Delhi High Court
Western Digital Technologies, ... vs Sumit Pandey And Others on 9 November, 2021
$~10
*IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 240/2021
WESTERN DIGITAL TECHNOLOGIES, INC.,..... Plaintiff
Through Ms. Shwetasree Majumder, Mr.
Prithvi Singh and Ms. Pritika Kohli,
Advocates
versus
SUMIT PANDEY AND OTHERS ..... Defendants
Through Mr. Alipak Banerjee, Advocate
for Defendant No. 2
CORAM:
HON'BLE MR. JUSTICE C .HARI SHANKAR
O R D E R (ORAL)
% 09.11.2021
CS(COMM) 240/2021
1. The plaint alleges infringement, by Defendant 1, of the
trademarks "WESTERN DIGITAL", "WD", "MY PASSPORT" and
"MY CLOUD" (referred to, jointly, in the plaint as the "Western
Digital Trademarks").
2. The plaintiff claims to be a world renowned manufacturer of
storage devices, media player, routers/switches/bridges, solid state
drives, software and mobile applications, manufactured and sold under
the Western Digital Trademarks.
3. The plaint alleges that Defendant 1 has registered the domain
names "wd-my-passport.com", "wdmypassport.co" and "support-
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By:SUNIL SINGH NEGI
Signing Date:11.11.2021
13:15:46
wdc.com". In registering these domain names, the plaint alleges that
the defendants are attempting to make it appear that they are
associated with the plaintiff by incorporating, in the domain names,
the plaintiff's registered trademarks "WD" and "MY PASSPORT".
4. The plaintiff claims to have adopted its corporate name and
trademark "Western Digital" in July, 1971. It is further asserted that
the plaintiff's logo is its corporate logo and is present on
all its products, labels and packaging. "Western Digital", it is
asserted, is the most essential feature of the plaintiff's corporate name.
The plaintiff claims to be using the registered trademarks "Western
Digital" since 1997, "WD" since 1999 and "MY PASSPORT" since
2008. The plaint also asserts that, by dint of long and established user,
these trademarks merit being regarded as "well-known trade marks"
within the meaning of Section 2(1)(zg) of the Trademarks Act, 1999.
5. The plaint provides a tabular depiction of the various registered
trademarks of the plaintiff, thus:
Trade Mark Number Class Date
WESTERN DIGITAL 1345682 9 March 18, 2005
WESTERN DIGITAL 2646539 35 & 37 December
20,2013
WD 1349235 9 April 6, 2005
WD 2491589 9 March 7, 2013
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1325732 9 December
14,2004
2646540 35 & 37 December
20,2013
MY PASSPORT GO 3792265 9 March 29, 2018
MY PASSPORT 1695178 9 June 4, 2008
MY CLOUD 2505854 9 & 42 April 2, 2013
MY ELEMENTS 2523270 9, 16, 42 May 1, 2013
These trademarks, it is asserted, continue to remain valid and
subsisting in law till date.
6. The plaintiff also claims to be the owner of various websites,
the domain names of which contain "WESTERN DIGITAL" or
"WD", which are used for marketing and selling "WD" products.
Some of these are:
(i) www.wd.com - created on 25th May, 1994,
(ii) www.wdc.com - created on 15th May, 1992,
(iii) www.westerndigital.com - created on 21st January, 1998,
(iv) www.wdstore.com - created on 23rd May, 2001,
(v) www.westerndigital.info - created on 12th September,
2001,
(vi) www.westerndigital.biz - created on 28th March, 2002
and
(vii) www.westerndigital.asia - created on 17th March, 2008.
7. The plaintiff claims to have received, on 30th April, 2021, an
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email from one of its customers, informing the plaintiff that it was
being attempted to be impersonated and that unauthorized customer
support, for the plaintiff's products, was being provided by others for
commercial consideration. It is claimed that US $ 199 was being
charged for providing the said support, whereas the plaintiff asserts
that it does not charge any sum for customer services provided by it
for its products.
8. On enquiry, the plaintiff came to know that Defendant 1 was
responsible for the said fraudulent representation using its domain
name "www.wd-my-passport.com", and also came across the
telephone number of Defendant 1. The plaint claims that the domain
name manager of the plaintiff, on inquiry, found that the registrant of
the aforesaid domain "www.wd-my-passport.com" was Defendant 1,
Sumit Pandey. Defendant 1 is claimed to be also owning the domain
names "www.wdmypassport.co" and "www.support-wdc.com".
9. On its website https://www.wdmypassport.co, it is claimed that
Defendant 1 provides basic information on how to use and set up some
of the plaintiff's products, including "WD PASSPORT", "MY
ELEMENTS", "MY BOOK", "WD BLACK", "MY CLOUD" and
"MY CLOUDHOME", thereby misleading customers into believing
that Defendant 1 is associated with the plaintiff and its products. It is
further claimed that, on these websites, if the "Contact Us" button is
clicked, a pop-up opens, which requests for the users' telephone
number, so as to enable a call from the technical support team and that
once the number is provided, the user receives a phone call from a
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person impersonating as the plaintiff's authorized representative, who
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requests for access to the users' system and requires the users to pay
the requisite consideration for fixing of any issue or bug in the users'
system. As such, the Defendant 1, asserts the plaint, is running an
unauthorized service centre/support centre for the products of the
plaintiff without any licence from the plaintiff in that regard.
10. The plaint further asserts that, in fact, WIPO Case No. D2020-
2208 was filed against Defendant 1, by M/s. Seagate Technology
LLC, titled "M/s. Seagate Technology LLC v. Domains by Proxy,
LLC/Sumit Pandey", and that, in the said proceedings, the WIPO
passed an order recording the fact that Defendant 1 was operating the
domain "www.seagate.support" to mislead users into believing that it
was associated with M/s. Seagate Technology LLC. The domain
name was, subsequently, transferred, by order of the WIPO, from
Defendant 1 to M/s. Seagate Technology LLC. As such, the plaint
asserts that Defendant 1 is an incorrigible infringer of registered
trademarks by creating domains whereunder support and other
services, without any authorization, are being provided against
monetary consideration.
11. In these circumstances, the plaintiff has approached this Court,
by means of the present plaint. The prayer clause in the plaint read
thus:
"In view of the facts and circumstances disclosed
hereinabove, the Plaintiff most respectfully prays that this
Hon'ble Court may be pleased to pass:
A. A decree of permanent injunction restraining
Defendant No. 1, Defendant No. 4 and other such
entities which are discovered during the proceedings
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to have been engaging in carrying out similar
fraudulent activities by misusing of the Plaintiff's
Western Digital trademarks, from infringing the
Plaintiff's registered Western Digital trademarks.
B. A decree of permanent injunction restraining
Defendant No 1, Defendant No. 4 and other such
entities which are discovered during the proceedings
to have been engaging in carrying out similar
fraudulent activities misusing the Plaintiff's Western
Digital trademarks, from passing off their services as
those of the Plaintiff.
C. An order directing a permanent blocking of
the domain names registered by Defendant No. 1 and
other such domain names which are discovered
during the proceedings to have been engaging in
carrying out fraudulent activities by infringing the
Plaintiff's Western Digital trademarks.
D. An order and decree directing Defendant No.
2, and all others in capacity of principal or agent
acting for and, on their behalf, or anyone claiming
through, by or under it, to suspend the domain name
registrations of Defendants No. 1 as identified by the
Plaintiff in the instant suit and other such other
domain names that may subsequently be notified by
the Plaintiff to be of Rogue Websites which infringe
its exclusive rights.
E. An order and decree directing the Defendant
No. 3 to issue a notification calling upon the various
internet and telecom service providers registered
under it to block access to Defendant No. 1's websites
or such other websites that may subsequently be
notified by the Plaintiff as being Rogue Websites.
F. An order for rendition of accounts of profits
illegally earned by Defendant No. 1 and such other
Defendants subsequently identified as operating
Rogue Websites on account of their infringing
activities and a decree for the said amount so found in
favour of the Plaintiff.
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By:SUNIL SINGH NEGI
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G. A decree for damages in the sum of Rs.
2,00,01,000/- in favour of the Plaintiff and against
Defendant No. 1 on account of the unauthorized use
of the impugned mark/device and a decree for the
said amount be passed in favour of the Plaintiff.
H. An order for actual and full costs of the present
proceedings against Defendant No 1 in favour of the
Plaintiff.
I. Such further orders/ reliefs as this Hon'ble
Court may deem fit and proper in the facts and
circumstances of the present case may also be passed
in favour of the Plaintiff and against the Defendant."
12. Ms. Majumder, learned Counsel for the plaintiff, submits on
instructions that her client does not press prayers F, G and H.
13. By order dated 27th May, 2021, this Court had found, prima
facie, infringement by Defendant No. 1, of the plaintiff's trademarks
by use of the impugned domain names www.wd-my-passport.com,
www.wdmypassport.co and www.support-wdc.com. As such, while
issuing notice to the defendants, ad interim relief in terms of a
restraint, on Defendant Nos. 1 and 4, from operating the impugned
domain names, as well as a direction to Defendant No. 2 to suspend
the impugned domain names, was issued.
14. Subsequently, I am informed that the aforesaid domain names
www.wd-my-passport.com, www.wdmypassport.co and
www.support-wdc.com stand transferred by WIPO in favour of the
plaintiff.
15. Summons, as issued by this Court, were served on Defendant
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No. 1. There has been no appearance on behalf of the said defendant.
Apparently, therefore, Defendant No. 1 does not intend to contest
these proceedings.
16. Ms. Majumder also suggested that, in order to avoid multiple
proceedings, in the event of Defendant No. 1 and/or Defendant No. 4
using the domain names www.wd-my-passport.com,
www.wdmypassport.co and www.support-wdc.com with any other
domain name extension (other than ".co", ".com"), Defendant No. 2
may be directed to suspend the use of such domain names, on the
plaintiff approaching Defendant No. 2 in that regard. I see no
impediment in grant of such a direction, as I have already found the
use of the domain names www.wd-my-passport.com,
www.wdmypassport.co and www.support-wdc.com to be infringing of
the plaintiff's registered trademarks. This infringement would,
therefore, continue to exist even if these domain names are used with
any other domain name extensions.
17. As the impugned domain names www.wd-my-passport.com,
www.wdmypassport.co and www.support-wdc.com stand transferred
by WIPO in favour of the plaintiff and as the plaintiff is not pressing
for damages or costs, nothing survives for adjudication in this plaint.
The plaint is, accordingly, decreed in the following terms:
(i) Defendant Nos. 1 and 4 are injuncted from using or
operating under any domain name, containing, as its operative
part, "wd-my-passport", "wdmypassport" and "support-wdc".
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By:SUNIL SINGH NEGI
Signing Date:11.11.2021
13:15:46
They are also restrained, therefore, from using or operating
under any domain names, which contain "wd-my-passport",
"wdmypassport" and "support-wdc" with any other domain
name extension or any other manner infringing the trademark of
the plaintiff.
(ii) In the event of Defendant No. 2 being intimated, by the
plaintiff, of use by Defendant No. 1 and/or anyone operating
through or on their behalf of domain names containing the
characters "www.wd-my-passport", "www.wdmypassport" and
"www.support-wdc" with any other domain name extension,
they shall proceed to suspend operation of the said domain
names forthwith. The plaintiff would not be required to re-
approach the Court in that regard. The right of Defendant No. 2
to seek any clarification or other direction from this Court, in
the event of any difficulty in implementing this direction,
however, remains reserved.
18. The suit is, accordingly, decreed in the aforesaid terms. Decree-
sheet be drawn up by the Registry.
I.A. 6710/2021 (Order XXXIX Rules 1 and 2 CPC)
19. In view of the order passed in the plaint, this application stands
disposed of.
C.HARI SHANKAR, J
NOVEMBER 9, 2021
r.bararia
Signature Not Verified
By:SUNIL SINGH NEGI
Signing Date:11.11.2021
13:15:46
