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TMI Blog2013 (3) TMI 479X X X X Extracts X X X X X X X X Extracts X X X X ..... m the register of the Registrar, Key-Systems GmBH, and for delivery-up of all infringing materials along with the rendition of accounts of profit illegally earned as well as damages. 2. This suit has been filed by Tata Sons Ltd., a company incorporated under the Indian Companies Act, 1913 (plaintiff no.1) and its subsidiary Tata Infotech Ltd., a company incorporated under the Indian Companies Act, 1956 (plaintiff no.2). The plaintiffs have contended that the plaintiff no.1 has been established in the year 1917 and is the principal investment holding company of the Tata Group, which is India‟s oldest, largest and best-known conglomerate with a turnover of USD 9 Billion. The name TATA is submitted to be have been derived from the surna ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... vices and solutions providers in the world and carried out activities including software consulting, hardware manufacture, offshore software development, systems integration etc. And that due to its credibility built over the years, its customer centric approach and its fast and high quality services and solutions being provided under the service mark TATA INFOTECH, the plaintiff no. 2 has been conferred with various recognition and awards, which reflect its immense goodwill and reputation, that it enjoys in its field in India and abroad. 5. The plaintiffs have also emphasized that they have an enormous presence on the internet and own various domain names, inter alia tata.com, tatainfotech.com, etc. And that the plaintiff no.2 with a view ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ringement of the plaintiff‟s registered trademarks for TATA. And that the defendants use of the mark TATA is not by way of permitted use. And that the mark is identical in parts and deceptively similar as a whole to the plaintiff‟s reputed mark. Further, the plaintiff‟s submit that on the internet, users are accustomed to reaching the website of well-known brands such as TATA/TATA INFOTECH by keying in those specific words. If the defendant no. 1 or its transferee starts to use this domain name by resolving it to another website, the chances of a genuine customer of the plaintiffs reaching the defendant‟s web page are highly likely, more so because the impugned domain name is identical to the plaintiff‟s domain ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... r the domain names www.tatainfotech.com as well as the impugned domain name i.e. www.tatainfotech.in. 10. In support of its contentions, the plaintiff no. 1 has also placed on record the decision of this Court in the case of Tata Sons Ltd. v. Suresh Jain & Ors., Suit No. 1922/2003, where this Court has recognized the „well known‟ status of the TATA mark. The plaintiffs have also placed reliance upon the decisions of this Court in Tata Sons Ltd. v. Manoj Dodia & Ors., CS(OS) No. 232/2009; Yahoo! Inc. v. Akash Arora & Anr., 78 (1999) DLT 285, as well as the decision of the High Court of Justice - Chancery Division in the case of Marks & Sepncer PLC v. One-in-a- Million Ltd. and Connected Matters, [1998] FSR 265. The plaintiffs ha ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... de marks and be regarded as trade names which are capable of distinguishing the subject of trade or service made available to potential users of the internet. In this regard the Apex Court held: "16. The use of the same or similar domain name may lead to a diversion of users which could result from such users mistakenly accessing one domain name instead of another. This may occur in e-commerce with its rapid progress and instant (and theoretcally limitless) accessibility to users and potential customers and particularly so in areas of specific overlap. Ordinary consumers/users seeking to locate the functions available under one domain name may be confused if they accidentally arrived at a different but similar web site which offers no such ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... clearly states that the record of the said domain name was created on January 30, 1998. The plaintiffs have also stated that they have been the prior user with respect to the said domain name ever since the year 1998. In contrast, the WHOIS search conducted on the registry website for the impugned domain name www.tatainfotech.in clearly shows that it was created on CS (OS) No. 563/2005 Page 9 of 11 February 19, 2005 in the name of defendant no. 1 i.e. Arno Palmen, by the sponsoring registrar Key-Systems GmBH, who is defendant no. 2. Further, the email correspondence between the contesting parties also conclusively demonstrates that the defendant no. 1 not only had the knowledge that plaintiff no. 2 was the legitimate owner and user of the t ..... X X X X Extracts X X X X X X X X Extracts X X X X
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