GROUPON, INC v. MOHAN RAO AND ANOTHER

1. This suit is coming up for ex parte final arguments before this Court today pursuant to the Order dated 3.7.2015 passed by the Joint

2. The subject suit is a suit filed by the plaintiff seeking injunction against passing off by the defendants of the trade mark ‘GROUPON’ of the plaintiff.

3. Plaintiff and its predecessors-in-title since the year 2002 have been using the trade mark ‘GROUPON’ offering online audiences, daily 2015:DHC:6876 discounts on products and services. The business of the plaintiff is conducted through the website www.groupon.com and whereby plaintiff gives out daily deals on the best products and services with respect to what to do, see, eat and buy in more than 500 markets in 40 countries. Plaintiff and its predecessors-in-title have used the trade mark for promotion of requisite goods and services of other companies and business such as retail outlets, cafes, restaurants, events etc. In order to qualify for the discount coupons offered by the plaintiff, the users of the website www.groupon.com are required to sign up for the deal offered on the website on the particular day as a group i.e a minimum number of people. The ‘GROUPON’ discount coupon is used as the trade mark ‘GROUPON’ of the plaintiff which is a coined word from two words ‘group’ and ‘coupon’. The website of the plaintiff averages about 1,50,000,00/- unique visitors per day. Plaintiff claims to have international goodwill and spillover reputation in India on account of access to their websites from India and also on account of worldwide advertisement and promotion expenses.

4. Plaintiff has registered trade mark ‘GROUPON’ in various countries including USA, European Union, Switzerland, Norway, New Zealand etc, and plaintiff has also registered its domain name ‘getyourgroupon.com’ in various countries. Defendants as per the plaintiff have surreptitiously registered the trade mark ‘GROUPON’ with respect to identical business and services in India under registration no. 1868095 in Class 35 which is stated to be valid up to 29.9.2019. Defendants also operate a website under the similar name of www.groupoff.com and when the same was accessed till around the year 2011, the same led to the website of the defendants.

5. Plaintiff has filed an affidavit by way of evidence of one Sh. Ankur Warikoo and in this affidavit plaintiff has proved its case including by exhibiting the documents. The affidavit by way of evidence duly proves the various documents exhibited as Ex.PW1/10 to Ex.PW1/32, and which documents show the incorporation of the plaintiff company; plaintiff carrying on business under the website of www.groupon.com; of the plaintiff doing the group deals coupons business; of defendants slavishly copying the trade mark ‘GROUPON’ of the plaintiff; that the plaintiff has international reputation and goodwill; that plaintiff acquired a website in India namely www.sosasta.com in January, 2011 and that the plaintiff has applied for cancellation of the registration of the trade mark of the defendants ‘GROUPON’.

6. An interesting aspect and the malafides and dishonesty of the defendants are shown from paragraphs 30 and 31 of the affidavit by way of evidence on behalf of the plaintiff which show that defendants are piraters in websites and squatters on different websites and thereafter force people to enter into deals with the defendants for purchasing the websites which have been wrongly got registered by the defendants being first off the blocks. These paragraphs 30 and 31 read as under:- “30. I say that as on September 19,2011, Defendant No.1 had over 130 domain names registered in his name, some of them incorporating the names/marks of various USA based companies as would be clear from the instances given below: -www.moneymailer.in: This corresponds to www.moneymailer.com, a well-known company based in the U.S. that sells franchises and has trademark rights in MONEY MAILER dating back to the 1970s. -www.dealperk.in: This corresponds to the daily deal site www.dealperk.com, founded in California, USA. -www.scoopstreet.in: This corresponds to www.scoopst.com, a daily deal site scoopst.com which was recently purchased by another U.S.company, Buy With Me. That apart, Defendant No.1 had also registered a domain name greatamericanbrands.com. This by itself shows keen interests of Defendant No.1 in US based brands and intends to bank on their reputation.

31. I say that out of these 130 odd domain names, Defendant No.1 had admitted to have registered 48 of these domain names in his name that are mentioned at Sr. Nos.1, 3, 10, 11, 26, 27, 28, 29, 32, 33, 34, 35, 36, 37, 38, 56,59,60,62to74,76to80,84,85,87,89,92,120,121,122,126,127,128 and 130 in the list of the domain names bearing internal running page numbers 34-35 of the documents filed by the plaintiff together with its sur-rejoinder in IA no.10581 of 2011 being Defendants’ application under Order 39 Rule 4 CPC. The print outs of the WHOIS reports pertaining to the said 48 domain names (internal running page numbers 36, 39, 48-50, 68-73, 77- 86, 106, 111-112, 115-130, 132-140, 147-149, 151, 153, 157, 196- 200, 206-209, 211 of the documents filed by the Plaintiff together with its sur-rejoinder in IA no.10581 of 2011 being Defendants’ application under Order 39 Rule 4 CPC), which are admitted documents, are marked as Exhibit P12 (Collectively, 65 pages). The print outs of the WHOIS reports pertaining to the remaining 82 domain names (internal running page numbers 37-38, 40-47, 51-67, 74-76, 87-105, 107-110, 113-114, 131, 141-146, 150, 152, 154-156, 158-195, 201-205, 210, 212-216 of the documents filed by the Plaintiff together with its sur rejoinder in IA no. 10581 of 2011 being Defendants’ application under Order 39 Rule 4 CPC), which are admitted documents, are marked as Exhibit PW1/33 (Collectively, 116 pages)”

7. Plaintiff has also filed the necessary certificates under Section

65 B of the Indian Evidence Act, 1872 and which have been specifically adverted to in paras 35 and 36 of the affidavit by way of evidence on behalf of the plaintiff.

8. I may note that defendants had earlier appeared in the suit but thereafter they chose to remain ex parte. By a detailed judgment of a learned Single Judge of this Court dated 19.3.2014, the ex parte injunction granted to the plaintiff on 19.3.2014 was confirmed by allowing the application of the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC).

9. In view of the affidavit by way of evidence filed by the plaintiff and plaintiff having proved various documents and since the defendants have failed to cross-examine the witness of the plaintiff, the deposition made by the witness of the plaintiff, Sh. Ankur Warikoo has to be believed.

10. Learned counsel for the plaintiff rightly relies upon a judgment of the Division Bench of this Court in the case of N.R. Dongre Vs. Whirlpool Corp. 1996 PTC (16) 476 and which holds that priority in date of registration of a trade mark is immaterial once the suit is a suit for passing off and in which suit it is the right of the earlier user of the trade mark which will be preserved even though the defendants may have got the registration of an identical or nearly similar trade mark.

11. Counsel for the plaintiff does not pray for grant of damages in the present suit as no proof of actual loss to the plaintiff has been filed.

12. In view of the above, the suit of the plaintiff is decreed against the defendants and the defendants, their servants, agents etc etc are restrained from in any manner using the trade mark ‘GROUPON’ of the plaintiff including in any website or in any manner or any other mark deceptively similar thereto in any activity including commercial activity. Plaintiff is also to be entitled to apply to the concerned authority for cancellation of the domain name ‘groupon.in’ which is being used by the defendants. Parties are left to bear their own costs. Decree sheet be prepared.

AUGUST 24, 2015 VALMIKI J. MEHTA, J. ib