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The Delhi High Court has restrained a New York-based Corporation from proceeding further with a suit preferred by it against HT Media before a United States District Court in relation to a domain name dispute. (HT Media vs Brainlink International, Inc)
The Court has also restrained the Corporation from using, directly or indirectly, the domain name www.hindustan.com or any other mark identical/deceptively similar to HT Media's trademarks 'Hindustan' and 'Hindustan Times' till the next date of hearing.
The interim order was passed by a Single-judge bench of Justice Jyoti Singh in a suit filed by HT Media Ltd (Plaintiff).
Apart from the plea to permanently restrain Brainlink International (Defendant) from exploiting its trademarks ‘Hindustan’ and ‘Hindustan Times’, the Plaintiff also sought issuance of an anti-suit injunction in connection with a suit titled Brainlink International, Inc. v. HT Media Ltd. & Anr. before the United States District Court for the Eastern District of New York.
The Plaintiff stated that marks ‘Hindustan’ and ‘Hindustan Times’ fostered an instant association in the minds of consumers with excellent and high standards of reporting and that it enjoyed both Statutory rights under the Trade Marks Act, 1999 as well as common law rights with respect to the marks.
The Plaintiff informed that the Defandant was a New York-based Corporation which engaged in the business of providing IT related support services to its customers, and was also the registrant/owner of the Domain name www.hindustan.com.
It was the Plaintiff’s case that the Defendant was infringing and cybersquatting with respect to the marks ‘Hindustan’ and ‘Hindustan Times'.
The Court was informed that in reply to a cease and desist Notice sent in December 2019, the Defendants quoted an exorbitant amount of USD 3 million and also, surreptitiously filed a Declaratory Suit for non-infringement against the Plaintiffs in the United States District Court for the Eastern District of New York in March 2020.
The Plaintiff contended that the website was purportedly launched in 1996 to provide ‘daily news content relating to Indian – American interests, stock-market reports from India and America and interactive polls daily on Indian – American issues’ but has remained largely unused since 2000.
It was stated that the adoption of a domain name, identical to the Plaintiffs’ Trademarks and to provide identical services as that of the Plaintiffs, showed the mala fides of the Defendant to profit from the goodwill and reputation of the Plaintiff's publications.
Arguing that it was a fit case to restrain the proceedings of a Foreign Court, the Plaintiff stated that the Defendant was amenable to the personal jurisdiction of the High Court as the website of the Defendant could be accessed by viewers within Delhi and Plaintiff was also within the jurisdiction of the High Court.
After hearing the Plaintiff, the Court proceeded to analyse if the grant of anti-suit injunction was permissible in the present case.
Relying on the Supreme Court in Modi Entertainment Network & Another v. W.S.G. Cricket Pte. Ltd., (2003), the Court stated that it had to examine whether the Defendant was amenable to personal jurisdiction of the Court, whether injustice would be caused to the Plaintiff if the injunction was refused and which would be the Forum Conveniens, in case there were more than one Forum available to the Plaintiff.
The Court noted that as evident from the complaint filed by the Defendant in USA, the Defendant had not used the Domain name www.hindustan.com since 2000.
Iterating that mere passive holding of domain name, without any use, evinced bad faith of the Defendant under Clause 4 of the Uniform Dispute Resolution Policy, the Court remarked that the sole motive for registering the domain name appeared to be profiteering and cybersquatting.
Bad faith is also prima facie borne out from the fact that the Defendant increased its offer price for the domain name to USD 3 million when the Plaintiffs approached the Defendants to buy the same, as opposed to quote of USD 1 million when approached by one of the investigators of the Plaintiffs, the Court added.
Keeping view the facts at hand, the Court opined that allowing access to the Defendant's website would lead to erosion of the reputation and goodwill of the Plaintiff and weaken the value and strength of their trademarks.
The Court held that a substantial and integral part of the cause of action in terms of Section 20(c) CPC had arisen within the jurisdiction of the High Court and looking at the case as set out by the Plaintiff, it prima facie also had personal jurisdiction over the Defendants.
Stating that the Plaintiff had made a case of an ex parte injunction, the Court ordered,
While directing the Defendant to not create any third party rights in the domain name www.hindustan.com, the Court restrained the Defendant and its agents from using the domain name- www.hindustan.com, or any other mark identical/deceptively similar to the Plaintiff's till the next date of hearing.
The matter would be heard next on May 29.
HT Media was represented by Advocates Saikrishna Rajagopal, Vivek Ayyagari, Siddharth Chopra, Sneha Jain, Asavari Jain.