HT Media secures an ‘anti-suit’ and an ‘ex-parte’ injunction restraining a US-based company

by mehtaip, posted in Abhilasha Niroola, Ankush Mehta, anti-suit, Bombay High Court, Domain Name, Hindustan Times, Injunction, Mehta & Mehta, Mehta & Mehta Associates, MehtaIP, Trademark

In a recent order, passed by the Delhi High Court, an ‘Anti Suit Injunction’ was granted to HT Media Limited & Anr. (“Plaintiffs”) and a US-based Brainlink International Inc. and Mr. Raj Goel, owner of the defendant no. 1,  (collectively “Defendants”) were restrained from using the domain name “www.hindustan.com” or any other mark similar to “Hindustan” and “Hindustan Times”. The hearing of the present matter was conducted through video conferencing during the COVID-19 lockdown in India.

In the present matter, Plaintiffs were successful in making out a prima facie case for grant of an anti-suit injunction and obtaining an ex-parte injunction and establishing that the domain name registration of the Defendants was in bad faith (as defined under Clause 4 of the Uniform Dispute Resolution Policy) as they were neither using the Domain name for any legitimate activity and also appear to have registered the same with the intention of earning monetary benefit.

The Plaintiff alleged and contended that Defendants were infringing and cybersquatting, in violation of the Plaintiffs’ Trademark rights in their Marks “Hindustan” and “Hindustan Times”. In this regards, the Plaintiffs had earlier issued a cease and desist notice to the Defendants to acquire the Domain name, but the Defendants quoted an exorbitant amount of US $ 3 million in their reply to sell the said Domain name. When the Plaintiffs responded with a counter offer, Defendants 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 view of the aforesaid background and facts, the Delhi High Court made the following observations and held that:

  • Traversing the law, relating to the jurisdiction of the Court, and looking to the facts of the case, the Court was of prima facie opinion that Court had personal jurisdiction over the Defendants. Here the Court relied upon the provisions of Section 134(2) of the Trade Marks Act, 1999 (which provides that in cases of infringement of Trademark, the Plaintiff can institute a Suit within the jurisdiction of the Court where it “carries on business”) and the fact that the exact details of the actual Registrant of the domain name were not traceable but it was clear that the owner of the Defendant no. 1 / Company is one Mr. Raj Goel, of Indian origin.
  • The Court observed that, 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.
  • The Court further made an interesting observation that the Defendant’s bad faith is also prima facie borne out from the fact that their offer price for the impugned Domain name increased to US $ 3 million when the Plaintiffs approached the Defendants to buy the same, as opposed to quote of US $ 1 million, when approached by one of the investigators of the Plaintiffs. The conduct of the Defendants in quoting an exorbitant amount to sell the impugned Domain name to a Trademark owner or to a third party was evidence of bad faith. 
  • The Court held that the Plaintiffs were able to establish balance of convenience in their favour and satisfy that unless ex parte injunction is granted at this stage, they would be put to substantial hardship and would be unnecessarily required to enter defence in those proceedings.
  • The Court also held that, “…. 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.”
  • The Court restrained the Defendants and/or anyone acting for or on their behalf from, in any manner, using directly or indirectly, the Domain name http://www.hindustan.com or any other mark identical/deceptively similar to the Plaintiffs’ Trademarks “Hindustan‟ and “Hindustan Times”, amounting to infringement of the Plaintiffs’ registered Trademarks or Passing Off, till the next date of hearing.
  • The Court restrained the Defendants from creating any third party rights in the impugned Domain name www.hindustan.com and further directed the Registering authority of the said Domain name to block the said Domain name and maintain status quo, till the next date of hearing.
  • The Court also directed that Defendants, their agents and representatives are restrained from proceeding further with the suit titled Brainlink International, Inc. v. HT Media Ltd. and Another (Civil Action No.1 20-cv-01279) before the United States District Court for the Eastern District of New York or to institute/file any suit, applications, proceedings in any Court of Law or Authority, in relation to the impugned Domain name or in relation to any issue which forms the subject matter of the present Suit, till the next date of hearing.

Contributor(s)

Contributor to present post is Ankush and Abhilasha.

Disclaimer: 

Views / opinions expressed in present update are solely that of the contributor(s) and are for explanatory / update / informational purposes only and which cannot be quoted in any legal proceedings and will have no legal purpose. Further, same may vary from time to time and case to case. It is neither intended to advertise nor solicit the Firm in any way whatsoever, nor is it purported to create an attorney-client privilege communication. For any clarification and further information, you may contact us at mehta@mehtaip.com.