Full Judgment Text
Neutral Citation Number: 2022/DHC/005137
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 17.11.2022
Date of decision: 25.11.2022
+ CS(COMM) 173/2020 & I.A. 18830/2022
MAKE MY TRIP (INDIA) PRIVATE LIMITED ..... Plaintiff
Through: Mr.Karmanya Dev Sharma,
Mr.Deepankar Mishra,
Mr.Abhishek Kotnala, Advs.
versus
OWNERS OF HTTPS://WWW.MAKEMYTRIPMOOD.COM &
ORS.
..... Defendants
Through: Ms.Shweta Sahu, Mr.Parva Khare,
Advs. for D-3 (M-9911983636).
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
1. The present suit has been filed by the plaintiff praying for a decree
of permanent injunction against the defendants, restraining them from
using the marks/logos ‘MAKEMYTRIPMOOD’ ,
, the
domain name http://www.makemytripmood.com or any other marks
deceptively similar to the plaintiff’s registered ‘MakeMyTrip’ trade
marks (hereinafter referred to as the ‘MakeMyTrip Marks’) ,which
would amount to either infringement, passing off, dilution, tarnishment of
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NEGI
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the plaintiff’s ‘ MakeMyTrip ’ marks, or unfair competition. The
‘ MakeMyTrip Marks ’ of the plaintiff are reproduced hereinbelow:-
FACTUAL BACKGROUND
2. It is the case of the plaintiff-company that it is one of the largest
travel companies in India, with its pan-India presence as also
international presence, in countries including the United States of
America, the European Union, Australia and the United Kingdom
amongst others.
3. The plaintiff was originally incorporated on 13.04.2000. Vide fresh
Certificate of Incorporation dated 02.08.2000, the plaintiff changed its
name to ‘Makemytrip.com Pvt Ltd.’. Subsequently, the plaintiff changed
its name to its present name, ‘MakeMyTrip (India) Pvt. Ltd’. The
plaintiff, through its domain name www.makemytrip.com (registered in
May, 2000) and other technology-enhanced platforms, including mobile-
applications since July, 2012, offers an extensive range of travel services
and products, both in India and abroad. The said services of the plaintiff
include booking of air tickets, bus tickets, hotel reservations, car hire,
domestic and international holiday packages, and ancillary travel
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requirements such as facilitating access to travel insurance, visa
assistance and forex exchange under its ‘ MakeMyTrip Marks’ .
4. The plaintiff asserts that it has been using the ‘ MakeMyTrip
Marks ’ continuously and uninterruptedly since the year 2000 for all its
business activities. The word ‘ MakeMyTrip ’ is coined and inventive,
which is an essential feature of all the composite device and/or word
marks of the plaintiff. The same is not a common dictionary word.
5. It is further asserted that due to extensive use for more than twenty
years and owing to the plaintiff’s widespread goodwill and reputation in
its ‘ MakeMyTrip Marks ’, the general public and the members of trade
have come to associate and recognize the ‘ MakeMyTrip Marks ’ as
originating from the plaintiff and no one else.
6. It is asserted that the plaintiff maintains an active and extensive
presence on social media platforms such as Facebook, Twitter, YouTube
and Instagram, which prominently feature the ‘ MakeMyTrip Marks ’.
The plaintiff has over thousands of followers on each platform.
7. The plaintiff has provided details of its annual sales turnover for
the Financial Years 2000-01 to 2018-19 in paragraph 16 of plaint, and the
details of the amount expended on advertising in the same time period in
paragraph 17 of plaint.
8. It is asserted by the plaintiff that the plaintiff has sponsored various
national and international events, Bollywood feature films such as
‘ Dostana’ and ‘ Yeh Jawaani Hai Deewani’, and sporting events such as
the Indian Premier League (2016-2018), wherein the ‘ MakeMyTrip
Marks ’ of the plaintiff have been prominently featured. It is asserted that
the plaintiff has been the recipient of numerous prestigious national and
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international awards and recognitions, and is also a part of several
renowned national and international trade associations.
9. The plaintiff submits that the plaintiff-company has, apart from
common law rights, also acquired statutory rights by way of numerous
registrations in the ‘ MakeMyTrip Marks ’ under various classes in India
as per the provisions of the Trade Marks Act, 1999 (in short ‘the Act’),
which have been detailed in paragraph 13 of the plaint. It is further
asserted that the plaintiff has acquired trade mark registrations in several
countries across the globe, such as Australia, Canada, Singapore and the
United Arab Emirates, for its ‘ MakeMyTrip Marks ’.
10. It is submitted by the plaintiff that around the month of February
2020, the plaintiff came to know about the existence of the impugned
domain name www.makemytripmood.com , which was providing Call
Girl/Escort Services to third parties. On the website, the defendant no.1
has clearly described itself as a ‘Call Girl Service Centre’ catering to
many cities in India.
11. Being aggrieved of the mala fide use of the plaintiff’s marks, the
plaintiff issued a takedown notice dated 12.02.2020 to the defendant
no.3, who, in response, stated that the impugned domain name is not
hosted by them. Thereafter, the plaintiff issued a takedown notice on
15.02.2020 to the Endurance International Group, Inc., a Name Server.
On receipt of the takedown notice, the impugned domain name was
successfully removed and the same was informed to the plaintiff vide
email dated 26.02.2020.
12. It is submitted that the impugned domain name was once again
active, this time being hosted by the defendant no.2 through a different
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Domain Name Registrar or Name Server. Being aggrieved, the plaintiff
filed the present Suit before this Court.
COURT PROCEEDINGS IN THE SUIT
13. Vide order dated 16.06.2020, this Court granted an ex-parte ad-
interim injunction in favour of the plaintiff and against the defendant
no.1, restraining them from using the impugned mark
‘ MakeMyTripMood ’, the impugned domain name
www.makemytripmood.com as well as the infringing logo, that is,
, or any other trade mark/domain logo/logo which is
deceptively similar to the plaintiff’s ‘ MakeMyTrip Marks ’ /domain
name. The defendant no.3 herein was directed to block the impugned
domain name www.makemytripmood.com vide the same order.
14. The learned counsel for the defendant no. 3 informed the Court
that the defendant no. 1’s domain name is hosted by an entity by the
name of “Highwinds Network Group Inc.”. The said entity was
impleaded in the Suit. Further, the defendant no. 4 and 5, that is, the
Mobile Service Providers, were directed to provide the name and address,
including the email address, if available, of the individual in whose name
the mobile numbers mentioned in the order stand registered.
15. On receipt of information from the defendant nos. 4 and 5 with
regard to the registered subscribers to the mentioned mobile telephones,
the plaintiff impleaded the defendant nos. 7 and 8 to the Suit, vide order
dated 30.09.2020 passed by the learned Joint Registrar (Judicail).
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16. Thereafter, the defendants nos. 1, 2 and 4 to 8 were proceeded ex-
parte by an order of this Court dated 15.03.2021.
17. Subsequently, by an application, being I.A. No. 14101/2021, the
defendant no.6 sought for its deletion from the array of parties. The same
was allowed by the learned Joint Registrar (Judicial) vide order dated
12.07.2022.
18. The plaintiff has now filed an application, being I.A. 18830/2020,
under Order IX Rule 6 and 11 of the Code of Civil Procedure, 1908 (in
short ‘CPC’) praying for an exemption from leading ex-parte evidence
and that the Suit be proceeded to pronouncement of ex-parte judgment.
SUBMISSION ON BEHALF OF THE LEARNED COUNSEL FOR
THE PLAINTIFF
19. It is submitted by the learned counsel for the plaintiff that the
defendant no.1’s marks are phonetically, visually and conceptually
identical to the plaintiff’s ‘ MakeMyTrip Marks’ , which constitutes
infringement as well as passing off under Section 29 of the Trade Marks
Act, 1999 (in short, ‘the Act’).
20. It is submitted by the learned counsel for the plaintiff that the
nature of services being provided by the defendant no.1 under the
infringing marks and impugned domain name are denigrating the
business of the plaintiff. It is further submitted that the illegal activities of
the defendants are likely to result in dilution, diminution and eventual
erosion of the goodwill and reputation of the ‘ MakeMyTrip Marks’
owned by the plaintiff.
21. The learned counsel for the plaintiff submits that despite service
and providing several opportunities to the contesting defendants nos. 1, 7
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and 8, the said defendants have voluntarily chosen not to file a response
to the plaint.
22. He submits that defendant no. 2 to 5 are impleaded only as
proforma parties and the plaintiff does not wish to press any relief against
the said defendants and that they be deleted from the array of parties.
ANALYSIS AND FINDINGS
23. I have considered the submissions of the learned counsel for the
plaintiff.
24. The plaintiff is the registered proprietor of the mark
‘ MakeMyTrip’ and its various formative marks. The plaintiff has also
been able to establish the goodwill and reputation attached to the
plaintiff’s ‘ MakeMyTrip Marks ’ in India.
25. The domain name www.makemytripmood.com of the defendant
no.1 is deceptively similar to the plaintiff’s registered domain name
www.makemytrip.com , which is likely to deceive an unwary consumer.
This Court, in Anugya Gupta v. Ajay Kumar and Another., 2022 SCC
OnLine Del 1922, has held that the right of a proprietor in a domain name
is entitled to equal protection, applying the principles of the trade mark
law . The use of the same or similar domain name may lead to diversion
of users, which could result from such users mistakenly accessing one
domain name instead of another. Therefore, a domain name may have all
the characteristics of a trade mark and could find an action for passing
off.
26. In Dr. Reddy’s Laboratories Limited v . Manu Kosuri & Anr ,
2001 SCC OnLine Del 222, this Court has held as under:
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“7. It is a settled legal position that when a
defendant does business under a name which is
sufficiently close to the name under which the
plaintiff is trading and that name has acquired a
reputation the public at large is likely to be misled
that the defendant's business is the business of the
plaintiff or is a branch or department of the
plaintiff, the defendant is liable for an action in
passing off and it is always not necessary that
there must be in existence goods of the plaintiff
with which the defendant seeks to confuse his own
domain name passing off may occur in cases
where the plaintiffs do not in fact deal with the
offending goods. When the plaintiffs and
defendants are engaged in common or
overlapping fields of activity, the competition
would take place and there is grave and immense
possibility for confusion and deception and,
therefore, there is probability of sufferance of
damage. Plaintiff and defendants are operating on
the Website. The domain name serve same
function as the trademark and is not a mere
address or like finding number of the Internet and,
therefore, plaintiff is entitled to equal protection
as trade mark. The domain name is more than a
mere Internet address for it also identifies the
Internet site to those who reach it. 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. In a matter where
services rendered through the domain name in the
Internet, a very alert vigil is necessary and a strict
view needs to be taken for its easy access and
reach by anyone from any corner of the world.”
27. The mere use of the suffix ‘mood’ is not sufficient to distinguish
the plaintiff’s and the defendant no.1’s marks. The use of a deceptively
similar mark by the defendant no.1 is likely to cause confusion in the
minds of the public at large. The use of the deceptively similar domain
name by the defendant nos. 1, 7 and 8 is also likely to cause dilution of
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the ‘ MakeMyTrip Marks ’ of the plaintiff and cause irreparable harm
and injury to its goodwill and reputation.
28. In the present case, the defendant nos.1,7 and 8, who are the only
contesting defendants in the Suit, have chosen neither to file their written
statement nor have they entered appearance in the Suit to defend the
same. In my opinion, therefore, this is a fit case where a Summary
Judgment in terms of Order XIII-A of the CPC, as applicable to
commercial disputes of a specified value, read with Rule 27 of the Delhi
High Court Intellectual Property Rights Division Rules, 2022 deserves to
be passed in favour of the plaintiff and against the defendant nos. 1,7 and
8.
29. In Su-Kam Power Systems Ltd. v. Kunwer Sachdev and Another,
2019 SCC OnLine Del 10764, this Court has held as under:
“ 90 . To reiterate, the intent behind incorporating
the summary judgment procedure in the
Commercial Court Act, 2015 is to ensure disposal
of commercial disputes in a time-bound manner.
In fact, the applicability of Order XIIIA, CPC to
commercial disputes, demonstrates that the trial is
no longer the default procedure/norm.
91. Rule 3 of Order XIIIA, CPC, as applicable to
commercial disputes, empowers the Court to grant
a summary judgement against the defendant
where the Court considers that the defendant has
no real prospects of successfully defending the
claim and there is no other compelling reason why
the claim should not be disposed of before
recording of oral evidence. The expression “real”
directs the Court to examine whether there is a
“realistic” as opposed to “fanciful” prospects of
success. This Court is of the view that the
expression “no genuine issue requiring a trial” in
Ontario Rules of Civil Procedure and “no other
compelling reason…..for trial” in Commercial
Courts Act can be read mutatis mutandis.
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Consequently, Order XIIIA, CPC would be
attracted if the Court, while hearing such an
application, can make the necessary finding of
fact, apply the law to the facts and the same is a
proportionate, more expeditious and less
expensive means of achieving a fair and just
result.
92. Accordingly, unlike ordinary suits, Courts
need not hold trial in commercial suits, even if
there are disputed questions of fact as held by the
Canadian Supreme Court in Robert Hryniakv.
Fred Mauldin, 2014 SCC OnLine Can SC 53, in
the event, the Court comes to the conclusion that
the defendant lacks a real prospect of successfully
defending the claim.”
30. Applying the above principles, in my opinion, no useful purpose
would be served in insisting upon the plaintiff to file its affidavits of ex
parte evidence. This is a fit case where a Summary Judgment deserves to
be passed in favour of the plaintiff and against the defendant nos. 1, 7 and
8.
31. As noted hereinabove, the defendant nos. 2 to 5 were impleaded
only as proforma parties and the plaintiff does not wish to press any relief
against the said defendants. Accordingly, the defendant nos.2 to 5 are
deleted from the array of parties.
RELIEF
32. In view of the above, I.A. 18830/2022 is allowed. The suit is
decreed in terms of prayers made in paragraph 58 (a) and (b) of the plaint
in favour of the plaintiff and against the defendant nos. 1, 7 and 8.
33. Let a Decree Sheet be drawn accordingly.
NAVIN CHAWLA, J.
NOVEMBER 25, 2022/Ais
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NEGI
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