2013 (3) TMI 479 - HC - Companies Law

Permanent injunction - Infringement of trademark - as per plaintiffs the defendants are using the trademark/domain name www.tatainfotech.in or any other mark/domain name which is identical with or deceptively similar to the plaintiff s trademarks TATA/TATA INFOTECH - plaintiffs prayed for an order for transfer of the domain name www.tatainfotech.in to the plaintiffs from the register of the Registrar, Key-Systems GmBH, and for delivery-up of all infringing materials along with the rendition of accounts of profit illegally earned as well as damages - Held that - The WHOIS search conducted on the registry website for the domain name www.tatainfotech.com clearly states that the record of the said domain name was created on January 30, 1998. The plaintiffs have also stated that they have been the prior user with respect to the said domain name ever since the year 1998. In contrast, the WHOIS search conducted on the registry website for the impugned domain name www.tatainfotech.in clearly shows that it was created on CS (OS) No. 563/2005 Page 9 of 11 February 19, 2005 in the name of defendant no. 1 i.e. Arno Palmen, by the sponsoring registrar Key-Systems GmBH, who is defendant no. 2. Further, the email correspondence between the contesting parties also conclusively demonstrates that the defendant no. 1 not only had the knowledge that plaintiff no. 2 was the legitimate owner and user of the trademark TATA INFOTECH, but also got the impugned domain name registered deliberately in bad faith, in the hope of being able to sell the domain name to the plaintiffs, or take unfair advantage of the distinctive character and repute of the plaintiff s trademark. Thus the defendant no.1, 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 www.tatainfotech.in or the word TATA or any name comprising of the same or deceptively/confusingly similar to it regarding any goods, services or domain. The defendant no. 2, Key-Systems GmBH is directed to cancel the registration of the impugned domain name in favor of the defendant. With respect to delivery and rendition of accounts, the plaintiff has not placed any evidence on record to show that the defendant no. 1 has any infringing material or made any business out of the impugned trademark/domain name. No costs to follow. The suit is hereby decreed to the extent indicated above.

Summary

Issues:
Trademark infringement, domain name dispute, passing off, damages, injunction.

Analysis:
The plaintiffs, Tata Sons Ltd. and Tata Infotech Ltd., sought a permanent injunction against the defendants from using the trademark/domain name www.tatainfotech.in or any similar mark. They claimed exclusive rights over the TATA/TATA INFOTECH trademarks, highlighting their long-standing use and association with high-quality products and services. The defendants' registration of the domain name was seen as an attempt to profit illegally, causing potential harm to the plaintiffs' business reputation and customer base.

The plaintiffs emphasized their significant online presence, including owning domain names like tata.com and tatainfotech.com. They argued that the defendants' use of the impugned domain name could lead to confusion among consumers seeking the plaintiffs' services online. The plaintiffs' prior registration and use of the domain name www.tatainfotech.com since 1998 were contrasted with the defendants' registration of www.tatainfotech.in in 2005, showing a deliberate attempt to exploit the plaintiffs' trademark for personal gain.

The judgment referenced legal precedents, including the recognition of domain names as subject to trademark laws and the applicability of principles of passing off in such disputes. The court found in favor of the plaintiffs, restraining the defendants from using any similar domain names or trademarks and directing the cancellation of the impugned domain name registration. The defendants were prohibited from engaging in any business activities related to the disputed marks. While no evidence of infringing materials or profits was presented, the court decreed the suit in favor of the plaintiffs, emphasizing the need to protect intellectual property rights and prevent unauthorized use of trademarks.

In conclusion, the judgment highlighted the importance of safeguarding trademark rights in the digital age, especially concerning domain name disputes. The court's decision to grant a permanent injunction and order the cancellation of the impugned domain name underscored the significance of protecting established brands and preventing unauthorized exploitation for personal gain.