Full Text
HIGH COURT OF DELHI
MAKE MY TRIP (INDIA) PRIVATE LIMITED ..... Plaintiff
Through: Mr.Karmanya Dev Sharma, Mr.Deepankar Mishra, Mr.Abhishek Kotnala, Advs.
Through: Ms.Shweta Sahu, Mr.Parva Khare, Advs. for D-3 (M-9911983636).
JUDGMENT
1. The present suit has been filed by the plaintiff praying for a decree of permanent injunction against the defendants, restraining them from using the marks/logos ‘MAKEMYTRIPMOOD’,, the domain name http://www.makemytripmood.com or any other marks deceptively similar to the plaintiff’s registered ‘MakeMyTrip’ trade marks (hereinafter referred to as the ‘MakeMyTrip Marks’),which would amount to either infringement, passing off, dilution, tarnishment of the plaintiff’s ‘MakeMyTrip’ marks, or unfair competition. The ‘MakeMyTrip Marks’ of the plaintiff are reproduced hereinbelow:- FACTUAL BACKGROUND
2. It is the case of the plaintiff-company that it is one of the largest travel companies in India, with its pan-India presence as also international presence, in countries including the United States of America, the European Union, Australia and the United Kingdom amongst others.
3. The plaintiff was originally incorporated on 13.04.2000. Vide fresh Certificate of Incorporation dated 02.08.2000, the plaintiff changed its name to ‘Makemytrip.com Pvt Ltd.’. Subsequently, the plaintiff changed its name to its present name, ‘MakeMyTrip (India) Pvt. Ltd’. The plaintiff, through its domain name www.makemytrip.com (registered in May, 2000) and other technology-enhanced platforms, including mobileapplications since July, 2012, offers an extensive range of travel services and products, both in India and abroad. The said services of the plaintiff include booking of air tickets, bus tickets, hotel reservations, car hire, domestic and international holiday packages, and ancillary travel requirements such as facilitating access to travel insurance, visa assistance and forex exchange under its ‘MakeMyTrip Marks’.
4. The plaintiff asserts that it has been using the ‘MakeMyTrip Marks’ continuously and uninterruptedly since the year 2000 for all its business activities. The word ‘MakeMyTrip’ is coined and inventive, which is an essential feature of all the composite device and/or word marks of the plaintiff. The same is not a common dictionary word.
5. It is further asserted that due to extensive use for more than twenty years and owing to the plaintiff’s widespread goodwill and reputation in its ‘MakeMyTrip Marks’, the general public and the members of trade have come to associate and recognize the ‘MakeMyTrip Marks’ as originating from the plaintiff and no one else.
6. It is asserted that the plaintiff maintains an active and extensive presence on social media platforms such as Facebook, Twitter, YouTube and Instagram, which prominently feature the ‘MakeMyTrip Marks’. The plaintiff has over thousands of followers on each platform.
7. The plaintiff has provided details of its annual sales turnover for the Financial Years 2000-01 to 2018-19 in paragraph 16 of plaint, and the details of the amount expended on advertising in the same time period in paragraph 17 of plaint.
8. It is asserted by the plaintiff that the plaintiff has sponsored various national and international events, Bollywood feature films such as ‘Dostana’ and ‘Yeh Jawaani Hai Deewani’, and sporting events such as the Indian Premier League (2016-2018), wherein the ‘MakeMyTrip Marks’ of the plaintiff have been prominently featured. It is asserted that the plaintiff has been the recipient of numerous prestigious national and international awards and recognitions, and is also a part of several renowned national and international trade associations.
9. The plaintiff submits that the plaintiff-company has, apart from common law rights, also acquired statutory rights by way of numerous registrations in the ‘MakeMyTrip Marks’ under various classes in India as per the provisions of the Trade Marks Act, 1999 (in short ‘the Act’), which have been detailed in paragraph 13 of the plaint. It is further asserted that the plaintiff has acquired trade mark registrations in several countries across the globe, such as Australia, Canada, Singapore and the United Arab Emirates, for its ‘MakeMyTrip Marks’.
10. It is submitted by the plaintiff that around the month of February 2020, the plaintiff came to know about the existence of the impugned domain name www.makemytripmood.com, which was providing Call Girl/Escort Services to third parties. On the website, the defendant no.1 has clearly described itself as a ‘Call Girl Service Centre’ catering to many cities in India.
11. Being aggrieved of the mala fide use of the plaintiff’s marks, the plaintiff issued a takedown notice dated 12.02.2020 to the defendant no.3, who, in response, stated that the impugned domain name is not hosted by them. Thereafter, the plaintiff issued a takedown notice on 15.02.2020 to the Endurance International Group, Inc., a Name Server. On receipt of the takedown notice, the impugned domain name was successfully removed and the same was informed to the plaintiff vide email dated 26.02.2020.
12. It is submitted that the impugned domain name was once again active, this time being hosted by the defendant no.2 through a different Domain Name Registrar or Name Server. Being aggrieved, the plaintiff filed the present Suit before this Court.
COURT PROCEEDINGS IN THE SUIT
13. Vide order dated 16.06.2020, this Court granted an ex-parte adinterim injunction in favour of the plaintiff and against the defendant no.1, restraining them from using the impugned mark ‘MakeMyTripMood’, the impugned domain name www.makemytripmood.com as well as the infringing logo, that is,, or any other trade mark/domain logo/logo which is deceptively similar to the plaintiff’s ‘MakeMyTrip Marks’ /domain name. The defendant no.3 herein was directed to block the impugned domain name www.makemytripmood.com vide the same order.
14. The learned counsel for the defendant no. 3 informed the Court that the defendant no. 1’s domain name is hosted by an entity by the name of “Highwinds Network Group Inc.”. The said entity was impleaded in the Suit. Further, the defendant no. 4 and 5, that is, the Mobile Service Providers, were directed to provide the name and address, including the email address, if available, of the individual in whose name the mobile numbers mentioned in the order stand registered.
15. On receipt of information from the defendant nos. 4 and 5 with regard to the registered subscribers to the mentioned mobile telephones, the plaintiff impleaded the defendant nos. 7 and 8 to the Suit, vide order dated 30.09.2020 passed by the learned Joint Registrar (Judicail).
16. Thereafter, the defendants nos. 1, 2 and 4 to 8 were proceeded exparte by an order of this Court dated 15.03.2021.
17. Subsequently, by an application, being I.A. No. 14101/2021, the defendant no.6 sought for its deletion from the array of parties. The same was allowed by the learned Joint Registrar (Judicial) vide order dated 12.07.2022.
18. The plaintiff has now filed an application, being I.A. 18830/2020, under Order IX Rule 6 and 11 of the Code of Civil Procedure, 1908 (in short ‘CPC’) praying for an exemption from leading ex-parte evidence and that the Suit be proceeded to pronouncement of ex-parte judgment.
SUBMISSION ON BEHALF OF THE LEARNED COUNSEL FOR THE PLAINTIFF
19. It is submitted by the learned counsel for the plaintiff that the defendant no.1’s marks are phonetically, visually and conceptually identical to the plaintiff’s ‘MakeMyTrip Marks’, which constitutes infringement as well as passing off under Section 29 of the Trade Marks Act, 1999 (in short, ‘the Act’).
20. It is submitted by the learned counsel for the plaintiff that the nature of services being provided by the defendant no.1 under the infringing marks and impugned domain name are denigrating the business of the plaintiff. It is further submitted that the illegal activities of the defendants are likely to result in dilution, diminution and eventual erosion of the goodwill and reputation of the ‘MakeMyTrip Marks’ owned by the plaintiff.
21. The learned counsel for the plaintiff submits that despite service and providing several opportunities to the contesting defendants nos. 1, 7 and 8, the said defendants have voluntarily chosen not to file a response to the plaint.
22. He submits that defendant no. 2 to 5 are impleaded only as proforma parties and the plaintiff does not wish to press any relief against the said defendants and that they be deleted from the array of parties.
ANALYSIS AND FINDINGS
23. I have considered the submissions of the learned counsel for the plaintiff.
24. The plaintiff is the registered proprietor of the mark ‘MakeMyTrip’ and its various formative marks. The plaintiff has also been able to establish the goodwill and reputation attached to the plaintiff’s ‘MakeMyTrip Marks’ in India.
25. The domain name www.makemytripmood.com of the defendant no.1 is deceptively similar to the plaintiff’s registered domain name www.makemytrip.com, which is likely to deceive an unwary consumer. This Court, in Anugya Gupta v. Ajay Kumar and Another., 2022 SCC OnLine Del 1922, has held that the right of a proprietor in a domain name is entitled to equal protection, applying the principles of the trade mark law. The use of the same or similar domain name may lead to diversion of users, which could result from such users mistakenly accessing one domain name instead of another. Therefore, a domain name may have all the characteristics of a trade mark and could find an action for passing off.
26. In Dr. Reddy’s Laboratories Limited v. Manu Kosuri & Anr, 2001 SCC OnLine Del 222, this Court has held as under:
27. The mere use of the suffix ‘mood’ is not sufficient to distinguish the plaintiff’s and the defendant no.1’s marks. The use of a deceptively similar mark by the defendant no.1 is likely to cause confusion in the minds of the public at large. The use of the deceptively similar domain name by the defendant nos. 1, 7 and 8 is also likely to cause dilution of the ‘MakeMyTrip Marks’ of the plaintiff and cause irreparable harm and injury to its goodwill and reputation.
28. In the present case, the defendant nos.1,[7] and 8, who are the only contesting defendants in the Suit, have chosen neither to file their written statement nor have they entered appearance in the Suit to defend the same. In my opinion, therefore, this is a fit case where a Summary Judgment in terms of Order XIII-A of the CPC, as applicable to commercial disputes of a specified value, read with Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022 deserves to be passed in favour of the plaintiff and against the defendant nos. 1,[7] and
8.
29. In Su-Kam Power Systems Ltd. v. Kunwer Sachdev and Another, 2019 SCC OnLine Del 10764, this Court has held as under:
30. Applying the above principles, in my opinion, no useful purpose would be served in insisting upon the plaintiff to file its affidavits of ex parte evidence. This is a fit case where a Summary Judgment deserves to be passed in favour of the plaintiff and against the defendant nos. 1, 7 and
8.
31. As noted hereinabove, the defendant nos. 2 to 5 were impleaded only as proforma parties and the plaintiff does not wish to press any relief against the said defendants. Accordingly, the defendant nos.[2] to 5 are deleted from the array of parties.
RELIEF
32. In view of the above, I.A. 18830/2022 is allowed. The suit is decreed in terms of prayers made in paragraph 58 (a) and (b) of the plaint in favour of the plaintiff and against the defendant nos. 1, 7 and 8.
33. Let a Decree Sheet be drawn accordingly.
NAVIN CHAWLA, J. NOVEMBER 25, 2022