Delhi High Court
Yahoo ! Inc. vs Manoj Tulsani & Ors. on 4 December, 2014
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Order delivered on: 4th December, 2014
+ CS(OS) No.3444/2012
YAHOO! INC. ..... Plaintiff
Through Mr. Dhruv Anand, Adv. with Ms.
Udita, Adv.
versus
MANOJ TULSANI & ORS. ..... Defendants
Through None
CORAM:
HON'BLE MR.JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J. (Oral)
1. The plaintiff has filed the present suit for the purpose of seeking
permanent injunction restraining infringement of its registered
trademark "Yahoo", passing off, dilution and tarnishment against the
defendants.
2. It has been stated that the plaintiff, Yahoo! Inc, is a leading
global Internet brand and communications, commerce and media
company that connects people to their passions, their communities
and world's knowledge by offering a comprehensive branded network
of searching, directory, information, communication, shopping,
electronic commerce and other online services to millions of users
daily. Plaintiff's Internet services are rendered under the unique and
highly distinctive trademark "Yahoo". The plaintiff is one of the most
recognized brands in the world.
3. The plaintiff has both statutory rights by way of registered
trademarks as well as common law rights in the mark "Yahoo".
Moreover the plaintiff's mark "Yahoo" has been recognized as a well
known trademark in India.
4. The plaintiff is the registered proprietor of the following
trademarks in India :-
Trademark No. Trademark Class
1361856 YAHOO (word) 99 (multi class registration)
956495 YAHOO! (word) 9
766143 YAHOO! (word) 25
978422 YAHOO! GROUPS 9
1311393 Y! Device 99 (multi class registration)
1357437 Y! MUSIC (Label) 99 (multi class registration)
2015203 YAHOO! LIFESTYLE 99 (multi class registration)
704537 YAHOO! (word) 16
1356813 MY YAHOO! 99 (multi class registration)
It has been stated that the plaintiff has also filed various
applications for registration of other "Yahoo" or "Yahoo" formative
trademarks.
5. The plaintiff has been using the mark "Yahoo" in connection
with its web services since June 1994. The plaintiff's Indian website
Yahoo India was launched sometime in June 2000 and has been in
use ever since. The said website can be viewed in English, Hindi,
Kannada, Telugu, Tamil, Malayalam and Gujarati. Plaintiff's websites
operated under the mark "Yahoo" record billions of page hits per day
the world over including in India.
6. It is averred that the usage of the "Yahoo" trademark and trade
name by the plaintiff is not restricted only to computer and internet
related services, but also extends to clothing, sporting goods, books,
magazines and other collateral goods including computer
accessories. The plaintiff has also successfully popularized its well-
known trademark "Yahoo" by extending its use of goods and services
beyond the scope of its dealing through licensing and franchising
such use by third parties. The plaintiff has thus expanded the scope
of the brand value of its "Yahoo" mark and therefore it is very easy for
confusion to arise if any party other than the plaintiff uses the "Yahoo"
mark as such use would indicate an association with the plaintiff.
7. It is contended that the reputation of the plaintiff's mark
"YAHOO" can be gauged from the ranking given to the "Yahoo" brand
by Interbrand, a leading brand marketing and consulting firm and
APCO Worldwide Rankings. Interbrand on an annual basis comes
up with the "100 Best Global Brands" and in this ranking "Yahoo"
brand of the plaintiff's has featured. Further the "Yahoo" brand of the
plaintiff has also been ranked as No. 2 in a list of 100 most loved
companies in the year 2013 by APCO. There are various articles
published in newspapers reporting the activities of the plaintiff which
in a way indicate the renown of the "YAHOO" mark in India.
8. It is averred that the plaintiff's trademark "Yahoo" has been
recognized as well known mark by both the trademark registry and
the Courts in India. In a case titled Yahoo! Inc. v. Akash Arora &
Anr., 78 (1999) DLT 285 this Court observed that "The services of
the Plaintiff under the trademark / domain name "Yahoo!" have been
widely publicized and written about." The plaintiff has been
successful in restraining third parties from infringing its rights in the
said trademark. This Court has, in various suits brought before it by
the plaintiff granted interim injunctions restraining third parties from
using the trademark "YAHOO" in respect of their goods and/or
services.
9. It is the case of the plaintiff that defendant Nos. 1 and 2 are
operating a business of tours and travels under the infringing trading
name "Yahoo Tours LLC", who also operate and carry on business
through the infringing website www.yahootourism.com. The
defendant No. 1 is the proprietor of defendant No. 2 entity.
10. The website of the defendants' allows prospective customers
from all over the world including India and particularly Delhi to make
bookings over the said website, thus allowing for commercial
transactions over the website. Defendants have offices in Dubai,
UAE; Karachi, Pakistan with their head office in Ahmedabad, India.
11. On learning about the infringing activities of the defendants, the
plaintiff addressed a cease and desist letter dated 27th May, 2011 to
the defendants through their attorneys in the UAE. The defendants
replied to the cease and desist letter vide letter dated 7th June, 2011
wherein it was stated that the defendants were willing to give up on
the infringing domain name. The defendants sought to differentiate
their colour scheme with the plaintiff's usage on multiple website.
12. The plaintiff thereafter through its counsels in the UAE filed a
complaint before the Dubai Department of Economic Development
(DED) and the Dubai Department of Tourism and Commerce
(DDTC). The DED thereafter in a meeting with the defendant No.1
and the plaintiff's representative in the UAE informed the defendants
that they should stop using the plaintiff's famous trademark "Yahoo"
as their activities under the said trademark amounted to infringement
of the trademark "Yahoo". In this regard, DED also sent a letter dated
31st December, 2012 to the plaintiff's UAE counsel confirming the fact
that the defendants were bound to change their name and not to use
Yahoo as part of their trading name. They also mentioned that
administrative action had already been taken against the defendants.
13. After the action taken by DED, the defendants wrote an email
dated 2nd September, 2012 to the plaintiff's UAE counsels confirming
that they had changed their name to Rayna Tours LLC and had
moved the entire set-up of Yahoo Tours LLC to India and their India
office was in charge of the infringing website. They also asked the
plaintiff's counsel to contact their India office regarding the infringing
website.
14. The plaintiff thereafter filed the present suit against the
defendants in respect of their infringing trading name and infringing
domain name. Vide order dated 8th February, 2013 an ex-parte
injunction was passed against the defendants.
15. Defendant No. 3, the Registrar of the impugned infringing
domain name, after receiving the aforesaid ex-parte order of
injunction, sent an email dated 21st February, 2013, to the plaintiff's
counsel stating that they had taken the privacy off the domain to
reveal its true registrant.
16. Defendant No. 2 thereafter wrote an email to the plaintiff's
counsel confirming that he would be stopping all operational work in
the name of Yahoo Tours LLC in Ahmedabad and informed that
though he was operating this booking office, he did not own the
infringing domain name. He told the plaintiff's counsel that he has
contacted the Dubai Office to remove the office address and contact
details of the Ahmedabad office from the website.
17. Thereafter, another email was sent by defendant No. 2 to the
plaintiff's counsel wherein he stated that he had stopped all
operations under the name Yahoo Tours LLC and that he was now
working for Rayna Tours. He also mentioned that he had no authority
over the impugned domain name and that Mr. Manoj Tulsani,
defendant No. 1 owned it.
18. It is the case of the plaintiff that Rayna Tours is the same entity
as Yahoo Tours LLC which is evident from the contact us page of the
website www.yahootourism.com which provides the name of the
offices as Rayna Tours. The defendants' said website also provides
an application which allows the consumers to make bookings online.
19. Though the defendants have, pursuant to the actions taken by
the plaintiff in the UAE and India, started carrying out operations in
their physical offices under the changed name of "Rayna Tours", they
continue to carry on their operations over the internet under the
infringing name of "Yahoo Tours LLC". It is averred by the plaintiff
that as most of the bookings are made by consumers over the
internet on the infringing website of the defendants, the continuing
use of the infringing name "Yahoo Tours LLC" by the defendants for
their online operations, along with the continuing use by them of the
infringing domain name <yahootourism.com> is only with the purpose
of causing the consumers to believe that the defendants' business is
in some way endorsed, sponsored and associated with the plaintiff.
20. The class of goods and services which covers the services
being offered by the defendants is Class 39. The plaintiff also has two
trademark registrations in Class 39, being trademark registration
Nos.1356813 for the trademark "My Yahoo" and 1311393 for the Y
device trademark. The defendants use of the Yahoo mark along with
a Y device which is deceptively similar to the plaintiff's Y device,
amounts to infringement of the registered trademarks of the plaintiff.
It is averred that as the plaintiff's trademark "Yahoo" is a well-known
trademark, such use by the defendants even for non-cognate
goods/services amounts to infringement of the rights of the plaintiff in
the Yahoo trademark. However, in the present case the plaintiff also
offers similar travel and tourism services under the Yahoo trademark
through their website "Yahoo! Travel" at
https://www.yahoo.com/travel.
21. The plaintiff states that the plaintiff's trademark "Yahoo" has
been used as a prominent part of the defendants' trading name and
such use of the "Yahoo" trademark is a violation of the plaintiff's
exclusive rights in the trademark "Yahoo" and amounts to
infringement and passing off of the Yahoo trademarks and other
Yahoo-formative trademarks of the plaintiff.
22. It is submitted that the defendants have offered no plausible
explanation for the adoption of an identical mark as part of their
trading name. Moreover, the defendants are bound to be aware of
the plaintiffs' trademark by virtue of the plaintiff's prior use of the
trademark "Yahoo" in relation to a series of goods and services and
the widespread promotional activities of the plaintiff. The defendants
have clearly tried to piggy-back on the plaintiff's reputation and for
this reason, have not only adopted the plaintiff's trademark as their
trading name but also as part of their domain name. The defendants
cannot have any justification for the adoption of the well-known
"Yahoo" trademark.
23. The plaintiff further stated that the potentiality of harm is
enormous on the internet. This is especially because the plaintiff has
a very wide internet presence and is the registrant of various Yahoo
formative websites. The use by the defendant of a trading name
which incorporates the registered trademark of the plaintiff as also a
domain name which incorporates the said trademark of the plaintiff is
bound to cause confusion amongst the public.
24. Further, it is averred that the defendants' infringing activities
have caused irreparable harm and injury to the plaintiff especially as
the plaintiff has no control over the quality of services being offered
by the defendants under the trademark "Yahoo".
25. During the course of proceedings in this matter, defendants No.
1 and 2 could not be served on various occasions through ordinary
process and so they were served by way of publication. However, no
one appeared on their behalf despite service. Accordingly defendants
No. 1 and 2 were proceeded ex-parte vide order dated 26th August,
2014. Defendant No.3 was served by courier but no one appeared,
so even he was proceeded ex-parte vide order dated 26th August,
2014.
26. In evidence, the plaintiff filed the affidavit of by Col. J.K.
Sharma who is a duly appointed constituted attorney of the plaintiff to
prove the facts stated in the plaint. The following documents have
also been filed:
The power of attorney dated 27th October, 2008 executed in
favour of Col. J.K. Sharma by the plaintiff, has been exhibited
as Ex. PW-1/1.
Some of the original printouts from the various websites of the
plaintiff has been exhibited as Ex. PW-1/2 (colly).
Printouts of plaintiff website "Yahoo! Travel" at
https://www.yahoo.com/travel as Exhibit PW 1/3.
Various articles published in newspapers reporting the activities
of the plaintiff, in a way indicating the renown of the YAHOO
mark in India, has been exhibited as Ex. PW-1/4 (colly).
Certificates of the trademark registrations in favour of the
plaintiff have been exhibited as Ex. PW-1/5 to Ex. PW-1/13.
A list of the applications for registration of other Yahoo or
Yahoo formative trademarks has been marked as Mark C.
Order of this Court in Yahoo! Inc. v. Akash Arora & Anr., in CS
(OS) No.2469/1998, has been marked as Mark D.
Order in Yahoo! Inc. v. Pawan Agarwal in Suit No. 345 of 2003,
has been marked as Mark E.
Order in Yahoo! Inc. v. Surinder Kumar Jain in Suit No. 949 of
2004, has been exhibited as Ex PW-1/16.
Order in Yahoo! Inc. v. Sujit Dutta Roy in Suit No. 769 of 2005,
has been marked as Mark F.
Order in Yahoo! Inc. v. Subhash Vadapally, in Suit No. 866 of
2007 has been exhibited as Ex PW-1/18.
Order in Yahoo! Inc. v. Firoz Nadidwala, in Suit No. 906 of
2009 has been exhibited as Ex PW-1/19.
Order in Yahoo! Inc. v. S. N. Hingorani, in Suit No. 1156 of
2003 has been exhibited as Ex PW-1/20.
Order in Yahoo! Inc. v. Mohan Patil, in Suit No. 3497 of 2012
has been marked as Mark G.
Order in Yahoo! Inc. v. Mohan Patil, in Suit No. 3497 of 2012,
has been marked as Mark H.
Order in Yahoo! Inc. v. Firoz Nadiawala, in Suit No. 906 of
2009, has been exhibited as Ex PW-1/23.
Fresh printouts of the Interbrand rankings for the years 2009-
2012 along with a printout of the APCO worldwide rankings of
the Top 100 Most Loved Companies for the year 2013, has
been exhibited as Ex.PW-1/24 (colly).
Printout of the list of well known trademarks from the official
website of the Trademark Registry of India which mentions
YAHOO at entry No.11. has been exhibited as Ex. PW-1/25.
Printouts of the defendants' website which provide information
on their activities and show the infringing manner of use of the
plaintiff's Yahoo Trademark, has been exhibited as Ex. PW-
1/26.
Copy of the cease and desist letter dated 27th May, 2011
issued to the defendants through their attorneys in the UAE,
has been exhibited as Ex. PW 1/27.
Typed copy of defendants reply to the cease and desist letter
vide letter dated 7th June, 2013 has been exhibited as Ex. PW
1/28.
Dubai Department of Economic Development's letter dated 31st
December, 2012 to the plaintiff's UAE counsel, has been
exhibited as Ex. PW 1/29.
Announcement dated 20th November, 2011 made by Dubai
Department Economic Development in Emirates Today along
with a certified English language translation thereof, has been
exhibited as Ex. PW 1/30.
Defendants' email dated 2nd September, 2012 to the plaintiff's
UAE counsels has been exhibited as Ex. PW 1/31.
Defendant No. 3 sent an email dated 21st February, 2013, to
the plaintiff's legal counsel, has been exhibited as Ex. PW 1/32.
A printout of the Who-is details revealing the details of the true
Registrant has been exhibited as Ex. PW 1/33.
Defendant No. 2's email dated 25th February, 2013 to the
plaintiff's counsel confirming that he would be stopping all
operational work in the name of Yahoo Tours LLC in
Ahmedabad and that though he was operating this booking
office, he did not own the infringing domain name, the same
has been exhibited as Ex. PW 1/34.
Email dated 7th September, 2013 sent by defendant No. 2 to
the plaintiff's counsel wherein he stated that he had stopped all
operations under the name Yahoo Tours LLC and that he was
now working for Rayna Tours, has been exhibited as Ex. PW
Printouts of www.yahootourism.com of the defendants are
exhibited as Ex. PW 1/36.
Printouts of the e-brochure of Rayna Tours and the printouts
from the travel desk sections of www.raynatours.ae are
exhibited as Exhibit PW-1/37.
Affidavit of Mr. Subroto Panda, the Head of the IT Department
of the plaintiff's legal counsel under Section 65-B of the Indian
Evidence Act, has been exhibited as Ex.PW-1/38.
27. The evidence of the plaintiff in the matter was closed vide order
dated 26th November, 2014.
28. In Yahoo! Inc. vs. Akash Arora & Ors. (supra), it was
observed that:
"12....In an Internet service, a particular Internet site could
be reached by anyone anywhere in the world who
proposes to visit the said Internet site. With the
advancement and progress in technology, services
rendered in the Internet has also come to be recognised
and accepted and are being given protection so as to
protect such provider of service from passing off the
services rendered by others as that of the plaintiff. As a
matter of fact in a matter where services rendered through
the domain name in the Internet, a very alert vigil is
necessary and a strict view is to be taken for its easy
access and reach by anyone from any corner of the globe."
Accordingly, the defendants therein were restrained from
operating any business or selling, offering for sale, advertising and/or
in any manner dealing in service or goods on the Internet or
otherwise under the trademark/domain name 'Yahooindia.com' or any
other trademark/domain name which is identical with or deceptively
similar to the plaintiff trademark 'Yahoo!'
In Yahoo! Inc. Vs. Sanjay v. Shah and Ors 2006 (32) PTC
263, this Court passed decree for permanent injunction restraining
the defendants therein from manufacturing, selling, offering for sale,
advertising, dealing in gutkha, supari, beverages, fruit juices or any
other product or service under the trademark 'YAHOO' or any other
mark deceptively similar thereto, or exploiting/using the
trademark 'YAHOO'.
Domain name
29. So far as the issue of protection of domain names is
concerned, the law relating to the passing off is well settled. The
principle underlying the action is that no one is entitled to carry on his
business in such a way as to lead to the belief that he is carrying on
the business of another man or to lead to believe that he is carrying
on or has any connection with the business carried by another man. It
is undisputed fact that a domain name serves the same function as
the trade mark and is not a mere address or like finding number on
the Internet and, therefore, is entitled to equal protection as a trade
mark. A 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 as more relevant to
trade mark disputes, a company's name identifies a specific
company.
30. Domain names are entitled to the protection as a trade mark
and the trade mark law applies to the activities on internet. The
following are the decisions in which the domain name is protected by
the Courts:
(i) In Marks and Spencer v. One in a Million, (1998) FSR 265, it
was held that any person who deliberately registers a domain
name on account of its similarity to the name, brand name or
trade mark of an unconnected commercial organization must
expect to find himself on the receiving end of an injunction to
restrain the threat of passing off, and the injunction will be in
terms which will make the name commercially useless to the
dealer. It was held in that decision that the name MARKS &
SPENCER could not have been chosen for any other reasons
than that it was associated with the well known retailing group.
The decision further goes on to say that when the value of the
name consists solely in its resemblance to the name or trade
mark of another enterprise, the court will normally assume that
the public is likely to be deceived, for why else would the
defendants choose it ? It was also observed that someone
seeking or coming upon a website called
http://marksandspencer.co.uk would naturally assume that it was
that of the plaintiffs.
(ii) In Acqua Minerals Ltd. v. Pramod Borse and another, 2001
PTC 619, while considering an injunction sought to restrain the
defendants from using the mark BISLERI or BISLERI.COM the
court observed that so far as the Registering Authority of the
domain name is concerned it agrees for registration of domain
only to one person. That is on first come first serve basis. If any
person gets the domain name registered with the Registering
Authority which appears to be the trade name of some other
person, the Registering Authority has no mechanism to inquire
whether the domain name sought to be registered is in prior
existence and belongs to another person. The court referring to
Rule 4 of the Domain Name Registration Policy observed thus :
'Unless and until a person has a credible explanation
as to why did he choose a particular name for
registration as a domain name or for that purpose as a
trade name which was already in long and prior
existence and has established its goodwill and
reputation there is no other inference to be drawn than
that the said person wanted to trade in the name of the
trade name he has picked up for registration or as a
domain name because of its being an established
name with widespread reputation and goodwill
achieved at huge cost and expenses involved in the
advertisement.'
(iii) In Rediff Communication Ltd. v. Cyberbooth, 1999 (3) Arb.
LR. 636, the Bombay High Court, while granting an injunction
restraining the defendants from using the mark/domain name
"RADIFF" or any other similar name, held that when two similar
domain names are considered there is every possibility of
internet user being confused and deceived in believing that both
domain names belong to one common source and connection
although the two belong to two different persons. Once the
intention to deceive is established, the court should not make
further enquiry about the likelihood of confusion. If it is found
that man's object in doing that which he did was to deceive, that
he had an intention to deceive the Court, will very much infer that
his object has been achieved, if the facts tend to show that, that
is the case and to say that his intention to deceive ripening into
decieve gives ground for an injunction.
(iv) In Living Media India Ltd. v. Jitender V. Jain & Anr, 2002 (25)
PTC 61 (Del) the plaintiff was a producer of a news program
under the name and style AAJ TAK while the defendant's
adopted the name KHABAREIN AAJ TAK in respect of
newspapers. The mark of the defendants was an exact
reproduction of the plaintiff's mark. The court observed that
while the words "Aaj" and "Tak" may be individually descriptive
and may not be monopolized by any person, but their
combination does provide protection as a trade name if it has
been in long, prior and continuous user and it gets identified with
such persons.
(v) In Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) 6
SCC 145, where the domain names www.sifynet,
www.sifymall.com, www.sifyrealestate.com of the appellant; and
www. Siffynet.net and www.siffynet.com of the respondent were
in question, it was observed by the Supreme Court as under:
"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 theoretically
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 mis-represented 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."
"29. Apart from the close visual similarity between
'Sify' and 'Siffy', there is phonetic similarity between
the two names. The addition of 'net' to 'Siffy' does not
detract from this similarity."
"31. What is also important is that the respondent
admittedly adopted the mark after the appellant. The
appellant is the prior user and has the right to debar
the respondent from eating into the goodwill it may
have built up in connection with the name."
(vi) The Supreme Court in the case of Laxmikant V.Patel v.
Chetanbhat Shah, 2002 (24) PTC 1 (SC), in the relevant para
10 held as under:-
"The law does not permit any one to carry on his
business in such a way as would persuade the
customers or clients in believing that his goods or
services belonging to someone else are his or are
associated therewith. It does not matter whether the
latter person does so fraudulently or otherwise. The
reasons are two. Firstly, honesty and fair play are, and
ought to be, the basic policies in the world of business.
Secondly, when a person adopts or intends to adopt a
name in connection with his business or services
which already belongs to someone else it results in
confusion and has propensity of diverting the
customers and clients of someone else to himself and
thereby resulting in injury."
In this case, the Apex Court further observed that:
"Where there is probability of confusion in business, an
injunction will be granted even though the defendants
adopted the name innocently."
(vii) In a similar situation, this Court in the case of Info Edge (India)
Pvt. Ltd. and Anr. v. Shailesh Gupta and Anr. 98 (2002) DLT
499 where the plaintiff was carrying business under the domain
name 'Naukri.com' and the defendant had began to use a
domain name 'Naukari.com', held that if two contesting parties
are involved in the same area, then there is a grave and
immense possibility for confusion and deception and both the
marks were deceptively similar. While granting a temporary
injunction in favour of the plaintiff, the Court observed as under :
"27. The defendant has employed minor mis-
spelling of the plaintiff's mark, although it has another
such mark available to it, which is also a registered
domain name. Therefore, the said action indicates and
establishes dishonest intention on the part of the
defendant. That appears to have been done with bad
faith in order to gain advantage of spelling error made
by the internet user while attempting to enter into the
plaintiff's internet address on their web-browser. The
very purpose of having two registered domain names
by the defendant only establishes the dishonest
intention and bad faith on the part of the defendant.
The real intention behind registering the domain
names for the same purpose, of which one is
deceptively similar to the domain name of the plaintiff,
is to attract or induce the internet user to come to the
website of the defendant first by mis-spelling the
plaintiff's mark and domain name and, thereafter,
taking the said internet user to the domain name of the
defendant, which is jobsourceindia.com. The
defendant's choice of slightly mis-spelt version of the
plaintiff's domain name was deliberate in order to suit
the business activities of the defendant and for the
purpose of diverting traffic of the internet users to
websites unrelated to the plaintiff. The traffic of the
internet users to the plaintiff's domain name is sought
to be diverted to the domain name and website of the
defendant by confusing the internet users as to
sponsorship or affiliation with a website that defendant
operates for commercial gain. Such intention is
deceitful and dishonest, apart from being an action on
bad faith."
"29. Both the domain names "Naukri.com" of the
plaintiff and "Naukri.Com" of the defendant, depicting
the nature and type of business activity they carry on
are identical or confusingly similar trade mark or
service marks. It is also a possibility for an internet
user while searching for the website of the plaintiff to
enter into the website of the defendant through only a
small mis-spelling of the domain name and, in fact,
such incident has occurred in the case of the plaintiff
itself vis-a-vis the defendant in proof of which a
documents is also placed on record. Such diversion of
traffic with the sole intention of ulterior gain in the
similar business activity by a competitor, requires
protection. A court discharging equitable justice should
come in aid and for protection of the honest user as
opposed to a dishonest user acting on bad faith.
30. The website using the domain name, similar to
that of the plaintiff, for commercial purposes, would
lead to an inference that the domain name was chosen
intentionally to attract internet users of the plaintiff.
This is also established in view of the minor spelling
variant to a well-known mark, without any Explanation
and the same definitely creates a prima facie inference
of bad faith within the meaning of paragraph 4(b)(iv) to
the aforesaid Policy, which was adopted by the
Internet Corporation for Assigned Names and
Numbers (ICANN), on August 26, 1999."
31. From the material placed on record, it is evident that the plaintiff
has proved its case in view of the statements made in the plaint.
Therefore, this Court is of the considered view that the plaintiff is
entitled for a decree for permanent injunction in terms of prayer (i) to
(iv) of Para 62 of the plaint. Decreed accordingly.
32. The plaintiff is also entitled to costs as prayed.
(MANMOHAN SINGH)
JUDGE
DECEMBER 04, 2014
