Times Internet Ltd. vs Time Broadband Services Pvt.Ltd.
2015 Latest Caselaw 797 Del

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*     IN THE HIGH COURT OF DELHI AT NEW DELHI

                                RESERVED ON : November 10, 2014
                                DECIDED ON : January 29 , 2015

+     CS(OS) 2004/2006 & IA Nos.2620/2007 (u/O 6 R 17) &
      11806/2006 (u/O 39 R 1 & 2)

      TIMES INTERNET LTD.
                                                           ..... Plaintiff
                          Through : Mr.Abhinav Hansaria, Advocate.

                          versus

      TIME BROADBAND SERVICES PVT.LTD.
                                                              ..... Defendant
                          Through : None.
       CORAM:
       HON'BLE MR. JUSTICE S.P.GARG

S.P.GARG, J.

1. The instant suit for permanent injunction restraining passing

off/infringement of trademark, domain name, copyright and damages has

been preferred by the plaintiff against the defendant. It is averred that the

plaintiff M/s Times Internet Ltd. (hereinafter referred to „TIL‟) is a

company registered under the Companies Act, 1956. M/s Bennett

Coleman & Co.Ltd. (hereinafter referred to „BCCL‟) is its promoter

company. BCCL entered the field of e-commerce about a decade back,

under the Trade Name/Logo „indiatimes‟ and a portal „indiatimes.com‟

was created. Its internet site/website „http://www.indiatimes.com‟ was

registered as a domain name with the Registrars „Network Solutions Inc.".

Through this site, BCCL started offering a large variety of goods and

services to the public at large. The trademark and logo of „indiatimes‟

were coined by BCCL as the said company is the owner of numerous

publications including Times of India, The Economic Times, Navbharat

Times etc. popularly known as the Times Group Publications, and its

name is associated with the said trademark/logo. BCCL became the legal

and beneficial owner of copyrights, intellectual property rights, design

rights and trademarks in the said mark and logo „indiatimes‟ as well as the

domain name „indiatimes.com‟. Further case of the plaintiff is that BCCL

assigned its internet business including its website/portal „indiatimes.com‟

to the plaintiff company vide agreement dated 1st April, 2000. In

furtherance of its earlier e-commerce business, the plaintiff widened its

services by stepping into the field of television and radio broadcasting and

started to offer broad-band service to the public at large through its

flagship portal „www.indiatimes.com. The said service is marketed and

displayed through a radio button on the abovementioned portal which

leads to http://broadband.indiatimes.com. The plaintiff also registered

two domain names i.e. „indiatimesbroadband.com and „indiatimesbb.com‟

dedicated for providing the broadband service in addition to its portal

„indiatimes.com‟ with the Registrars „Network Solution Inc.‟ on

19.04.2004. It is averred that the plaintiff incurred huge cost and made

investment for development and designing of the aforesaid

websites/portals as detailed in para 8 of the plaint. Millions of people

started visiting the plaintiff‟s website for availing various services/internet

shopping. The plaintiff received more than thirty million SMSs and a

hundred billion eyeballs in a month and does a business of eighty million

worth of online shopping every month and has ten million registered

users. Various applications for registration of the said names and

trademarks/logos of „indiatimesbroadband‟ and „indiatimesbb‟ besides

others were made for registration under the Trade and Merchandise Marks

Act, 1999. The application for registration of the trademarks

„indiatimesbroadband‟ and „indiatimesbb‟ are pending since 07.10.2004.

2. Further case of the plaintiff is that these trademarks/logos

have come to be associated with it exclusively and no one else has the

right to use them to cause confusion to the public at large regarding its

products or services. These marks are completely identified with the

plaintiff and stand for the highest quality, authenticity and best prices.

These marks have no dictionary meaning and were created, invented and

developed by the plaintiff and are original artistic marks. The domain

name works as an identity card for a trade name of an organization.

3. Further case of the plaintiff is that it was taken by surprise

when it recently found that the defendant has unlawfully and with mala

fide intention got itself registered as a company in the name of M/s Time

Broadband Services Pvt. Ltd. on 11th January, 2005 at Mumbai which on

the face of it, is deceptively similar to the name of the plaintiff company.

The defendant has also got a domain name „timebroadbandindia.com‟

registered on 15.11.2005 with M/s Network Solutions Inc. and has put up

a website www.timebroadbandindia.com on the internet. The defendant

not only used the same name as that of the plaintiff but also the services to

be offered by the defendant under the said name were similar to the

plaintiff‟s services. The defendant intends to take advantage of the

reputation of the plaintiff company. Registration of the defendant is not

only illegal, unauthorized but will also create confusion in the public and

affect the business and reputation of the plaintiff.

4. The suit was contested by the defendant. In the written

statement, the defendant controverted the allegations of the plaintiff. It is

stated that the plaintiff has not come to the court with clean hands and has

suppressed true material facts. The plaintiff is not sure about its own case;

has given vague information and leveled vague, evasive and baseless

allegations. The plaintiff intends to extort money from its progressing

rival party and also to capture its business. The brand name of the

defendant in no way is an infringement of any brand name of the plaintiff.

The plaintiff has no locus standi to interfere with the business run by the

defendant. The plaintiff has not explained as to why the applications for

registrations since 7th October, 2004 are pending. The site/logo of the

defendant in no way causes any confusion or conflict. The names

suggested or alleged for processing since 07 th October, 2004 are not

primary sites but secondary ones and are accessory services. Both the

parties have their own separate, entirely different and independent

properties. The defendant has throughout been a bona fide, fair, legal and

lawful in proceedings and conducted its business under the said name over

which, no one can interfere. So far as the property of the plaintiff is

concerned, the defendant has never interfered nor is going to interfere in

future.

5. In the replication, the plaintiff reiterated its stand in the

plaint.

6. Perusal of the record reveals that the attempt was made to

explore settlement through mediation. However, the dispute could not be

resolved. It appears that subsequently the defendant opted not to contest

the suit. None appeared on his behalf on several dates and by an order

dated 07.07.2011, the defendant was proceeded ex-parte. The plaintiff

examined PW-1 (Mahesh Chand Gupta) in its ex-parte evidence.

7. I have heard the learned counsel for the plaintiff and have

examined various judgments placed on record along with the written

notes. PW-1 (Mahesh Chand Gupta) tendered his affidavit of evidence in

examination-in-chief (Ex.PW-1/A). He also relied upon numerous

documents (Ex.PW-1/1 to Ex.PW-1/66). Averments in the plaint have

been proved without any deviation. Statement given by PW-1 has

remained unchallenged and unrebutted. Adverse inference is to be drawn

against the defendant for not appearing on the adjourned hearings and

contesting the suit.

8. Earlier also the plaintiff had instituted CS(OS) No.1289/2008

Times Internet Ltd.vs.Belize Domain Whois Services Ltd and Ors [2011

(45) PTC 96 (Del)] decided by this Court on 10.11.2010. This Court held

that the right to use the word „indiatimes‟ vests only with the plaintiff and

the Registrar of domain name (defendant No.2 therein) was obliged to

transfer the domain name adopted and got registered with it by defendant

No.1 to the plaintiff. Similarly in Times Internet Ltd. vs.M/s Just Flowers

2007 IX AD (Del) 779, relief to the plaintiff was granted with respect to

the mark „indiatimes‟. In Times Internet Ltd. vs. Jonathan S. & Anr.

[2012 (51) PTC 195 (Del)], injunction protecting the trademark of the

plaintiff was issued. In Time Incorporated vs.Lokesh Srivastava 116

(2005) DLT 599, the plaintiff was found entitled to restrain the defendant

from printing, publishing, issuing and advertising their magazine under

the trade name of „TIME ASIA SANSKARAN‟ and/or using the

component of „TIME‟ and damages of ` 5 lacs. This judgment was

followed in Societe Des produits Nestle vs.Prayag Nutri Products Pvt.

Ltd. 2011 (48) PTC 152 (Del).

9. In the recent case Times Internet Ltd.vs.M/s Indiatimes.Com

& Anr. [CS(OS)1426/2006] decided on 04.04.2013, this Court passed a

decree in favour of the plaintiff and against defendant No.1 therein in

terms of prayers (a) and (b) of para 43 of the plaint and against defendant

No.2 therein in terms of para 43(c) of the plaint.

10. In Times Internet Ltd.vs.Belize Domain Whois Services Ltd

and Ors. (supra) this Court held as follows:

"It is, therefore, difficult to dispute the contention of the plaintiff that the domain name adopted and got registered by defendant No.1 being identical to the coined trademark of the plaintiff on account of use of the words

'indiatimes' in it, it is a clear case of passing off and defendant No.1 is not entitled to continue suing the domain name 'indiatimestravel.com'. Since the right to use the words 'indiatimes' vests only with the plaintiff, defendant No.2 is obliged to transfer the domain name adopted and got registered with it by defendant No.1 to the plaintiff."

11. In his testimony, the plaintiff has proved that the suit has

been instituted by a duly authorized person on behalf of the plaintiff

company; BCCL is its promoter and in 1996 it had entered into the field

of e-commerce under the brand name „indiatimes‟ and for the said

purpose had created a portal in the name of „indiatimes.com‟; developed a

website known as „www.indiatimes.com‟ and got the same registered as a

domain name with the Registrars „Network Solutions Inc." on 22.11.1996.

It has further established that the trademark „indiatimes‟ was coined by

BCCL in 1996 and has been in use since then. BCCL vide agreement

dated 1st April, 2000 assigned its internet business including its

website/portal „indiatimes.com‟ to the plaintiff company and since then

the plaintiff company has been carrying on its internet business under the

trademark/brand name of „indiatimes.com‟ The plaintiff has incurred

huge expenditure in setting up and operation of the said business. The

plaintiff has applied for and secured registration in the mark „indiatimes‟

and „indiatimes.com‟. On account of priority in adoption of the coined

trademark „indiatimes.com‟, the plaintiff trademark „indiatimes‟ for e-

commerce and domain name have acquired extensive reputation. The

plaintiff has further proved that the defendant has no right or interest in

the mark exclusively belonging to the plaintiff. It also established that the

adoption and registration of the defendant‟s domain name

„timebroadbandindia.com‟ and a website www.timebroadbandindia.com

on the internet amounts to infringement of plaintiff‟s registered trademark

and amounts to passing off. There can be no scope to doubt that the name

„timebroadbandindia.com‟ adopted by the defendant is deceptively similar

to the name of „indiatimesbroadband.com and „indiatimesbb.com‟ of the

plaintiff. The possibility of confusion definitely exists.

12. On the basis of the ex-parte evidence of the plaintiff and the

judgments cited above, I am satisfied that the suit is entitled to be decreed.

Accordingly a decree is passed in favour of the plaintiff and against the

defendant for permanent injunction in terms of prayers (a), (b) and (c) of

para 44 of the plaint. Following the dicta in the judgments cited above,

the plaintiff is awarded punitive damages in the sum of ` 1 lac to be paid

by the defendant. The plaintiff shall also be entitled to the costs of the suit

as per schedule. Terms and conditions of prayers (a), (b) and (c) of para

44 shall form part of the decree sheet. Decree sheet be prepared

accordingly.

13. The suit and all pending IAs stand disposed of accordingly.

(S.P.GARG) JUDGE January 29, 2014 sa