Trademark infringement by unauthorized use of domain names containing registered trademarks.

JUDGMENT

C. Hari Shankar, J. - CS(COMM) 240/2021

1. The plaint alleges infringement, by Defendant 1, of the trademarks "WESTERN DIGITAL", "WD", "MY PASSPORT" and "MY CLOUD" (referred to, jointly, in the plaint as the "Western Digital Trademarks").

2. The plaintiff claims 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 the Western Digital Trademarks.

3. The plaint alleges that Defendant 1 has registered the domain names "wd-my-passport.com", "wdmypassport.co" and "support-wdc.com". In registering these domain names, the plaint alleges that the defendants are attempting to make it appear that they are associated with the plaintiff by incorporating, in the domain names, the plaintiffs registered trademarks "WD" and "MY PASSPORT".

4. The plaintiff claims to have adopted its corporate name and trademark "Western Digital" in July, 1971. It is further asserted that the plaintiffs logo is its corporate logo and is present on all its products, labels and packaging. "Western Digital", it is asserted, is the most essential feature of the plaintiffs corporate name. The plaintiff claims to be using the registered trademarks "Western Digital" since 1997, "WD" since 1999 and "MY PASSPORT" since 2008. The plaint also asserts that, by dint of long and established user, these trademarks merit being regarded as "well-known trade marks" within the meaning of Section 2(1)(zg) of the Trademarks Act, 1999.

5. The plaint provides a tabular depiction of the various registered trademarks of the plaintiff, thus:

These trademarks, it is asserted, continue to remain valid and subsisting in law till date.

6. The plaintiff also claims to be the owner of various websites, the domain names of which contain "WESTERN DIGITAL" or "WD", which are used for marketing and selling "WD" products. Some of these are:

(i) www.wd.com - created on 25th May, 1994,

(ii) www.wdc.com - created on 15th May, 1992,

(iii) www.westerndigital.com - created on 21st January, 1998,

(iv) www.wdstore.com - created on 23rd May, 2001,

(v) www.westerndigital.info - created on 12th September, 2001,

(vi) www.westerndigital.biz - created on 28th March, 2002

and

(vii) www.westerndigital.asia - created on 17th March, 2008.

7. The plaintiff claims to have received, on 30th April, 2021, an email from one of its customers, informing the plaintiff that it was being attempted to be impersonated and that unauthorized customer support, for the plaintiffs products, was being provided by others for commercial consideration. It is claimed that US $ 199 was being charged for providing the said support, whereas the plaintiff asserts that it does not charge any sum for customer services provided by it for its products.

8. On enquiry, the plaintiff came to know that Defendant 1 was responsible for the said fraudulent representation using its domain name "www.wd-my-passport.com", and also came across the telephone number of Defendant 1. The plaint claims that the domain name manager of the plaintiff, on inquiry, found that the registrant of the aforesaid domain "www.wd-my-passport.com" was Defendant 1, Sumit Pandey. Defendant 1 is claimed to be also owning the domain names "www.wdmypassport.co" and "www.support-wdc.com".

9. On its website https://www.wdmypassport.co, it is claimed that Defendant 1 provides basic information on how to use and set up some of the plaintiffs products, including "WD PASSPORT", "MY ELEMENTS", "MY BOOK", "WD BLACK", "MY CLOUD" and "MY CLOUDHOME", thereby misleading customers into believing that Defendant 1 is associated with the plaintiff a