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Tata Sons Limited & Another v/s Fashion ID Limited

    Cs (Os) 1176/2002

    Decided On, 20 January 2005

    At, High Court of Delhi


    For the Appearing Parties: Praveen Anand, Jyotsna Bal Krishna, Advocates.

Judgment Text

1. Plaintiffs pray:

"(a) An order restraining the Defendant, its partners or proprietors as the case may be, their officers, servants, agents and representatives and all others acting for an on their behalf from using the domain name 'tata infotecheducation.com' or operating any business, making, selling transferring, offering fro sale, advertising and in any other manner dealing with goods or services using the Plaintiffs' trademarks TATA TATA INFOTECH TATA INFOTECH EDUCATION or many other mark name which is identical with or deceptively similar to the Plaintiffs' trademarks TATA TATA INFOTECH, whether as a domain name or otherwise and from doing any other thing as is likely to lad to passing off of the business and goods of the Defendant as and for those of the Plaintiffs;

(b) An order for freezing the website being operated under the domain name 'tatainfotecheducation.com' and for the transfer of the impugned domain name to the Plaintiffs from the register of the Registrar, NETWORK SOLUTIONS, INC and for delivery up of all impugned materials if any, including brochures, stationery and other printed matter, for purposes of destruction and or erasure;

(c) An order for the rendition of accounts of profit illegally earned by the Defendant on account of the infringing activities and a decree for the amount ascertained be passed in favour of the Plaintiffs',

(d) An order for damages of Rs-20 lakhs which the Plaintiffs have suffered by way of the Defendants' acts of passing off and dilution, such acts having seriously eroded, diluted and reduced the value of the Plaintiffs' trademark and intellectual property

(e) An order for costs in the present proceedings; and"

2. Vide order dated 14.2.2003 defendant was directed to be proceeded exparte as inspite of service none appeared for the defendant. Plaintiffs were directed to lead exparte evidence. Needful has been done.

3. Plaintiff No.l 'Tata Sons Limited' is a company incorporated under the Indian Companies Act, 1913. Plaintiff No.2 Tata InfoTech Limited' is a company incorporated under the Indian Companies Act, 1956. Plaintiff No.l is a majority shareholder of plaintiff No.2. Both plaintiffs are a part of a group of companies popularly referred to as TATA Group of Companies. It is claimed that total turnover of TATA Group of Companies is over US $ 9 billion.

4. Plaintiff No.2 claims to be a pioneer in the field of information technology Its activities include software consulting, hardware manufacture, offshore software development, systems integration and education services. Business of plaintiff No.2 in the year 1999-2000 is claimed to be.Rs.432 crores and in the year 2000-2001 Rs.523 crores. Plaintiff No.2 claims to provide concept based computer education and training to corporate institutions and career students in India and abroad. It started its Education Division in 1992 and claims to have more than 200 centers all over the country besides having centers in Columbia, Nepal, Bangladesh, Sri Lanka and Myanmar.

5. Promoter of plaintiff No.l was Late Jamsetji Tata. The company used the trademark and trade name TATA derived from the surname of its promoter. Plaintiffs claim that the word T.ATA is a rare patronymic name having all the trappings of an invented word. It is claimed that on account of its highly distinctive nature, the name TATA has acquired an excellent reputation. The mark name TATA is distinctive of the goods manufactured and services rendered by TATA Group of Companies.

6. Plaintiffs claim that by virtue of the facts afore noted, they have exclusive proprietary rights in the trade name service mark 'TATA INFOTECH' and the service mark 'TATA INFOTECH EDUCATION', adoption and use whereof by any third party would cause confusion and deception regarding origin of the goods or services. It would amount to passing off.

7. Plaintiffs claim enormous presence on the Internet and ownership of various domain names like 'tata.com', 'tatainfotech.com'. Plaintiff No.2 claims registration of the domain name 'tatainfotecheducation.com' on 9.5.2000. It is claimed that by engaging the services of a web designing and hosting agency called Internet Creativity Enablers, plaintiff No.2 got designed a host of web site under its domain name which site was activated in August 2000.

8. Offence is taken in the suit to the defendant getting itself registered as registrant of the domain name 'tatainfotecheducation.com', knowledge of which was gained by the plaintiffs in June 2002.

9. Plaintiffs state that the impugned domain name which was earlier registered in favour of Plaintiff No.2 was due for renewal on May 9, 2002. Due to a brief internal lapse renewal date was missed. Defendant misappropriated the domain name and snapped it up. Plaintiff No.2 could not therefore renew the said domain name. Visit to the site showed that defendant was dealing in gambling and other nefarious activities, which were harmful to the corporate image of the plaintiffs.

10. Plaintiffs have filed affidavit by way of evidence of Sh.Sanjeev Agarwal, senior manager and constituted attorney of plaintiffs No.2. Following documents have been proved:

(i) Ex.P-1 being the board resolution in favour of Sh. Sanjeev Agarwal.

(ii) Ex.P-2 being a compendium of the activities of Tata Group of Companies.

(iii) Ex.P-3 being the Galiup Poll result published in the Times of India evidencing that 3 out of 10 persons interviewed showing awareness of the word TATA.

(iv) Ex.P-4 being the extract from Encyclopedia Britannica showing that House of Tata was the only Indian Industrial Business Group mentioned therein.

(v) Ex.P-5 being the details of a list of trademarks registrations for inter alia the word TATA obtained by different Tata Group of Companies.

(vi) Ex.P-8 being the list of domain names of Tata Group showing use of word 'Tata' as part of domain name.

(vii) Ex.P-9 being web pages under domain name 'tatainfotecheducation.com.'

11. Affidavit deposes to facts asserted in the plaint and as noted above.

12. Affidavit deposes to various orders passed in suit filed by plaintiff No.l which orders prohibits the defendants in said suits from using the word TATA.

13. The question whether internet domain names are subject to the legal norms applicable to other intellectual properties such as trade marks was a subject matter of consideration before the Supreme Court in C.A. No.3028/2004 Satyam Info way Ltd. Vs. Sifynet Solutions Pvt. Ltd. Taking note of the definition of 'trade mark', mark' 'Goods' and 'services' in sections 2(zb) 2(m), 2(j) and 2(2) of the Trade Marks Act, 1999, their Lordships posing the question whether a domain name can be said to be a word or name which is capable of distinguishing the subject of trade or service made available to potential users of the internet, in the context of the cumulative affect of the definitions of the words afore noted held :

"12. The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet has developed from a mere means of communication to a mode of carrying on commercial activity. With the in crease of commercial activity on the internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site. In the commercial field, each domain name owner provides information services, which are associated with such domain name. Thus a domain name may pertain to provision of services within the meaning of Section 2(z). A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online Internet location. Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical.

" As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high. Whereas a large number of trademarks containing the same name can comfortably co exist because they are associated with different products, belong to business in different jurisdictions etc, the distinctive nature of the domain name providing a global exclusivity is much sought after. The fact that many consumers searching for a particular site are likely, in the first place, to try and guess its domain name has further enhanced this value."

The answer to the question posed in the preceding paragraph is therefore an affirmative."

14. In para 16 and 17 it was held :

"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 it 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.

17. Over the last few years the increased user of the internet has led to a proliferation of disputes resulting in litigation before different High Courts in this country. The Courts have consistently applied the law relating to passing off to domain name disputes. Some disputes were between the trademark holders and domain name owners. Some were between domain name owners themselves. These decision namely Rediff Communication Ltd. v. Cyberbooth and Anr. 2000 AIR(Bom) 27), Yahoo Inc. v. Akash Arora (1999 PTC (19) 201), Dr. Reddy's Laboratories Ltd. v. Manu Kosuri 2001 PTC 859 (Del), Tata Sons Ltd. v. Manu Kosuri 2001 PTC 432 (Del)), Acqua Minerals Ltd. v. Shailesh Gupta and Anr. 2002 (24) PTC 35.5 (Del) correctly reflect the law as enunciated by us. No decision of any court in India has been shown to us which has taken a contrary view. The question formulated at the outset is therefore answered in the affirmative and the submission of the respondent is rejected."

15. In the context of legislation in para 25, it was observed:

"25. As far as India is concerned, there is no legislation which explicitly refers to dispute resolution in connection with domain names. But although the operation of the Trade Marks act, 1999 itself is not extra territorial and may not allow for adequate protection of domain names, this does not mean that domain names are not to be legally protected to the extent possible under the laws relating to passing off."

16. It is thus obvious that principles of passing off would fully apply to an infringement of a domain name. Action would be available to the owner of a distinctive domain name.

17. I may only add that internet is like a market place

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where people buy and sell. Trade and commerce is carried on' through the internet. 18. Plaintiff No.2 is the prior user of the domain name in question. The word TATA has attached to the House of TATA evidenced by Ex.P-2, P-3, P-4 and P-5 which documents also evidence wide range of business activities of the Tata Group of Companies, their worldwide reputation and a distinctiveness attached to the word TATA and referable to the plaintiffs. 19. At the hearing held on 15.1.2005, counsel for the plaintiffs did not press for prayers other than prayer (a) and (b). 20. Suit is decreed in terms of prayers (a) and (b). The defendant, its servants, agents and assigns and all others acting on behalf of the defendant' are restrained from conducting any business or dealing in any manner including using domain name. 'tatainfotecheducation.com or the word 'Tata' or any name comprising of the same or deceptively confusingly similar to it regarding any goods, services or domain. The impugned domain registration in favour of the defendant is cancelled and the domain name 'atainfotecheducation.com' is transferred to plaintiffs No.2. 21. Though defendant has chosen to remain ex parte costs shall follow 'in sum of Rs.1 lac in favour of the plaintiffs and against the defendant.