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TMI Blog2007 (7) TMI 684X X X X Extracts X X X X X X X X Extracts X X X X ..... isdiction in such a situation. 2. The plaintiff company runs a Hindi news channel "INDIA TV" which was launched in March 2004. It is stated that the channel is one of the leading Hindi news channels in India having popular programs such as 'Breaking News' and other programs such as India Beats, Jago India, Aap ki Adalat etc. 3. The plaintiff claims to have adopted the mark "INDIA TV" since 01.12.2002 and is stated to have been using the said mark continuously and extensively. It is stated that the plaintiff applied for the registration of the mark "India TV" in classes 38 and 41 on 22.01.2004 of which the mark applied for in class 38 was published in March 2006 and the mark in class 41 was published in February 2005. The claim of the plaintiff is on the use of the words 'India' and 'TV' as a combination and disclaimer on the separate use of the words has been published with the marks of the plaintiff published in the trademarks journal. It is claimed that no opposition to any of the advertisements has been received within the statutory period stipulated. 4. It is further stated that the plaintiff had also applied for the regi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... omain name and the registration of the domain name has been done with a view to commercially benefit from the mark of the plaintiff. A domain name acts as the address of a company on the Internet and is its web mark just like a trade or service mark and the plaintiff avers that by using of the plaintiffs mark within a sketch of a television on the homepage of defendant nos. 1 and 2, the said defendants are attempting to represent themselves as the plaintiff/representative of the plaintiff. It is alleged that the registration of the impugned domain name by the defendants 1 and 2 constitutes infringement, passing off and dilution of the plaintiff's mark besides unfair competition. 10. The plaintiff thus filed the present suit against the defendants for permanently restraining the defendants from the use of the mark "INDIA TV" either as a domain name or in any other manner whatsoever on its website links, electronic material etc, from offering services through the said domain name and restraining the defendants from transferring or alienating or in any manner dealing with the said domain name. The plaintiff has also prayed for a mandatory injunction directing the transf ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... name "indiatvlive.com" or in any other manner on their website, links, any other electronic or printed material etc, and restraining defendants 1 and 2 from operating any website under the said domain name and offering its services through the said web site either through subscription and otherwise; restraining the said defendants from transferring, alienating or in any other manner dealing with the domain name and for transfer the said domain name to the plaintiff. 14. On 19.01.2007, an ex parte ad interim injunction was granted restraining defendant Nos. 1 and 2, their directors, officers, agents, licensees, franchises and representatives from using any domain name containing the combination of words "INDIA TV" as also from transferring or alienating the said domain name to any person. 15. Defendant No. 1 thereafter filed is 1366/2007 under Order 39 Rule 4 of the said code for setting aside the ex parte ad interim injunction granted on 19.01.2007. The stand taken in the said application is that defendant No. 1 is a company formed and existing in the United States having no Indian presence. It is pleaded that the two promoters of defendant No. 1 company are ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he same has not been disclosed by the defendant either orally or in writing before this court although the written statement in the present suit was filed after the institution of the said action. It is claimed that the action is unwarranted and has been attracted on the basis that the Registering Authority i.e. Defendant No. 3 is located in Arizona though the said authority has no role to play insofar as the merits of the matter are concerned. The plaintiff has thus prayed for an injunction against proceeding with the action in the Arizona courts as the suit in this court was instituted prior to the Arizona suit and the arguments on the injunction applications in this court were being heard on a day to day basis. It has also been averred that different views by both courts would cause irreparable injury to both the plaintiff and defendant No. 1 and would be against the interest of justice. 18. The said application has been resisted by defendant No. 1 who has taken the stand that this court is not a court of competent jurisdiction not being the appropriate forum/ forum convenience. It is averred that all the defendants in the present case are American entities not amenable to the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... case of disobedience of the order dated 19.01.2007. 21. It may be noticed that insofar as is 2611/2007 is concerned, learned senior counsel for defendant No. 1 had on instructions stated on 05.03.2007 that the said defendant would not take any further steps to prosecute the action in the Arizona Court until the next date. On 25.04.2007, the said statement was confirmed until modification or variation. 22. Learned Counsels for the parties advanced their submissions in respect of all the aforementioned applications at length on various dates. Anti Suit Injunction 23. The plaintiff has prayed for an anti-suit injunction restraining defendant No. 1 from proceeding with the suit filed by it against the plaintiff in the district courts at Arizona. The plaintiff claims that the subject matter in the two suits is the same and avers that different views of the two courts in the suits would cause irreparable injury to the plaintiff as well as defendant No. 1. Defendant No. 1, on the other hand has claimed that this court has no personal jurisdiction over the defendants and is not the forum convenience for hearing the present matter. 24. Insofar as the principles governing granting of a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... observed inter alias that in England, jurisdiction is founded on the presence of the defendant within the jurisdiction, and in certain specified (but widely drawn) circumstances, in a power to serve the defendant with process outside the jurisdiction. But the potential excesses of common law jurisdictions are generally curtailed by the adoption of the principle of forum non convenience. It was also observed that as a general rule, before an anti-suit injunction could be granted by an English Court to restrain a person from pursuing proceedings in a foreign jurisdiction, comity required that the English Forum should have sufficient interest or a connection with the matter in question to justify the indirect interference with the foreign court which such injunction entailed. 26. Thus, in considering whether an anti suit injunction is to be granted or not, as held in Modi Entertainment Network and Anr. (supra), the court is to inquire whether the defendant is amenable to the personal jurisdiction of the court, whether the ends of justice would be defeated by refusal to grant the injunction and where there are more than one forums available, and which is the forum convenience for bri ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ipedia.org/wiki/ personal_jurisdiction). It has been observed therein that personal jurisdiction as distinguished from subject matter jurisdiction is the power of the court to require a party (usually the defendant) or a witness to come before the court. States have enacted 'long arm' statutes by which courts can exercise jurisdiction over a business entity or individual located outside the state if for example such entity or individual regularly does business in the state or transacted business with the plaintiff in the state. Personal jurisdiction over non-residents is however limited by the constitutional requirements of due process. A defendant not served with process within the state in which the court sits must have sufficient level of business or personal contacts within the state so that the defendant can reasonably be expected to be sued there. As regards Internet activity, it has been noted that courts are still working out how this applies to law suits regarding Internet activity and business though some courts appear to be in agreement that the passive posting of a website is not enough to establish widespread jurisdiction wherever someone wants to sue the web a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... termine whether a finding of jurisdiction satisfies the constitutional requirement of due process. It was held that that personal jurisdiction over non residents in the District of Columbia could not be based solely on the ability of District residents to access the defendants' websites as this would not by itself show any persistent course of conduct by the defendants in the District within the meaning of the Sub-section of the District Long Arm statute pertaining to causing tortuous injury in the District. It was observed that the plaintiff must show sufficient minimum contacts between the defendant and the forum establishing that the maintenance of the suit does not offend the notions of fair play and justice. 32. In Cybersell Inc case (supra) the question was whether the alleged infringing use of a service mark on a homepage on the WWW suffices for personal jurisdiction in the state where the holder of the mark has its principal place of business. In this case Cybersell Florida was alleged to have infringed the mark of Cybersell Arizona which advertised for commercial services over the Internet. It was observed inter alia, that no court has ever held that an Internet adver ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the court is challenged by the defendant, the burden lies on the plaintiff to come forward with sufficient facts to establish that the jurisdiction is proper. In support of this contention, learned Counsel placed reliance on the judgment in Berthold Types Limited v. European Mikrograf Corporation 102 F. Supp. 2d. 928 where the defendants argued in their motion to dismiss that Illinois does not have personal jurisdiction over them but the plaintiff claimed that the defendants are subject to personal jurisdiction based on the Illinois 'long arm' statute. It was observed that the plaintiff has the burden of demonstrating that personal jurisdiction exists. 36. Insofar as the aspect of this court having personal jurisdiction over defendants 1and 2 is concerned, learned Counsel for the plaintiff referred to the judgment in Compuserve Inc. v. Patterson 89 F. 3d 1257 6th Cir. 1996. It was observed in this case that personal jurisdiction may be either general or specific depending on the nature of contacts in a given case. It was observed that in this case the plaintiff sought to establish specific personal jurisdiction over the defendant. The court observed that the crucial federa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... his conduct the injury would not have occurred. The claims of the plaintiff were held to have arisen out of the defendants California related activities. It was thus found that the district court properly exercised personal jurisdiction over the defendant. 38. Learned Counsel for the plaintiff contended that defendant No. 1 has more than sufficient minimum contacts in India for personal jurisdiction to be exercised by this court. It was contended that the plaintiff has enormous goodwill and reputation in India and the goodwill of the plaintiff is being damaged in India. Also, the mark has been diluted in India. Learned Counsel further submitted that the website of defendant No. 1 is an active one which permits subscribers from India to subscribe to its services. In this behalf, learned Counsel referred to the "subscribe" section of the impugned website which provides a form for subscription to services provided by defendant No. 1's website. The options under the head 'Country' include 'India'. The website can not only be accessed from but also subscribed to from Delhi and it is thus contended that defendant No. 1 is carrying on business for profit or ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... penstance, the defendant's domain name was appropriating NZ post's goodwill at least in New Zealand. 44. Learned Counsel referred to the provisions of Section 20 of the said code to contend that this court has jurisdiction in the present matter. The said provision reads as under: 20. Other suits to be instituted where defendants reside or cause of action arises. Subject to the limitations aforesaid, every suit shall be instituted in Court within the local limits of whose jurisdiction- (a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or (b) any of the defendants, where there are more than one, at the time of the commencement of the suit actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or (c) the cause of action, wholly or in part, arises. ... [Explanation].-A corporati ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 39; statute as such which deals with jurisdiction as regards non-resident defendants. Thus, it would have to be seen whether the defendant's activities have a sufficient connection with the forum state (India); whether the cause of action arises out of the defendant's activities within the forum and whether the exercise of jurisdiction would be reasonable. 48. I am in agreement with the proposition that the mere fact that a website is accessible in a particular place may not itself be sufficient for the courts of that place to exercise personal jurisdiction over the owners of the website. However, where the website is not merely 'passive' but is interactive permitting the browsers to not only access the contents thereof but also subscribe to the services provided by the owners/operators, the position would be different. However, as noticed in the judgment in CyberSell Inc. case (supra), even where a website is interactive, the level of interactivity would be relevant and limited interactivity may also not be sufficient for a court to exercise jurisdiction. In Panavision International LP case (supra), it was found that the registration of the plaintiff's mark as ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d be in India. Further, the alleged damage that may have arisen or may be likely to arise to the plaintiff would be as a consequence of the fact that the impugned website is accessible in India and the services provided can be availed of in India. 51. The result of the aforesaid is that the defendant is carrying on activities within the jurisdiction of this court; has a sufficient contacts with the jurisdiction of the court and the claim of the plaintiff has arisen as a consequence of the activities of defendant No. 1 within the jurisdiction of this court. This court can thus exercise personal jurisdiction over the defendants. Forum convenience 52. The second aspect to be considered in determining whether an anti-suit injunction can be granted is which of the available forums is the forum convenience for the dispute at hand. It is the stand of defendant No. 1 that this Court is not the forum convenience for dealing with the present case. It is the case of defendant No. 1 that the said defendant is entirely based in the United States and thus it is the District Court at Arizona, which is the convenience forum to be approached for claiming reliefs. 53. Learned senior counsel for ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ay. vi. If, however, the court concludes that there is some other forum, which prima facie is more appropriate for the trial of the action ordinarily a stay will be granted unless there are circumstances by reason of which justice requires that a stay should nevertheless not be granted. In this enquiry, all the circumstances of the case are to be considered which include circumstances which go beyond those taken into account while considering factors connected with other jurisdictions. For instance, where it is established objectively by cogent evidence that the plaintiff will not obtain justice in the forum jurisdiction. 54. Learned senior counsel referred to the judgment of the Supreme Court in Kusum Ingots & Alloys Limited v. Union of India and Anr. 2004(186)ELT3(SC) to advance the proposition that even if a small part of the cause of action arises within the territorial jurisdiction of the High Court, the same by itself may not be considered to be a determinative factor compelling the High Court to decide the matter on merits. In appropriate cases, the Court may refuse to exercise its discretionary jurisdiction by invoking the doctrine of forum convenience. 55. In ONGC v. U ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or where there are more than one such person any of them, actually and voluntarily resides or carries on business or personally works for gain. Explanation.- For the purpose of Sub-section (2), "person" includes the registered proprietor and the registered user. 58. Learned Counsel for the plaintiff referred to the judgment of learned single judge of this court in Surbhi Kumar v. Nitin Kumar and Ors. CS(OS) 2047/2006 decided on 12.03.2007 wherein in the interim application filed, the relief prayed for was restraining the defendant from proceeding with the divorce petition filed before the Superior Court of the State of California, County of San Diego, USA pending disposal of the suit. The plaintiff had initially participated in the proceedings in California and thereafter filed a suit in India. It was found that the plaintiff had ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ave sufficient contacts with the jurisdiction of this court. Defendant No. 1 as per its written statement is based in Delaware(USA) and defendant No. 2 as per the website print outs placed on record has offices in Los Angeles, China and Delhi (India). It may be noticed that the website of defendant No. 2 no more displays the address in India. Thus, even defendants 1 & 2 are not based in Arizona where the subsequent suit has been filed by defendant No. 1. The plaintiff company is based entirely in India with its offices at New Delhi. Thus, neither the plaintiff nor defendants 1 & 2 have any connection with Arizona. It is only defendant No. 3, the Registrar of Domain Names, which is a proforma party, which has its offices at Arizona. Moreover, the claim of the plaintiff has arisen as a result of the fact that the impugned website is accessible in India and any injury alleged to have been caused to the goodwill and reputation of the plaintiff would be in India. 62. It may be noticed that the fact of filing of the suit in Arizona District Court was not disclosed by defendant No. 1 in this Court either in its written statement or in the reply to the application under Order 39 Rules 1 & ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... me, and delivers them worldwide via broadband, to any web enabled device- PCs, Laptops, PDA's and Cell Phones. The company claims that India TV Live does not directly compete with broadcast, satellite and cable television, but is expected to become an additional platform to provide on the go news, information pertaining to business and investment and entertain. ... 67. Learned Counsel referred to the website of Archer Media, where, in the section entitled "About Us", it has been stated inter alias that Archer Media is a vertically integrated global entertainment and media company and its interests are exclusively focused in China, India and the United States. The website of Archer Media in the section entitled "Contact US" provides addresses in China, India and the United States and the Address provided for India is Shama Broadcast Contents and Services Pvt. Ltd , D-47 Gulmohar Park Delhi. Learned Counsel pointed out that the address herein is the same as the address of Sh. K. N. Gupta, who has signed the written statement filed by defendant No. 1. The plaintiff has thus contended that defendant No. 1 is a division of defendant No. 2. 68. It may be not ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... infrastructure leveraging existing Internet assets and resources providing a secure, complete, end-to-end digital solution positioned to capture the global audience. IBL, INC members have extensive experience in content production, aggregation, acquisition, distribution and delivery of entertainment product in addition to talent management and studio administration. IBL currently operates this Web site. 71. Learned Counsel for the plaintiff contended that all available public documents show the relationship between defendants 1 & 2. It is alleged that the fact that these documents find mention in the letter dated 30.10.2006 indicates an attempt to create evidence to escape liability. The fact that defendant No. 1 shares a strategic relationship with defendant No. 2 was mentioned on the website of defendant No. 1 itself and not only of defendant No. 2. 72. It may also be noticed that the articles filed by defendant No. 1 along with is 1366/2007 also support the contention of the plaintiff that there is some connection between defendants 1 and 2. In the article entitled "Archer Entertainment Joins India Minister of Overseas affairs in launching indiatvlive.com" (http://i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on under Order 39 Rule 4 shows a connection between defendants 1 and 2. 75. It may however be noticed as pointed out by learned Counsel for the plaintiff that subsequently the "About Us" section of the website of defendant No. 1 was amended and Archer Media is no more mentioned therein. The website of defendant No. 2 has also been amended subsequently and the contact address for India has been omitted. It cannot be disputed that there was a connection between defendants 1 and 2. The copies of emails filed with the affidavit of Sh. K.N. Gupta merely show that defendant No. 1 demanded that defendant 2 cease and desist from making any statement that it is the owner of defendant No. 1 or as to the operations of defendant No. 1. These emails do not clearly show that there has been any severance of ties between defendants 1 and 2 and when such severance if any took place. There is no other material on record which shows severance of ties between defendants 1 and 2. There is no material on record which shows the nature of the relationship between defendants 1 and 2 besides the affidavit of Sh. K.N. Gupta in which the stand taken is that defendant No. 2 is a venture capital comp ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present. ... (i)Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant. 80. Learned Counsel for the plaintiff placed reliance on the judgment of the learned single Judge of this Court in Citi Corporation and Anr. v. Todi Investors and Anr. 2006 (33) PTC 631 in support of the proposition that online resolution does not offer a complete alternative to passing off actions. In this case, the Court considered that the '.IN' Domain Name Dispute Resolution Policy (INDRP) for inquiring whether the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd (2004) 28 PTC 566. It was observed in this case that a domain name is used as a business identifier to identify and distinguish the business itself or its goods and services and to specify its corresponding online Internet location. The court observed at para 11 as under: The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet has developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site. In the commercial field, each domain-name owner provides information/services which are associated with such domain name. Thus a domain name may pertain to provision of services within the meaning of Section 2(1)(z). A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the internet to find websites ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e Registrar of Trademarks and Anr. AIR1977Cal413 which involved the trademark 'SIMLA' in respect of manufactured tobacco (cigarettes). Some relevant observations in respect of the registration of geographical names as trademarks are as under: 25. A geographical name according to its ordinary signification is such mark inherently or otherwise incapable of registration subject to such minor exceptions in regard to other aspects as noticed in judicial decisions referred hereinafter. In Corpus Jurisdiction Vol. 63 (1933 Edn.), in Chapter of Trade Marks etc. Article 53 (pp. 356-7) it is stated: Geographical terms and words in common use to designate a locality, a country, or a section of country cannot be monopolised as trade marks; but a geographical name not used in geographical sense to denote place of origin, but used in an arbitrary or fanciful way to indicate origin or ownership regardless of location, may be sustained as a valid trade mark. According to Section 9 Sub-section (1) Clause (d) of our Act, a trade mark for registration in 'A' part of the Register must contain one or more words having no direct reference to the character or quality of the goods an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e (supra) in which registration was sought for the trademark 'Liverpool' in both parts A and B of the trademark register. It was held that the name of an important commercial centre as Liverpool, even though it may in fact be distinctive of the goods in respect of which it is sought to register is not registrable. 88. In the Matter of Sir Titus Salt, Bart., Sons and Co. s' Application XI. (1894) 26 RPC 518, the mark sought to be registered by the applicants was 'Eboline' for silk piece goods. It was observed that 'Eboline' is the name of an Italian town and the mere addition of the common English Termination 'ne' is not sufficient to make this word an invented word. What the Act requires is that the word should be an invented word in fact and not merely in the belief of the person claiming to register it as a trademark. It was further held that the prohibition extends to a noun substantive, the adjective as well as to the name of a place to which an ordinary English suffix has been added so as to impart to it an adjectival form. The object of the legislature was observed to be of preventing a trader from acquiring a monopoly in the name of a pla ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t Tiles and Marble Private Ltd. case (supra) and 'HINDUSTAN' in respect of radiators in Hindustan Radiators Co. v. Hindustan Radiators Limited 1987 PTC 73 and 'CHAMBAL' in Geepee Ceval Protiens & Investment Private Limited case (supra). 93. The legal position as set out in the various judgments referred to by learned Counsels for the parties is that ordinarily geographical names are incapable of registration as trademarks. The rule has however been relaxed in respect of small and insignificant places or where there is no geographical significance of the mark. (Imperial Tobacco Company of India case (supra). Even if the name may be distinctive of the goods in respect of which it is sought to be registered, registration of a geographical name may be refused, as was the case in Liverpool Electric Cable Co Ltd. case (supra). The addition of an ordinary English suffix to a geographical name may not be sufficient to to permit registration of the word as a trademark (Sir Titus Salt, Bart Sons and Co's Application case [supra]). 94. It must however be borne in mind that, the present action as was the case in Hi Tech pipes case (supra), is really in the nature of an ac ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e channel of the plaintiff was launched only in March 2004. Learned senior counsel, thus, contended that since the registration was sought even prior to the launch of the plaintiff's channel, the plaintiff cannot claim that they achieved distinctiveness at that stage. It was further contended that it is claimed in paragraph 6 of the plaint that the plaintiff started using the mark since 1.12.2002, there is no evidence on record in support of the same. There is also no plea regarding how the mark acquired distinctiveness prior to the date of the application. In the case of Hi-Tech Pipes case (supra) referred to by the plaintiff, registration was applied for nine years after the first use of the mark and thus it was pleaded that the mark has achieved distinctiveness. 98. As noted earlier the plaintiff in the present action is not seeking registration of the mark. Thus, the court is not to determine whether or not the mark is capable of registration and has to only look into the aspect whether the mark has acquired a secondary significance which entitles it to protection in an action for passing off. Any objections as regards registration would have to be raised by the said defen ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... any combination with any prefix or suffix whatsoever. Learned senior counsel for the defendant proposed that this may be done by displaying a disclaimer prominently on the website of defendant No. 1 which would clearly show that the said website has no connection with the plaintiff company or the plaintiff's channel. In support of this contention reliance was placed on the judgment of the Apex Court in West inn Hospitality Services Ltd. v. Ceasar Park Hotels & Resorts Inc 1999 (19) PTC 430 wherein the petitioner was permitted to use the word 'Westinn' as part of its corporate name with the rider that the letterheads, advertisements etc of the petitioner company would contain the words- "NO CONNECTION WHATSOEVER WITH WESTINN HOTELS AND RESORTS". It is thus contented that use of the mark as part of a corporate name can be permitted if it is used with a disclaimer clearly showing that there is no connection with the mark of the complainant. 103. Learned Counsel for the plaintiff on the other hand, in this regard referred to the judgment of the Supreme Court in Registrar of Trademarks v. Chandra Rakhit Ltd. [1955]2SCR252 in which it was observed that "if the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... placed on the impugned website would convey to the browsers that the website has no connection with the plaintiff company or services provided by them. Once the person browsing is aware of the fact that there is no connection between the impugned website and the plaintiff company, if he chooses to subscribe to the services being provided by defendant No. 1 he would not be doing so under any misconception or confusion. As the person visiting the impugned website would immediately become aware that the impugned website is not the website of the plaintiff, if he still consciously chooses to subscribe to the services, he cannot really be prevented from doing so. 106. As far as the creation of initial confusion is concerned any such confusion that may initially arise would be dissipated as soon as the browser visits the website as a disclaimer would be clearly displayed therein. It is not that there would be any time gap between accessing the website and discovering that the same is not that of the plaintiff. The impugned website does not carry the logo of the plaintiff or any other misleading information. Thus, defendant No. 1 may be permitted to continue operating the website with a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... not proceeded for similar reliefs. The court found that there is neither any occasion or immediate necessity for the plaintiff to proceed against those domain names as the same were either non functional or non relatable to the plaintiffs business. It was held that the plaintiff cannot be denied relief and an injunction only because it has not proceeded against other similar names. Further it was noted that if two contesting parties are involved in the same area or similar line of business, there is grave and immense possibility for confusion and deception. 109. Learned Counsel further contended that even if words are descriptive in nature, if they are identified with the business of the plaintiff, protection may be given to combination though individually the words may not be permitted to be monopolized. In Living Media India Ltd. v. Jitender v. Jain and Anr. 2002 (25) PTC 61 (Del), the plaintiff was the producer of a news program under the name and style of "AAJ TAK" while the defendants had adopted the name Khabarein "AAJ TAK" in respect of newspapers. The mark used by the defendant was found to be the exact reproduction of the mark of the plaintiff. In this ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... protected. 112. In Online India Capital Co. Pvt. Ltd and Anr. v. Dimension Corporate (2000) V AD (Del) 860, the plaintiff company was running the website "www.mutualfundsindia.com" while the defendant had created a similar website "www.mutualfundindia.com". The contention was that "mutual fund" is a generic term and no monopoly can be claimed in relation thereto by any person. It was observed that the expression "mutual funds" forming part of the plaintiff's domain name is the description of the services being offered by the plaintiff. The material placed on record failed to show that the said expression had acquired a secondary meaning which is a precondition for grant of protection to a descriptive name. It was thus held that no prima facie case was made out for the grant of interim injunction prayed for by the plaintiff. 113. In this behalf reference was also made to the judgment of a learned single judge of this court in Manish Vij and Ors v. Indra Chugh and Ors. AIR 2002 Del 243 which was again a case concerning similar domain names. The plaintiff was the proprietor of a website dealing with second hand goods on the Internet under ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... erred to judgment in J.R. Kapoor v. Micronix India 1994(3)SCALE732 wherein the mark of the appellant was 'MICROTEL' while that of the respondent was 'MICRONIX'. The court observed that the word 'MICRO' is being descriptive of the micro technologies used for the production of many electronic goods which daily come into the market no one can claim monopoly over the use of the said word. Anyone producing a product with the use of microchip technology would be justified in using the said word as a prefix to its trade name. Similarly, in Kewal Krishan Kumar v. Kaushal Roller Flour Mills Pvt. Ltd. PTC (suppl.) (1) 217 (Del.) learned single Judge of this Court (as he then was) observed with regard to the word 'SHAKTI' which formed part of both plaintiff's and defendant's trademark that prima facie it appears that the term 'SHAKTI' is commonly used in business parlance as would appear from the few pages of the telephone directory produced in the present case and the word 'MAHASHAKTI' is descriptive in nature. The words 'SHAKTI BHOG' are also descriptive. The Court referred to the case of F. Hoffmann La. Roche & Co. Ltd. v. Geo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ected despite applying the dictum in Office Cleaning Services Limited case (supra). 118. In Berkeley Hotel Co. Ltd. case (supra), the plaintiffs were the owners of a first class hotel by the name of Berkeley Hotel in Berkeley Street, prior to its demolition and were in the process of constructing another hotel by the same name at a new site. The defendants had also started a hotel in Berkeley Street by the name of Berkely International. While it was contended that the name Berkeley being a geographical name the court should accept small differences to avoid confusion, it was held that although the name has a geographical element, the same is primarily distinctive of a particular hotel entity. It was further observed that it is intended to say that the plaintiff company has obtained such a monopoly in the word Berkeley as to prevent its use in any combination of words for a hotel in Berkeley Square or Berkeley Street however, the word Berkeley with this particular suffix (International) is likely to cause confusion. 119. In Computer Vision case (supra) it was observed that even if the words 'Computer Vision' can be regarded as ordinary descriptive words, the question still ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ection was not granted to domain names comprising generic words, which were descriptive of the services being provided by the concerned parties. It may, however, be noticed that in both these cases it has been observed that there was absence of material or the material placed on record was insufficient to show that the marks had acquired any secondary meaning which is a 'precondition' for granting protection to descriptive names. Bhartiya Coffee Workers Catering Service Pvt. Ltd. case (supra) was again concerned with the descriptive mark but the same was being used by all co-operative societies of former employees of the Coffee Board and thus could not be identified with the particular service provider as such. 124. Learned senior counsel for defendant No. 1 has contended that by the addition of a suffix 'LIVE' the mark of the said defendant has been rendered different from the mark of the plaintiff as was the case in Digital City Inc. case (supra). Learned Counsel for the plaintiff, however, contended that in the judgments in Computer Vision case (supra) and Berkeley Hotel Co. Ltd. case (supra) protection is granted even where the infringing marks contained differ ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ;Jump TV" with whom the plaintiff entered into an agreement and which is a competitor of defendant No. 1 in the IPTV (Internet Protocol Television) segment. 130. Learned Counsel for the plaintiff in this regard submitted that the contention of defendant No. 1 is baseless as the Agreement entered into between the plaintiff and JUMP TV is dated 8th August 2006 and was thus entered into prior to the launch of the website of defendant No. 2. Thus, it cannot be contended that the suit has been initiated merely because of the agreement with the competitor. 131. The portions of the agreement with "JUMP TV" filed by learned Counsel for the plaintiff shows that the agreement with "JUMP TV" was entered into on 08.08.2006. There is no dispute that the website of defendant No. 1 was launched on 17th August 2006. Thus, the agreement entered into with JUMP TV was prior to the launch of the website of defendant No. 1. However the website was inaugurated in Anaheim, California on 29.06.2006 as per the articles placed on record by defendant No. 1. 132. No evidence has really been placed on record at this stage which indicates that the plaintiff was aware of the launch of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ise strong. On an ex parte application even delay of a few days can be critical. Unjustified delay of more than a few months is almost always fatal to the plaintiff's case, even though delay of this order has no effect on the plaintiff's rights at trial. Unlike many of the issues which can arise on motion, the existence of delay does not normally admit or much argument. Delay, if present, is Therefore a short, safe and simple basis for refusing relief. This means that applications for interlocutory injunctions in which there is significance delay are unlikely even to get as far as a hearing, and those that do are quite likely to be refused without going into the merits or the balance of convenience. 136. Learned Counsel for the plaintiff submitted in this behalf that there is only one article on record from the print media being a news clipping from the Financial Express dated 21.08.2006 which mentions that the website of defendant No. 1 will be launched. The other articles regarding the launch of defendant No. 1's website are from various sources on the Internet. It is thus contended that the plaintiff could not have been expected to know of the launch of defendant No ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... about a year before the action was brought. 140. In the present matter the plea of the plaintiff is that they came to know of the defendants website only in January 2007. The press clippings, articles etc placed on record by defendant No. 1 regarding the launch of their website as pointed out by learned Counsel for the plaintiff are mostly from different websites and the only article from the print media is a small clipping. I am in agreement with the contention of learned Counsel for the plaintiff that the plaintiff could not have been expected to know about the launch of defendant No. 1's website from these materials alone. 141. There is no other material on record at this stage to show that the plaintiff was aware of the launch of the website of defendant No. 1 prior to January 2007 when it is claimed that the plaintiff came to know of the website of defendant No. 1 and when the present suit has been filed. Thus, it cannot prima facie be said that there was excessive delay on the part of the plaintiff in bringing the present action for passing off. Conclusion 142. The result is that is 2611/2007 stands allowed and defendant No. 1 is restrained from proceeding with the s ..... X X X X Extracts X X X X X X X X Extracts X X X X
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