Delhi HC injuncts defendant from operating under any domain name, containing impugned words, that would infringe trademark of Western Digital Technologies

Read Judgment: Western Digital Technologies vs. Sumit Pandey & Others 

Pankaj Bajpai

New Delhi, November 26, 2021: The Delhi High Court has injuncted and restrained Sumit Pandey (first Defendant) from using/operating under any domain name, containing impugned words, that would infringe Western Digital Technologies (Plaintiff’s) trademark. 

Going by the background of the case, the Plaintiff claimed to be a world renowned manufacturer of storage devices, media player, routers/switches/bridges, solid state drives, software and mobile applications, manufactured and sold under Western Digital Trademarks. In the plaint it was alleged that first Defendant had registered certain domain names and while doing so, had attempted to make it appear that they were associated with Plaintiff by incorporating, in the domain names, Plaintiff’s registered trademarks. 

On its website, the first Defendant provided basic information on how to use and set up some of the Plaintiff’s products, thereby misleading customers into believing that the first Defendant was associated with Plaintiff and its products. On these websites, when the “Contact Us” button was clicked, a pop-up opened, which requested for users’ telephone number, so as to enable call from technical support team. Once number was provided, user received phone call from person impersonating as Plaintiff’s authorized representative, who requested for access to users’ system and required users to pay requisite consideration for fixing of any issue or bug in users’ system. 

Thus, the first Defendant was running an unauthorized service centre/support centre for products of Plaintiff without any licence from the Plaintiff in that regard. The first Defendant was an incorrigible infringer of registered trademarks by creating domains whereunder support and other services, without any authorisation by Plaintiff, were being provided against monetary consideration. Thus, Plaintiff filed present Application, praying for permanent injunction restraining first and fourth Defendants and other entities, engaged in carrying out similar fraudulent activities by misusing Plaintiff’s trademarks from infringing Plaintiff’s registered trademarks.

After considering the evidence, the Bench of Justice C. Hari Shankar therefore prima facie found infringement by first Defendant of Plaintiff’s trademarks by use of impugned domain names. 

As such, while issuing notice to Defendants, ad interim relief in terms of a restraint, on first and fourth Defendants from operating impugned domain names, as well as a direction to second Defendant to suspend impugned domain names, was issued, noted the Single Judge.

Besides, Justice Shankar found that in WIPO Case filed against first Defendant, WIPO passed order recording fact that the first Defendant was operating impugned domain to mislead users into believing that it was associated with Plaintiff. 

The domain name was, subsequently, transferred, by order of WIPO, from first Defendant to Plaintiff, added Justice Shankar. 

Hence, the High Court disposed of the application by restraining the Defendants from using any domain name that would infringe Plaintiff’s trademark.