Judgment:
$~ * + % IN THE HIGH COURT OF DELHI AT NEW DELHI CS(COMM) 668/2016 YAHOO INC ..... Plaintiff Through: Mr. Pravin Anand, Advocate with Ms. Udita Patra and Mr. Shamim Nooreyezdan, Advocates. versus MR RINSHAD RINU & ORS. Through: None. ..... Defendants Reserved On :
29. h May, 2017 Date of Decision:
03. July, 2017 CORAM: HON'BLE MR. JUSTICE MANMOHAN JUDGMENT
MANMOHAN, J :
1. Present suit has been filed for permanent injunction restraining infringement of trademarks, passing off, dilution and tarnishment, unfair competition, damages or rendition of accounts, delivery up etc. The prayer clause in the suit is reproduced hereinbelow:-
""58. It is, therefore, prayed that this Hon'ble Court may be pleased to grant: the (i) Defendant Nos.1 to 5 from offering services, advertising including on the internet and in any other manner using the Yahoo trademark or any other deceptively similar mark amounting to injunction restraining for permanent An order CS(COMM) 668/2016 Page 1 of 5 for permanent the impugned domain the Registrar of for permanent injunction restraining injunction restraining infringement of the Plaintiff's registered trademark as enlisted in Annexure A of the plaint, specifically Plaintiff's trademark registration nos.1356813, 1420637 and 1311393 in Class 39; the (ii) An order Defendant Nos. 1 to 5, their partners or proprietor as the case may be, their principal officers, servants and agents, group/sister concerns or companies, from passing off their services as that of the Plaintiff; the (iii) An order Defendant Nos.1 to 5, their partners or proprietor as the case may be, their principal officers, servants and agents, from operating the website www.yahookochi.com or any other website incorporating the Yahoo trademark of the Plaintiff; (iv) An order directing the Defendant No.6, GoDaddy.com., LLC, name Any further orders as this Hon'ble Court deems fit and 2. On 20th October, 2015, this Court granted an ex parte ad interim injunction in favour of the plaintiff and against the defendants. The relevant portion of the said order is reproduced hereinbelow:- ""Learned counsel for the plaintiff is pressing for an ex parte ad-interim order. He has referred various orders passed by the Court from time to time, particularly, the order passed by this Court on 4th December, 2014 in CS(OS) No.3444/2012 whereby the domain name of YAHOO has been restrained permanently. In the said order, it was also declared that the mark YAHOO is a well-known trademark. Counsel has also referred various paras of the plaint and the documents placed on the record. I am of the view that the plaintiff has been able to make out a strong prima- facie case for the grant of an ex parte ad-interim injunction. Hence, till further orders, the defendants No.1 to 5 are restrained from using the mark YAHOO in relation to the trademark as well as domain name obtained by them and they are also restrained from using the said trademark in any manner whatsoever in order to create confusion or deception in the trade. Defendant No.6 is directed to suspend the said name within one week from the date of receipt of the order. The interim order shall become operative within one week from the date of service upon the defendants." 3. Since despite service defendants did not enter appearance, they were proceeded ex parte vide order dated 26th October, 2016 and the ex parte interim injunction was confirmed. CS(COMM) 668/2016 Page 3 of 5 4. Mr. Praveen Anand, learned counsel for plaintiff stated that the plaintiff is owner of registered trade mark YAHOO and YAHOO formative trade marks in various classes including Class 39. In support of his submission, he relied upon exhibits Ex.PW 5. Mr. Anand contended that defendants are infringing the plaintiff's trade mark. In support of his contention, he referred to a print out from defendants' website-www.yahookochi.com (Ex.PW1/22). He also referred to photographs of defendants' premises and the business card of the defendants to show that they are using the old YAHOO logo of the plaintiff. The plaintiff's old stylized YAHOO logo as well as the defendants' logo used on their website is reproduced hereinbelow:- "6. Mr. Anand pointed out that a Cease and Desist notice dated 23rd May, 2015 had been sent by the plaintiff to the defendants and in reply the defendants had refused to change their name on the ground that they had spent huge amount of money and time in promoting and advertising the mark in question. 7. Having perused the papers and having heard the learned counsel for plaintiff, this Court is of the view that the services being offered by the defendants fall under Class 39 of the Nice Classification in which the plaintiff has trade mark registration for YAHOO formative marks. The plaintiff also operates various websites under its YAHOO trade mark providing information CS(COMM) 668/2016 Page 4 of 5 on travel and tourism services. 8. This Court is of the opinion that the adoption of the YAHOO mark by the defendants is dishonest as is evident from the fact that the font used by the defendants to represent YAHOO in their trading name is identical to the unique stylized font which the plaintiff used to represents its YAHOO trade mark till 2014. There is also no plausible explanation for the adoption of the identical mark as part of trading name and domain name of the defendants. Further, the defendants cannot have any justification for the adoption of the mark YAHOO. The potentiality of harm is enormous on the internet as the plaintiff has a very wide internet presence and operates various YAHOO formative websites. 9. In any event, as the averments in the plaint have not been rebutted by the defendants inspite of ample opportunities given by this Court, they are deemed to have been admitted. 10. Since the websites of the defendants was operational for six months, the present suit is decreed in accordance with para 58(i) to (v) as well as cost assessed at Rs.4,91,114/-. The plaintiff is also held entitled to compensatory damages of Rs.2 lacs and punitive damages of Rs.3 lacs. Registry is directed to prepare a decree sheet accordingly. MANMOHAN, J JULY03 2017 CS(COMM) 668/2016 Page 5 of 5
to Ex.PW1/18. He stated that plaintiff's trade mark YAHOO is recognized as a well known trade mark and is included in the list of well known trade marks maintained by the Trade Mark Registry.