Full Text
HIGH COURT OF DELHI
Date of Decision: 15th February, 2025
INFINITI RETAIL LIMITED ..... Plaintiff
Through: Mr. Sauhard Alung, Advocates. (M:
9425341404)
Through: Ms. Ankita, Adv. for D-9.
Mr. Ish Preet Singh & Mr. Piyush Singhal, Advs. for D-14 – Airtel
Payment Bank. (M: 9958284901)
Ms. Richa Kapoor, Mr. Kunal Anand & Ms. Atika Singh, Advs. for D-19.
Mr. Anuj Srivastava, Adv. (M:9999690774)
Mr. Piyush Singhal, Mr. Paras Khurana & Ms. Himanshi Jain, Advs. for D-15. (M:8810488484)
Mr. Yashu Rustagi, Adv for Indian Bank (M. 8882149812)
Mr. D.C Tripathi, Adv. for D-18 Mr. Manish Mohan, CGSC.
Mr. Alipak Banerjee, Ms. Shweta Sahu, Mr. Parva Khare, Mr. Brijesh Ujjainwal Advocates for D-4
Ms. Sonia Munjal, Adv. for D-22.
Mr. Mrinal Ojha, Mr. Debarshi Dutta, Mr. Arjun Mookerjee, Mr. Nikhil Gupta, Ms. Nikita Rathi, Mr. Rishabh Agarwal and Mr. Yogesh Singh, Advs. for D-27.
Ms. Yashika Kapoor and Mr. Parshant Arora, Advocates for VI
16:52
JUDGMENT
1. This hearing has been done through hybrid mode. Background
2. The present suit has been filed by the Plaintiff- Infiniti Retail Limited, seeking a permanent injunction to restrain trademark infringement, passing off, dilution, tarnishment, and to claim damages, rendition of accounts, and other reliefs. The Plaintiff is the owner of the mark ‘CROMA’ and its various stylized variants.
3. It is the case of the Plaintiff that it is a company incorporated in 2005 under the Companies Act, 1956, and operates its business under the mark ‘CROMA’ and its stylized variants. For the said purpose, the Plaintiff states that it has obtained registration of approximately 130 trademarks including ‘CROMA’ formative marks, across various classes, in relation to a wide range of goods and services, details whereof have been given in paragraph 24 of the plaint. The Plaintiff further asserts that the mark ‘CROMA’ has been declared as a well-known mark by the Registrar of Trade Marks vide notification dated 24th February, 2020. The Plaintiff also holds various registrations for its mark ‘INFINITI RETAIL’, across various classes and in relation to a wide range of goods and services. The details of the registration whereof are given by the Plaintiff in paragraph 25 of its plaint.
4. The Plaintiff, a wholly owned subsidiary of Tata Sons Pvt. Ltd., and part of the TATA Group, owns and manages a nationwide retail chain, under 16:52 the ‘CROMA’ marks. It offers a wide range of products at its stores, including consumer products, electronic items, household appliances, kitchen accessories, mobile phones, computers, audio and video products, etc. The said products are sold through more than 260 stores spread across India as well as through their website “www.croma.com”. The Plaintiff also claims to have a significant e-commerce business under the ‘CROMA’ brand.
5. In the plaint, the Plaintiff also discloses its expenses on marketing and promotional activities for the years 2010 to 2021 as also the revenue earned in the years 2007 to 2018. It further claims that it has won many awards in various categories, details whereof have also been given in paragraph 17 of the plaint.
6. The plaintiff asserts that its website www.croma.com has noted a progressive rise in traffic over the past few years and the number of visitors on the same have increased to 9,63,82,224 in the year 2021.
7. The case of the Plaintiff is that various domain names have been registered by third parties, consisting of the word ‘CROMA’, thereby causing confusion among the consumers as also misleading and deceiving the consumers into believing that such infringing domain names/websites are connected with the Plaintiff. It is the contention of the Plaintiff that such unauthorised use and squatting of its marks not only dilutes its brand identity but also results in financial and reputational harm to the Plaintiff and even affects the consumers. Proceedings in the Suit
8. The present suit was initially filed in respect of Defendant Nos. 1, 2 and 3 who are believed to be the owners of the infringing website/domain names. Vide order dated 25th July, 2022, summons was issued in the present suit. The 16:52 Plaintiff had initially sought an ex-parte ad-interim injunction restraining the Defendant Nos. 1, 2, and 3 from using the respective infringing domain names consisting of the word ‘CROMA’ in any form whatsoever including ‘CROMA’ formative marks. Thus, vide interim order dated 25th July, 2022, the domain names used by the said Defendants were injuncted in the following terms:
16:52 filed within a period of four weeks of receipt of summons and /notice of this application.”
9. In the present suit, Defendant No. 4 – GoDaddy.com LLC is the Domain Name Registrar (hereinafter ‘DNR’) for the domain names and websites operated by Defendant Nos. 1, 2 and 3. In addition, Defendant NO. 8 - Vodafone-Idea Limited is the telecom service provider of the mobile numbers listed on the websites operated by the Defendant Nos. 1, 2 and 3, which were being used by the said Defendants to contact consumers. Further, the Defendant No. 9 – PhonePe Private Limited is the payment platform operating on the Unified Payment Interface (UPI) which was being utilized by Defendant Nos. 1, 2 and 3.
10. During the pendency of the present suit the Plaintiff became aware of other infringing websites and domain names. Accordingly, additional domain names/websites were impleaded in the present suit from time to time along with corresponding DNRs, banks and telecom service providers. Vide orders dated 23rd November, 2022, 12th January, 2023 & 25th May, 2023 the said injunction has also extended to further domain names operated by Defendant Nos. 12, 20 and 21. The relevant extracts of the said orders dated 23rd November, 2022, 12th January, 2023 & 25th May, 2023 are set out below: 23rd November, 2022 “I.A 17480/2022
4. By the application, being I.A. 17480/2022, the plaintiff prays for addition of the defendant no.12, which the plaintiff claims to be the infringing websites www.cromawholesellersltd.com and www.cromawholesellerltd.in as also, the telecom service provider for the mobile number listed on the above websites as defendant no.13; and the domain name registrar of the above websites as the defendant no.14. 16:52
5. The plaintiff further asserts that based on the details provided by defendant nos.8, 9 and 10 and the National Internet Exchange of India (NIXI) pursuant to the order dated 25.07.2022 of this Court, the plaintiff seeks to substitute the defendant nos.1, 2 and 3 with the details as provided. The plaintiff further seeks to implead the banks where the accounts are being maintained by the infringing websites as defendants 15 to 19.
6. Having perused the contents of the application and as the suit is at the initial stage itself, the prayers made in the application are granted.
7. The application is allowed, and the amended memo of parties is taken on record.” xxx xxx xxx IA 17482/2022
15. This application has been filed by the plaintiff praying that an ad interim ex parte order of injunction granted and directions issued vide order dated 25.07.2022 be also extended to the defendant no.12 and the other newly added defendants, which have been impleaded by the present order.
16. For the reasons that have already been recorded in the order dated 25.07.2022, and having considered the contents of the application, I find that the plaintiff has been able to make out a good prima facie case even against the defendant no.12. The balance of convenience is also in favour of the plaintiff and against the defendant no.12. The infringing act complained of by the plaintiff is likely to cause damage not only to the plaintiff but also to the general public.
17. Accordingly, there shall be an ad interim ex parte order of injunction/direction in terms of the prayers made in the present application. The disclosure to be made by the defendant nos.15 to 19 shall be in a sealed cover. 16:52 12th January, 2023 “I.A. 575/2023 (under Order XXXIX Rules 1 & 2 of CPC)
14. This application has been filed by Plaintiff praying that the directions issued and ad-interim, ex-parte injunction granted vide order dated 25th July, 2022, be also extended to Defendant No. 20, which has been impleaded above.
17. For the reasons already recorded in order dated 25th July, 2022, and having considered the contents of the application, Plaintiff has been able to demonstrate a prima facie case against Defendant No. 20. Balance of convenience is also in favour of Plaintiff. Infringing act complained of by Plaintiff is likely to cause damage not only to Plaintiff but also to the general public. Accordingly, there shall be an ex-parte ad-interim order to the following effect: (a) Injunction as sought in prayers (a) to (c) of application, shall operate against newly impleaded Defendant No. 20. (b) Defendant No. 4 is direct to suspend/ lock infringing domain name containing Plaintiff’s registered and well-known trademarks CROMA and/or the Croma Logo and/or the trademark INFINITI RETAIL LTD., and/or any essential or deceptively similar features thereof to the Plaintiff’s trademarks during the pendency of the proceedings.
(c) Defendant No. 4 shall provide registrant details including contact information, payment details and any other information in their power and possession relating to identity of registrant of domain name belonging to Defendant No. 20.
(d) Further, since the phone number +91
7908201195 mentioned on the website of Defendant 16:52 No. 20 is prima facie being used for fraudulent activities, Defendant No. 13 is directed to temporarily suspend and disable service on the said mobile number, forthwith. It is also directed to submit before this Court the details of registered owner associated with the said number as per the KYC documents submitted by said owner, in a sealed cover, before the next date of hearing. 25th May, 2023
16:52 and 21 are restrained from using Plaintiff’s registered CROMA marks or any other mark deceptively similar thereto.”
11. From the above orders, it is observed that the Court has extended the ex-parte ad-interim injunction to newly identified infringing domain names and websites. Directions were given to DNRs to lock and suspend the infringing domain names and telecom service providers were directed to disable fraudulent mobile numbers associated with the infringing domain names/websites. Additionally, banks and payment platforms were instructed to disclose account details linked to the infringing activities. Accordingly, it is clear that the Court has consistently recognized the deceptive nature of the impugned websites and held that the continued existence of the said websites causes immense harm to both the Plaintiff and the public.
12. The Plaintiff has impleaded the concerned Domain Name Registrars as also some of the service providers and authorities including, Vodafone-Idea, PhonePe, RBL Bank Ltd., and Cyber Police, Mumbai. Various orders have been passed and consequently, the infringing websites have been taken down and the infringing domain names stand injuncted. Notably, none of the domain name registrants have contested the present suit. I.A. 2872/2024 (for deletion)
13. This application has been filed under Order I Rule 10(2) CPC on behalf of Defendant No. 9- PhonePe Private Ltd. seeking deletion of the said Defendant from the array of parties in the present suit. It is stated by Defendant No. 9 that it has already complied with the interim order dated 25th July, 2022 and no further reliefs are sought against the said Defendant. The said averment as stated in the application by Defendant No.9 is set out below: 16:52
14. In addition, ld. Counsel for the Defendant No. 15 - Airtel Payment Bank has also submitted that the said Defendant has also complied with the interim injunction orders passed by the Court from time to time and also seeks deletion from the array of parties in the present suit.
15. The said Defendants have submitted that they have complied with the orders passed by this Court from time to time, including the directions for 16:52 suspension of specified UPI IDs and disclosure of relevant account details. Further, the Plaintiff has not sought any additional reliefs against them in the present suit.
16. This Court has heard the submissions made by ld. Counsels appearing on behalf of Defendant No. 9 – PhonePe Private Ltd. and Defendant No. 15 – Airtel Payment Bank, and also perused the record.
17. In the absence of any further compliances required by Defendant No. 9 and Defendant No. 15, the applications seeking deletion from the array of parties are allowed. However, if any further orders requiring compliance are passed, the said Defendants shall remain bound to undertake them. Accordingly, Defendant No. 9 and Defendant No. 15 stand deleted from the memo of parties in the present suit. I.A. 11324/2023 (Application seeking Summary Judgment Application)
18. The Plaintiff has moved an application being I.A. 11324/2023 under Order XIII-A read with Section 151 of the Code of Civil Procedure, 1908 seeking summary judgment against Defendant Nos. 1, 2, 3, 12, 20 and 21.
19. Vide order dated 2nd June, 2023, notice was issued in the said application seeking summary judgment. Thereafter, the ld. Joint Registrar has vide order dated 13th September, 2023 recorded that Defendant Nos. 1, 2, 3, 12, 20 and 21 have been served with the application seeking summary judgment. The said order recorded that the said Defendants were served on 25th August 2023 itself. Affidavit of service in respect of the same has also been filed and recorded by the ld. Joint Registrar.
20. This Court observes that none of the Defendants have filed replies to the said application seeking summary judgment. However, the DNR, GoDaddy.com LLC has elected to file a reply to the said application seeking 16:52 summary judgment, claiming that it would be affected by the outcome of the said application. GoDaddy.com LLC has opposed the Plaintiff’s prayers 12.[3] and 12.5, contending that the Plaintiff is seeking an overarching directive which is overly broad and places an undue burden on the DNRs. It further contends that the Plaintiff’s request for liberty to approach the Court periodically for enforcement of such orders would create an ongoing obligation on DNRs without judicial oversight for each instance, which is contrary to the due process requirements governing domain name disputes. Analysis and Findings
21. This Court has in Rockwool International A/S & Anr. v. Thermocare Rockwool (India) Pvt. Ltd., 2018:DHC:6774, considered the necessary conditions for passing summary judgement. A perusal of Order XIII A Rule 3 of CPC as amended by the Commercial Courts Act, 2005 reads as under: “Order XIII-A Summary Judgment 1……… 2………
3. Grounds for summary judgment. – The Court may give a summary judgment against a plaintiff or defendant on a claim if it considers that – (a) the plaintiff has not real prospect of succeeding on the claim or the defendant has no real prospect of successfully defending the claim, as the case may be; and (b) there is no other compelling reason why the claim should not be disposed of before recording of oral evidence.”
22. The pre-conditions for passing of a summary judgment under Order XIII-A Rule 3 CPC, as elucidated in Rockwool International (supra) are: a) that there is no real prospect of a party succeeding in a claim; b) that no oral evidence would be required to adjudicate the matter; 16:52 c) there is a compelling reason for allowing or disallowing the claim without oral evidence.
23. A Division Bench of this Court in Bright Enterprises Private Ltd. and Ors. v. MJ Bizcraft and Ors. 2017 (69) PTC 596 (Del) has held that the procedure under Order XIII-A has to be scrupulously followed. The relevant portion of the judgment is set out below: “… 20......It is true that Rule 3 of Order XIIIA CPC empowers the Court to give a summary judgment against a plaintiff or defendant on a claim if it considers that – (a) the plaintiff has no real prospect of succeeding on the claim or the defendant has no real prospect of successfully defending the claim, as the case may be; and (b) there is no other compelling reason why the claim should not be disposed of before recording of oral evidence. But, in our view, this power can only be exercised upon an application at any date only after summons have been served on the defendant and not after the Court has framed issues in the suit. In other words, Order XIIIA Rule 2 makes a clear stipulation with regard to the stage for application for summary judgment. The window for summary judgment is after the service of summons on the defendant and prior to the Court framing issues in the suit.
21. The provisions relating to summary judgment which enables courts to decide claims pertaining to commercial disputes without recording oral evidence are exceptional in nature and out of the ordinary course which a normal suit has to follow. In such an eventuality, it is essential that the stipulations are followed scrupulously otherwise it may result in gross injustice. As pointed out above, a specific period of time has been provided during which an application for summary judgment can be made. That period begins upon the service of summons on the defendant and ends upon the court framing issues in the suit. Even if we were to accept, which we do not, the argument of the respondents that the Court had suo moto 16:52 powers to deliver summary judgment without there being any application, those powers also would have to be exercised during this window, that is, after service of summons on the defendant and prior to framing of issues. In addition to this, we also reiterate that, in our view, a summary judgment under Order XIIIA CPC is not permissible without there being an appropriate application for summary judgment. The contents of an application for summary judgment are also stipulated in Rule 4 of Order XIIIA. The application is required to precisely disclose all material facts and identify the point of law, if any. In the event, the applicant seeks to rely on any documentary evidence, the applicant must include such documentary evidence in its application and identify the relevant content of such documentary evidence on which the applicant relies. The application must also state the reason why there are no real prospects of succeeding or defending the claim, as the case may be.”
24. Insofar as the procedural requirements for Order XIII-A CPC are concerned, as emphasized by the Division Bench in Bright Enterprises Private Ltd. (supra), the same have been complied with in the present application seeking summary judgment. The requisite application seeking summary judgment has been filed by the Plaintiff. Grounds have been succinctly set out therein and the none of the main Defendants have replied to the said application for summary judgement despite service.
25. The only objection in the present application is by Defendant No. 4, GoDaddy.com LLC, which is the DNR. The said objection is also limited to the prayers 12.[3] and 12.[5] of the present application. For reference, the said prayers 12.3, 12.[4] and 12.[5] are set out below: “12.3. An order directing domain name registrars to suspend, lock and transfer to the Plaintiff any additional domain names or websites registered or hosted by them containing the Plaintiff’s registered trademark CROMA, 16:52 and/or on whose websites display the Plaintiff’s mark CROMA or the Croma Logo and/or the trademark INFINITI RETAIL LTD., which are indulging in infringing, unauthorized or illegal activities, as communicated to such domain name registrars by the Plaintiff on an affidavit from time to time.
12.4. An order directing Defendant Nos. 6 and 7 to block access to any additional website containing the Plaintiff’s registered trademark CROMA, and/or on whose websites display the Plaintiff’s mark CROMA or the Croma Logo and/or the trademark INFINITI RETAIL LTD., which are indulging in infringing, unauthorized or illegal activities, as communicated by the Plaintiff on an affidavit from time to time.
12.5. An order granting the Plaintiff liberty to approach this Hon’ble Court with an appropriate application from time to time to ensure compliance of the directions contained in prayers 12.[3] and 12.[4] hereinabove.”
26. The Plaintiff does not press for Prayer 12.[3] to 12.[5] of the application. In view of the above position, the ld. Counsel for the Plaintiff submits that the Plaintiff does not press for dynamic injunction in this matter.
27. Accordingly, as the reply of Defendant No. 4, GoDaddy.com LLC, is confined to the prayers which are not pressed, and considering the absence of opposition from any other Defendant, the Court deems it appropriate to proceed with adjudication of the remaining reliefs sought by the Plaintiff.
28. A perusal of the record makes it evident that the concerned domain names have been used in a manner that deceptively misleads consumers and infringes upon the Plaintiff’s trademark rights. The Defendants, despite being duly served, have chosen not to contest the present suit, making it clear that they have no valid defence against the contentions made by the Plaintiff. Accordingly, this Court observes that the pre-conditions for the grant of a summary judgment, as laid down in Bright Enterprises Private Ltd. (Supra) 16:52 and Rockwool International (supra) stand satisfied.
29. Considering the above facts and submissions, the Plaintiff is granted the summary judgment in terms of paragraphs 67(a), 67(b) & 67(c) of the prayer clause of the amended plaint against the Defendant Nos.1, 2, 3, 12, 20 & 21.
30. The concerned Domain Name Registrars shall, accordingly, transfer all the impugned domain names operated/owned by Defendant Nos. 1, 2, 3, 12, 20 & 21 to the Plaintiff upon payment of usual transfer/renewal charges. Relevant details to enable the transfer shall be supplied to the ld. Counsel for the concerned Domain Name Registrars. The subject domain names are reproduced hereinunder for ease of reference: Sr. No. Impugned Domain Names Defendant
1. www.cromawholeseller.in Defendant No. 1 – M/s Croma Wholeseller
2. www.cromawholesellers.in and www.cromawholesellers.com Defendant No. 2 – M/s Croma Wholesellers
3. www.cromawholesale.in Defendant No. 3 – M/s Croma Wholesale
4. www.cromawholesellerltd.in and www.cromawholesellersltd.com Defendant No. 12 –
5. www.cromawholesellersltd.co.in Defendant No. 20 – M/s Croma Wholesellers Ltd. India
6. www.cromawholesellers.co.in www.cromawholeseller.co.in www.cromawholesalers.co.in Defendant Nos. 20 & 21 – India and M/s Croma Wholesalers
31. The service providers i.e., Defendant Nos. 8- Vodafone Idea Limited & 13 – Reliance Jio Infocomm Ltd. shall permanently suspend/disable the following mobile numbers: 16:52 Sr. No. Mobile Numbers Defendant
1. +91 78721 87108 Defendant No. 1 – M/s Croma Wholeseller
2. +91 77185 99868; +91 7718600838, and +91 7432053292, Defendant No. 2 – M/s Croma Wholesellers
3. +91 77186 00856 Defendant No. 3 – M/s Croma Wholesale
4. +91 9732934323, +91 8250482422, and +91 6294579564 Defendant No. 12 –
5. +91 7908201195, +91 8250534252, +91 8910563670, +91 8617646589, and +91 8918352593 Defendant No. 20 – India
6. N/A Defendant Nos. 21 – M/s Croma Wholesalers
32. In terms of Prayer 12.[7] of the application, the Defendant Nos. 9 - PhonePe Private Limited & 10 - RBL Bank Limited are directed to permanently suspend/disable the following UPI IDs: a) infinitiretailltd@ybl, b) cromainfinity@ybl, c) 8282876255@ybl, d) cromawholesales@ybl, and e) 6289128350@rbl.
33. In terms of Prayer 12.[8] of the application, the Defendant Nos. 15 - Airtel Payments Bank Ltd, 16 - Paytm Payments Bank Ltd., 17 - Indian Bank, 18 - Uco Bank, 19 - Bank of India, 23 - Jio Payments Bank Ltd. and 24 - Fino Payments Bank Ltd., are directed to permanently close/freeze the following bank accounts, bearing the bank account nos. 7432053292, 916201050640, 16:52 623269307, 06010110049051, 583210110010608, 20184848940 (IFSC: FINO0000001), 70000001293033 (IFSC: JIOP0000001), respectively as detailed in paragraph no. 40B to 40E of the amended plaint.
34. In terms of Prayer 12.[9] of the application, the Defendant No. 22 - Kotak Mahindra Bank Ltd. is directed to permanently suspend and disable the UPI IDs - 7439544399@kotak, 8910500136@kotak, 6289128350@kotak, 8910735819@kotak, 8777286216@kotak and 9366983992@kotak and also the bank account numbers 0747406356 (IFSC: KKBK0003553) and 1347188291 (IFSC: KKBK0006745) as detailed in the amended plaint.
35. In terms of Prayer 12.10 of the application, the concerned banks shall transfer the amounts in the bank accounts (i) connected to the UPI Ids mentioned in paragraph 18 herein, (ii) connected to the mobile numbers mentioned in paragraph 17 herein, and (iii) mentioned in paragraph 19 herein to the Plaintiff. The bank details of the Plaintiff are as under: Vendor’s name: M/s Infiniti Retail Ltd. Bank: HDFC Bank Ltd. Branch: Fort, Mumbai IFSC:HDFC0000060 Type of A/c: Current Account. A/c No.00600350023333
36. The summary judgment application is allowed and is disposed of in above terms.
37. The suit is decreed in the above terms. Decree sheet be drawn up.
38. All pending applications are also disposed of.
PRATHIBA M. SINGH JUDGE FEBRUARY 15, 2025/dk/ms 16:52