Full Text
HIGH COURT OF DELHI
DHANI LOANS AND SERVICES LIMITED & ANR. ..... Plaintiffs
Through: Mr.Luv Virmani & Ms.Aadya Chawla, Advs.
Through: Ms.Shweta Sahu, Adv.for D-2& 3.
JUDGMENT
1. The present suit has been filed by the plaintiffs inter-alia seeking a decree of permanent injunction restraining the defendant no. 1, its family members, partners/promoters, directors, servants, agents, franchisees or any one acting for and on their behalf in any manner using the impugned trade mark/logo or the domain name www.dhanifinance.com or any identical or deceptively similar trade mark/name/logo or domain name either as a trade mark, trading style, logo, domain name or in any other manner which is identical or deceptively similar to the plaintiffs’ trade marks 'DHANI' or the 2022:DHC:4201 ‘POTLI’ device stand-alone or in any combination thereof and/or domain name www.indiabullsdhani.com, in relation to any services especially for financial and transaction services and assistance thereto.
2. The plaintiffs further prayed for a direction to the defendant nos. 2 and 3 to provide all the details of the registrant of the domain name of the defendant no. 1; including the name, address, contact number, e-mail ID, including its whereabouts and other such relevant details disclosing the identity of the registrant of the domain name of the defendant no. 1, along with the Internet Protocol (in short, ‘IP’) address of the domain name of the defendant no.1.
3. As far as the defendant nos.[2] and 3 are concerned, vide order of this Court dated 22.09.2022, while passing certain directions, with the consent of the plaintiffs and the defendant nos. 2 and 3, they were deleted from the array of parties.
4. As far as the defendant no. 1 is concerned, it was proceeded exparte vide order of this Court dated 22.08.2022. The defendant no. 1, despite service, had neither entered appearance in the suit nor filed its written statement.
FACTUAL BACKGROUND
5. It is the case of the plaintiffs that the plaintiffs are a part of the Indiabulls Group, which has been providing financial services in India as well as internationally since the year 1994. The Indiabulls Group, as on 31.03.2018, had a combined revenue of over Rs. 22,114.[9] Crore (Rupees Twenty-Two Thousand One Hundred Fourteen and Nine Crore only) and PAT of Rs. 6,072.[2] Crore (Rupees Six Thousand Seventy-Two and Two Crore only). The plaintiff no. 1 alone had a combined revenue of over Rs. 1650 Crore (Rupees One Thousand Six Hundred Fifty Crore only) and PAT of over Rs. 400 Crore (Rupees Four Hundred Crore only) as on 31.03.2019.
6. The plaintiffs assert that the plaintiff no. 1 is a non-banking finance company and is a wholly owned subsidiary of the plaintiff no. 2. The plaintiff no. 1 is inter-alia engaged in the business of providing personal loans, business loans and various other financial facilities through its array of products.
7. It is further asserted that the plaintiff no. 2 is one of India's leading capital market companies providing securities and derivative brokering services. The plaintiff no. 2 was the first company to be assigned a BQ-1 Grading by the CRISIL, which is the highest broker quality grading. Brickworks Ratings has also assigned a strong credit rating of BWR A+ and BWR A1+ for the plaintiff no.2’s fund and non-fund-based facilities.
8. The plaintiffs further assert that in September 2017, the plaintiffs launched its services for ‘IndiabullsDhani’ and along with the domain name www.indiabullsdhani.com, a mobile and web-based loan application developed to offer personal financing solutions. The mobile application, ‘Indiabullsdhani‟ was ranked as among the top three downloaded mobile applications in the financial services sector, having more than 11.[5] million downloads as of September 2018.
9. It is asserted that the plaintiff no. 1 is the registered proprietor of the trade mark/logo/device of ‘POTLI’/ in Class 9 and is the registered proprietor of the trade mark/logo/device of the marks ‘DHANI’ and its variations thereof with the ‘POTLI’ device mark in Classes 9, 35, 36 and 42. The details of the plaintiffs’ registrations for and bearing the ‘POTLI’ device mark under the provisions of the Trade Marks Act, 1999 (in short, ‘the Act’) are set out hereunder:
No. Date of Application Status 1 9 3613787 16/08/2017 Registered 2 9 3613789 16/08/2017 Registered 3 9 3613791 16/08/2017 Registered 4 36 3613792 16/08/2017 Registered 5 9 3613793 16/08/2017 Registered 6 9 3613795 16/08/2017 Registered 7 36 3613796 16/08/201S[7] Registered 8 9 3613797 16/08/2017 Registered 9 9 4127745 25/03/2019 Registered 10 35 4132775 29/03/2019 Registered 11 42 4132777 29/03/2019 Registered 12 9 4131255 28/03/2019 Registered 13 36 4131268 28/03/2019 Registered 14 36 4131274 28/03/2019 Registered
10. The plaintiffs in the plaint have also given details of the trade mark applications with the mark ‘DHANI’ as also the ‘POTLI’ device mark, which are pending at various stages before the Trade Marks Registry. The plaintiffs assert that these applications are being proactively pursued by the plaintiffs before the Trade Marks Registry.
11. The plaintiffs assert that all their marks bear the word ‘DHANI’ along with the ‘POTLI’ device mark. They give the screenshots of the services provided by them under the Dhani services/applications, reproduced here under:
12. The plaintiffs claim that they have been promoting their trade marks ‘DHANI’ as also the ‘POTLI’ device mark through extensive advertisements, publicity, promotions, conferences through various media including print and electronic media. The plaintiffs claim to have incurred an expenditure of Rs. 5.94 Crore (Rupees Five Crore Ninety-Four Lakh only) in advertising/publicising their said trade marks within the period of 01.08.2017 to 30.09.2019.
13. The plaintiffs’ domain name www.indiabullsdhani.com has been registered since the year 2017 and the same is fully operational. Through the said domain name, the public at large can get exclusive information about the plaintiffs and the services they currently have on offer for availing home loans, personal loans, securities advice, and investment relations.
14. The plaintiffs further state that the original artistic works in the device marks are a subject matter of protection under Section 2(c) of the Copyright Act, 1956 (in short, ‘Copyright Act’) and the copyright therein is exclusively owned by the plaintiffs. Further, the plaintiff no. 1 is the registered copyright owner of bearing regisration no. A- 130733/2019 dated 02.09.2019, filed on 26.12.2017, of which the ‘POTLI’ device mark forms a prominent and essential part.
15. It is the case of the plaintiffs that the defendant no. 1, deliberately and in brazen disregard to the plaintiffs’ statutory and common law rights, started using the impugned mark as well as operating a website under the impugned domain name www.dhanifinance.com, offering identical services as that of the plaintiffs.
16. The plaintiffs assert that the adoption of the plaintiffs’ marks by the defendant no. 1 is mala fide and aimed at establishing an illegal association with the plaintiff no. 2 by seemingly coming across as just another website/portal of the plaintiff no. 2. The screenshots of the defendant no. 1’s website are reproduced herein below:
17. The plaintiffs assert that the adoption of the deceptively similar mark by the defendant no. 1 and also for the domain name of its website amounts to infringement of the registered trade marks of the plaintiffs as also passing off and unfair trade practice and therefore, the defendant NO. 1 is liable to be restrained from using the impugned domain name.
COURT PROCEEDINGS IN THE SUIT
18. This Court, vide order dated 10.12.2019, passed an ex-parte adinterim injunction restraining the defendant no. 1 from using the plaintiffs’ trade marks ‘DHANI’ or the ‘POTLI’ device mark and the logo and domain name – www.dhanifinance.com, separately or in any combination. The defendant no. 1 was further restrained from adopting any other marks, logos and domain names which were deceptively similar to the plaintiffs.
19. With respect to defendant nos. 2 and 3, this Court vide the same order had issued a direction to suspend the operation of the domain name www.dhanifinance.com.
20. As noted herein above, vide order of this Court dated 22.08.2022, the defendant no. 1 has been proceeded ex-parte, while by the order of this Court dated 22.09.2022, the defendant nos.[2] and 3 were deleted from the arrary of the parteis with inter-alia a direction to transfer the domain name of the defendant no.1 to the plaintiffs.
SUBMISSIONS ON BEHALF OF THE LEARNED COUNSEL FOR THE PLAINTIFFS
21. The learned counsel for the plaintiffs submits that the defendant no.1, by using the impugned marks ‘DHANI’ with and/or without the ‘POTLI’ device mark and by creating and operating the impugned domain name www.dhanifinance.com, which is not only deceptively similar to the plaintffs’ registered trade marks but also is offering services identical to those of the plaintiffs, is intending to deceive unwary consumers. The learned counsel for the plaintiffs submits that such use amounts to infringment of the plaintiffs’ registered trade marks and also results in passing off services of the defendant no. 1 as that of the plaintiffs.
22. The learned counsel for the plaintiff states that the act of the defendant no. 1 of using a mark/logo deceptively similar to the logo amounts to infringment of the plaintiffs’ registered copyright.
23. The learned counsel for the plaintiffs submits that as the defendant no. 1 has neither filed the written statement nor entered apperance, this is fit case for passing of a Summary Judgment under Order XIII-A of the Code of Civil Procedure, 1908, as applicable to the commercial disputes of a specified value (in short, ‘CPC’).
ANALYSIS AND FINDINGS
24. I have considered the submissions made by the learned counsel for the plaintiffs.
25. From the above narration of facts, it is apparent that the plaintiffs are the registered proprieotors of the mark containing the word ‘DHANI’ as also the ‘POTLI’ device mark. The defendant no. 1 has adopted a deceptively similar mark. The services provided by the the plaintiffs and those of the defendant no. 1 are common. Such adoption of the mark would therefore amount to infringment of the registered trade marks of the plaintiffs. The same would also result in passing off of the services of the defendant no. 1 as that of the plaintiffs or as having some association with the plaintiffs. It would amount to unfair trade practices as also lead to the dilution of the plaintiffs’ mark ‘DHANI’ and the ‘POTLI’ device mark
26. The plaintiffs have been able to establish their reputation in the subject marks through their turnover figures and the amount spent on advertising the marks. The plaintiffs shall therefore suffer grave irreparable injury in case the defendant no. 1 is not restrained from using its deceptively similar mark.
27. Recently, in Indiabulls Housing Finance Ltd. & Ors. v. www.indiabullsdhanifinance.co & Anr., CS(COMM) 674/2019, vide judgment and order dated 31.05.2022, a Coordinate Bench of this Court has held as under with respect to the subject marks of the plaintiffs:
28. The above judgment applies to the facts of the present case in full force.
29. As far as the domain name/website of the defendant no. 1 is concerned, the same is also deceptively similar to that of the plaintiffs. It is likely to deceive an unwary consumer of its association with the plaintiffs. Recently, this Court in Anugya Gupta v. Ajay Kumar and Anr., 2022 SCC OnLine Del 1922 has held that the right of a proprietor in a domain name and its protection, applying the principles of the trade mark law, is no longer res integra. 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 found an action for passing off. While the registration of a domain name with such Domain Name Registrars may not have the same consequences as registration under the Act, nevertheless, it at least evidences recognised user of a mark.
30. Referring to the Uniform Domain Name Disputes Resolution Policy, the Supreme Court in Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145 observed that the said rules grant protection to the intellectual property in a domain name. A prior registrant can protect its domain name against the subsequent registrants. The confusing similarity in domain names may be a ground for complaint and similarity is to be decided on the possibility of deception amongst potential customers. The defences available to a complaint are also substantially similar to those available to an action for passing off under trade mark law.
31. Placing further reliance on Info Edge (India) Pvt. Ltd. v. Shailesh Gupta, 2002 SCC OnLine Del 239, this Court in Anugya Gupta (supra) observed that internet domain names are valuable properties and are of importance to the parties registering the same. It is entitled to equal protection as a trade mark. In NRB Bearings Limited v. Windsor Export, 2014 SCC OnLine Del 1672, this Court reiterated that a domain name serves the same function as the trade mark and is not a mere address or like-finding number on the internet and, therefore, is entitled to equal protection as a trade mark. Where there is a probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.
32. In the present case, the defendant no. 1 has chosen neither to file its written statement nor to enter apperance in the suit to defend the same. This is in spite of the ad-interim order dated 10.12.2019, not only restraining the defendant no.1 from using the trade marks ‘DHANI’ or the ‘POTLI’ device mark and the logo and domain name – www.dhanifinance.com and directing defendant nos.[2] and 3 to suspend its website. 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 plaintiffs and against the defendant no. 1.
33. In view of the above, the plaintiffs have been able to make out a case for grant of a permanent injunction restraining the defendant no. 1, its family members, partners/promoters, directors, servants, agents, franchisees or any one acting for and on their behalf in any manner using the impugned trade mark/logo or the domain name www.dhanifinance.com or any identical or deceptively similar trade mark/name/logo or domain name either as a trade mark, trading style, logo, domain name or in any other manner which is identical or deceptively similar to the plaintiffs' trade marks 'DHANI' or the ‘POTLI’/ device stand-alone or in any combination thereof and/or domain name www.indiabullsdhani.com, in relation to any services especially for financial and transaction services and assistance thereto.
34. As far as the relief of damages and rendition of accounts is concerned, this Court in Intel Corporation v. Dinakaran Nair & Ors., 2006 SCC OnLine Del 459 has held as under:
35. In the case of Hindustan Lever Ltd. and Anr v. Satish Kumar, 2012 SCC OnLine Del 1378, this Court again held as under that:
36. In Indiabulls Housing Finance Ltd. & Ors. (supra) this Court, on the question of damages, has held as under:
20. This Court is in agreement with the submissions of learned counsel for the Plaintiffs that in the instant case, punitive damages must be awarded against Defendant No. 1, who has infringed the trademarks as well as the copyright of the Plaintiffs and has attempted to pass off its services as that of the Plaintiffs and has chosen to stay away from the proceedings of the Court, despite service. It has been held in various judgments that a Defendant who chooses to stay away from the Court proceedings, should not be permitted to escape the liability when found guilty of committing a wrongful act. It would be in public interest if parties indulging in acts of deception are penalised by punitive damages, in order to discourage such acts. As a result the Court awards damages to the tune of Rs. 3,00,000/- in favour of the Plaintiffs.”
37. Following the above, the plaintiffs are held entitled to damages to the tune of Rs. 3,00,000/- (Rupees Three Lakh only) from the defendant no. 1.
38. The plaintiffs shall also be entitled to costs of the suit.
RELIEF
39. Accordingly, a decree of permanent injunction in terms of prayers (a) to (c) of the plaint is passed in favour of the plaintiffs and against the defendant no. 1. The plaintiffs are held entitled to damages quantified at Rs. 3,00,000/- as also the costs of the suit to be recovered from the defendant no. 1. Let a decree-sheet be drawn accordingly.
40. The suit and the pending application are accordingly disposed of.
NAVIN CHAWLA, J. OCTOBER 12, 2022