Full Judgment Text
*IN THE HIGH COURT OF DELHI AT NEW DELHI
th
% Date of decision: 4 April, 2013
+ CS(OS) 1426/2006
TIMES INTERNET LTD. ..... Plaintiff
Through: Mr. Satyajit Sarna, Advs.
versus
M/S INDAITIMES.COM & ANOTHER FC+ ..... Defendants
Through: None.
CORAM :-
HON’BLE MR. JUSTICE RAJIV SAHAI ENDLAW
RAJIV SAHAI ENDLAW, J
1. The plaintiff has sued, (i) for permanent injunction restraining the
defendant No.1 from operating its business, products and services with
reference to or under the mark/domain name/website “indaitimes.com” or
any other mark or device or logo likely to deceive and cause confusion
and/or passing off the defendant No.1’s business as that of the plaintiff; (ii)
for permanent injunction restraining the defendant No.1 from operating the
domain name/website “indaitimes”/ “indaitimes.com deceptively similar to
the plaintiff’s mark/trade mark/logo/domain name/website; (iii) for
mandatory injunction directing the defendant No.2 IPNIC Inc to cancel the
CS(OS) 1426/2006 Page 1 of 8
registration of the domain name “indaitimes.com” granted to the defendant
No.1; and, (iv) for ancillary reliefs of compensation, delivery etc.
2. Summons of the suit were issued to the defendants and on the
application of the plaintiff for interim relief vide ex parte ad interim order
th
dated 18 July, 2006 which continues to be in force, the defendants were
restrained from using the domain name “indaitimes.com” or any other
domain name deceptively similar to the plaintiff’s domain name
“indiatimes.com”.
3. The defendants failed to appear despite service and were vide order
rd th
dated 23 July, 2009 proceeded against ex parte and interim order dated 18
July, 2006 made absolute till the decision of the suit.
4. The plaintiff has led its ex parte evidence and the counsel for the
plaintiff has been heard.
5. The plaintiff has proved, (a) that the suit has been instituted and the
plaint signed and verified by a duly authorized person on behalf of the
plaintiff Company; (b) that Bennett Coleman & Co. Ltd (BCCL) is the
promoter of the plaintiff Company; (c) that the said BCCL in or around the
CS(OS) 1426/2006 Page 2 of 8
year 1996 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 with the URL, www.indiatimes.com
and got the same registered as a domain name with the Registrar, “Network
nd
Solutions Inc.” on 22 November, 1996; (d) that the trademark
“INDIATIMES” was coined by BCCL in 1996 and has been in use since
st
then; (e) that BCCL vide agreement dated 1 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 “indiatimes.com”;
(f) that the plaintiff has incurred huge expenditure in setting up and
operation of the said business; (g) that on account of quality and multiplicity
of products and services offered through the plaintiff’s website
www.indiatimes.com, the said business has grown manifold over the years
and at the time of institution of the suit had 10 million registered users and
was receiving 30 million text messages a month, 1 billion eyeballs a month
and was facilitating business worth 80 million every month; (h) that the
plaintiff in February, 2003 also launched its U.S.A. edition of the website
www.indiatimes.com; (i) that the plaintiff has applied for and secured
CS(OS) 1426/2006 Page 3 of 8
registration for the mark “INDIATIMES” and variations thereof in classes
9,16 and 35 of Trademark Act; (j) that on account of the priority in adoption
of the coined trademark INDIATIMES or indiatimes.com, the plaintiff’s
trademark INDIATIMES for internet, commerce and the domain name
indiatimes.com have acquired an extensive reputation; (k) that a domain
name in virtual world serves the same function as a trademark; (l) that the
plaintiff became aware of the registration of the domain name
www.indaitimes.com in June, 2006 and on making inquiries learnt that the
same was registered in July, 2003 and was renewed through defendant No.2
and that the defendants no.1 and 2 are the same entity though operating as
registrar and registrant; (m) that the defendant No.1 on its impugned domain
name “indaitimes” home page has provided a link to the sponsored results of
the plaintiff’s website indiatimes.com.
6. It is the case of the plaintiff that the adoption and registration by the
defendants of the domain name indaitimes.com amounts to infringement of
the plaintiff’s registered trademark INDIATIMES and amounts to passing
off and also amounts to cyber squatting. Hence this suit for restraining the
same.
CS(OS) 1426/2006 Page 4 of 8
7. The counsel for the plaintiff has initially sought adjournment stating
that the main counsel for the plaintiff is not available. Upon adjournment
being denied since the suit is of the year 2006, the counsel for the plaintiff
next contended that the affidavit by way of examination-in-chief was filed in
the year 2010 and the counsel believes that since then some of the
registrations applied for by the plaintiff may have matured and the plaintiff
desires to place the said facts on record. The same is also no reason for
adjourning the matter.
8. It was thereafter that the counsel for the plaintiff has taken me through
the pleadings and affidavit by way of examination-in-chief and has also
handed over copies of the following judgments:
i. Times Internet Ltd. Vs. Belize Domain Whois Service Ltd 2011
(45) PTC 96 (Del.);
ii. Times Internet Ltd. Vs. M/s Just Flowers 2007 IX AD (Delhi)
779;
iii. Times Internet Ltd. Vs. Jonathan S 2012 LawSuit (Del) 2868;
iv. Time Incorporated Vs. Lokesh Srivastava 116 (2005) DLT 599;
v. Societe Des Produits Nestle, SA Vs. Prayag Nutri Products Pvt.
Ltd 2011 (48) PTC 152 (Del)
Written submissions have also been handed over.
CS(OS) 1426/2006 Page 5 of 8
9. There can be no scope for doubt that the name indaitimes.com
adopted by the defendants is deceptively similar to the name indiatimes of
the plaintiff. The possibility of confusion thus definitely exists. There is
also no reason to doubt the un-rebutted evidence of the plaintiff of the
defendants having adopted the name indaitimes.com only in the year 2003
and the plaintiff being a prior user thereof.
10. The counsel for the plaintiff has also taken me through the downloads
of the website of the defendants and which website is found to contain
pornographic material and links to other adult/pornographic sites. The
counsel for the plaintiff has argued that persons/clients wanting to visit the
website indiatimes.com of the plaintiff merely by a minor error in spelling
and in punching the keys of the computer are likely to reach the website of
the defendant and which website provides similar commercial services as the
plaintiff’s website is providing. It is further argued that owing to the
adult/pornographic content on the website of the defendants, the consumers
of the plaintiff are likely to formulate an opinion that it is the plaintiff which
is on its website dealing in pornographic/adult material, resulting in the
consumers/clients of the plaintiff shunning the said website in future and
causing irreparable loss, injury and loss of reputation to the plaintiff.
CS(OS) 1426/2006 Page 6 of 8
11. This Court vide judgment in Belize Domain Whois Service Ltd
(supra) held that the right to use the word “indiatimes” vests only with the
plaintiff and the Registrar of the domain name is obliged to transfer the
domain name “indiatimestravel.com” adopted and got registered with the
Registrar to the plaintiff. Similarly, in M/s Just Flowers (supra), relief to
the plaintiff was granted with respect to the mark “eindiatimes”. Similarly,
in Jonathan S (supra) also injunction protecting the trademark of the
plaintiff was issued. The plaintiff, in Lokesh Srivastava (supra), was found
entitled to restrain use by the defendant in that case of “TIME ASIA
SANSKARAN” and/or using the component “TIME” and damages of Rs.5
lacs awarded and which judgment was followed in Societe Des Produits
Nestle, SA (supra).
12. On the basis of the ex parte evidence of the plaintiff and the
judgments cited, I am satisfied that the suit is entitled to be decreed.
Accordingly, a decree is passed in favour of the plaintiff and against – (1)
defendant no.1 for permanent injunction in terms of prayers (a) and (b) of
para 43 of the plaint; (2) against the defendant No.2 in terms of para 43 (c)
of the plaint; and, (3) though the counsel for the plaintiff has not addressed
any arguments on the aspect of damages and though the recovery of any
CS(OS) 1426/2006 Page 7 of 8
damages from the defendants who have failed to appear inspite of service
looks remote but following the dicta in the judgments cited, the plaintiff is
awarded damages in the sum of Rs.1 lacs from the defendant No.1. The
plaintiff shall also be entitled to the costs of the suit as per schedule.
Decree sheet be drawn up.
RAJIV SAHAI ENDLAW, J
APRIL 4, 2013
M..
CS(OS) 1426/2006 Page 8 of 8
th
% Date of decision: 4 April, 2013
+ CS(OS) 1426/2006
TIMES INTERNET LTD. ..... Plaintiff
Through: Mr. Satyajit Sarna, Advs.
versus
M/S INDAITIMES.COM & ANOTHER FC+ ..... Defendants
Through: None.
CORAM :-
HON’BLE MR. JUSTICE RAJIV SAHAI ENDLAW
RAJIV SAHAI ENDLAW, J
1. The plaintiff has sued, (i) for permanent injunction restraining the
defendant No.1 from operating its business, products and services with
reference to or under the mark/domain name/website “indaitimes.com” or
any other mark or device or logo likely to deceive and cause confusion
and/or passing off the defendant No.1’s business as that of the plaintiff; (ii)
for permanent injunction restraining the defendant No.1 from operating the
domain name/website “indaitimes”/ “indaitimes.com deceptively similar to
the plaintiff’s mark/trade mark/logo/domain name/website; (iii) for
mandatory injunction directing the defendant No.2 IPNIC Inc to cancel the
CS(OS) 1426/2006 Page 1 of 8
registration of the domain name “indaitimes.com” granted to the defendant
No.1; and, (iv) for ancillary reliefs of compensation, delivery etc.
2. Summons of the suit were issued to the defendants and on the
application of the plaintiff for interim relief vide ex parte ad interim order
th
dated 18 July, 2006 which continues to be in force, the defendants were
restrained from using the domain name “indaitimes.com” or any other
domain name deceptively similar to the plaintiff’s domain name
“indiatimes.com”.
3. The defendants failed to appear despite service and were vide order
rd th
dated 23 July, 2009 proceeded against ex parte and interim order dated 18
July, 2006 made absolute till the decision of the suit.
4. The plaintiff has led its ex parte evidence and the counsel for the
plaintiff has been heard.
5. The plaintiff has proved, (a) that the suit has been instituted and the
plaint signed and verified by a duly authorized person on behalf of the
plaintiff Company; (b) that Bennett Coleman & Co. Ltd (BCCL) is the
promoter of the plaintiff Company; (c) that the said BCCL in or around the
CS(OS) 1426/2006 Page 2 of 8
year 1996 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 with the URL, www.indiatimes.com
and got the same registered as a domain name with the Registrar, “Network
nd
Solutions Inc.” on 22 November, 1996; (d) that the trademark
“INDIATIMES” was coined by BCCL in 1996 and has been in use since
st
then; (e) that BCCL vide agreement dated 1 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 “indiatimes.com”;
(f) that the plaintiff has incurred huge expenditure in setting up and
operation of the said business; (g) that on account of quality and multiplicity
of products and services offered through the plaintiff’s website
www.indiatimes.com, the said business has grown manifold over the years
and at the time of institution of the suit had 10 million registered users and
was receiving 30 million text messages a month, 1 billion eyeballs a month
and was facilitating business worth 80 million every month; (h) that the
plaintiff in February, 2003 also launched its U.S.A. edition of the website
www.indiatimes.com; (i) that the plaintiff has applied for and secured
CS(OS) 1426/2006 Page 3 of 8
registration for the mark “INDIATIMES” and variations thereof in classes
9,16 and 35 of Trademark Act; (j) that on account of the priority in adoption
of the coined trademark INDIATIMES or indiatimes.com, the plaintiff’s
trademark INDIATIMES for internet, commerce and the domain name
indiatimes.com have acquired an extensive reputation; (k) that a domain
name in virtual world serves the same function as a trademark; (l) that the
plaintiff became aware of the registration of the domain name
www.indaitimes.com in June, 2006 and on making inquiries learnt that the
same was registered in July, 2003 and was renewed through defendant No.2
and that the defendants no.1 and 2 are the same entity though operating as
registrar and registrant; (m) that the defendant No.1 on its impugned domain
name “indaitimes” home page has provided a link to the sponsored results of
the plaintiff’s website indiatimes.com.
6. It is the case of the plaintiff that the adoption and registration by the
defendants of the domain name indaitimes.com amounts to infringement of
the plaintiff’s registered trademark INDIATIMES and amounts to passing
off and also amounts to cyber squatting. Hence this suit for restraining the
same.
CS(OS) 1426/2006 Page 4 of 8
7. The counsel for the plaintiff has initially sought adjournment stating
that the main counsel for the plaintiff is not available. Upon adjournment
being denied since the suit is of the year 2006, the counsel for the plaintiff
next contended that the affidavit by way of examination-in-chief was filed in
the year 2010 and the counsel believes that since then some of the
registrations applied for by the plaintiff may have matured and the plaintiff
desires to place the said facts on record. The same is also no reason for
adjourning the matter.
8. It was thereafter that the counsel for the plaintiff has taken me through
the pleadings and affidavit by way of examination-in-chief and has also
handed over copies of the following judgments:
i. Times Internet Ltd. Vs. Belize Domain Whois Service Ltd 2011
(45) PTC 96 (Del.);
ii. Times Internet Ltd. Vs. M/s Just Flowers 2007 IX AD (Delhi)
779;
iii. Times Internet Ltd. Vs. Jonathan S 2012 LawSuit (Del) 2868;
iv. Time Incorporated Vs. Lokesh Srivastava 116 (2005) DLT 599;
v. Societe Des Produits Nestle, SA Vs. Prayag Nutri Products Pvt.
Ltd 2011 (48) PTC 152 (Del)
Written submissions have also been handed over.
CS(OS) 1426/2006 Page 5 of 8
9. There can be no scope for doubt that the name indaitimes.com
adopted by the defendants is deceptively similar to the name indiatimes of
the plaintiff. The possibility of confusion thus definitely exists. There is
also no reason to doubt the un-rebutted evidence of the plaintiff of the
defendants having adopted the name indaitimes.com only in the year 2003
and the plaintiff being a prior user thereof.
10. The counsel for the plaintiff has also taken me through the downloads
of the website of the defendants and which website is found to contain
pornographic material and links to other adult/pornographic sites. The
counsel for the plaintiff has argued that persons/clients wanting to visit the
website indiatimes.com of the plaintiff merely by a minor error in spelling
and in punching the keys of the computer are likely to reach the website of
the defendant and which website provides similar commercial services as the
plaintiff’s website is providing. It is further argued that owing to the
adult/pornographic content on the website of the defendants, the consumers
of the plaintiff are likely to formulate an opinion that it is the plaintiff which
is on its website dealing in pornographic/adult material, resulting in the
consumers/clients of the plaintiff shunning the said website in future and
causing irreparable loss, injury and loss of reputation to the plaintiff.
CS(OS) 1426/2006 Page 6 of 8
11. This Court vide judgment in Belize Domain Whois Service Ltd
(supra) held that the right to use the word “indiatimes” vests only with the
plaintiff and the Registrar of the domain name is obliged to transfer the
domain name “indiatimestravel.com” adopted and got registered with the
Registrar to the plaintiff. Similarly, in M/s Just Flowers (supra), relief to
the plaintiff was granted with respect to the mark “eindiatimes”. Similarly,
in Jonathan S (supra) also injunction protecting the trademark of the
plaintiff was issued. The plaintiff, in Lokesh Srivastava (supra), was found
entitled to restrain use by the defendant in that case of “TIME ASIA
SANSKARAN” and/or using the component “TIME” and damages of Rs.5
lacs awarded and which judgment was followed in Societe Des Produits
Nestle, SA (supra).
12. On the basis of the ex parte evidence of the plaintiff and the
judgments cited, I am satisfied that the suit is entitled to be decreed.
Accordingly, a decree is passed in favour of the plaintiff and against – (1)
defendant no.1 for permanent injunction in terms of prayers (a) and (b) of
para 43 of the plaint; (2) against the defendant No.2 in terms of para 43 (c)
of the plaint; and, (3) though the counsel for the plaintiff has not addressed
any arguments on the aspect of damages and though the recovery of any
CS(OS) 1426/2006 Page 7 of 8
damages from the defendants who have failed to appear inspite of service
looks remote but following the dicta in the judgments cited, the plaintiff is
awarded damages in the sum of Rs.1 lacs from the defendant No.1. The
plaintiff shall also be entitled to the costs of the suit as per schedule.
Decree sheet be drawn up.
RAJIV SAHAI ENDLAW, J
APRIL 4, 2013
M..
CS(OS) 1426/2006 Page 8 of 8