Full Text
HIGH COURT OF DELHI
JUDGMENT
HOTELS.COM, LP .....Plaintiff
For the Plaintiff : Mr. Prithvi Singh, Mr. Rohan Seth & Ms. Vanshika Singh, Advs.
For the Defendants : None.
1. IA No. 18971/2025 has been filed on behalf of the Plaintiff under Order XIII-A, Rules 3 and 6(1)(a), read with Section 151 of the Code of Civil Procedure, 1908 (“CPC”), seeking a Summary Judgment.
2. The Plaintiff has filed the present Suit for a decree of permanent injunction restraining infringement of its Trade Mark, passing off, dilution, damages, rendition of accounts, delivery up, etc.
FACTUAL BACKGROUND:
3. The dispute between the Parties, essentially pertains to the Defendants’ unauthorized use of the Marks, ‘HOTELCOM’ and the logo ‘ ’ (“Impugned Marks”). The Plaintiff is the owner and proprietor of the Trade Mark, ‘HOTELS.COM’ (“Plaintiff’s Mark”) registered in India under Classes 9, 35 and 43 and other variants of the Plaintiff’s Mark which are registered outside of India.
4. Vide order dated 07.05.2025, it was recorded that the Defendants, despite being served, have neither entered appearance nor have they filed their respective Written Submissions and accordingly, the Defendants’ right to file Written Submissions was closed and the Defendants were directed to be proceeded ex-parte.
SUBMISSIONS ON BEHALF OF THE PLANTIFF:
5. Mr. Prithvi Singh, learned Counsel for the Plaintiff submitted that the Plaintiff is a leading provider of consumer-direct hotel accommodation services under the Plaintiff’s Mark and is a one-stop destination for booking accommodations which include hotels, apartments, bed-and-breakfasts, guest houses, hostels, etc.
6. The learned Counsel for the Plaintiff submitted that the platform ‘Hotels.com’ (“Plaintiff’s Website”) was originally launched as Hotels Reservation Network (“HRN”) in the year 1991, by its 2 founders, David Litman and Robett Diener. At the time, it provided hotel bookings through a toll-free phone number to customers in the USA. Thereafter, in the year 2002, the Plaintiff adopted the Plaintiff’s Mark, when HRN changed its name to ‘Hotels.com’, the name which it continues to use as of today. Through the Plaintiff’s Website, the Plaintiff also commenced its services of providing online bookings.
7. The learned Counsel for the Plaintiff submitted that the Plaintiff is one of the leading hotel booking service providers across the world and has a presence in several countries including but not limited to Australia, Bolivia, China, Canada, Germany, Ireland, India, Japan, Maldives, Mauritius, Seychelles, Singapore, Sri Lanka, South Africa, United Kingdom, and the United States of America.
8. The learned Counsel for the Plaintiff submitted that the Plaintiff runs a world leading hotel accommodation booking platform under the Plaintiff’s Mark, with over 85 localized websites worldwide in 34 local languages, including an India-specific website, ‘https://in.hotels.com/’, featuring more than 325,000 hotel listings. In 2019, the Plaintiff’s Website had over 17 million unique visitors from India-based IP addresses. The associated Domain Name ‘hotels.com’ is owned and operated by the Plaintiff’s parent company, Expedia Inc., and has been registered since 30.03.1994. Through the Plaintiff’s Website, from the years 2010 to 2023, over 2 million room nights have been booked from India-based IP addresses, which resulted in a gross booking value of over USD 200 million.
9. The learned Counsel for the Plaintiff submitted that in connection with its services, the Plaintiff has partnered with some of the world’s best and most renowned chains of hotels and brands such as Taj Palace, Holiday Inn, The Leela Palace, The Lalit, Shangri-La Eros, Radisson Blue, JW Marriott, ITC Maurya, The Oberoi, Le Meridien, Four Points by Sheraton, etc.
10. The learned Counsel for the Plaintiff submitted that the Plaintiff also operates its mobile application ‘Hotels.com’ on both the Google Play Store and Apple App Store. The mobile application on Google Play Store has, as on date, received more than 10 million downloads with a rating of 4.[8] stars out of 5. Though the Apple App Store does not disclose the number of downloads, it does indicate that the mobile application has a rating of 4.[8] out of 5, with over 2 million ratings.
11. The learned Counsel for the Plaintiff submitted that insofar as the Indian jurisdiction is concerned, the Plaintiff has filed Trade Mark Applications for registration of the Plaintiff’s Mark, and out of these Applications, one has proceeded to registration. The current status of the Trade Mark Applications, as given in the Plaint, are reproduced as under:
12. The learned Counsel for the Plaintiff submitted that in view of the Plaintiff’s prior adoption and extensive use, the members of the trade and industry and the consumers at large are well-aware of the Plaintiff’s Mark
1. 6408702 HOTELS.COM 29th April (User claim: 8th December
2008) 9, 35, Registered
2. 2855826 HOTELS.COM 3rd December 9, 35, Pending and the same have acquired secondary meaning which is exclusively associated with the services offered by the Plaintiff.
13. The learned Counsel for the Plaintiff submitted that during the month of October 2023, the Plaintiff, while conducting its regular searches on the online records of the Trade Marks Registry, came across the following Trade Mark Applications filed by Defendant No. 1:
1. HOTELCOM 5610255 9 15th September Objected
2. HOTELCOM 5610252 35 15th September Objected
3. HOTELCOM 5610256 38 15th September Objected
4. HOTELCOM 5610253 42 15th September Opposed by the Plaintiff on 25th July 2024
5. 5610251 42 15th September Opposed by the Plaintiff on 10th November
14. The learned Counsel for the Plaintiff submitted that the Plaintiff initiated opposition proceedings against Defendant No. 1’s Trade Mark Application No. 5610251 for the Mark in November 2023. After the Plaintiff filed its opposition, Defendant No. 1 filed its Counter Statement stating that both the Plaintiff’s Mark and the Impugned Marks were offering different services and would not cause any confusion. As the next step, the Plaintiff filed its evidence in support of the opposition, to which Defendant No. 1 did not file its evidence in support of the application within the prescribed statutory time frame.
15. The learned Counsel for the Plaintiff submitted that the Plaintiff also addressed a Cease and Desist Notice dated 22.11.2023 (“Cease and Desist Notice”) to the Defendants, calling upon them to cease all use of the Impugned Marks. The Plaintiff’s counsels received a Reply dated 22.12.2023 (“Reply to the Cease and Desist Notice”) from the Defendants’ counsel, refuting the claims made in the Cease and Desist Notice, and calling upon the Plaintiff to withdraw its notice of opposition against the Trade Mark Application No. 5610251. Additionally, the Reply to the Cease and Desist Notice also offered an implausible and frivolous reason for adopting the Impugned Marks reasoning that the Impugned Marks are a combination of the words “hotel” and “com”, abbreviated from “communication”. Further, in the Reply to the Cease and Desist Notice, the Defendants had stated that their services are geared towards hotel owners and hoteliers and, therefore, the customer sophistication i.e., the concept of sophisticated buyers, such as those who have expertise in a specific area, are less likely to be confused by similarities in the Marks.
16. The learned Counsel for the Plaintiff submitted that the Plaintiff sent a Rejoinder dated 24.05.2025 to the Reply to the Cease and Notice, denying the Defendants’ justification behind adoption of the Impugned Marks, reiterating the contents of the notice, and again calling upon the Defendants to cease all use of the Impugned Marks within 7 days. The Plaintiff hasn’t received a reply to the Rejoinder dated 24.05.2025.
17. The learned Counsel for the Plaintiff submitted that the Plaintiff also filed its opposition to Defendant No. 1’s Trade Mark Application NO. 5610253 and Defendant No. 1 has failed to file its Counter Statement within the statutorily prescribed time period and, therefore, the Trade Application No. 5610253 is bound to be abandoned.
18. The learned Counsel for the Plaintiff submitted that the Defendants are using the Impugned Marks, which are phonetically identical and structurally similar to the Plaintiff’s Mark in connection with intercom / room service receivers, which goods and services are allied and cognate to the hotel accommodation services offered by the Plaintiff. The Plaintiff’s consumers, upon booking and visiting their respective hotels may, upon coming across the Defendants’ goods and services believe that the same originate from or are an extension of the Plaintiff’s services. Such potential association between the Plaintiff and the Defendants are likely to be injurious to the hard-earned reputation of the Plaintiff.
19. The learned Counsel for the Plaintiff submitted that the Defendants are operating the website, ‘www.hotelcom.live’ (“Impugned Website”). The domain is also deceptively similar to the Plaintiff’s Website. Use of a Domain Name that is deceptively similar to a reputed Trade Mark is impermissible. The Defendants claim to be engaged in the services of providing a digital room service communication and management platform / software that can be utilized by hotels as a substitute to the traditional intercom / extension. As per the Impugned Website, the Defendants operate a mobile application under the name, ‘HOTELCOM’, that could have been downloaded from the Google Play Store and the Apple App Store. As per the Google Play Store listing, the Defendants’ mobile application was published on 14.12.2022.
20. The learned Counsel for the Plaintiff submitted that the Defendants’ adoption and use of the Impugned Marks creates a strong likelihood of consumer confusion and, prospective / future customers of the Plaintiff may visit the Impugned Website believing it to be that of the Plaintiff. Even if pursuant to visiting the Impugned Website they realise that the Defendants’ services are in fact not the services of the Plaintiff, the same still gives rise to the category of confusion identified as ‘Initial Interest Confusion’. If a web user uses a Trade Mark because they are looking for the site of the company that owns the Mark, initial interest confusion caused by the domain name of the Defendants may deceive and lure the web user to the Impugned Website. Even though when the web users access the Impugned Website they find that it is not the Plaintiff’s Website, the Defendants have succeeded in luring users to their site thus, resulting in passing off.
21. The learned Counsel for the Plaintiff submitted that while the Plaintiff is in the business of booking hotels, the Defendants are in the allied and cognate service of providing intercom to the hotels. The present case is a classic case of ‘Initial Interest Confusion’, wherein any consumer would get confused by the deceptively similar Mark being used by the Defendants, as that of the Plaintiff.
22. The learned Counsel for the Plaintiff submitted that this Court in Inter Ikea Systems BV v. Imtiaz Ahamed 2016 SCC OnLine Del 6717 and Inter Ikea Systems BV v. Harish Chaudhary CS(Comm) 106/2020, held that the defendant who chooses to stay away from legal proceedings cannot be allowed to take advantage of the evasion and damages can be awarded even in cases which are decided ex-parte.
SUBMISSIONS BY THE DEFENDANTS:
23. The Defendants have not entered appearance despite being given multiple opportunities to do so and are proceeded ex-parte.
ANALYSIS AND FINDINGS:
24. Vide Order dated 17.12.2024, an ex-parte ad-interim injunction was granted in favour of the Plaintiff restraining the Defendants from use of the Impugned Marks or any deceptively similar variant of the Plaintiff’s Mark as a Trade Mark, Trade Name, Domain Name, on social media, as part of their e-mail addresses or in any manner, which amounts to infringement of the Plaintiff’s Mark. The Defendants were also directed to take down all their social media pages / profiles including Facebook, Instagram and LinkedIn, referring to the Impugned Marks. Further, the Defendants were restrained from transferring the Impugned Website to any third party during the pendency of the Suit proceedings. Vide Order dated 07.02.2025, it was noted that the Defendants have been served via email, however, the Defendants have failed to enter appearance in the Suit.
25. Vide Order dated 07.05.2025, it was recorded that the Defendants have neither entered appearance nor have they filed their Written Submissions, accordingly, it was directed that the Defendants be proceeded ex-parte. The Plaint has been duly verified and is also supported by the Affidavit of the Plaintiff. In view of the fact that no Written Statement has been filed on behalf of the Defendants, all the averments made in the Plaint have to be taken to be admitted. Further, since no Affidavit of Admission / Denial has been filed on behalf of the Defendants in respect of the documents filed with the Plaint, in terms of Rule 3 of the Delhi High Court (Original Side) Rules, 2018, the same are deemed to have been admitted.
26. Accordingly, no purpose shall be served in putting the matter for trial, when no defense has been raised by the Defendants. Further, considering the facts and circumstances of the present case, the Defendants do not appear to have any real prospect of succeeding in the present case.
27. Accordingly, the Plaintiff is entitled to a Summary Judgment in its favour under Order XIII-A of the CPC. The Plaintiff is also entitled to recover the costs of this proceedings.
28. It is well settled that this Court is empowered to grant a Summary Judgment where the Defendants have no real prospect of successfully defending the claim, and if the Court can make the necessary finding of fact on the basis of the facts and documents on record, there is no requirement to hold trial.
29. A comparison of the Plaintiff’s Mark, ‘HOTELS.COM’, and the Defendants’ Mark, ‘HOTELCOM’, would show that the Defendants have adopted the Impugned Marks, which are almost identical to the Plaintiff's Mark. The Impugned Marks are also sought to be registered in the same Class as that of the Plaintiff’s Mark. The associated Domain Name of the Plaintiff, i.e. ‘hotels.com’, is owned and operated by the Plaintiff’s parent company, Expedia Inc., since 30.03.1994. The Plaintiff is the prior user of the Mark, ‘HOTEL.COM’ and have been using it since 2002.
30. Based on the documents on record, it is apparent that the Plaintiff has built substantial goodwill and a strong reputation both globally and in India over the years. In view of the overall similarity between the Plaintiff’s Mark and the Impugned Marks, the Defendants’ infringing activities are bound to cause confusion in the minds of the consumers, who will assume the Defendants’ products and services to have originated from the business or house of the Plaintiff.
31. This Court in Under Armour Inc v. Anish Agarwal 2025 SCC OnLine Del 3784, held that the initial interest confusion Test proceeds on the principle that confusion in the minds of consumers may arise at the preliminary stage, prior to the actual purchase being completed. At the point of finalising the transaction, the consumer may no longer be in doubt as to the true origin of the goods or services. Nonetheless, even such transient confusion at the initial stage is sufficient to meet the requirement of deceptive similarity under Section 29 of the Trade Marks Act, 1999. The infringer’s objective may be served merely by diverting the consumer’s initial attention. The consumer may, thereafter, consciously opt for the infringer’s product on account of its own characteristics, with complete knowledge that it is unconnected with the registered Trade Mark. The Defendants’ use of the Impugned Marks is with the purpose of causing confusion in the mind of the customers to generate traffic to the Impugned Marks riding upon the goodwill of the Plaintiff’s Mark. The Defendant cannot be allowed to take advantage of the Plaintiff’s goodwill and use a Mark that is deceptively similar to the Plaintiff’s Mark in order to generate traffic to the Impugned Website.
32. A clear case of infringement of the Plaintiff’s Mark is made out. The Impugned Marks are nearly identical, the class of consumers targeted by both parties directly overlaps, and the channels of trade are identical. Consequently, there exists a likelihood that consumers may mistakenly associate the Defendants’ services with those of the Plaintiff’s or perceive them as a variant of the Plaintiff’s services, causing irreparable harm to the Plaintiff’s goodwill and reputation.
33. The Defendants have taken unfair advantage of the reputation and goodwill of the Plaintiff’s Mark and have also deceived the unwary consumers of their association with the Plaintiff by dishonestly adopting the Impugned Marks nearly identical to the Plaintiff’s Mark without any plausible explanation. Therefore, the Plaintiff has established a case of passing off as well.
34. Besides a decree of permanent injunction, learned Counsel for the Plaintiff has also pressed for reliefs of compensatory damages, exemplary damages and costs.
35. In Cartier International A.G. v. Gaurav Bhatia 2016 SCC OnLine Del 8, while granting the damages in case where the defendants did not appear to contest the suit filed by the plaintiff, this Court has observed that the defendant who deliberately avoids court proceedings should not be allowed to benefit from such evasion as that would be unfair to a defendant who submits account records and is held liable for damages, while one who evades proceedings escapes liability due to the absence of financial records.
36. The decision in Inter Ikea Systems BV v. Imtiaz Ahamed (supra) and Inter Ikea Systems BV v. Harish Chaudhary (supra) further supports the Plaintiff’s right to seek damages and recover costs even when the Defendants are proceeded ex-parte.
37. In view of the above, the present Application is allowed and it is directed that: i. The Suit is decreed against the Defendants in terms of Paragraph NO. 45(a) to (e) of the Plaint. ii. The Defendants shall pay an amount of ₹5,00,000/- (Rupees Five Lakhs Only) as damages and costs.
38. Let the Decree Sheet be drawn up.
39. The present Suit and the pending Applications are disposed of.
TEJAS KARIA, J SEPTEMBER 26, 2025 ‘AK’