2001 (4) TMI 944 - HC - Indian Laws

Summary

Issues Involved:
1. Permanent injunction against the use of the mark "BISLERI" and domain name "BISLERI.com".
2. Infringement of trademark and copyright.
3. Passing off and bad faith registration of the domain name.
4. Transfer of the domain name "BISLERI.com" to the plaintiff.

Summary:

1. Permanent Injunction Against Use of "BISLERI" and "BISLERI.com":
The plaintiff sought a decree for a permanent injunction restraining the defendants from using the mark "BISLERI" and/or "BISLERI.com" as part of their domain name or in any other manner, alleging that such use would result in passing off and infringement of copyright.

2. Infringement of Trademark and Copyright:
The plaintiff is the registered proprietor of the trademark "BISLERI" u/s 260716 dated 20th November 1969, and also owns the copyright in the word "BISLERI" and its unique manner of writing. The mark "BISLERI" is well-known in the Indian market, constituting 70% of the branded bottled mineral water in the country. The plaintiff has spent significant sums on advertising and publicity, establishing the mark "BISLERI" as exclusively associated with them.

3. Passing Off and Bad Faith Registration of the Domain Name:
The plaintiff discovered the illegal and unlawful registration of the domain name "BISLERI.com" by the defendant on 11th December 1999. The defendants were found to be using the domain name to trade in it or pressurize the plaintiff to pay large sums of money. The defendants' actions constituted a mischief of passing off. The court noted that the domain name has the same protection as a trade name or trademark registered under the TMM Act. The defendants' registration of "BISLERI.com" was deemed to be in bad faith, as they had no credible explanation for choosing the name and were using it to block or traffic the domain name.

4. Transfer of the Domain Name "BISLERI.com" to the Plaintiff:
The court held that the domain name "BISLERI" was chosen by the defendants with malafide and dishonest intentions. The defendants' explanation that they believed "BISLERI" meant mineral was found to be implausible. The defendants' demand for compensation to transfer the domain name further demonstrated their bad faith. The court concluded that the defendants' actions constituted infringement and passing off, and the plaintiff was entitled to the transfer of the domain name.

Conclusion:
The suit was decreed in favor of the plaintiff. The defendants, their directors, servants, agents, licensees, franchises, and representatives were restrained from using the mark "BISLERI" and the domain name "BISLERI.com". The plaintiff was given the liberty to approach Network Solutions Inc. to get the domain name transferred in its name.