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Info Edge (India) Pvt. Ltd. and Anr Versus Shailesh Gupta and Anr.

2002 (3) TMI 937 - DELHI HIGH COURT

I.A. No. 8882/2001 in S. No. 1971/2001 - Dated:- 5-3-2002 - Dr. M.K. Sharma, J. For the Appellant/Petitioner/plaintiff: Rajiv Nayyar, Sr. Adv., U. Hazarika and Pratibha M. Singh, Advs For the Respondents/Defendant: Sai Krishna, Adv. JUDGMENT M.K. Sharma, J. 1. The plaintiff by filing the present suit has sought for a decree of permanent injunction restraining the defendants, their servants, agents from operation any business, selling, offering for sale, advertising and/or in any manner dealing i .....

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r advertising and in any manner dealing in the aforesaid trade mark /domain name of the plaintiff or any other trade mark/domain name, which may be identical and/or deceptively similar with the aforesaid mark/name. 2. The plaintiff adopted the name 'NAUKRI.COM' on 27.3.1997 and since then the plaintiff is carrying on its business under the aforesaid domain name, which according to the plaintiff has become one of the leading websites in India. The plaintiff has contended that the said dom .....

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ts and publications by the plaintiff, the said domain name 'NAUKRI.COM' has become completely associated with the plaintiff and in the internet parlance and when used with the suffix .com, the word NAUKRI has attained a secondary meaning to connote and denote the services offered by the plaintiff. The plaintiff also contended that the defendant's website jobsourceindia.com, offers similar services as that of the plaintiff's site NAUKRI.COM and, accordingly, the defendant is carry .....

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OM was merely being used as a hyperlink i.e. a link to lead any user who types NAUKRI.COM to JOBSOURCEINDIA.COM. According to the plaintiff, the said dishonest and bad faith on the part of the defendant is evident from the fact that though the defendant had registered both the domain names JOBSOURCEINDIA.COM & NAUKRI.COM in 1999 itself, it designed its home site under the name JOBSOURCEINDIA.COM and also decided to adopt and use NAUKRI.COM to attract web-surfers & innocent users for dive .....

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submitted that there is passing off the services and goods of the defendant as that of the plaintiff's trade mark NAUKRI.COM, which is identical to or deceptively similar to the plaintiff's said trademark/domain name. He submitted that the domain name/trade mark adopted by the defendant is deceptively similar to the domain name/trademark of the plaintiff and that the defendant is copying verbatim the format and the name of the plaintiff and that the said defendant being in the same busin .....

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ears of the plaintiff registering its domain name and, Therefore, dishonesty is writ large as confusion is sought to be created by the defendant by diverting the internet traffic from the website of the plaintiff to the website of the defendant. He also stated that the facts alleged in the plaint had in the application, coupled with the documentary evidence placed on record, would reveal the dishonest intention of the defendant and that it is a case of bad faith and, Therefore, the plaintiff is .....

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se of the plaintiff that the plaintiff's trade mark has assumed a secondary meaning, the same is required to be proved by leading evidence as the same is purely a question of fact and could be determined only after trial is over and evidence is recorded. He also submitted that since the trademark/domain name of the plaintiff could not have assumed any protection under the trademark law, Therefore, the intention of the defendant, in adopting the trade mark with a generic expression is neither .....

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OO.COM v. AKASH ARORA reported in 1999 (19) PTC 201 that the domain name serves the same function as the trademark and is not a mere address or like finding number on the internet but is also entitled to equal protection as a trademark. In this connection, reference may be made to the following passage from the aforesaid decision of this court:- "The word 'yahoo' used as a trademark/domain name by the plaintiff is to identify their internet services, which acquired distinctiveness a .....

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n name on account of its similarity to the name, brand name or trademark of an unconnected commercial organisation must, expect to find himself on the receiving end of an injunction to restrain the threat of passing off, and the injunction will be in terms which will make the name commercially unless to the dealer. It was also held in the said decision that the name 'marksandspencer' could not have been chosen for any other reason than that it was associated with the well-known retailing .....

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d Merchandise Marks Act, the word 'services' did not find mention but the services rendered have come to be recognised for an action of passing off. However, with the enactment of a New Trade & Merchandise Act, the services rendered has been given a statutory recognition. The said new Act is yet to be notified and is yet to be enforced. Law of passing off is an action under the common law which also is given a statutory recognition in the Trade Mark Act. In the decision of Yahoo Inc. .....

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0. Lord Halsbury defined the tort of passing off in Reddaway v. Banham reported in 1696 A.C. 1999. In paragraph 31 of the decision of this Court in Ellora Industries v. Banarsi Dass and Ors. reported in 1981 PTC 46, it was held that it is not always necessary that there must be in existence goods of that other man with which the defendant seeks to confuse his own. Reference in the said decision was also made to the observation of Lord Greene M.R. who, observed that "passing off may occur in .....

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obability of sufferance of damage. In Yahoo Inc. (supra) the plaintiff and the defendant were operating in the common field of activity and they were operating on the website and providing information almost similar in nature. The facts of the present case, Therefore, are somewhat similar with Yahoo Inc. (supra). 12. In Card service International Inc. v. McGEE; reported in 42 USPQ 1850, it was held that the domain name serves the same function as the trade mark and is not a mere address or like .....

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amely, Section 32 of the Lanham Act. In the facts of the said case, it was held that Card service International's customers, who wish to take advantage of its Internet service, but do not know its domain name are likely to assume that "Card service.com" belongs to Card service International. It was further held that those customers would instead reach McGee and see a home page for "Card Service" and thereby may would assume that they have reached Card service Internationa .....

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ourt examined the records and upon scrutinising the same, the court held that since the two websites of the plaintiff are widely publicised in the newspapers and magazines, Therefore, there is always a possibility of the first user accessing the defendants' website believing it to be the plaintiffs' website because of the close similarity in the domain names. It was also held that the potential users and existing users, talk about such website, products and services, and it is entirely p .....

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uot;Indian Service.Com" and, Therefore, it was found that the defendant adopted the domain name Rediff with the intention to trade on the plaintiff's reputation. 14. In the said case, reference and reliance was place in the decisions of Marks & Spencer (supra) and Card service International Inc. (supra). The aforesaid decision clearly laid down the principle that the internet domain names and valuable properties and are of importance to the parties registering the same and the same .....

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f service from passing off the services rendered by others as his services. In Yahoo Inc. (supra) it was held that in a matter where services rendered through the domain name in the Internet, a very alert vigil is necessary and a strict view is to be taken for its easy access and reach by anyone from any corner of the globe. It was also held that when both the domain names are identical, there is every possibility of an Internet user being confused and deceived in believing that both the domain .....

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he aforesaid legal position settled by various decisions of this court and other courts including the Supreme Court of the United States, let me now proceed to decide the issues raised before me in the light of the facts of the present case. The plaintiff herein adopted the domain name NAUKRI.COM on 27.3.97. Since then the plaintiff has developed the said domain name and the website. There is definitely peculiarity in the aforesaid domain as the plaintiff has adopted a Hindi word with English sc .....

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sed on just one objective: Employment. It is reported therein that it is the sort of site that just had to go online, which is created by Info Edge, the plaintiff herein and that the site already flaunts hundreds of items including advertisements from companies and from people wanting job, and resumes of prospecting candidates. In another journal, it was reported that Naukri.Com could well develop into a favorite hang-out for placement agencies, personnel managers, persons looking for job switch .....

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tered two domain names, one with the name of JOBSOURCEINDIA.COM and NAUKARI.COM, somewhere in 1999, by which time the plaintiff had assumed and achieved in its field of activity a great reputation to its credit. Both the aforesaid domain names were started by the defendant in 1999. They offer similar services as that of the plaintiff site Naukri.Com and, Therefore, to that extent the defendant is a direct competitor of the plaintiff and they work and compete with each other for getting an edge o .....

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ubscribers about the availability of jobs and employment in various establishments, concerns and offices and the manner in which request for employment could be made and, Therefore, it is a service offered by the plaintiff relating to job opportunity and situation and giving guidance thereto and, Therefore, the same is a descriptive word. It is also a settled law that the distinction between the generic word and descriptive word is very thin and such word could also assume a secondary meaning by .....

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mp; Sons (Hull) Ltd. and Ors. reported in (1979) 2 All ER, it was held that whether the name denoted a product made from ingredients from a particular locality or whether the goodwill in the name was the result of the product being made from particular ingredients regardless of their provenance, since it was the reputation that the product itself had gained in the market by reason of its recognisable and distinctive qualities which had generated the relevant goodwill. In the said case, the trade .....

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is a descriptive of the business they carry on. It was held that the plaintiff could assume or establish monopoly on the said word only when they show that they have acquired a secondary or subsidiary meaning. The aforesaid legal principle is well-settled and even the counsel for the defendant did not dispute the aforesaid position. In Halsbury's Laws of England, Volume 48 Fourth edition at page 190, it is stated that it is possible for a word or phrase, which is wholly descriptive of the go .....

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r to obtain some form of relief on a "passing off" claim, the user of a generic term must prove some false or confusing usage by the newcomer above and beyond mere use of generic name. 22. The contention of the defendant is that adjectives are normally descriptive words and nouns are generic word. However, McCarthy has said that the said "part of speech" test does not accurately describes the case law results. Therefore, such a criteria cannot be accepted as a safe and sound .....

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rt still be not granting injunction to protect the business of the plaintiff? The answer to the said question has to be an emphatic 'No". User of similar word by a competitor coupled with dishonest intention and bad faith would empower a court to restrain such user/misuser to do equitable justice to the aggrieved party. In this regard reliance can be placed on the decision of Gujarat Bottling Co. (Ltd.) and Ors. v. Coca Cola Co. and Ors.AIR1995SC2372 . In paragraph 47 of the said judgme .....

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badibazaar" did not attain a secondary meaning. Therefore, the said case is distinguishable on facts. Similarly, the case of Girnar Food & Beverages Pvt. v. Godfrey Phillips India Ltd. reported in 2001 PTC 360 (Delhi) is also distinguishable on facts. The said judgment was rendered also on the conclusions and finding that the two products and trade dress are different, which is substantial enough to distinguish the two products. In the said decision heavy reliance was placed on the deci .....

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re it was observed that the products will be purchased by the villagers and townsfolk, literate as well as illiterate........The purchaser cannot be equated with a purchaser of goods in England. While we agree that in trade mark matters, it is necessary to go into comparable strength, the decision on merits in S.M. Dyechem case (supra) does not, in our opinion, lay down correct law and we hold accordingly" 24. In the present case, I have already made a mention of the nature of reputation an .....

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o that the plaintiff having not proceeded against them for similar reliefs, is not entitled to proceed only against the defendant. The said contention was refuted by the plaintiff by placing on record a chart that the other websites with almost similar names are either non-functional or are foreign language websites and they have nothing to do with jobs. It is thus prima facie established that those websites/domain names stand apart and on a different footing from the domain names of the plainti .....

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denying injunction to the plaintiff. It was further contended that consumers are discerning and intelligent people and, Therefore, they would be in a position to distinguish the various websites/domain names and, Therefore, there is no cause for any confusion. Similar contention raised in Yahoo Inc. (supra) was rejected by this court holding that even if an individual is sophisticated user of the Internet, he may be an unsophisticated consumer of information and such a person may find his/her w .....

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ery alert vigil is necessary and a strict view is to be taken for its each access and reach by anyone from any corner of the globe. 26. The defendant registered two domain names, almost simultaneously; one being jobsourceindia.com and the other being Naukri.Com. They were working and engaged in the common and overlapping field of activity and, Therefore, they are competitors of each other. It is settled law that if two contesting parties are involved in the same area or similar line of business, .....

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n almost similar domain name as that of the plaintiff? No reasonable Explanation could be given by the defendant for adopting such a similar domain name. It is also clear from the records placed before me that when domain name of the defendant under the name Naukari.Com was typed, at least for some length of time, there was diversion of traffic to the other domain name of the defendant i.e. jobsourceindia.com. This position is proved by documentary evidence placed on record. Thus, in the present .....

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ng error made by the internet user while attempting to enter into the plaintiff's internet address on their web-browser. The very purpose of having two registered domain names by the defendant only establishes the dishonest intention and bad faith on the part of the defendant. The real intention behind registering the domain names for the same purpose, of which one is deceptively similar to the domain name of the plaintiff, is to attract or induce the internet user to come to the website of .....

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laintiff's domain name is sought to be diverted to the domain name and website of the defendant by confusing the internet users as to sponsorship or affiliation with a website that defendant operates for commercial gain. Such intention is deceitful and dishonest, apart from being an action on bad faith. 28. Paragraph 4(b)(iv) of the Uniform Domain Name Dispute Resolution Policy, reference to which was made by the counsel appearing for the plaintiff, lays down as to what bad faith is. It stat .....

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on, or endorsement of your web site or location or of a product or service on your website or location." 29. Both the domain names "Naukri.com" of the plaintiff and "Naukri.Com" of the defendant, depicting the nature and type of business activity they carry on are identical or confusingly similar trade mark or service marks. It is also a possibility for an internet user while searching for the website of the plaintiff to enter into the website of the defendant through on .....

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