TMI Blog2013 (3) TMI 479X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 trademark TATA INFOTECH, but also got the impugned domain name registered deliberately in bad faith, in the hope of being able to sell the domain name to the plaintiffs, or take unfair advantage of the distinctive character and repute of the plaintiff's trademark. Thus the defendant no.1, its servants, agents and assigns and all others acting on behalf of the defendant are restrained from conducting any business or dealing in any manner including using domain name www.tatainfotech.in or the word TATA or any name comprising of the same or deceptively/confusingly similar to it regarding any goods, services or domain. The defendant no. 2, Key-Systems GmBH is directed to cancel the registration of the impugned domain name in favor of the defendant. With respect to delivery and rendition of accounts, the plaintiff has not placed any evidence on record to show that the def ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... is the registered proprietor of the trademarks pertaining to and/or comprising the word TATA in relation to various goods falling across various classes of the Fourth Schedule of the Trade Mark Rules, 2002. By virtue of the said registration, it is contended that plaintiff no. 1 has the exclusive right in the said trademark and is thus entitled to the exclusive use thereof. 4. Plaintiff no. 2 has submitted that it is a pioneer in the field of information technology and has been using the trade name and service mark TATA INFOTECH since the year 1997. And that it is a total systems integrator and one of the largest software services 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... entical to the plaintiff‟s domain name i.e. www.tatainfotech.com. It is thus contended that anyone using the plaintiff‟s marks on the internet can cause tremendous loss and damage to the business of the plaintiff by way of passing off and loss of the prestige and business attached to the mark/name TATA and TATA INFOTECH. 8. It is submitted that the cause of action arose for the present suit in February 2005, when the plaintiffs became aware of the registration of the impugned domain name by the defendant no. 1, when he wrote an email to the plaintiff no. 2 informing them that he had registered the impugned domain name. The cause of action is a continuous one and continues to subsist till such time as the defendant no. 1 is permanently restrained by an order of injunction. 9. Vide Order dated 29.04.2005, this Court granted an ex-parte interim injunction restraining the defendant no. 2 from using or transferring the impugned domain name. Further, defendant no. 2 was directed to freeze the impugned domain name. Vide Order dated 23.02.2009 this Court ordered that the defendants be proceeded ex-parte. The plaintiffs led ex-parte evidence. The plaintiffs have placed on re ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . Ltd., AIR 2004 SC 3540, in which the Apex Court considered the question whether internet domain names are subject to the legal norms applicable to other intellectual properties such as trade 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 services. Such users could well conclude that the first domain name owner had misrepresented its goods or services through its promotional activities and the first domain owner would thereby lose their custom. It is apparent therefore, that a domain name may ..... X X X X Extracts X X X X X X X X Extracts X X X X
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