
HIGH COURT OF DELHI
HT Media Limited & Anr.
Versus
Brainlink International, Inc. & Anr.
CS (COMM) 119/2019 | 28th April, 2020
FACTS
In the present case, HT Media Ltd. (hereinafter the “Plaintiff No. 1”) 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.
Plaintiff is a registered proprietor of the trademarks ‘Hindustan’ and ‘Hindustan Times’ in India and enjoys both statutory rights under the Trade Marks Act, 1999 (hereinafter “the Act”) as well as rights under the common law, arising from goodwill and reputation with respect to the Trademarks.
The Plaintiff submits 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.
It was further submitted that Brainlink International Inc. (hereinafter “the Defendant No.1”) is a New York based Corporation and claims to be engaged in the 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. Also the Defendant No.1 is the registrant/owner of the Domain name www.hindustan.com.
Additionally it was submitted that the Defendants are infringing and cybersquatting, in violation of the Plaintiffs’ Trademark rights in their Marks ‘Hindustan’ and ‘Hindustan Times’. In view thereof, the 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, the Defendants clandestinely 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.
It is imperative to note that the Defendants had launched the website 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’. Furthermore, the Defendants have no use for the Domain name other than to profit from squatting on the same.
The Defendants had acquired the impugned domain name in the year 1996 in bad faith to ride upon the goodwill and reputation of the Plaintiffs’ publications. Thus, use by the Defendants, 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.
Therefore, the Plaintiffs approached the High Court of Delhi to restrain the proceedings of a Foreign Court by an anti-suit injunction as Defendants are amenable to the personal jurisdiction of this Court and are further willing to sell the domain name to the Plaintiffs.