Bharti Airtel Ltd. & Ors v. Rajeev Kumar & Ors

MANMOHAN SINGH, J. (Oral)

¶1Plaintiff No. 1 is Bharti Airtel Ltd. (earlier known as Bharti Televenture Ltd.). The plaintiff No. 2 is Bharti Overseas Trading Company now known as Bharti Enterprises is a registered partnership firm. The plaintiff No. 3 is Bharti Retail Pvt. Ltd.

¶2The plaintiffs have filed the present suit for permanent injunction restraining infringement of registered trade mark "BHARTI" by

Page No.2 of 25 registration of domain names "BHARTIRETAIL.COM" & "BHATIRETAIL.IN" and for passing off, acts of unfair competition, dilution and damages against the defendants. CASE OF THE PLAINTIFFS

¶3The plaintiffs are a part of the business group known as the Bharti group of Companies.

¶4The Mark BHARTI was adopted by the plaintiffs in the year 1983 and the same has been in continuous use since then. The total numbers of companies at the time of filing of the present suit with the word/mark "Bharti" as the prominent part of the trading style/corporate name are more than fifteen.

¶5The details of names of the said companies and the respective date of incorporation are as under:-

Bharti Overseas Trading Company 1980 Bharti Infotel Private Ltd (formely known as Bharti Enterprises Pvt Ltd and name changed to Bharti Infotel Pvt w.e.f

3.6.2006

4.3.1983 Bharti Telecom Ltd.

29.7.1985 Bharti Cellular Ltd (merged with Bharti Airtel Ltd w.e.f 2005)

20.3.1992

Page No.3 of 25 Bharti Broadband Ltd (formely known as Comnet Max Limited and name changed to Bharti Broadband Limited w.e.f

23.6.2005)

10.11.1993 Bharti Hexacom Limited

28.4.1995 Bharti Airtel Limited (formerly known as Bharti Tele-Ventures Limited and name changed to Bharti Airtel Limited w.e.f. 24.4.2006)

7.7.1995 Bharti Global Ltd

2.9.1997 Bharti Comtel Ltd

5.12.1997 Bharti Teletech ltd

30.3.1999 Bharti Telesoft Ltd

7.5.1999 Bharti Aquanet Ltd

3.10.2000 Bharti Axa Life Insurance Company Ltd

27.10.2005 Bharti Telemedia Ltd

30.11.2006 Bharti Infratel Ltd

30.11.2006 Bharti Retail Pvt Ltd

7.2.2007 Bharti Resources Pvt Ltd

7.2.2007

¶6It is submitted by the plaintiffs that the Bharti Group of Companies is one of the leading private sector companies in the country.

Page No.4 of 25 Its businesses vary from telecommunications, insurance, manufacture of telephone equipment, information technology, Agri-products exports etc.

¶7The trade mark "Bharti" after adoption in 1983 and has since then formed a prominent, inalienable and important part of the plaintiffs" group and its businesses.

¶8The Bharti Group is a leader in the field of telecommunications in India with more than 37.25 million customers. The plaintiffs group provides various kinds of telecommunication services including cellular services, landline services. It also provides broad-band and internet services. The plaintiffs" business and growth is one of the success stories of Indian business and the Group is now expanding from telecommunications in India to international operations as also following into various other businesses.

¶9Apart from incorporating the company i.e., plaintiff No.3, the plaintiffs also registered the domain name "bharti-retail.com" and "bharti-retail.in". The original printouts of WHOIS search result of the plaintiffs" domain name "bharti-retail.com" and "bharti-retail.in" have already been filed. These were created on 20.02.2007. The same have now been renewed as well and, therefore, the original print of WHOIS search result

Page No.5 of 25 showing the present position of plaintiffs" domain name "bharti-retail.com" and "bharti-retail.in" have been filed.

¶10It is alleged by the plaintiffs that the plaintiffs are the proprietors of the mark BHARTI since the year 1983. The plaintiffs have spent enormous amounts of money in advertising and promoting their activities under the name/ mark BHARTI and have sponsored numerous events including cricket matches. The mark BHARTI is the most essential and prominent feature of the complainant"s/plaintiffs" trade and corporate name. The word BHARTI has become synonymous with the business of the plaintiffs and is associated exclusively with them. The said word BHARTI has in the context of any business in India acquired a secondary meaning and is exclusively associated with the plaintiffs.

¶11The mark BHARTI is the exclusive property of the plaintiffs and no other party has a right to adopt the said mark or any other mark either as a trademark, or as a domain name or as a name of any company/firm. The plaintiffs have applied for the registration of the trademark BHARTI under various classes and the same are now registered. It is further submitted that the details of the trade mark registrations in the mark "BHARTI" in various classes in favour of the plaintiffs"" are as follows:-.

Page No.6 of 25 S.No T.M. No Particulars Class Date STATUS

¶1890359 I"m PROUD TO BE A BHARTI-Label

7.12.1999 Registered

¶2993500 BHARTI(labe l New Corporate logo)

28.2.2001 Registered

¶3993494 BHARTI(labe l New Corporate logo)

28.2.2001 Registered

¶4993498 BHARTI(labe l New Corporate logo)

28.2.2001 Registered

5. 993501 BHARTI

28.2.2001 Registered

¶6993495 BHARTI (label) building telecom-building partnerships

28.2.2001 Registered

7. 993499 BHARTI

28.2.2001 Registered

8. 993502 BHARTI

28.2.2001 Registered

9. 1256049 BHARTI

18.12.2003 Registered

¶101291327 BHART LIVE-word per se

21.6.2004 Registered

¶12It is stated that the use of the mark BHARTI by any third party constitutes infringement of trademark under section 28, 29 of the Trade

Page No.7 of 25 Marks Act, 1999. The plaintiffs not only have common law rights but also a statutory right to protect the mark BHARTI.

¶13As per plaintiffs, they also have various domain name registrations in their favour which consist of the word BHARTI. Original printout of WHOIS search of plaintiffs" domain name www.bharti.com has already been filed. The same has now been renewed as well and therefore, the original printout of WHOIS search showing present position of the said domain name have been annexed.

¶14A list of few such domain names of the plaintiffs are set out hereunder: S.No Name

¶1Bharti.com

¶2Bhartient.com Bhartitelesoft.com

¶4Bhartienterprises.com

¶5Bhartigroup.com

¶6Bharticellular.com

¶7Bhartimobile.com Bhartifoundation.com

¶9Bhartihealthcare.com

¶10Bhartiteleventures.com

¶11Bhartiindiaone.com

¶12Bhartiinfotrac.com

¶13Bhartiinfotech.com

¶14Bhartibroadband.com

¶15Bharti-infotel.com

¶16Bhartiteletech.net

¶17Bharti-indiaone.com.

¶18Bhartifoundation.org

¶19Bhartienterprises.info

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¶20Bhartitelesonic.com

¶21Bharti.co.in

¶22Bharti.in

¶23Bhartilive.in

¶24Bhartifoundation.net

¶25Bhartifoundation.in Bhartifoundation.org.in Bhartiairtel.in

¶28bhartiairtel.co.in

¶29bhartiairtel.org

¶30bhartiairtel.org.in

¶31bhartiairtel.net

¶32bhartiairtel.net.in

¶33bharti-airtel.in

¶34bharti-airtel.co.in bharti-airtel.org

¶36bharti-airtel.org.in

¶37bharti-airtel.net

¶38bharti-airtel.net.in

¶39Bhartiairteltd.in

¶40Bhartiairteltd.com

¶41Bhartiairteltd.co.in

¶42Bhartiairteltd.org

¶43Bhartiairteltd.org.in

¶44Bhartiairteltd.net

¶45Bhartiairteltd.net.in

¶46Bharti-comtel.in

¶47Bharticomtel.in

¶48Bharticomtel.co.in

¶49Bharticomtel.net

¶50Bharti-retail.com

¶51Bharti-retail.in

¶15It is submitted by the plaintiffs that the trade mark "Bharti" has also achieved a huge goodwill and reputation in view of the large section of the public which has invested in the company which is also a listed

Page No.9 of 25 company on the Bombay Stock Exchange and the National Stock Exchange. The turnover of the plaintiffs" Group for the last financial year (i.e. year ended March 31, 2006) exceeded Rs.11,725.50 crores. The corresponding expenditure on marketing and sales for last year is approximately Rs.833.5 crores.

¶16The trade mark "Bharti" and "Bharti" logo is used almost in all the advertisement and the publicity material, corporate brochures, etc. The mention of the word "Bharti" today clearly associates with the plaintiffs" group and its businesses. Even the first page of the Google search on the words "Bharti" and "Bharti Retail" shows direct association with the plaintiffs group companies.

¶17The plaintiffs" Bharti group have partnership /business ventures/ alliances with several world leaders in the field of IT and telecommunications. These include Seimens, Singapore Telecom, IBM, Nokia, etc. The plaintiffs have also entered into agreements for cash and carry business with Wal-Mart, which is the 2nd biggest retail corporation in the world. CASE AGAINST THE DEFENDANTS

¶18The case against the defendants as alleged by the plaintiffs is that in February 2007, when the plaintiffs were in the process of trying to

Page No.10 of 25 register domain names for the retail business they were shocked and surprised to see that the defendant No.1 had registered the 2 domain names with the words "Bharti" & "Retail" viz. "bhartiretail.com" & "bhartiretail.in". This came to the knowledge of the plaintiffs in the 2nd week of February and immediately on 19.02.2007 the plaintiffs addressed a notice to the defendant No.1 calling upon him to transfer the domain names to the plaintiffs. Original Print outs of the first notice vide e-mail dated 19.2.2007 sent to the defendant No.1 along with original letter/envelope received from the post office with the inscription "Addressee Refused" are already on record.

¶19Later on the plaintiffs received a one line reply from the defendants on 05.03.2007 that the defendant No.1 will reply through his legal counsel. Original Printout of the said e-mail is already on record. However, no such reply through his legal counsel has been received till date.

¶20It is alleged by the plaintiffs that the plaintiffs" legal manager also spoke to the defendant No.1 on a couple of occasions; however, despite repeated attempts no progress had been made in relation to the transfer. Original printouts of the e-mails dated 16.3.2007 and 22.3.2007 addressed in this regard by the plaintiff to the defendant No.1 have been

Page No.11 of 25 filed. The defendant No.1 has expressed his intention of demanding a huge sum of money for transferring the domain names.

¶21It is submitted by the plaintiffs that defendant No. 1 is an illegal and unauthorized holder/squatter of two domain names "bhartiretail.com" and "bhartiretail.in". "Bhartiretail.com" is registered by defendant No. 1 through defendant No. 2 which is the registering authority. Bhartiretail.in has been registered through defendant No. 3 which is the National Internet Exchange of India, located at Delhi.

¶22It is also alleged that the Bad Faith in the registration of this domain name "bhartiretail.com" is also evident from the fact that though initially the defendant No.1 was shown as the registrant of this domain name, after receiving the notice from the plaintiff, the defendant No.1 has chosen for a privacy scheme by which his contact details on the said domain name were hidden. The original print out of WHOIS search result of the domain name "bhartiretail.com" registered by defendant No. 1 is already on record.

¶23It is averred by the plaintiffs that though WHOIS search today does not reveal the defendant No.1"s name as the registrant but the plaintiffs have clear knowledge of the fact that the defendant No.1 had registered it and the plaintiffs had, in fact, addressed a notice based on this.

Page No.12 of 25 This is not even denied by the defendants in their one line reply. On typing Bhartiretail.com, one reaches to the website which is hosted by Netfirms.

¶24It is stated that no bonafide use is being made by the defendants of the said two domain names. The defendant No.1 is obviously a squatter who is expecting to make money by squatting on the two domain names. Such squatting and blocking of domain names is completely illegal and unlawful. The same is illegal not only under the common law of passing-off but also under the well know Dispute Resolution Policy which is applicable to all .com domain names(UDRP) and also under the INDRP under which the .in are registered.

¶25It is also stated that the use of mark BHARTI by the defendants or any third party constitutes passing-off of the defendents website as being associate with the plaintiffs. The plaintiffs are the lawful owners and properiotrs of the mark "Bharti" and thus they are the only legitimate claimants to the domain names "bhartiretail.com" & "bhartiretail.in".

¶26The present suit was filed on 29.03.2007 and on 30.03.2007 an ad interim ex-parte injunction order was passed in favour of the plaintiffs and against the defendants. Thereafter, vide order dated 03.11.2008 the said interim order dated 30.03.2007 was made absolute and the defendant No.1 was proceeded ex-parte and on 08.09.2008 the learned counsel for

Page No.13 of 25 the plaintiffs Ms. Pratibha M. Singh had also made a statement in court that the claim would not be pressed against the defendant Nos. 2 and 3. The plaintiffs filed the ex-parte evidence by way of affidavit of PW-1 Ms Vijaya Sampath.

¶27In her affidavit which is marked as Ex. PW-1/A, PW-1 Ms. Vijaya Sampath has proved the following documents:

(a) Copy of certificate of change of name of Plaintiff No 2 company. Exhibit PW1/1.

(b) Certified true copy of Board of Resolution authorizing Ms Vijaya Sampath, Director(Legal) on behalf of Plaintiff No 1. Exhibit PW1/2.

(c) Copy of Board of Resolution authorizing Vijaya Sampath on behalf of Plaintiff No 3, Exhibit PW1/3.

(d) Copy of Power of Attorney authorizing Vijaya Sampath on behalf of Plaintiff No 2, Exhibit PW1/4.

(e) Various coloured copies of press clippings & original print outs evidencing the national and international acclaim and expansion of business relating to the Plaintiff and its group companies including the retailing business. Exhibit PW1/5.

(f) Copy of Certificate of Incorporation of Bharti Retail Pvt. Ltd along with Memorandum of Association and Article of Association. Exhibit PW1/6.

(g) Original printout of WHO IS Search result of the Plaintiffs domain name bharti-retail.com and bharti-retail.in. Exhibit PW1/7.

Page No.14 of 25

(h) Original printout of WHO IS search result showing the present position of Plaintiffs domain name bharti-retail.in i.e. after renewal, Exhibit PW1/8.

(i) Original printout of WHO IS search result showing the present position of Plaintiffs domain name bharti-retail.in i.e. after renewal, Exhibit PW1/9.

(j) Copies of trade mark registration certificates and various applications of the Plaintiffs containing the trade mark BHARTI(already on record-pgs 2 to 9 of the list of documents) Exhibit PW1/10(colly)

(k) Some of the copies of trade mark registration certificates of the Plaintiffs, a legal processing certificate along with original printouts of trade mark application status showing Plaintiffs registered trade mark "BHARTI"(annexed) Exhibit PW1/11(colly)

(l) Original printout of WHO IS search report of plaintiffs domain name bharti.com(already on record-pgs 10 to 12 of the list of documents) Exhibit PW1/12

(m) Original printout of WHO IS search showing the present position of Plaintiffs domain name bharti.com(annexed) Exhibit PW1/13

(n) Original printouts from the Plaintiffs website bhartiairtel.in (already on record-pgs 13 to 15 of the list of documents) Exhibit PW1/14(colly)

(o) Original printout of first page of google search on Bharti and Bharti Retail (already on record-pgs 112 to 113 of the list of documents) Exhibit PW1/15(colly)

(p) Original printout of the first notice vide e-mail dated 19-2-2007 addressed to the defendant no 1 along with original letter/envelope sent and received from the post office with the inscription "Addressee Refused" (already on record – pgs 116 to 119 of the list of documents) Exhibit PW1/16(colly)

Page No.15 of 25

(q) Original printout of the reply vide e-mail dated 5.3.2007 by defendant no 1 to the notice of the plaintiff (already on record – pgs 120 to 122 of the list of documents) Exhibit PW1/17

(r) Original printouts of the e-mails sent by the plaintiff dated

16.3.2007 and 22.3.2007 to the defendant no 1 (already on record-pgs 123 to 128 of the list of document) Exhibit PW1/18(colly)

(s) Original printout of WHO IS search result of defendants impugned domain name bhartiretail.com(already on record-pgs 141 to 142 of the list of documents) Exhibit PW1/19

(t) Original Printout of WHO IS search result showing the present position of defendants impugned domain name bhartiretail.com i.e. after renewal (annexed) Exhibit PW1/20

(u) Original Printout on Domain Privacy Group Inc(already on record-pgs 129 to 134 of the list of documents) Exhibit PW 1/21

(v) Original Printout of the status of the website bhartiretail.com which shows the opening page of net firms (already on record – pg 114 of the list of document) Exhibit PW1/22

(w) Original Printout of WHOIS Search result of the defendants impugned domain name bhartiretail.in (already on record – pg 143 of the list of documents) Exhibit PW1/23

(x) Original printout of the WHOIS Search Result showing the present position of the defendants impugned domain name bhartiretail.in i.e. after renewal (annexed) Exhibit PW1/24

(y) Original printout of status of bhartiretail.in where the website is under construction (already on record – pg 115 of the list of documents) Exhibit PW1/25

(z) UDRP Policy (already on record-135 to 140 of the list of documents) Exhibit PW1/26

Page No.16 of 25

(aa) Original printout of INDRP Policy (annexed)) Exhibit PW1/27

(bb) Certified copy of the order in Suit No 103/2004, Bharti Televentures & Ors vs Anil Kohli & Ors (annexed) Exhibit PW1/28

(cc) Copy of the Judgment in CS(OS) 245/04 , Bharti-Televenture & ors vs Vijay K Bharti & Ors (annexed) Exhibit PW1/29

(dd) Certified copy of the order dated 2nd March 01 in CS(OS) 246/2001, Bharti Cellular Ltd & Ors vs Mr Santosh Birajdar & Ors(annexed) Exhibit PW1/30

(ee) Certified copy of the order dated

29.11.2002 in CS(OS)895/2001, Bharti Televentures Ltd vs Somnath Bharti Ltd & Ors(annexed) Exhibit PW1/31

(ff) Certified copy of the order and judgment dated 15th March 2007 in CS(OS)279/2006 Bharti Televentures Pvt Ltd vs Agri, Lacus & CaelmLLC & Anr(annexed) Exhibit PW1/32

(gg) Certified copy of the order dated 21.8.2006 in CS(OS) 1101/2006 Bharti Airtel Ltd vs Michael welt & Ors(annexed) Exhibit PW 1/33

(hh) Copy of the letter dated 7th May 2007 from counsel for defendant no 2 to the counsel for Plaintiffs(annexed) Exhibit PW1/34

¶28The defendant No.3 has also been proceeded ex parte vide order dated 02.11.2007 of this Court. Learned counsel for the plaintiffs received a letter dated 07.05.2007 on behalf of counsel for defendant No.2, stating that they are ready to abide by any orders passed by this Court .

Page No.17 of 25

¶29Despite service, the defendants chose not to appear in the Court neither they have filed the written statement. The ex-parte evidence advanced by the plaintiffs has gone unrebuted, as the defendants have failed to cross-examine the plaintiffs" witness. Thus, the case of the plaintiffs is taken as proved.

¶30No doubt, the trade mark "Bharti" is a well known mark in India and abroad. The reputation of the said mark is unquestioned. Any illegal use of the mark is liable to be curbed by the orders of this Court. The use of the word "Bharti" results in violation of the statutory rights and the common law rights of the plaintiffs. Such use constitutes :

(a) Infringement of the registered trade mark;

(b) Passing-off and bad faith registrations; and

(c) Unfair Competition and Dilution.

¶31Infringement of registered trade mark: It is submitted that the trade mark "Bharti" is registered in class 38 including various other classes. The application for retail business is also pending. The trade mark "Bharti" being a registered trade mark, the use of the said trade mark in relation to any similar goods or services results in infringement of the registered trade mark. The word "Bharti" combined with the word "retail" is exclusively associated with the plaintiffs and their Group. The

Page No.18 of 25 registration of the said domain names is in complete infringement of the rights of the plaintiffs apart from constituting infringement of the trade marks of the plaintiffs.

¶32Passing-off and Bad Faith registrations-It is submitted that the use of the mark BHARTI by any third party constitutes passing off of the defendants" website as being associated with the plaintiffs. The defendant No.1 herein has registered the domain name bhartiretail.com and bhartiretail.in illegally and without any authorization by the plaintiffs. The use of the combination of words Bharti and Retail is likely to cause confusion among the internet users especially in light of the fact that the plaintiff is expanding the retail business as a separate business. The domain names would cause confusion and the internet users may think that the defendants are associated with the plaintiffs in some manner. If the domain name is taken by any competing interest, the same could irreparably harm the plaintiff and its business. It is obvious that the registration of the impugned domain names are completely bad faith registrations as defined in the UDRP and INDRP. It is argued that the domain names registered by the defendants can be misused in the following manner:

Page No.19 of 25 i. If the domain name is taken by any competing interest, the same could irreparably harm the plaintiffs and their business. ii. The domain name could be used to host a website criticizing the plaintiffs or defaming the plaintiffs in some manner or the other. iii. The domain name could be used to hyperlink to any other website which cannot be prevented by the plaintiffs in any manner whatsoever. iv. Any consumer may presume that the website hosted on such a domain name belongs to the plaintiffs.

¶33It is also argued that from the response of the defendant No.1 it is also evident that the defendant No.1 is expecting to monetarily gain from the domain names and he has no bonafide interest in the same. Such blocking merely for monetary gain or to block the legitimate use by the plaintiffs is a Bad Faith Registration.

¶34Unfair competition and Dilution: It is stated that the use of the mark BHARTI by the defendants constitute Acts of Unfair Competition, in as much as the defendant No.1 has registered it to gain monetarily or to unfairly compete with the plaintiffs by selling the same to some competitor. It is in fact in the interest of the public that the

Page No.20 of 25 defendant No.1 is not allowed to use the mark BHARTI in any manner whatsoever, as a remote chance of confusion can be dangerous for internet users.

¶35The use of the mark BHARTI by the defendant No.1 is also likely to result in blurring & tarnishment. The defendant No.1 has no connection whatsoever with the plaintiffs. It is well established that blurring between two trade domain names results in dilution of the mark. Moreover, the plaintiffs have carefully and vigilantly ensured that there is no illegal use of the mark BHARTI by registering their trade marks in India. Under such circumstances, the blurring of the plaintiffs" mark/business with the defendant will enormously prejudice the time and effort expended by the plaintiffs in the mark BHARTI. The same also results in dilution of the well-known plaintiffs" mark BHARTI.

¶36The plaintiffs have diligently protected the mark BHARTI by taking action against illegal use of the same. Details of some of such proceedings filed by the plaintiffs and their status is set out as hereunder . S.No Name of the Case Relevant Domain Name Status

¶1Bharti Televentures vs Anil Kohli Bhartiglobal.com The Hon"ble High Court of Delhi granted an ex-parte injunction in favour

Page No.21 of 25 of Bharti Group on Bhartiglobal.com on

3.5.2001. Suit was decreed as per compromise on

18.8.2005.

¶2Bharti Televentures vs Vijay Kr Bharti, Suit No 245/04 Bharti.com and Bharti.net A final judgment was passed by S.K. Savaria , ADJ. The defendants were proceeded ex-parte and a decree of mandatory injunction was passed restraining the defendants from using the domain names BHART.COM & BHARTI.NET. The Plaintiffs were also awarded damages of Rs 5,50,000/- as well as costs.

¶3Bharti vs Santosh Birajdar, Suit No 246/2001 Bharticellular.com Bhartmobile.com Bhartifoundation. com Bhartihealthcare.c om The suit was disposed off in terms of a compromise in 2001.The domain names bharticellular.com, bhartimobile.com, bhartifoundation.com and bhartihealthcare.com were transferred to the plaintiff.

¶4Bharti Televentures vs Somnath Bharti & Bhartiinfotech.co m and bhartigroup.com The suit was disposed off in terms of a compromise in 2002. The domain names

Page No.22 of 25 Ors, Suit No 895/2001 bhartiifotech.com and bhartigroup.com have been transferred in the name of plaintiffs.

¶5Bharti Televentures Pvt Ltd vs Agri, Lacus & CaelumLLC & Anr CS(OS) 279/06 Bhartiairtel.com Vide order dated 15th March 2007suit was decreed in favor of the Plaintiffs and against the defendant for permanent injunction restraining infringement of registered trade mark, passing off, dilution and damages in relation to the domain name "BHARTIAIRTEL.C OM"

¶6Bharti Televentures P.Ltd vs Marco Signorini & Another CS(OS) No 272/06 Bharti-airtel.com On 1.2.2006 Court granted injunction restraining use of the domain name bharti-airtel.com or any other domain name consisting of marks. Subsequently the suit was decreed in terms of the settlement

¶7Bharti Airtel Ltd vs Michael Welt & Ors CS(OS) 1101/2006 Bhartilive.com The Hon"ble High Court of Delhi passed an ex parte interim injunction on 23.5.06 restraining the defendants, or anyone who may be acting for and on his behalf in any manner from using the domain name bhartilive.com

Page No.23 of 25 or any other domain name consisting of the marks bharti in any form whatsoever and further restrain the defendant from continuing to use the domain name for the website which is completely unconnected with Bharti. Subsequently vide order dated

21.8.2006, suit was disposed off in terms of the settlement and the impugned domain was transferred to the plaintiffs

¶37The certified copies of orders in the aforementioned suits are being annexed herewith and marked as follows:-

¶1Bharti Televentures& Ors vs Anil Kohli & Ors (Suit no 103/2004) – order dated 18-8-2005 – Exhibit PW1/28

¶2Bharti Televentures Ltd& Ors vs Sh. Vijay K Bharti & Ors(Suit No 245/04)- judgement dated 3-1-2005-Exhibit PW1/29

¶3Bharti Cellular Ltd & Ors vs Mr Santosh Birajdar & Ors(Suit no 246/01) – order dated 2-3-2001 – Exhibit PW1/30

¶4Bharti Televentures Ltd vs Mr Somnath Bharti & Ors(suit no 895/2001)- order dated 29-11-2002 – Exhibit PW1/31

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¶5Bharti Televentures Ltd vs Agri Lacus& Caelum LLC& Ors(suit no 279/2006)- order and judgement dated 15-3-2007 – Exhibit PW1/32

¶6Bharti Televenture Ltd& Ors vs Mr Michael Welt & Ors-order dated 21-8-2006 – Exhibit PW1/33

¶38In view of the above, it appears that the plaintiffs are the lawful owners and proprietor of the marks "Bharti" and thus the only legitimate claimants to the domain name "bhartiretail.com" and "bhartiretail.in". Under such circumstances, the defendants are liable to be restrained by an order of permanent injunction as prayed for. The plaintiffs are also entitled to damages as prayed in the plaint. The said domain names are also liable to be transferred in favour of the plaintiffs.

¶39Thus, the plaintiffs are entitled for a decree for permanent injunction in terms of para 30 (a) to (c) of the plaint which read as under:- "30(a) A decree of permanent injunction restraining the defendants, or anyone who may be acting for and on its behalf, in any manner, from using the domain names "bhartiretail.com" and "bhartiretail.in" or any other domain name or mark consisting of the marks "Bharti" in any form whatsoever and further restrain the defendants from continuing to use the domain names for the website which is completely unconnected with the plaintiff.

(b) A decree of permanent injunction restraining the defendant No.1 or its principal officers, servants, agents or

Page No.25 of 25 anyone who may be acting for and on its behalf, in any manner, from transferring, alienating or offering for sale the domain names "bhartiretail.com" and "bhartiretail.in" to any third party and from creating any third party interest in the said domain names and directing the defendants No.2 and 3 to maintain status quo in relation to their respective domain names by keeping the same ON HOLD till prayer A & C are granted.

(c) An order of mandatory injunction be granted against the defendants directing them to immediately transfer the domain names "bhartiretail.com" and "bhartiretail.in" to the plaintiffs.

¶40As regards the relief of damages are concerned which is claimed in para (d), this relief is disposed of with the direction that the plaintiffs are entitled for punitive damages to the tune of Rs.1 lac which is granted against defendant No.1 only. The suit is decreed with costs and the said cost would be paid by the defendant No.1. The decree be drawn accordingly. All pending applications, if any, stand disposed of.

MANMOHAN SINGH, J. OCTOBER 17, 2011 sa

Page No.1 of 25 * HIGH COURT OF DELHI : NEW DELHI Judgment decided on: 17.10.2011 + CS (OS) No.576/2007 Bharti Airtel Ltd & Ors …Plaintiffs Through : Ms. Pratibha M. Singh, Adv. Versus Mr Rajeev Kumar & Ors …Defendants Through: None Coram: HON'BLE MR. JUSTICE MANMOHAN SINGH 1. Whether the Reporters of local papers may be allowed to see the judgment? Yes 2. To be referred to Reporter or not? Yes 3. Whether the judgment should be reported Yes in the Digest?