In a case concerning allegations of trademark infringement by cybersquatting and passing off, Delhi High Court imposed damages worth a whopping INR 2 Crores on the Defendant! The Defendant, one Namase Patel, was alleged to possess hundreds of domain names with deceptively similar domains- addobe.com and adobee.com. Furthermore, it was alleged that the defendant uses a catch-all function that enables them to have access to all the emails where the domain name of the recipient is misspelled. The plaintiff also alleged that the defendant is a habitual cyber squatter and placed on the record orders from National Arbitration Forum and the WIPO Arbitration and Mediation Center, which pertained to similar cybersquatting by the defendant over domain names like underarmour.com, harrtford.com and dior.com.
Considering the above arguments and evidence, the court also took note of the fact that the Defendant did not appear before the court nor their whereabouts can be traced. Decreeing the matter ex-parte, the court passed an order for permanent injunction, restricting the defendant from registering any domain name which bears the plaintiff’s registered marks and from disclosing any confidential information to any third party.
However, and this is where things get interesting, the court also held that the plaintiff is entitled to the damages claimed in the suit (i.e. INR 2 Crores and 1 thousand) and imposed it as a “deterrent” to the defendant considering their nature of activities and the fact that they stand recognized in foreign jurisdictions as a habitual cybersquatter. But this reasoning frankly seems a little off, especially in the light of tests and cautions stated in Hindustan Unilever Ltd. v. Reckitt Benckiser India Ltd. where the court had opined that “No statute authorizes the punishment of anyone for a libel- or infringement of trademark with a huge monetary fine-which goes not to the public exchequer, but to private coffers.” And while I agree that HUL was decided in the context of punitive damages and not general damages, in the present case I think the above opinion expressed by Justice Bhat seems fitting. Am I missing any crucial Commercial Courts Act or litigation angle here? Please let me know in your comments.
Also speaking of high damages, there is another decision by the Delhi High Court in Microsoft Corporation & Anr vs Rupesh Waidande & Anr where the court imposed damages worth INR 20,00,000/-. The Plaintiff had originally sought damages worth INR 27,34,785/- on the basis of the Local Commissioner’s report and its price lists, however, the court awarded damages worth INR 20,00,000/- along with costs of the proceedings.