitled for a decree for permanent
injunction in terms of para 30 (a) to (c) of the plaint which read as under:-
"30(a) A decree of permanent injunction restraining the
defendants, or anyone who may be acting for and on its behalf,
in any manner, from using the domain names
"bhartiretail.com" and "bhartiretail.in" or any other domain
name or mark consisting of the marks „Bharti‟ in any form
whatsoever and further restrain the defendants from continuing
to use the domain names for the website which is completely
unconnected with the plaintiff.
(b) A decree of permanent injunction restraining the
defendant No.1 or its principal officers, servants, agents or
anyone who may be acting for and on its behalf, in any manner,
from transferring, alienating or offering for sale the domain
names "bhartiretail.com" and "bhartiretail.in" to any third
party and from creating any third party interest in the said
domain names and directing the defendants No.2 and 3 to
maintain status quo in relation to their respective domain names
by keeping the same ON HOLD till prayer A & C are granted.
(c) An order of mandatory injunction be granted against
the defendants directing them to immediately transfer the
domain names "bhartiretail.com" and "bhartiretail.in" to the
plaintiffs.
40. As regards the relief of damages are concerned which is
claimed in para (d), this relief is disposed of with the direction that the
plaintiffs are entitled for punitive damages to the tune of Rs.1 lac which is
granted against defendant No.1 only. The suit is decreed with costs and
the said cost would be paid by the defendant No.1. The decree be drawn
accordingly. All pending applications, if any, stand disposed of.
MANMOHAN SINGH, J.
OCTOBER 17, 2011
sa
