Full Text
HIGH COURT OF DELHI
Date of Decision: 28th March, 2023
INFINITI RETAIL LIMITED ..... Plaintiff
Through: Mr. Sauhard Alung, Advocate.
Through: Mr. Ghanshyam Joshi and Mr. Chirag Joshi, Advocates for D-3.
Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat and Mr. Alexander Mathai Paikaday, Advocates.
JUDGMENT
Procedure, 1908 seeking discovery of documents from D-3)
1. In reply to the above-captioned application, Defendant No. 3 [Shopify Commerce Singapore Pte. Ltd.], the webhost/ service provider of the impugned website i.e., “www.thecroma.in” has furnished contact details of Defendant No. 1, as available in their records.
2. Disposed of.
3. Mr. Sauhard Alung, counsel for Plaintiff, states that attempts have been made to serve summons on email addresses of Defendant No. 1, as provided by Defendant No. 3 in the reply to I.A. 3251/2021. However, the email has bounced back with delivery failure notifications. The other contact details such as name, mobile number etc. of Defendant No. 1, as are ex-facie fake.
4. Despite efforts on the part of the Plaintiff, it has not been possible to serve Defendant No. 1. The Court has considered directing substituted service, however, the same would be of no avail as the only ascertained contact of Defendant No. 1 are the e-mail addresses. It was incumbent upon Defendant No. 1 to ensure that its contact details are current so that it could be reached out in connection with issues relating to the impugned domain name. Not keeping the email address active indicates that Defendant No.1 is intentionally keeping out of the way for the purpose of avoiding service.
5. In the above circumstances, the Court proceeds ex-parte against Defendant No. 1.
6. Plaintiff has filed the instant suit, inter alia, seeking permanent injunction restraining infringement of its registered marks, passing off, delivery up, rendition of accounts, damages, etc. The case set out in the plaint is as under: -
6.1. Plaintiff, a wholly owned subsidiary of Tata Sons Pvt. Ltd., and a part of the TATA Group, is the registered proprietor of trademark “CROMA”, “ ” and other formative marks [hereinafter “Plaintiff’s marks”], details of which have been provided from pages 25 to 171 of the documents filed with the plaint. Plaintiff owns and manages a nation-wide retail chain, which operates through numerous physical stores and also through its website “www.croma.com” [hereinafter “Plaintiff’s website”], and deals in consumer electronics and durables under the Plaintiff’s marks.
6.2. Plaintiff’s first CROMA store was launched in the year 2006 and since then there has been an uninterrupted and extensive use of the its marks, under which Plaintiff offers its products and services. Plaintiff has incurred significant expenditure and undertaken efforts to ensure wide publicity of its products and services under its marks. Details of such expenditure and resources expended in relation to its marks have been provided at paragraph 11 of the plaint. Plaintiff actively promotes its products through its pages on popular social media websites such as Facebook, Twitter, YouTube and Instagram, as provided at paragraph 12 of the plaint.
6.3. Due to extensive publicity and goodwill and reputation garnered by the Plaintiff's marks, considerable revenues have been generated by the Plaintiff. Approximately INR 3,535 crores were earned in 2018, as detailed in paragraph 13 of the plaint.
6.4. Plaintiff’s mark “ ” has also been declared a well-known trademark by the Trade Marks Registry as defined under Section 2(1)(zg) of the Trade Marks Act, 1999 vide Trade Marks Journal No. 1942 dated 24th February, 2020.
6.5. Defendant No. 1, the owner of the website, “www.thecroma.in” [hereinafter “impugned website”], is engaged in displaying, selling and offering for sale counterfeit consumer electronics under Plaintiff’s mark “ ”. In December 2020, Plaintiff discovered the contentious website when a customer from Hyderabad lodged a complaint about a counterfeit product acquired through the website, mistakenly believing it to be Plaintiff's website. This evidence indicates that Defendant No. 1 had created the impugned website to mislead and defraud the public by making them think they were dealing with the Plaintiff. On enquiries, Plaintiff found that Defendant No. 1 only operated on a ‘cash-on-delivery’ model with no invoices, thus, impeding efforts to ascertain further details of Defendant No. 1 such as bank account details, trading name, etc. This model was evidently adopted by Defendant No. 1 to carry out its infringing activities in a clandestine manner. Plaintiff also examined the “WhoIs” database for the impugned website and found the details of registrant of the impugned website to be masked, upon which it contacted National Internet Exchange of India (NIXI) for the same. Details supplied by NIXI indicate that fake details were provided at the time of registration.
7. In the above background, on 24th December, 2020, while issuing summons, the Court passed an ex-parte ad-interim injunction restraining Defendant No. 1 from infringing Plaintiff’s marks, in the following terms:
8. The afore-said interim order was made confirmed vide order dated 19th April, 2022 and in terms thereof Defendants No. 2 and 3 [GoDaddy.com LLC and Shopify Commerce Singapore Pte. Ltd., respectively] have suspended the domain name of the impugned website and Defendants No. 4 and 5 [Department of Telecommunication and Ministry of Electronics and Information Technology, Union of India, respectively] have blocked access to the said website.
9. Court has heard Mr. Alung, who on instructions states that he is only pressing for prayers given at paragraph 42 (a), (b) and (c) of the plaint, as prays for direction for transfer of impugned domain name in terms of statement made by counsel for Defendant No. 2, as recorded in order dated 01st December, 2022.
10. Defendant No. 1 has not filed any defence to contest the suit. In the opinion of the Court, no purpose would be served by directing Plaintiff to lead ex-parte evidence. Plaintiff holds valid and subsisting registrations in favours of its marks and is thus, entitled to statutory protection of its marks including grant of injunction. The pleadings and accompanying documents, prove that Defendant No. 1 has been misusing Plaintiff’s mark “ ” on their impugned website, as also the mark “CROMA” as part of their domain name. Comparison of the Plaintiff’s website and impugned website is provided below:
11. From the above comparison, it is abundantly clear that Defendant NO. 1 was unauthorisedly and illegally using Plaintiff’s marks with an intention to create confusion and deceive customers to believe that the impugned website was owned/ operated by Plaintiff, or associated with Plaintiff. Impugned website has the same look and feel as that of Plaintiff’s website, which further evidences the mala fide intention of Defendant No. 1 to free-ride upon Plaintiff’s goodwill and reputation. The impugned website and domain name which do not emanate from Plaintiff, are bound to create confusion and deception for customers, as noted above, resulting in irreparable harm to Plaintiff’s business, and well-established goodwill and reputation. Thus, the Court finds that Defendant No. 1 has committed infringement and passing off of Plaintiff’s marks.
12. Considering the above, Plaintiff is entitled to a judgment in accordance with Order VIII Rule 10 of CPC, 1908.
13. Suit is decreed in favour of Plaintiff and against Defendant No. 1 in terms of prayers at paragraph 42 (a), (b) and (c) of the plaint.
14. Defendant No. 2 is directed to transfer the impugned domain name “www.thecroma.in” in favour of the Plaintiff, within two weeks from today, subject to Plaintiff complying with the requisite formalities.
15. Decree sheet be drawn up.
16. Suit and pending applications are accordingly disposed of.
SANJEEV NARULA, J MARCH 28, 2023 d.negi