The Delhi High Court has granted ex-parte injunction in favour of ADOBE in a trademark infringement suit against one Namase Patel, who had registered the domain names www.addobe.com and www.adobee.com in respect of computer software and other IT related services.
The plaintiff alleged that the defendant concerned had registered the Infringing Domains thereby engaging in completely illegal conduct for the last several years.
Justice Pratibha M Singh perused the list of domain names of the Defendant and various orders passed by the US National Arbitration Forum and other arbitral institutions and was of the view that the same clearly showed that the Defendant seemed to be a habitual cyber squatter engaged in registering various domain names.
It was argued on behalf of the plaintiff that Namase Patel, Defendant No.1 in the suit, was a habitual registrant of variations of well known trademarks and that there were several orders passed against him under the proceedings by the Arbitral Forum under the ICANN’s Uniform Domain-Name Dispute- Resolution Policy (UDRP).
It was submitted that though the Infringing Domains were registered way back in 2004, the Plaintiff had discovered the said usage of the Infringing Domains only when some emails, which were meant for circulation within the Plaintiff company, were found to have been received by the Defendants due to a spelling error made by the sender of the emails.
The Court was apprised that the forensic audit, which was conducted when the emails did not bounce back to the sender, revealed that Defendant No.1 had availed of hosting of Infringing Domains on an infrastructure platform owned by WWW.ABOVE.COM which was itself an IT infrastructure company.
“Defendant No.1 has registered the impugned domain names www.addobe.com and www.adobee.com. The said domain names are infringing variants of the Plaintiff’s trade mark ADOBE. A list of domains names, which have been registered by Defendant No.1, has been placed on record, shows that Defendant No.1 has in the past, registered, variations of several well-known trademarks including Under Armour, Christian Dior, AirFrance, Japan Airways, etc,” the Court noted.
The Court was of the view that such registration of well-known trademarks as domain names constitutes bad faith registrations under Paragraph 4(a)(iii) of the UDRP.
At the outset, the Court observed:
“This Court is also convinced that the availing of a catch-all configuration being hosted on WWW.ABOVE.COM, is conduct which is meant to cause harm to the Plaintiff. Defendant No.1 is also stated to be using the subdomains ‘photoshop.addobe.com’ and ‘spark.adobee.com’, whereas ‘SPARK’ and ‘PHOTOSHOP’ are both products of the Plaintiff.”
Accordingly, the Court passed the following directions:
– Defendant No.1 and anyone else acting on his behalf, is restrained from using the Infringing Domains being www.addobe.com and www.adobee.com and further from registering any domain name, which incorporates the Plaintiff’s trademark ‘ADOBE’ or ‘PHOTOSHOP’ or ‘SPARK’ or any other variants thereof.
– Accordingly, directions are also issued to the Cyber Cell, Mumbai Police to conduct an investigation and place on record a status report as to the individual(s), who has registered the Infringing Domains www.addobe.com and www.adobee.com and those using the email id [email protected]
– The Mumbai Police is permitted to use the services of any other police authority in other cities, if the need so arises. Copy of the present order be served upon the Commissioner of Police, Mumbai at the email address [email protected] for filing of the status report. Ld. Counsel for the Plaintiff to do the necessary follow-up, if required.
– The ISPs i.e., Defendant Nos.2 to 10 are directed to block the Infringing Domains i.e., www.addobe.com and www.adobee.com, immediately.
– Defendant No.11 is directed to issue instructions for blocking of the Infringing Domains i.e., www.addobe.com and www.adobee.com, immediately.
– Defendant No.12 shall disclose to the Court the contact details of the person, who has registered the Infringing Domains www.addobe.com and www.adobee.com. The said Infringing Domains i.e., www.addobe.com and www.adobee.com, shall be blocked immediately and status quo shall be maintained till the next date of hearing. No transfer shall be permitted of the said domain names.
– Defendant No.13, WWW.ABOVE.COM which is hosting Defendant No.1’s email/domains on its catch-all email configuration, shall suspend the said services qua Defendant No.1 and shall also disclose to this Court the contact details of the person, who is using the email address [email protected] or any other persons who have availed of catch-all email configuration services from WWW.ABOVE.COM.
Case Title: ADOBE, INC v. NAMASE PATEL AND OTHERS
Citation: 2022 LiveLaw (Del) 208
