V Gaurd Industries Ltd. v. Taisong Chong and Ors.

1. The prayer clause in the present suit reads thus: “43. It is therefore, respectfully prayed that this Hon'ble Court may be pleased to grant the following reliefs in favour of the Plaintiff and against the Defendants: (a) A decree for permanent injunction restraining the Defendant No.l from maintaining, registering or dealing under the impugned domain name 'vguard.com', or any other domain name/ trade mark/trade name as may amount to infringement of the Plaintiff's well-known registered trade mark V- GUARD registered under nos. mentioned in para 8 of the plaint; (b) An order directing the Defendant No. 2 and 3 for transferring the impugned domain 'vguard.com' or any other domain name as may be deceptively similar 2020:DHC:3241 to the Plaintiff's trade mark V-GUARD in favour of the Plaintiff;

(c) A decree for INR Two Crore and One thousand only (INR 2,00,01,000/-) towards token damages may be passed in favour of the Plaintiff and against the Defendant No. 1;

(d) An order for costs in the proceedings;

(e) Any further orders as this Hon'ble Court may deem fit and proper under the facts and circumstances of the present case.”

2. Defendant No.1 is the registrant of the domain name “vguard.com”. Defendant No. 2 is the Domain Name Registrar of the said name and Defendant No. 3 is the Indian subsidiary of Defendant No.2.

3. Vide order dated 6th March, 2020, this Court restrained the defendants from transferring, or registering any transfer of, the domain name “www.vguard.com”.

4. The present application, at the instance of the plaintiff, places, on record, an e-mail, dated 17th “From: Taesong Chong <komorijin@gmail.com> September, 2010, by Defendant No. 1, which reads thus: Sent: Thursday, September 17,2020 3:22 AM To: Courtdisputes-GD <Courtdisputes@godaddy.com> Cc: roopak.ahluwalia@vguard.in;avdhesh.kumar@ vguard.in; Sachin Gupta info@ sgassociate.com Subject: Dispute domain. Transfer vguard.com to V Guard Industries Ltd. To Disputes Administrators I'm the owner of vguard.com and I have agreed that the disputed domain vguard.com transfer to V Guard Industries Ltd without any cost. Please transfer the domain to V Guard Industries Ltd. asap. Best Regards, Taesong Chong komorikei@gamil.com”

5. Additionally, an e-mail communication dated 18th September, 2020, from Defendant No. 2, as well as a written communication, from learned counsel for Defendant Nos. 2 and 3, to learned counsel for plaintiff, stating that, in compliance with the order of this Court, they have placed a lock on the impugned domain name “www.vguard.com” consequent to order dated 6th March, 2020 of this Court, have also been placed on record.

6. On the last date of hearing i.e. 4th November, 2020, Defendant No. 1 was present in person and stated that he had no objection if the aforesaid domain name “www.vguard.com” was transferred in favour of the plaintiff. Nevertheless, this Court deemed it appropriate to direct him to send a written communication to the court to the said effect.

7. Pursuant thereto, and in compliance with the said direction, an e-mail, dated 4th November, 2020, addressed by Defendant No. 1 (Mr. Taisong Chong), to the plaintiff, as well as Defendant Nos. 2 and 3, reading as under, has been placed on record: “Your honor, I have no objection to the disputed domain name vguard.com is transferred to the paintiff Vguard Industries Limited without any cost. Best Regards, Taesong Chong +82-10-6708-7724” The aforesaid document has been placed on record under cover of an affidavit dated 5th November, 2020, of learned counsel for the plaintiff, Mr. Sachin Gupta.

8. As such, it appears that the Defendant No. 1 is agreeable to transfer the aforesaid domain name “www.vguard.com”, in favour of the plaintiff.

9. Mr. Sachin Gupta, learned counsel for the plaintiff, submits that this would set at rest the grievance of the plaintiff in the plaint and that nothing further would survive for adjudication.

10. In view of the above, Defendant Nos. 2 and 3 are directed to transfer the aforesaid domain name “www.vguard.com”, in favour of the plaintiff.

11. The restraint on such transfer, as imposed vide order dated 6th March, 2020, passed by this Court, is accordingly lifted.

12. As nothing survives for adjudication in the suit, the suit stands decreed in the aforesaid terms. The application stands disposed of.