The Delhi High Court recently granted an anti-suit injunction in HT Media Ltd v. Brainlink International in an ex-parte interim injunction proceedings. Part I of this two part post shall summarise the judgment. Part II shall critically analyse the judgment.
The plaintiff owns the trademarks “Hindustan” and “Hindustan times” under Class 16 and Class 38. The defendant owns the domain name http://www.hindustan.com. The negotiations between the plaintiff and the defendant for handing over the domain name were not successful. In the instant suit, the plaintiff sought permanent injunction against the defendant from using the domain name http://www.hindustan.com or any other mark which is identical or deceptively similar to the plaintiffs’ trademarks. (para 8)
Meanwhile, the defendant, which is based in United States, had filed a declaratory suit for non-infringement before the United States District Court for the Eastern District of New York (Brainlink International, Inc. v. HT Media Ltd. & Anr. (Civil Action No.1 20-cv-01279). In the instant suit before the Delhi High Court, the plaintiff sought permanent injunction against the defendant from proceeding with this suit in United States (para 9 and 18).
The Court held it to be a case of cyber squatting. The following legal and factual aspects were considered:
- It is a settled legal position that a trademark can be infringed by a domain name. (para 27, citing Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145)
- When the plaintiff expressed its willingness to acquire the domain name of the defendant, the defendant quoted an amount of USD 3 million (para 38)
- The entire conduct of the defendant evinces mala fide (paras 37, 38, 43)
- The defendant has not been using the domain name since 2000 (para 37)
The Court relied on the Supreme Court judgment in Modi Entertainment Network & Another v. W.S.G. Cricket Pte. Ltd., where the court laid down the criteria for granting anti-suit injunction. The Court relied on its own judgment in India TV, Independent News Service Pvt. Ltd. v. India Broadcast Live LLC & Ors., (“50. Insofar as the position in this country is concerned, there is no long arm’ 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.”) and held that the defendant is amenable to the personal jurisdiction of the court. In short, the court embraced the “effects doctrine” i.e. if the effects of the conduct of the defendant are felt in India, then the Indian court can exercise jurisdiction.
The court examined as to how the now-inaccessible website of the defendant would confuse the consumers in India and damage the reputation of the plaintiff (para 39, 40). Since cause of action arose in Delhi (implying that the effects of the conduct of the defendant were felt in Delhi where inter alia the plaintiff has its registered office), the Delhi High Court can exercise jurisdiction vide Section 20 (c) of CPC. The Court, thus, concluded that it has prima facie personal jurisdiction over the defendant (paras 41 and 42).
Based on the following finding, the Court granted interim injunction and anti-suit injunction in favour of the plaintiffs:
“43. Insofar as infringement of the Trademarks is concerned, from the correspondence on record, it is clear that the Domain name registration of the Defendants is in Bad Faith, as defined under Clause 4 of the Uniform Dispute Resolution Policy, as the Defendants are neither using the Domain name for any legitimate activity and also appear to have registered the same with the intention of earning monetary benefit. Owing to the Registered Trademarks owned by the Plaintiffs and the reputation and goodwill enjoyed by the said Marks, which is not restricted merely to India but is global, as also the fact that the Domain name is registered in “Bad Faith‟, the Plaintiffs are entitled to an interim injunction from further use of the Domain name http://www.hindustan.com.
44. This Court is also of the prima facie opinion that the Suit before the Eastern District of New York, is vexatious and oppressive, as the Plaintiffs have not asserted Trademark rights in USA. The Trademarks of the Plaintiffs are registered in India and the Plaintiffs‟ goodwill spills over Internationally. But the Plaintiffs do not carry on any business in USA. Defendants had offered to sell the Domain name to the Plaintiffs at a price of US $ 3 Million but once unsuccessful, in the attempt to profiteer, they filed a suit for Declaration in order to further their intention to frustrate the Plaintiffs from availing of their remedies. The filing of the suit is also an attempt to legitimise the alleged infringement action of the registered Trademarks of the Plaintiffs. Plaintiffs have made out a prima facie case for grant of an anti-suit injunction before this Court.“