The Delhi High Court has granted ADOBE an ex-parte injunction in a trademark infringement case against Namase Patel, who had registered the domain names www.addobe.com and www.adobee.com for computer software and other IT services.
The plaintiff claimed that the defendant had registered the Infringing Domains for several years, so engaged in wholly illegal behaviour.
Justice Pratibha M Singh examined the Defendant's list of domain names as well as different orders issued by the US National Arbitration Forum and other judicial bodies, concluding that the Defendant appeared to be a regular cyber squatter who registered a variety of domain names.
On behalf of the plaintiff, it was argued that Namase Patel, Defendant No. 1 in the case, was a habitual registrant of variations of well-known trademarks and that the Arbitral Forum had issued several orders against him as part of the ICANN's Uniform Domain-Name Dispute-Resolution Policy proceedings (UDRP).
It was claimed that, despite the fact that the Infringing Domains were registered in 2004, the Plaintiff only discovered the use of the Infringing Domains when some emails intended for internal distribution were discovered to have been received by the Defendants due to a spelling error made by the sender of the emails.
The Court was informed that the forensic audit, which was done after the emails did not bounce back to the sender, indicated that Defendant No.1 had used an infrastructure platform owned by WWW.ABOVE.COM, which was an IT infrastructure company, to host Infringing Domains.
“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 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.
According to paragraph 4(a)(iii) of the UDRP, such registrations of well-known trademarks as domain names constitute bad faith registrations.
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."
As a result, the Court issued the following orders:
- Defendant No. 1 and anybody acting on his behalf are prohibited from using the Infringing Domains www.addobe.com and www.adobee.com, as well as from registering any domain name that comprises the Plaintiff's trademarks 'ADOBE', 'PHOTOSHOP', 'SPARK' or any derivatives thereof.
- As a result, Mumbai Police's Cyber Cell has been directed to conduct an investigation and file a status report on the individual(s) who have registered the Infringing Domains www.addobe.com and www.adobee.com, as well as those using the email address namasepatel@yahoo.co.in.
- If the need arises, the Mumbai Police can use the services of any other police authority in another city. For the purpose of filing the status report, a copy of the present order should be provided to the Commissioner of Police, Mumbai, at the email address cp.mumbai@mahapolice.gov.in. If necessary, Ld. Counsel for the P laintiff will perform the necessary follow-up.
- The ISPs, Defendant Nos. 2 through 10, are ordered to immediately ban the Infringing Domains, www.addobe.com and www.adobee.com.
- Defendant No.11 is required to issue urgent instructions to prohibit the Infringing Domains, namely www.addobe.com and www.adobee.com.
- The contact information for the individual who registered the Infringing Domains www.addobe.com and www.adobee.com must be disclosed to the Court by Defendant No.12. The aforementioned Infringing Domains, www.addobe.com and www.adobee.com, will be prohibited immediately, and the status quo will be preserved until the next hearing date. The domain names in question are not transferable.
- Defendant No.13, WWW.ABOVE.COM. which hosts Defendant No.1's email/domains on its catch-all email configuration, shall suspend the said services q ua Defendant No.1 and shall also disclose to this Court the contact details of the person using the email address namasepatel@yahoo.co.in or any other person who has used WWW.ABOVE.COM's catch-all email configuration services.
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