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TMI Blog2002 (3) TMI 937X X X X Extracts X X X X X X X X Extracts X X X X ..... esaid trade mark /domain name of the plaintiff or any other trade mark/domain name, which may be identical and/or deceptively similar with the aforesaid mark/name. 2. The plaintiff adopted the name 'NAUKRI.COM' on 27.3.1997 and since then the plaintiff is carrying on its business under the aforesaid domain name, which according to the plaintiff has become one of the leading websites in India. The plaintiff has contended that the said domain name has assumed a distinctiveness as the plaintiff has chosen a Hindi word and use the same in the English script as early as in the March, 1997 in the internet world, which is dominated by the English domain names. The plaintiff has also put on record many press-clippings and write-ups to indicate that the plaintiff has established an enviable reputation, because of which the said domain name has also assumed a secondary meaning. Consequently ,it is stated that in view of such advertisements and publications by the plaintiff, the said domain name 'NAUKRI.COM' has become completely associated with the plaintiff and in the internet parlance and when used with the suffix .com, the word NAUKRI has attained a secondary meaning to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in name of the plaintiff is required to be protected and an injunction is required to be issued in terms of the prayer in the application filed by the plaintiff under Order 39 Rules 1 2 of the Code of Civil Procedure. It was also submitted that the defendant registered both the domain names i.e JOBSOURCEINDIA.COM and NAUKRI.COM after two years of the plaintiff registering its domain name and, Therefore, dishonesty is writ large as confusion is sought to be created by the defendant by diverting the internet traffic from the website of the plaintiff to the website of the defendant. He also stated that the facts alleged in the plaint had in the application, coupled with the documentary evidence placed on record, would reveal the dishonest intention of the defendant and that it is a case of bad faith and, Therefore, the plaintiff is entitled for grant of a temporary injunction. 4. Mr. Sai Krishna, appearing for the defendant, on the other hand, submitted that trade mark NAUKRI.COM of the plaintiff, is generic and, Therefore, it could not and is incapable of achieving the trademark significance or secondary meaning. He also submitted that the plaintiff cannot claim any protection i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... which will make the name commercially unless to the dealer. It was also held in the said decision that the name 'marksandspencer' could not have been chosen for any other reason than that it was associated with the well-known retailing group. The said decision further goes on to say that where the value of a name consists solely in its resemblance to the name or trade mark of another enterprise, the Court will normally assume that the public is likely to be deceived, for why else would the defendants choose it. It was also held that someone seeking or coming upon a website called http://marksandspencer.co.uk would naturally assume that it was that of the plaintiff. 8. It is true that under Sections 27 28 of the Trade and Merchandise Marks Act, the word 'services' did not find mention but the services rendered have come to be recognised for an action of passing off. However, with the enactment of a New Trade Merchandise Act, the services rendered has been given a statutory recognition. The said new Act is yet to be notified and is yet to be enforced. Law of passing off is an action under the common law which also is given a statutory recognition in the Trade ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... #39;s name identifies a specific company. Accordingly, in the said case, the court granted the injunction upon consideration of the relevant law, namely, Section 32 of the Lanham Act. In the facts of the said case, it was held that Card service International's customers, who wish to take advantage of its Internet service, but do not know its domain name are likely to assume that Card service.com belongs to Card service International. It was further held that those customers would instead reach McGee and see a home page for Card Service and thereby may would assume that they have reached Card service International. 13. The ratio of the principle laid down in Yahoo Inc. (supra) was followed in several subsequent decisions, one of which is Rediff Communication Ltd v. Cyberbooth and Anr. reported in 2000 PTC 209. Reference also could be made to the decision of this court in Acqua Minerals Limited v. Pramod Borse and Anr. reported in 2001 PTC 619 and the decision in Dr. Reddy's Laboratories Limited v. Manu Kosuri and Anr . reported in 2001 PTC 859 (Del). In Rediff Communication (supra), the Bombay High Court examined the records and upon scrutinising the same, the co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... to one common source and connection, although the two belong to two different concerns. 16. 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 deceived and misled that the defendant's business is the business of the plaintiff or is a branch or department of the plaintiff. 17. In the background of the aforesaid legal position settled by various decisions of this court and other courts including the Supreme Court of the United States, let me now proceed to decide the issues raised before me in the light of the facts of the present case. The plaintiff herein adopted the domain name NAUKRI.COM on 27.3.97. Since then the plaintiff has developed the said domain name and the website. There is definitely peculiarity in the aforesaid domain as the plaintiff has adopted a Hindi word with English script. Thus, a distinctiveness could be attributed to the said domain name of the plaintiff. The plaintiff has also placed on record various clippings and write-ups in support of its claim of popularity, goo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ices and the manner in which request for employment could be made and, Therefore, it is a service offered by the plaintiff relating to job opportunity and situation and giving guidance thereto and, Therefore, the same is a descriptive word. It is also a settled law that the distinction between the generic word and descriptive word is very thin and such word could also assume a secondary meaning by its long user by a person, who establishes his reputation in the market. 20. If a product of a particular character or composition is marketed in a particular area or place under a descriptive name and gained a reputation there under, that name which distinguished it from competing products of different composition, the goodwill in the name of those entitled to make use of it there was protected against deceptive use there of the name of competitors. In Erven Warnink by and Ors. v. J Townend Sons (Hull) Ltd. and Ors. reported in (1979) 2 All ER, it was held that whether the name denoted a product made from ingredients from a particular locality or whether the goodwill in the name was the result of the product being made from particular ingredients regardless of their provenance, sinc ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... is associated with the business of the plaintiff for considerable time and thereafter the defendant adopts a similar word as one of his two marks to induce innocent internet users to come to the website of the defendant, which establishes dishonest intention and bad faith, would the court still be not granting injunction to protect the business of the plaintiff? The answer to the said question has to be an emphatic 'No . User of similar word by a competitor coupled with dishonest intention and bad faith would empower a court to restrain such user/misuser to do equitable justice to the aggrieved party. In this regard reliance can be placed on the decision of Gujarat Bottling Co. (Ltd.) and Ors. v. Coca Cola Co. and Ors. AIR1995SC2372 . In paragraph 47 of the said judgment, it was said that injunction being an equitable relief, the party approaching the Court for grant of it and the party opposing it must be fair and honest and in absence of it in respect of one party, the other party could be given the relief. 23. Reliance by the defendant on the decision of Manish Vij and Ors. v. Indira Chugh and Ors . in S. No. 618/2000 I.A. Nos. 3064 and 7471/2000 disposed of on 29th J ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ey have nothing to do with jobs. It is thus prima facie established that those websites/domain names stand apart and on a different footing from the domain names of the plaintiff and the defendant. There is neither any occasion nor is there any immediate necessity for the plaintiff to proceed against those websites/domain names, which are non-functional and non-relatable to the activity of employment and jobs. The plaintiff, Therefore, cannot be denied relief and an injunction only because it has not proceeded against other similar names. As a matter of fact, when action is initiated, one similar domain name has to be always the first and that cannot be the reason for denying injunction to the plaintiff. It was further contended that consumers are discerning and intelligent people and, Therefore, they would be in a position to distinguish the various websites/domain names and, Therefore, there is no cause for any confusion. Similar contention raised in Yahoo Inc. (supra) was rejected by this court holding that even if an individual is sophisticated user of the Internet, he may be an unsophisticated consumer of information and such a person may find his/her way to the defendant&# ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t. That appears to have been done with bad faith in order to gain advantage of spelling error made by the internet user while attempting to enter into the plaintiff's internet address on their web-browser. The very purpose of having two registered domain names by the defendant only establishes the dishonest intention and bad faith on the part of the defendant. The real intention behind registering the domain names for the same purpose, of which one is deceptively similar to the domain name of the plaintiff, is to attract or induce the internet user to come to the website of the defendant first by mis-spelling the plaintiff's mark and domain name and, thereafter, taking the said internet user to the domain name of the defendant, which is jobsourceindia.com. The defendant's choice of slightly mis-spelt version of the plaintiff's domain name was deliberate in order to suit the business activities of the defendant and for the purpose of diverting traffic of the internet users to websites unrelated to the plaintiff. The traffic of the internet users to the plaintiff's domain name is sought to be diverted to the domain name and website of the defendant by confusing th ..... X X X X Extracts X X X X X X X X Extracts X X X X
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