Tata Sons Ltd. & Anr. vs Arno Palmen & Anr.
2013 Latest Caselaw 1422 Del

*      THE HIGH COURT OF DELHI AT NEW DELHI

+                      CS (OS) No. 563/2005

                                            Date of Decision: 22.03.2013

TATA SONS LTD. & ANR.                                      .......Plaintiff
                  Through:                     Sh. Pravin Anand, Sh.
                                               Achutan Sreekumar, Sh.
                                               Dhruv Anand, Advs.

                                     Versus

ARNO PALMEN & ANR.
                                               ......Defendant
                                 Through:      Nemo

CORAM:
HON'BLE MR. JUSTICE M.L. MEHTA

M.L. MEHTA, J.

1. The present suit has been instituted by the plaintiffs against the defendants seeking permanent injunction against the defendants from using the trademark/domain name www.tatainfotech.in or any other mark/domain name which is identical with or deceptively similar to the plaintiff‟s trademarks TATA/TATA INFOTECH. The plaintiffs are also praying for an order for transfer of the domain name www.tatainfotech.in to the plaintiffs from the register of the Registrar, Key-Systems GmBH, and for delivery-up of all

infringing materials along with the rendition of accounts of profit illegally earned as well as damages.

2. This suit has been filed by Tata Sons Ltd., a company incorporated under the Indian Companies Act, 1913 (plaintiff no.1) and its subsidiary Tata Infotech Ltd., a company incorporated under the Indian Companies Act, 1956 (plaintiff no.2). The plaintiffs have contended that the plaintiff no.1 has been established in the year 1917 and is the principal investment holding company of the Tata Group, which is India‟s oldest, largest and best-known conglomerate with a turnover of USD 9 Billion. The name TATA is submitted to be have been derived from the surname of its founder Mr. Jamsetji Nusserwanji Tata. It is also submitted that the name TATA is being used by the plaintiffs since its inception in the year 1917 and it is claimed that on account of its highly descriptive nature and pioneering activities of the founder, the name TATA has consistently been associated with and exclusively denotes the conglomeration of companies forming the Tata group, which is known for high quality of products manufactured and/or services rendered by it under the trademark/name TATA.

3. It is also submitted that the House of Tatas comprises over 50 companies which use TATA as a key and essential part of their corporate name. Additionally, it is also contended that

there are numerous overseas companies, philanthropic bodies and autonomous public institutions which are promoted by the plaintiff no. 1. And that plaintiff no. 1 is the registered proprietor of the trademarks pertaining to and/or comprising the word TATA in relation to various goods falling across various classes of the Fourth Schedule of the Trade Mark Rules, 2002. By virtue of the said registration, it is contended that plaintiff no. 1 has the exclusive right in the said trademark and is thus entitled to the exclusive use thereof.

4. Plaintiff no. 2 has submitted that it is a pioneer in the field of information technology and has been using the trade name and service mark TATA INFOTECH since the year 1997. And that it is a total systems integrator and one of the largest software services and solutions providers in the world and carried out activities including software consulting, hardware manufacture, offshore software development, systems integration etc. And that due to its credibility built over the years, its customer centric approach and its fast and high quality services and solutions being provided under the service mark TATA INFOTECH, the plaintiff no. 2 has been conferred with various recognition and awards, which reflect its immense goodwill and reputation, that it enjoys in its field in India and abroad.

5. The plaintiffs have also emphasized that they have an enormous presence on the internet and own various domain names, inter alia tata.com, tatainfotech.com, etc. And that the plaintiff no.2 with a view to advance its business activities registered the domain name www.tatainfotech.com as far back as January 1998. Apart from containing extensive information pertaining to the plaintiff‟s business, it is contended that these websites also facilitate certain facilities such as online business queries and are therefore, in a sense, e- commerce websites.

6. The plaintiffs have contended that hey became aware of the registration of the domain name www.tatainfotech.in by the defendant no. 1, on February 21, 2005, when the said defendant sent an email to the plaintiff no. 2, informing them that he had registered the impugned domain name. It is also contended that the defendant in the said email had claimed that he had supposedly received an offer of purchase of this domain name for a "large sum of money" and that he wanted to inform the plaintiff about this. The plaintiffs have contended that this clearly showed that the defendant no. 1 had registered the impugned domain name only with a view to make illegal gains out of selling this domain name either to the plaintiffs or to any third party who wished to acquire it to use it in an illegitimate and mala fide manner. And that his also showed that the

defendant no. 1 was very well aware of the plaintiff‟s rights over the trade name and service mark TATA INFOTECH.

7. The plaintiffs have contended that the impugned domain name incorporates the plaintiff no. 1‟s trademark TATA in totality and therefore, amounts to infringement of the plaintiff‟s registered trademarks for TATA. And that the defendants use of the mark TATA is not by way of permitted use. And that the mark is identical in parts and deceptively similar as a whole to the plaintiff‟s reputed mark. Further, the plaintiff‟s submit that on the internet, users are accustomed to reaching the website of well-known brands such as TATA/TATA INFOTECH by keying in those specific words. If the defendant no. 1 or its transferee starts to use this domain name by resolving it to another website, the chances of a genuine customer of the plaintiffs reaching the defendant‟s web page are highly likely, more so because the impugned domain name is identical to the plaintiff‟s domain name i.e. www.tatainfotech.com. It is thus contended that anyone using the plaintiff‟s marks on the internet can cause tremendous loss and damage to the business of the plaintiff by way of passing off and loss of the prestige and business attached to the mark/name TATA and TATA INFOTECH.

8. It is submitted that the cause of action arose for the present suit in February 2005, when the plaintiffs became aware of the

registration of the impugned domain name by the defendant no. 1, when he wrote an email to the plaintiff no. 2 informing them that he had registered the impugned domain name. The cause of action is a continuous one and continues to subsist till such time as the defendant no. 1 is permanently restrained by an order of injunction.

9. Vide Order dated 29.04.2005, this Court granted an ex-parte interim injunction restraining the defendant no. 2 from using or transferring the impugned domain name. Further, defendant no. 2 was directed to freeze the impugned domain name. Vide Order dated 23.02.2009 this Court ordered that the defendants be proceeded ex-parte. The plaintiffs led ex-parte evidence. The plaintiffs have placed on record inter alia, the copies of the email addressed by the defendant no. 1 to the plaintiff no. 2, along with an affidavit certifying that the said printouts are admissible as evidence under the relevant provisions of the Evidence Act, 1872. The plaintiffs have also produced the printouts of WHOIS search conducted on the registry website for the domain names www.tatainfotech.com as well as the impugned domain name i.e. www.tatainfotech.in.

10.In support of its contentions, the plaintiff no. 1 has also placed on record the decision of this Court in the case of Tata Sons Ltd. v. Suresh Jain & Ors., Suit No. 1922/2003, where this Court has recognized the „well known‟ status of the TATA

mark. The plaintiffs have also placed reliance upon the decisions of this Court in Tata Sons Ltd. v. Manoj Dodia & Ors., CS(OS) No. 232/2009; Yahoo! Inc. v. Akash Arora & Anr., 78 (1999) DLT 285, as well as the decision of the High Court of Justice - Chancery Division in the case of Marks & Sepncer PLC v. One-in-a- Million Ltd. and Connected Matters, [1998] FSR 265. The plaintiffs have also produced a table of all the cases (as cited in the table in paragraph 15 of the plaint) that they have filed before this Court as well as the WIPO Arbitration and Mediation Centre with respect to the misuse of its trademarks as well as domain names.

11.I have heard the arguments of the counsel for the plaintiffs. I have also perused through the evidence placed on record. Before proceeding to decide the matter, it is pertinent to take note of an observation of this Court in the case of Tata Sons Ltd. v. Fashion ID, 117 (2005) DLT 748 in which it was observed:

"As far as India is concerned, there is no legislation which explicitly refers to dispute resolution in connection with domain names. But although the operation of the Trade Marks act, 1999 itself is not extra territorial and may not allow for adequate protection of domain names, this does not mean that domain names are not to be legally protected to the extent possible under the laws relating to passing off.

It is thus obvious that principles of passing off would fully apply to an infringement of a domain name. Action would be available to the owner of a distinctive domain name."

12.The position of law regarding the issue at hand is well settled by the Apex Court in the case of Satyam Infoway Ltd. v. Sifnet Solutions Pvt. Ltd., AIR 2004 SC 3540, in which the Apex Court considered the question whether internet domain names are subject to the legal norms applicable to other intellectual properties such as trade marks and be regarded as trade names which are capable of distinguishing the subject of trade or service made available to potential users of the internet. In this regard the Apex Court held:

"16. The use of the same or similar domain name may lead to a diversion of users which could result from such users mistakenly accessing one domain name instead of another. This may occur in e-commerce with its rapid progress and instant (and theoretcally limitless) accessibility to users and potential customers and particularly so in areas of specific overlap. Ordinary consumers/users seeking to locate the functions available under one domain name may be confused if they accidentally arrived at a different but similar web site which offers no such services. Such users could well conclude that the first domain name owner had misrepresented its goods or services through its promotional activities and the first domain owner would thereby lose their custom. It is apparent therefore, that a domain name may have all the characteristics of a trademark and could found an action for passing off.

17. Over the last few years the increased user of the internet has led to a proliferation of disputes resulting in litigation before different High Courts in this country. The Courts have consistently applied the law relating to passing off to domain name disputes. Some disputes were between the trademark holders and domain name owners. Some were between domain name owners themselves. These decision namely Rediff Communication Ltd. v. Cyber booth and Anr. (AIR 2000 Bombay

27), Yahoo Inc. v. Akash Aora (1999 PTC (19) 201), Dr. Reddy's Laboratories Ltd. v. Manu Kosuri (2001 PTC 859 (Del), Tata Sons Ltd. v. Manu Kosuri (2001 PTC 432 (Del)), Acqua Minerals Ltd. v. Shailesh Gupta and Anr. (2002 (24) PTC 355 (Del) correctly reflect the law as enunciated bus. No decision of any court in India has been shown to us which has taken a contrary view. The question formulated at the outset is therefore answered in the affirmative and the submission of the respondent is rejected."

13.In the instant case, I have perused through the evidence placed on record. The WHOIS search conducted on the registry website for the domain name www.tatainfotech.com clearly states that the record of the said domain name was created on January 30, 1998. The plaintiffs have also stated that they have been the prior user with respect to the said domain name ever since the year 1998. In contrast, the WHOIS search conducted on the registry website for the impugned domain name www.tatainfotech.in clearly shows that it was created on

February 19, 2005 in the name of defendant no. 1 i.e. Arno Palmen, by the sponsoring registrar Key-Systems GmBH, who is defendant no. 2. Further, the email correspondence between the contesting parties also conclusively demonstrates that the defendant no. 1 not only had the knowledge that plaintiff no. 2 was the legitimate owner and user of the trademark TATA INFOTECH, but also got the impugned domain name registered deliberately in bad faith, in the hope of being able to sell the domain name to the plaintiffs, or take unfair advantage of the distinctive character and repute of the plaintiffs‟ trademark.

14.The defendant no.1, its servants, agents and assigns and all others acting on behalf of the defendant are restrained from conducting any business or dealing in any manner including using domain name www.tatainfotech.in or the word TATA or any name comprising of the same or deceptively/confusingly similar to it regarding any goods, services or domain. The defendant no. 2, Key-Systems GmBH is directed to cancel the registration of the impugned domain name in favor of the defendant. With respect to delivery and rendition of accounts, the plaintiff has not placed any evidence on record to show that the defendant no. 1 has any infringing material or made any business out of the impugned trademark/domain name. In fact the defendant no. 1 has contacted the plaintiff instead of proceeding to make illegal

gains by selling/resolving the domain name to another party. No costs to follow. The suit is hereby decreed to the extent indicated above. Decree be drawn accordingly.

M.L. MEHTA, J.

MARCH 22 , 2013 kk