Delhi High Court
Times Internet Ltd vs Jonathan S. And Another on 17 April, 2012
Author: G. S. Sistani
11.
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 1742/2007
% Judgment dated 17.04.2012
TIMES INTERNET LTD. ..... Plaintiff
Through : Mr.K.Datta and Mr.Atul Singh, Advs.
versus
JONATHAN S. AND ANOTHER ..... Defendants
Through
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J (ORAL)
1.
Plaintiff has filed the present suit for permanent injunction, restraining
infringement of trademark, domain name, copyright, passing off,
damages, unfair trade practice and delivery up.
2. Summons were issued in the suit on 24.9.2008. Defendant no.2 entered
appearance on 11.2.2008. Thereafter none has been appearing on behalf
of defendant no.2 although written statement was filed on behalf of
defendant no.2. The defendants were proceeded ex parte on 25.8.2011.
Plaintiff has filed the affidavit by way of evidence of Mr.Ranbir Singh,
Head Legal of the plaintiff company, which is exhibited as Ex.PW-1/A.
3. PW-1 has deposed that he is the Head Legal of the Plaintiff Company and
Principal Officer and is authorized to institute any suit or other legal
proceedings in any Court of law on behalf of the Plaintiff. Board
Resolution dated 01.11.2010 is exhibited herewith as Exhibit PW 1/1. He
has further deposed that the Plaintiff, M/s. Times Internet Ltd., is a
company registered under the provisions of the Companies Act, 1956, He
next deposed that the plaintiff is a company of the well known and
established Times of India Group of Companies.
4. PW-1 has further deposed that M/s. Bennett Coleman & Co. Ltd. is the
promoter company of M/s. Times Internet Ltd., the plaintiff, entered the
field of e-commerce about a decade back. He has further deposed that the
e-commerce field was entered into by M/s. Bennett Coleman & Co. Ltd.
under the Trade Name/Logo of "Indiatimes" and for this purpose the said
company created a portal named "indiatimes.com". PW-1 has also
deposed that it developed an internet site "http.www.indiatimes.com" and
through this site, the said company started offering to the public a large
variety of goods and services and internet shopping, online games,
internet options, shopping and gifts including inter-alia sale of fresh
flowers, numerous gift items, e-cards etc. It is next deposed that the
Trademark and Logo "Indiatimes" was coined by M/s. Bennett Coleman
& Co. Ltd. as the said company is the owner of numerous publications
such as the Times of India, The Economic Times, Navbharat Times, Delhi
Times, Bombay Times etc. popularly known as the Times Group
publications, and its name is associated with the said Trademark/Logo. He
has also deposed that M/s. Bennett Coleman & Co. Ltd., therefore,
became the legal and beneficial owner throughout the world of all
copyrights, intellectual property rights, design rights and trademarks in
the said mark and logo "Indiatimes". Internet printout of Domain name
registration through „Whois Lookup‟ showing „indiatimes.com‟ creation
date as 22.11.1999 has been exhibited as Exhibit PW 1/2.
5. This witness has further deposed that in course of time the website
"Indiatimes.com" acquired an extensive reputation amongst the people at
large and numerous persons started availing of the services and
purchasing goods though the said website for a variety of goods,
including, flowers, gifts, sweets, cakes etc. He has also deposed that the e-
commerce business run through the website/portal www.indiatimes.com
acquired a place of prestige in the market and developed a huge reputation
that has multiplied manifold and generates huge revenues. It is next
deposed that the millions of people started visiting the website for
availing of various services namely, internet shopping, email etc. It is also
deposed that the plaintiff receives more than 30,000,000 (Thirty Million)
SMS‟s a month, 1,000,000,000 (one Billion) eyeballs a month, and does a
business of Rs. 60,000,000 (Sixty Million) worth of online shopping
every month at the said website and has 13,000,000 (Thirteen Million)
registered users. It is further deposed that the Plaintiff Group (The Times
of India Group) has also ventured into television and initiated a TV
Channel under the trade name „Zoom‟.
6. PW-1 has further deposed that in view of the huge expansion of the e-
commerce business M/s. Bennett Coleman & Co. Ltd. assigned its
internet business including its website/portal "indiatimes.com" to the
plaintiff Company. PW-1 has also deposed that only for the said purposes,
under an agreement dated 01.04.2000, the management of M/s. Bennett
Coleman & Co. Ltd., got incorporated the "Times Internet Limited," as a
going concern, whereby the plaintiff company became the
owner/proprietor of the entire internet/e-commerce business, inter alia,
under the name "indiatimes.com" previously belonging to M/s. Bennett
Coleman & Co. Ltd. Resolution dated 21.12.1999 of M/s. Bennett
Coleman & Co. for transfer of Company‟s internet business as a „going
concern‟ to Times Internet Ltd. and the Agreement dated 01.04.2000
between M/s. Bennett Coleman & Co. and Times Internet Ltd. have been
exhibited as Exhibit PW 1/3 & PW 1/4.
7. This witness has next deposed that the plaintiff has and continues to incur
huge costs for development, designing and maintenance of the
website/portal and on the advertisement etc. of the website/portal and the
products and services offered though it. It is also deposed that by way of
illustration it may be stated that the plaintiff has incurred the following,
amongst others, costs/expenditure in this respect.
Development and designing and indulgence costs
August 1998 to July 1999 Rs. 25,592,111.00
August 1999 to March2000 Rs. 43,579,103.00
April 2000 to March 2001 Rs. 84,912,968.00
April 2001 to March 2002 Rs. 84,267,854.00
April 2002 to March 2003 Rs. 60,733,278.00
April 2003 to March 2004 Rs. 105,480,748.00
April 2004 to March 2005 Rs. 151,314,105.00
April 2005 to March 2006 Rs. 260,355,373.00
8. PW-1 has deposed that the Logo of the plaintiff "indiatimes" is written in
a unique and distinctive style, and it also has a unique layout, colour
scheme and arrangement of features and it constitutes an original artistic
work. PW-1 has further deposed that the plaintiff is the first person to use
the said artistic work within the meaning of section 2 (c) of the Copyright
Act and, therefore, the plaintiff is the owner of the said artistic work and
has got exclusive rights to reproduce the same. It is also deposed that the
plaintiff has now refurbished the entire service package with a new look
and feel to make it contemporary which is more user friendly and more
appealing to the „generation next‟. It is next deposed that the plaintiff has
also re-launched its email services with the state of art technological
features and a much easier user interface with unlimited space and have
ever since its inception managed/continued to be a leader in all its
endeavors. Internet printout of illustrative art works pertaining to
„indiatimes‟ have been exhibited as Exhibit PW 1/5 to PW 1/10.
9. PW-1 has further deposed that the name/mark "indiatimes" has been
associated with the plaintiff exclusively and the mere mention of
"indiatimes" immediately signifies the services and products marketed by
the plaintiff through its e-commerce website. The name/mark
"indiatimes" belongs to the plaintiff and no one else has the right to use
the said name/mark or any deceptively similar and misleading variation
thereof in relation to any product or services whatsoever. PW-1 has also
deposed that since this name/mark is completely identified with the
plaintiff and in view of the fact that products/services marketed under this
mark stand for the highest quality, best prices/bargains and authenticity,
and the adoption of this mark for any purpose by any other party is illegal
and unlawful. PW-1 further goes on to state that on the home page of the
plaintiff there is a link "myindiatimes" which provides the user with a
unique feature of making his customized page by adding contents of his
choice and removing contents not required by him and in this way the
utility and value of the site can be enhanced by the user to suit his needs.
Internet printout of „indiatimes.com‟ home page with „myindiatimes‟
pages have been exhibited as Exhibit PW 1/11 & PW 1/12. Internet
printout of „indiatimes.com‟ (US EDITION) home page has been
exhibited as Exhibit PW 1/13.
10.PW-1 further deposed that the name/mark "indiatimes" has no dictionary
meaning in India or elsewhere and is a coined name/word/mark created,
invented and developed by the Bennett Coleman & Co. Ltd. in view of the
unique position of the Times of India Group of companies and its various
publications/trademarks such as the Times of India, Economic Times,
New Bharat Times, etc. which use combination of words, prominent
therein being "Times" & "India" being an invented mark and is entitled to
the highest level of protection just like any other invented mark or rare
name etc. He further deposed that the group has a history of such brand
names comprising of conjoined words of daily use though their
continuous and regular use.
11.It further deposed by PW-1 that the website of the plaintiff
www.indiatimes.com offers the visitors to the website a large variety of
services like e-mail, business solutions for both B2B and B2C modes and
internet shopping, online games, internet options, shopping and gifts
including express delivery of flowers, gifts etc. The e-mail service is
known as "indiatimes e-mail" and also holds internet polls on matters of
daily importance known as "indiatimes" polls, "my times my voice" etc.
which are very popular across all genres and the website also has
complete details of all the services i.e. rules of the programmes that could
be down loaded by the person(s) visiting the website. He next deposed
that the plaintiff has made various applications for registration of its trade
marks, such as, "indiatimes.com", "8888" (short code),
"indiatimes.Meramail", "indiatimes.Chat", "indiatimes.Astrospeak",
"indiatimes.Movies", "indiatimes.Egreetings", "indiatimes.Hotspot(s)",
etc. to name a few, for registration under the Trade and Merchandise
Marks Act as per details filed and exhibited as Exhibit PW 1/14. The
plaintiff has adopted the name/mark "indiatimes" as a trade Mark, and
also a domain name on the internet. Mr.Ranbir Singh has also deposed
that with the rapid advancement in technology and with the advent of the
internet, the traditional methods of doing business have changed, the
manufactures, traders and service providers today advertise their products
and services on the internet in order to sell their wares/services.
12.PW-1 further deposed that in order to be able to have easy access for the
consumers, each and every manufacturer, trader or service provider is
allotted one or more names by which the consumer can access the
information relating to the said manufacturer or service provider and such
a name is called "Domain Name" and it works as the „identity card‟ for a
trade name of an organization. He next deposed that a domain name is
nothing but the name which is registered with a domain name registering
authority and there are several domain names registering authorities in the
world, out of which, one such registering authority is Network Solutions
Inc. I further state that the plaintiff has registered its domain name as
"indiatimes.com", effective from 22/11/1996. He also deposed that there
are several series of domain names that are registerable today on the
internet, of which each of the series ends with a different suffix namely
".com, .org, .net, .co, .tv", etc. being the TLDs (top level domains) and
likes of ".in, .pak, .au" as CCLDs (country code level domains). It further
deposed that any user on the internet in order to find information in
relation to any company product or service prefixes the mark or corporate
name with any, one of the suffixes and attempts to obtain information
relating to the said product/service. For example, if one wishes to obtain
information regarding the house of Tatas, any user will type in any of the
following combination i.e. TATA.com, TATA etc.
13.PW-1 has deposed that predominantly, the trade mark or service mark of
any entity is the same as its domain name which ensures that there
is no confusion between what is advertised on the internet and the
name/mark used in the market place. In view of this every
registering authority has framed its own rules and regulations by
which they take a declaration from the person registering the
domain name that the said name does not conflict or impinge upon
anyone else‟s rights on the said mark. It is next deposed that inspite
of such declaration in recent times there are a number of cases
wherein well-known trade mark and famous marks have been
illegally registered as domain names with ulterior motives. Few
examples of illegally registered domain names which have been
injuncted by Courts in India and abroad are "Yahooindia.com,
Citibankindia.com, JRDTata.com, RatanTata.com,
Britishtelecom.co.uk, marksandspencer.co.uk, EscortsIndia.com",
etc. It next deposed that it is now well established by various
judicial pronouncements in India and abroad that the illegal,
unauthorized registration of any mark not belonging to the
applicant as a domain name with a view to merely create confusion
or with a view to attract business and/or with a view to
hoard/traffic/cyber squat is completely illegal and unlawful and is
liable to be injuncted.
14.In the affidavit, PW-1 has deposed that in July 2007, it came to the
knowledge of the plaintiff that the defendant No. 1 has illegally and
unlawfully, got registered the domain name
http://www.myindiatimes.com in their own name and on making a search
on the internet it was found that the registrar of the impugned domain is
defendant no. 2 and the administrative, technical and billing contact is
defendant no. 1. It is further deposed that the defendants being Indian
residents and knowing the far reach and credibility of the Times group in
the market has, with mala fide intentions blocked and squatted over the
domain trade name "myindiatimes" by registering it in the name of the
defendant no. 1, with the sole intention of deceiving and defrauding the
public at large and making big money, besides diluting the mark of the
plaintiff. It is also deposed that on visiting the impugned website, it was
found that it only says "site is under construction". Internet printout of
Domain name registration through „Whois Lookup‟ showing
„myindiatimes‟ of Defendant No.1 is exhibited has been Exhibit PW
1/15. Internet printout of home page of „myindiatimes‟ of Defendant No.1
has been exhibited as Exhibit PW 1/16.
15.PW-1 has further deposed that the plaintiff was shocked to find that the
defendant no.1 had registered the said domain name without any
authorization, permission or license by the plaintiff, whereas, the mark
"indiatimes" is the property of the plaintiff and no one else, however, the
registration whereof, has been granted unscrupulously by defendant no. 2.
It is also deposed that the Defendants are seemingly hand in glove with
each other and it is clear that the defendant no.1 does not have any legal
right or locus with respect to the mark "indiatimes" or any mark
deceptively similar thereto. The defendants being Indian are well aware of
the reputation and the goodwill of the plaintiff‟s "indiatimes" mark, and
defendant No.1 obviously wishes to illegally, fraudulently and with
ulterior motive encash upon the reputation of the said mark and it appears
that defendant no.1 wishes to merely sell the domain name and make a
profit. Internet printout of „whois search‟ record of Defendant No.2 has
been exhibited as Exhibit PW 1/17.
16.PW-1 has next deposed that the confusion is bound to take place in view
of the fact that any user on the internet who wishes to gather information
about the plaintiff‟s product will invariably type in the words "indiatimes"
for searching it on the internet and any person who comes across the
domain name „myindiatimes.com‟ would automatically believe that the
said domain name belongs to the plaintiff and thus causing confusion in
the mind of the user. The defendant no.1 is only squatting on the said
domain name deceptively similar to that of the plaintiff, and has got it
registered only with ulterior motive and in bad faith, as has been the
international trend of adding "my" to all popular websites, including
Google and like many other websites. It is further deposed that the
defendants are trying to cash in on this trend which is evident further from
the fact that the link "my indiatimes" has been on the website of the
plaintiff‟s homepage and by copying the domain name of the plaintiff, the
defendant no. 1 has ensured that confusion is created in the mind of the
user that the defendants website is the website belonging to the plaintiff,
which conduct of the defendants is malafide, clearly in bad faith and the
only intention for the same could be to cash the reputation of the plaintiff.
It is next deposed that immediately on coming to know of the said illegal
activities of the defendants, the plaintiff through its advocates, got issued
a legal notice dated 09.08.2007, calling upon defendant no.1 to refrain
from the act of cyber squatting on the domain name of the plaintiff
„indiatimes.com‟ and transfer the domain name „myindiatimes.com‟ in
plaintiff‟s favour. It is also deposed that the notice was served by E-mail
as the registered notice has been received back with endorsement which is
not legible, indicating that defendant no.1 has evaded it receipt, dummy
name. Legal notice dated 09.08.2007 issued by the Plaintiff to Defendant
No.1 alongwith postal record have been exhibited herewith as Exhibit
PW 1/18 to PW 1/21.
17.PW-1 has also deposed that the defendant no.1 has not responded to the
legal notice and the result is that the defendant no.1 has not made any
change in the name of his website/domain name, which is the essential
address/internet identification. It is further deposed that the Defendant
no.1 is merely using the domain name registration of "indiatimes.com" in
order to trade in it and encash the same, which is obviously mala fide and
it is obvious that defendant no.1 merely want to earn huge
money/goodwill by using the domain name of the plaintiff, which in
blatant violation of the plaintiff‟s rights. It is next deposed that the
defendants are fraudulent, dishonest, malafide and unlawful and are
squatting upon the trade name of the plaintiff in bad faith and the
Defendant no.1 has no right or locus standi, either to get registration under
the domain name "http:/www.myindiatimes.com" which is identical with
and deceptively similar to that of the plaintiff‟s domain name, or any
other domain name which consists of the plaintiff‟s mark or copyright
name. It is also deposed that in fact, Defendant no.1 does not have any
right or locus to use the mark "indiatimes" as part of their name in relation
to any domain name, products, goods or services whatsoever. It is also
deposed that the registration of the impugned domain name by defendant
no.1 is only with a view to hoard/traffic/cyber squat in the internet which
is completely unlawful and is clearly a "bad Faith" registration as defined
in the „Uniform Domain Name Dispute Resolution Policy‟ framed and
adopted by the ICANN (Internet Corporation for Assigned Names and
Numbers).
18.PW-1 has further deposed that the above policy under clause 4 (b) sets out
the various circumstances in which the registration of a domain name is a
bad faith registration, which are as under:
a. Any circumstances which indicates that the applicant has
registered or has acquired the domain name primarily for the
purpose of selling, renting or otherwise transferring the domain
name registration to the owner of the trade mark or service mark or
to a competitor of the said owner for valuable consideration.
b. That the applicant has registered the domain name in order to
prevent the owner of the trade mark or the service mark from
reflecting the mark in a corresponding domain name.
c. That the applicant has registered the domain name primarily for
the purpose of disrupting the business of a competitor
OR
d. By using the said domain name the applicant intentionally
attempted to attract, for commercial gain, internet user to the
applicant's website or any other online location by creating a
likelihood of confusion with the owner's mark as to the source,
sponsorship, affiliation or endorsement of the applicant's website
or location or of a product or of a service on the applicant's
website/location.
19.It is also deposed by PW-1 that in the present case it is clear that the
registration of the impugned domain name by the defendant is a bad faith
registration as the defendant has manifested their fraudulent intentions to
earn huge sums of money by merely using domain name of the plaintiff as
per clause (d) above, thus, the registration of the defendant being in bad
faith, disentitles of any right in law to remain as owners of the said
domain name. It is further deposed that the Defendant‟s no.1 act apart
from constituting infringement of the plaintiff‟s rights and further
constituting passing off and infringement of copyright, are likely to result
in dilution of the plaintiff‟s mark "indiatimes". It is next deposed that the
defendants‟ illegal and unauthorized adoption of the impugned domain is
also likely to result in dilution of the "indiatimes" mark as the plaintiff has
no control over the use of the said domain name. PW-1 has further
deposed that the defendants‟ use of the impugned domain name for any
activity with which the plaintiff is not connected would result in blurring
and tarnishing of the plaintiff‟s brand name, thus, such acts of dilution are
also liable to be curbed immediately by an order of injunction by this
Hon‟ble Court. PW-1 has also deposed that the intentions of defendants
are fraudulent and malafide and are not willing to comply with the just
and fair requisitions of the plaintiff and are further not willing to transfer
the said domain name in the name of the plaintiff. It is also deposed the
plaintiff has attempted to amicably resolve this dispute but defendants
have no intention of complying with the just and fair requisitions of the
plaintiff, the fact which is clearly evident from their conduct as explained
above, thus the plaintiff is, therefore, constrained to approach this Hon‟ble
Court. PW-1 has also deposed that the Defendant no.1 by his illegal,
dishonest and fraudulent actions has caused enormous harm and prejudice
to the plaintiff and the illegal hoarding by the defendant of the domain
name "myindiatimes" has resulted in huge pecuniary and other losses and
has also impinged upon the reputation and goodwill of the plaintiff, for
which Defendant no.1 is liable to pay exemplary damages, including but
not limiting to Rs.10 lacs as compensatory damages and Rs.10 lacs as
penal damages from defendant no. 1.
20.PW-1 has further deposed that the plaintiff is the owner of the trademark
and the copyright in the "indiatimes" mark and logo; the plaintiff has and
continues to expend huge sums of money over the last decade on the
"indiatimes" mark; the plaintiff has made it one of the most famous marks
today; it is number one in the country today and, thus, no one has the right
to usurp the plaintiff‟s rights in the "indiatimes" mark and the Defendant
no.2 cannot be allowed to maintain the registration of the impugned
domain name in favour of defendant no.1 and is required to transfer it to
plaintiff. He also deposed that the defendants‟ manner and approach has
clearly revealed that the registration of the domain name of the defendant
no.1, namely, "myindiatimes.com" is a bad faith registration made only to
earn illegally and enormous prejudice would be caused to the plaintiff if
an order of injunction is not granted against the defendants. It is also
deposed that the plaintiff has established a prima facie case, the balance of
convenience is also in favour of the plaintiff and irreparable harm and
injury would be caused if the defendants are not injuncted by an order of
injunction.
21.I have heard learned counsel for the plaintiff and also perused the plaint,
the accompanying documents and the evidence led by the plaintiff. The
evidence of the plaintiff remained unrebutted. Defendant no.1 could not
be served despite service through publication, citation and affixation.
Defendant no.2 entered appearance on 11.2.2008 and filed his written
statement, however, since none had been appearing on behalf of defendant
no.2 since 24.11.2008, defendant no.2 was proceeded ex parte.
22.Learned counsel for the plaintiff has drawn the attention of the Court to
exhibit PW-1/14 to show that the plaintiff has made various applications
for registration of its trade marks such as , indiatimes.com,
indiatimes.Chat, indiatimes.Astrospeak, indiatimes.Movies,
indiatimes.Egreetings, indiatimes.music and others. The plaintiff has been
able to establish that their website receives more than 30,000,000 SMS‟s a
month; 1,000,000,000 eyeballs a month; does a business of Rs.60,000,000
worth of online shopping every month at the said website; and has
13,000,000 (Thirteen Million) registered users. The plaintiff has extracted
in the plaint the amounts incurred in developing, designing and
indulgence costs for the period 1998-2006. Plaintiff has also established
that plaintiff is the first to use its logo indiatimes, which is written in a
unique and distinctive style, it has a unique layout, colour scheme and
arrangement of features and, thus, the said work is within the meaning of
section 2 (c) of the Copyright Act and the plaintiff has got exclusive rights
to reproduce the same. The evidence on record would also show that the
name/trade mark indiatimes has been associated with the plaintiff
exclusively on account of its user, reputation, goodwill, product services
and marketing and mere mentioning of indiatimes immediately signifies
the services and products marketed by the plaintiff through its e-
commerce website www.indiatimes.com and accordingly, none else has
the right to use the said name/mark indiatimes which is completely
identified with the plaintiff. Even otherwise the name/mark indiatimes has
no dictionary meaning, it is a coined word, created invented and
developed by M/s. Bennett Coleman & Co. Ltd. and, thus, it is entitled to
the highest level of protection. It seems that the registration of domain
name by defendant no.1 is without any authorisation, permission or
license from the plaintiff and the registration is illegal without ulterior
motives with a view to encash upon the reputation of the plaintiff.
23.Plaintiff has also claimed damages for loss of reputation, business and
cost of proceedings. It is trite to say that the defendant has deliberately
stayed away from the present proceedings with the result that an enquiry
into the accounts of the defendant for determination of damages cannot
take place. The infringement of the trademark of the plaintiff is not in
dispute. Counsel for the plaintiff in support of his case has drawn
attention of this court to a number of judgments ['M/s L.T. Overseas Ltd.
v. M/s Guruji Trading Co. and Anr. [CS (OS) No. 2711/1999; and
Relaxo Rubber Limited and Anr. v. Selection Footwear and Anr., 1999
PTC 578. Counsel has also placed reliance on Time Incorporated v.
Lokesh Srivastavaand Anr., 2005 (30) PTC 3 (Del) where apart from
compensatory damages of Rs.5 lakhs, punitive damages have also been
awarded. Justice R.C. Chopra, has set out in Time Incorporated's case
(supra) that punitive damages are founded on the philosophy of corrective
justice.
24.Accordingly, present suit is decreed in terms of para 29 (a), (b), (d) and
(e) of the plaint. Plaintiff would be entitled to damages to the tune of
Rs.5.00 lakhs. Decree-sheet be drawn up accordingly.
G.S.SISTANI, J
APRIL 17, 2012
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