HT Media Ltd. DHC 2020

SCC Online Web Edition, © 2022 EBC Publishing Pvt. Ltd.
Page 1 Friday, March 04, 2022

Printed For: nidhi gupta, National Law University
SCC Online Web Edition: http://www.scconline.com
© 2022 EBC Publishing Pvt.Ltd., Lucknow.
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2020 SCC OnLine Del 1703 : (2020) 82 PTC 396
In the High Court of Delhi at New Delhi

(BEFORE JYOTI SINGH, J.)
HT Media Limited and Another … Plaintiffs;

Versus
Brainlink International, Inc. and Another … Defendants.
CS (COMM) 119/2020 and IAs 3767-3771/2020
Decided on April 28, 2020
Advocates who appeared in this case:
Mr. Sai Krishna Rajagopal, Mr. Vivek Ayyagari, Mr. Siddharth Chopra, Ms. Sneha
Jain and Ms. Asavari Jain, Advocates
None
The Order of the Court was delivered by
JYOTI SINGH, J.:—
I.A. No. 3770/2020 (exemption)
1. Exemption allowed subject to all just exceptions.
2. Application stands disposed of.
I.A. No. 3769/2020 (exemption from filing court fee and affidavits)
3. In view of the reasons stated in the application, the same is disposed of with a
direction to the applicants to file duly signed and affirmed affidavits and pay the
requisite court fee within a period of one week of lifting of the lockdown.
4. Application stands disposed of.
I.A. No. 3771/2020 (for filing additional documents)
5. This is an application for filing of additional documents. The additional
documents may be filed by the plaintiffs, strictly in accordance with the provisions of
the Commercial Courts Act, 2015. The application is disposed of.
CS (COMM) 119/2020
6. Let Plaint be registered as a Suit.
7. Issue Summons to the Defendants, upon filing of process fee, through all modes
including email.
8. Summons to the Defendants shall indicate that Written Statement to the Plaint
shall be positively filed within 30 days from the date of receipt of the Summons. Along
with the Written Statement, Defendants shall also file an affidavit of Admission/Denial
of Documents of the Plaintiffs, without which the Written Statement shall not be taken
on record.
9. Plaintiffs shall file Replication within 15 days of receipt of the Written Statement,
along with an affidavit of Admission/Denial of documents of the Defendants without
which Replication shall not be taken on record. Parties are permitted to carry out
inspection of any document as per the timeline and procedure prescribed under the
Delhi High Court (Original Side) Rules, 2018.
10. List the matter before the Joint Registrar for marking of Exhibits on 13.05.2020.
11. List before Court on 29.05.2020.
12. The entire paper book as well as a copy of the order passed today would be
served on the Defendants along with the summons.
I.A. No. 3767/2020 (under Order XXXIX Rules 1 & 2 CPC for restraining
infringement of Trademarks) & I.A. No. 3768/2020 (under Order XXXIX Rules
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1 & 2 CPC for anti-suit injunction)

13. This is a Suit filed by the Plaintiffs seeking permanent injunction restraining the
Defendants, their directors, proprietors, partners, subsidiaries, affiliates, franchisees,
officers, employees, agents and all others in capacity of principal or agent acting for
and on their behalf, or anyone claiming through, by or under them, from in any
manner using directly or indirectly the Domain name www.hindustan.com or any other
mark identical/deceptively similar to the Plaintiffs' Trademarks ‘Hindustan’ and
‘Hindustan Times’ amounting to Trademark infringement of the Plaintiffs' Trademarks
and Passing Off of the Plaintiffs' goods and services as those of the Defendants.
14. Permanent injunction is also sought restraining the Defendants or their agents
from proceeding with the Suit titled Brainlink International, Inc. v. HT Media Ltd. (Civil
Action No. 1 20-cv-01279) before the United States District Court for the Eastern
District of New York or from instituting or filing any other suit/applications/proceedings
in any Court of Law in relation to the impugned Domain name or any issue which
forms the subject matter of the present Suit.
15. It is stated in the Plaint that Plaintiff No. 1, HT Media Ltd. is engaged in the
business of print media, radio, internet, etc. and is one of the foremost media houses
in India with its leading English publication ‘Hindustan Times’. Plaintiff No. 2 is a
Subsidiary of Plaintiff No. 1 and is also engaged in the business of print media with its
Hindi leading publication ‘Hindustan’. Plaintiff Nos. 1 and 2 belong to ‘Hindustan
Times’ Group.
16. Plaintiffs further state that the flagship publication of Plaintiff No. 1 ‘Hindustan
Times’ was founded in the year 1924 and Plaintiff No. 2's ‘Hindustan’ also traces its
origin to 1930s. Both newspapers have, over a period of almost a Century, established
their presence as newspapers with editorial excellence, innovation and integrity.
17. Plaintiffs aver that their leading Hindi newspaper ‘Hindustan’ is the third-largest
daily in the Country, with total readership of around over 50 million, spanning across
various States of the Country and their English newspaper ‘Hindustan Times’ is one of
the leading English newspapers with a total readership of about 8.02 million.
‘Hindustan Times’ is the leading English newspaper in Delhi and the second leading
English newspaper in Mumbai. Apart from print circulation, there are also online
Editions of both newspapers as available on www.livehindustan.com and
www.hindustantimes.com. Websites contain news articles and other infotainment
content, latest and breaking News and columns on varied issues, reaching more than
46 million unique users and 42 million users, respectively, in February, 2020.
18. Plaintiffs state that they are the Registered Proprietors of the Trademarks
‘Hindustan’ and ‘Hindustan Times’, including their formative Marks across various
classes, as detailed herein under:
S. No. Trade Mark Application No. Class
1. Hindustan Times 1350439 16
2. Hindustan 1508548 16
3. Hindustan 2436161 38
4. www.hindustan.in 1330851 16
5. www.hindustantimes.in 1330852 16
6. Hindustan (Device) 2002635 16
19. Plaintiffs state that the Trademarks have been continuously and uninterruptedly
used by the Plaintiffs and its Group/Subsidiaries, since 1920s and 1930s, respectively
and form an essential and dominant part of the Corporate name of the ‘Hindustan
Times’ Group. On account of the high quality, accurate and unbiased news, opinion
and information, the Marks have acquired tremendous goodwill and enormous
reputation, which is reflected from the list of Awards and accolades, and the huge
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revenue turnover of the Companies, as mentioned in paras 13 and 14 of the Plaint,

respectively.
20. It is further stated that the Marks ‘Hindustan’ and ‘Hindustan Times’ foster an
instant association in the minds of consumers with excellent and high standards of
reporting, and Plaintiffs enjoy both Statutory rights under the Trade Marks Act, 1999,
(hereinafter referred to as the ‘Act’) as also common law rights, arising from goodwill
and reputation and are thus, entitled to protection against misappropriation.
21. Learned counsel for the Plaintiffs submits that Defendant No. 1, Brainlink
International, Inc. is a New York based Corporation and claims to be engaged in
business of providing IT related support services to its customers. As per the Website
of Defendant No. 1 (www.brainlink.com), Defendant No. 2 is the co-founder of
Defendant No. 1 and key person in the decision-making activities of Defendant No. 1,
including infringing activities that form subject matter of the present Suit.
22. Learned counsel submits that upon information received, it is believed that
Defendant No. 1 is the registrant/owner of the Domain name www.hindustan.com.
WHOIS details regarding the Domain name are masked and thus, Plaintiffs have made
their assertions on the basis of information received from Defendant No. 1 in its
correspondence with the Plaintiffs and the Complaint filed by Defendant No. 1 against
the Plaintiffs, before the United States District Court.
23. Learned counsel contends that Defendants are infringing and cybersquatting, in
violation of the Plaintiffs' Trademark rights in their Marks ‘Hindustan’ and ‘Hindustan
Times’. Plaintiffs had issued a cease and desist Notice dated 24.12.2019 to the
Defendants to acquire the Domain name, but the Defendants quoted an exorbitant
amount of US $ 3 million in the reply dated 14.02.2020 to sell the Domain name.
When the Plaintiffs responded on 02.03.2020 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, around 09.03.2020.
24. Learned counsel submits that Plaintiffs became aware of the Suit in the last
week of March, 2020, though they have not been formally served with the Suit papers.
It is argued by the learned counsel that the Defendants, admittedly, have no use for
the Domain name other than to profit from squatting on the same. Defendants
acquired the impugned Domain name in 1996 in bad faith to ride upon the goodwill
and reputation of the Plaintiffs' publications. Screenshot of the impugned Domain in
the year 1999 from the Internet Archive, evidences that the Website was purportedly
launched 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’. Thus, the adoption of the Domain name, which is identical to the
Plaintiffs' Trademarks, to provide identical services as that of the Plaintiffs, evinces the
mala fides of the Defendants to profit from the goodwill and reputation of the Plaintiffs'
publications.
25. Learned counsel further submits that the business of the Defendants was not
successful and in the year 2000, they shifted use of the Domain name to sell online
advertisements. Admittedly, even the same was not successful and as per their own
assertions, it was not used to conduct any business since 2000. At present, the
Domain name cannot be reached, thus, evincing that Defendants have no legitimate
use of the Domain name.
26. Taking the argument further, counsel for the Plaintiffs submits that bad faith of
the Defendants is evident from the various correspondences exchanged between the
parties, wherein Defendant No. 2 was willing to sell the Domain name, but at an
exorbitant price of US $ 3 million. Defendants, who are subsequent users of the Mark
‘Hindustan’ have adopted the Domain name only to ride on the goodwill of the
Plaintiffs and make money, which amounts to cybersquatting. Use by the Defendants,
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without any authorisation/license/consent from the Plaintiffs amounts to Trademark

infringement under Section 29 of the Act and passive holding of the Domain name
amounts to Passing Off and unfair competition of the Plaintiffs' Trademarks.
27. Internet users who wish to read the online version of the Plaintiffs' Hindi
language paper ‘Hindustan’ or to visit the Plaintiffs' Websites, but are not familiar with
the exact web address of the Plaintiffs' Websites, may enter into the address toolbar of
their Internet browser, the URL www.hindustan.com and will automatically be taken to
the Defendants’ Website and could be confused into thinking that the Plaintiffs have
taken down their Websites. This would result in erosion of the reputation and
weakening of the value and strength of the Plaintiffs' Trademarks, amounting to
dilution and tarnishment.
28. Learned counsel for the Plaintiffs submits that this is a fit case for the Court to
restrain the proceedings of a Foreign Court, by an anti-suit injunction. Defendants are
amenable to the personal jurisdiction of this Court as the Website of the Defendants
can be accessed by viewers within Delhi. Further, the Defendants are willing to sell the
Domain name to the Plaintiffs, who are within the jurisdiction of this Court.
29. Learned counsel for the Plaintiffs contends that Section 134(2) of the Act
provides that for infringement of Trademark, Plaintiff can institute a Suit within the
jurisdiction of the Court, where it carries on business. This Court would have
jurisdiction to decide the present Suit for infringement of the Trademarks as they are
registered in Delhi. Registered Office of Plaintiff No. 1 is in Delhi and Plaintiff No. 2
maintains its Books of Accounts at Delhi office.
30. Learned counsel contends that if the injunction is declined, irreparable harm
and loss would be caused to the Plaintiffs. Plaintiffs will be constrained to defend
themselves before the EDNY Court, which has no jurisdiction over the Plaintiffs or the
subject matter of the dispute. Plaintiffs neither have an office in New York nor any
other city in USA, except for one employee who is based in Potomac. Cause of action
i.e. violation of Trademark rights of the Plaintiffs has arisen within India and the trial
to prove the Trademark rights would thus, have to be held in India. The Suit before
New York Court is vexatious and oppressive as the Plaintiffs have not asserted
Trademark rights in USA.
31. I have heard learned counsel for the Plaintiffs and perused the documents on
record.
32. Domain name is the address given to a website by which an intended user can
visit the Website of the identified person. With the present day advancement in
technology and Internet communications, most Companies and organisations promote
themselves on the Internet and thus, a Domain name is akin to a Trademark. The
Supreme Court in the case of Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd.,
(2004) 6 SCC 145, held that a Domain name may have all the characteristics of the
Trademark and an action for Passing Off can lie for the same. Court observed that use
of the same or similar Domain name may lead to a diversion of users which could
result from users mistakenly accessing one Domain name instead of another. Relevant
portion of the judgment is as under:
“16. The use of the same or similar domain name may lead to a diversion of
users which could result from such users mistakenly accessing one domain name
instead of another. This may occur in e-commerce with its rapid progress and
instant (and theoretically limitless) accessibility to users and potential customers
and particularly so in areas of specific overlap. Ordinary consumers/users seeking to
locate the functions available under one domain name may be confused if they
accidentally arrived at a different but similar website which offers no such services.
Such users could well conclude that the first domain-name owner had
misrepresented its goods or services through its promotional activities and the first
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domain-owner would thereby lose its custom. It is apparent, therefore, that a

domain name may have all the characteristics of a trade mark and could found an
action for passing off.”
33. In the case of Mr. Arun Jaitley v. Network Solutions Private Limited, 2011 SCC
OnLine Del 2660, Court emphasised the importance of protection of the Domain name,
particularly, in the present day context so that identified names of the Companies
which have a distinct place in the market do not get into the hands of those who are
either not connected or concerned with the names or use the name only for
cybersquatting. The Court held as under:
23. At this stage, let me now discuss the law relating to protection of domain
names which is worth noting. The domain name is usually an address given to the
website so that the person intending to visit the same may visit the website of the
identified person.
a) This function of giving names to the addresses of the website has undergone
magnificient change whereby the companies, firms, eminent individuals have
been able to name the web addresses after their own names and/or trade
mark. This performs dual functions, firstly, the domain name does not merely
remain as an address but rather performs the function of a trade mark as the
prospective customers or other known persons visit the webpage and are able
to immediately connect with the source and identify the same with the
particular company or the individual.
b) Secondly, so far as individual persons or eminent personalities/popular
companies are concerned, their identity is established in the virtual world of
internet. In other words, the popularity or the fame of any individual or the
company will be no different on the computer (or internet) than the reality.
c) Therefore, it becomes incumbent to protect the domain names so that the
identified names of companies and individuals which are distinct at the
market place may not go at the hands of individuals who are nowhere
concerned with those names and have obtained them just because they are
better conversant with the computer techniques and usage of the internet. To
simplify, in order to prevent the cyber squatting or trafficking or trading in
domain names or the marks, the trade mark law has been stretched to the
extent that it may cover the field of internet and domain names may be
protected just like the trade marks.
34. The first and foremost issue that arises in this case is the jurisdiction of this
Court. This aspect is required to be examined in the context of grant of relief of
injunction against the infringement of the Trademarks of the Plaintiffs as well as for
grant of anti-suit injunction, as the Defendants are stated to have foreign addresses.
The exact details of the actual Registrant are not yet traceable. It is, however, clear
that the owner of the Defendant no. 1/Company is one Mr. Raj Goel, of Indian origin.
35. Insofar as the relief with respect to Infringement/Passing Off is concerned,
counsel for the Plaintiffs has rightly relied upon Section 134(2) of the Act. The said
provision clearly 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’. From
the pleadings and documents placed on record, it is clear that the Plaintiffs have a
Registered Office in Delhi and they carry on business in Delhi.
36. Insofar as grant of anti-suit injunction is concerned, the Supreme Court in the
case of Modi Entertainment Network v. W.S.G. Cricket Pte. Ltd., (2003) 4 SCC 341,
has clearly laid down the principles for grant of the same, which are as under:
“24. From the above discussion, the following principles emerge:
(1) In exercising discretion to grant an anti-suit injunction the court must be
satisfied of the following aspects:
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(a) the defendant, against whom injunction is sought, is amenable to the

personal jurisdiction of the court;
(b) if the injunction is declined, the ends of justice will be defeated and
injustice will be perpetuated; and
(c) the principle of comity — respect for the court in which the
commencement or continuance of action/proceeding is sought to be
restrained — must be borne in mind.
(2) In a case where more forums than one are available, the court in exercise of
its discretion to grant anti-suit injunction will examine as to which is the
appropriate forum (forum conveniens) having regard to the convenience of the
parties and may grant anti-suit injunction in regard to proceedings which are
oppressive or vexatious or in a forum non-conveniens.
…………
(7) The burden of establishing that the forum of choice is a forum non-
conveniens or the proceedings therein are oppressive or vexatious would be on the
party so contending to aver and prove the same.
37. The Court would have to thus examine whether the Defendants are amenable to
personal jurisdiction of this Court, whether injustice would be caused to the Plaintiffs if
the injunction was refused and which would be the Forum Conveniens, in case there
were more than one Forum available to the Plaintiffs.
38. In the case of India TV, Independent News Service Pvt. Ltd. v. India Broadcast
Live LLC, 2007 SCC OnLine Del 960, the Court was examining a similar issue regarding
Passing Off a Domain name by a foreign Defendant and stayed the proceedings
instituted by the Defendants before the Arizona District Court on the ground that the
damage to the Plaintiff's goodwill and reputation would be in India, as the Plaintiff's
News Channel was broadcasted for Indian audiences. Court held that:
“53. The plaintiff's channel being primarily an Indian news channel intended for
Indian audiences, any damage alleged to have been caused or alleged to be likely
to arise to the goodwill, reputation, etc. of the plaintiff would be in India. Further,
the alleged damage that may have arisen or may be likely to arise to the plaintiff
would be as a consequence of the fact that the impugned Website is accessible in
India and the services provided can be availed of in India.
54. The result of the aforesaid is that the defendant is carrying on activities
within the jurisdiction of this Court; has a sufficient contacts with the jurisdiction of
the Court and the claim of the plaintiff has arisen as a consequence of the activities
of defendant No. 1 within the jurisdiction of this Court. This Court can thus exercise
personal jurisdiction over the defendants.
xxx xxx xxx
Conclusion
144. The result is that IA 2611/2007 stands allowed and defendant No. 1 is
restrained from proceeding with the suit filed in the District Courts at Arizona.”
39. The Court further observed that usually there are three tests which are
repeatedly employed by the Courts to make the determination and which are:
(a) defendant purposefully availed himself of acting in the Forum State or causing a
consequence in the Forum State;
(b) cause of action must arise from the defendants activities there;
(c) the acts of the defendant or consequences caused by the defendant must have a
substantial enough connection with the forum to make exercise of jurisdiction
over the defendant reasonable.
40. In paragraph 50, Court held as under:
“50. Insofar as the position in this country is concerned, there is no long arm’
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statute as such which deals with jurisdiction as regards non-resident defendants.

Thus, it would have to be seen whether the defendant's activities have a sufficient
connection with the forum state (India); whether the cause of action arises out of
the defendant's activities within the forum and whether the exercise of jurisdiction
would be reasonable.
41. In the case of ICICI Bank Ltd. v. Chuandong XU, in CS(OS) No. 2606/2008,
decided on 18.12.2008, this Court exercised jurisdiction over a foreign Defendant and
granted an ex parte injunction from using a Domain name.
42. Admittedly, the Defendants have not used the Domain name
www.hindustan.com since 2000. This is evident from a reading of certain portions of
the Complaint filed by the Defendants in USA, which have been brought to the
attention of the Court, by learned counsel for the Plaintiffs. It thus, appears that the
Defendants’ sole motive for registering the impugned Domain name was only to
profiteer from the same and this is thus a classic case of cybersquatting. Mere passive
holding of the Domain name, without any use, evinces bad faith of the Defendants
under Clause 4 of the Uniform Dispute Resolution Policy (UDRP), as held in the case of
Mr. Arun Jaitley (supra), relevant para of which reads as under:
“40. In the present case, as I have already come to the conclusion that the name
ARUN JAITLEY is a well known name, the use of the same without any reason by the
defendants as a Domain name and keeping in possession the said Domain without
sufficient cause is violative of the ICANN policy and can be safely held to be a bad
faith registration.”
43. Bad faith on the part of the Defendants 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, is evidence of bad faith, as
also held by this Court in Acqua Minerals Ltd. v. Pramod Borse, 2001 SCC OnLine Del
444.
44. In the present case, the Plaintiffs are in the business of publication, both print
and online. The word ‘Hindustan’ appears in the Domain name of the Defendants.
Though the website may have been passive for a long time, but as the Plaintiffs rightly
contend, there is every possibility that the users who may not be familiar with the
exact web address of the Plaintiffs' Websites or even otherwise, accidentally, may
enter into the address toolbar of their Internet Browser, the URL www.hindustan.com
and will automatically be taken to the Website of the Defendants and would be
confused into thinking that the plaintiffs have taken down their Websites. Besides,
repeated failure to access the Websites of the Plaintiffs or accessing a Website which is
not reachable or unrelated, would deter consumers from accessing the site of the
Plaintiffs. In today's world of competition, internet users would automatically be
diverted by search engines to websites with identical or similar names, which can be
accessed far easily. This would lead to erosion of the reputation and goodwill of the
Plaintiffs and weakening of the value and strength of their Trademarks, amounting to
dilution and certainly loss of business. Since the publications of the Plaintiffs are for
Indian audiences, the damage, if any, would be to the goodwill and reputation of the
Plaintiffs, in India. The damage that would arise would be a consequence of the fact
that the impugned website is accessible in India and in any case intended to publish
information primarily aimed at Indian audiences. Plaintiffs are also prima facie right in
contending that the Defendants may sell the Domain name to the competitors of the
Plaintiffs and since the Trademarks ‘Hindustan’ and ‘Hindustan Times’ have goodwill in
India, any use of the Domain name will always be targeted for viewers in India. On the
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basis of the tests laid down in Banyan Tree Holding (P) Limited v. A. Murali Krishna
Reddy, 2009 SCC OnLine Del 3780, thereafter followed in Millennium & Copthorne
International Limited v. Aryans Plaza Services Private Limited, in CS(Comm)
774/2016, decided on 05.03.2018, sufficient points of contact exist for vesting
jurisdiction in this Court.
45. A close reading of the judgment in India TV (supra), which in turn relied upon
the three tests laid down in Cybersell Inc. v. Cybersell Inc., 130 F.3d 414 (1997), and
Panavision International LP v. Dennis Toppen, Network Solutions Inc., (D.C. Case No.
CV-96-03284-DDP; Appeal No. 97-55467) would show that if the Plaintiffs are able to
demonstrate close connection of the Defendants’ activities in India and if cause of
action has arisen here, coupled with it being reasonable to exercise jurisdiction, Court
would exercise jurisdiction over the Defendants. Under Section 20(c) CPC, a suit can
be filed within the local limits of the Courts where the cause of action arises, wholly or
in part.
46. At the time when the Website of the Defendants was launched, it was meant to
provide information relating to daily News content, stock market and other reports on
the Indian-American issues. Thus, at the time of adoption of the Domain name,
Defendants were targeting the viewers in India, including Delhi. Defendants have not
actively used the Website since 2000 and from the negotiations and exchange of
correspondence between the parties, it appears that the only purpose of adopting the
Domain name was to profiteer out of the same and offer it to the Plaintiffs at an
exorbitant price. Defendants were willing to sell the Domain name to the Plaintiffs,
who carry on business in Delhi, negotiations on behalf of the Plaintiffs, including
receiving of offer and giving a counter offer through emails also has its origin in Delhi.
Significantly the email dated 14.02.2020 demanding US $ 3 million from the Plaintiffs
was also received in Delhi. The notice and the ensuing correspondence precedes the
Suit in New York and is hence merely a counter-blast to the Plaintiffs' legitimate
exercise of their rights and availment of remedies. Thus, a substantial and integral
part of the cause of action under Section 20(c) CPC for the Plaintiffs to file the present
Suit, has arisen within the jurisdiction of this Court.
47. Traversing the law on the subject, as above, and looking to the facts of the case
as set out by the Plaintiffs, this Court is of prima facie opinion that Court has personal
jurisdiction over the Defendants.
48. Insofar as infringement of the Trademarks is concerned, from the
correspondence on record, it is clear that the Domain name registration of the
Defendants is in Bad Faith, as defined under Clause 4 of the Uniform Dispute
Resolution Policy, as the Defendants are neither using the Domain name for any
legitimate activity and also appear to have registered the same with the intention of
earning monetary benefit. 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 www.hindustan.com.
49. This Court is also of the prima facie opinion that the 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
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have made out a prima facie case for grant of an anti-suit injunction before this Court.
50. Plaintiffs have been able to 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. Balance of convenience also lies in
favour of the Plaintiffs.
51. Under these circumstances, the Defendants and/or anyone acting for or on their
behalf are restrained from, in any manner, using directly or indirectly, the Domain
name 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.
52. Defendants are also restrained from creating any third party rights in the
impugned Domain name www.hindustan.com. The Registering authority of the Domain
name www.hindustan.com - M/s. Enom Llc ([email protected]) is directed to block the
said Domain name, and maintain status quo, till the next date of hearing.
53. Defendants, their agents and representatives are restrained from proceeding
further with the suit titled Brainlink International, Inc. v. HT Media Ltd. (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.
54. Compliance of Order XXXIX Rule 3 CPC be done by email within ten days. Copy
of this order be served upon all the Defendants and the Registering authority at
[email protected] by email. Service of Summons and Notices is permitted by email in
addition to courier.
55. This order be uploaded on the Website of Delhi High Court and a copy be sent
to the counsel for the Plaintiffs by email.
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SCC Online Web Edition, © 2022 EBC Publishing Pvt. Ltd.

Page 1 Friday, March 04, 2022

2020 SCC OnLine Del 1703 : (2020) 82 PTC 396

In the High Court of Delhi at New Delhi

HT Media Limited and Another … Plaintiffs;

1 & 2 CPC for anti-suit injunction)

revenue turnover of the Companies, as mentioned in paras 13 and 14 of the Plaint,

without any authorisation/license/consent from the Plaintiffs amounts to Trademark

domain-owner would thereby lose its custom. It is apparent, therefore, that a

(a) the defendant, against whom injunction is sought, is amenable to the

statute as such which deals with jurisdiction as regards non-resident defendants.

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