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IN THE HIGH COURT OF DELHI
C. Hari Shankar, J.
Western Digital Technologies, Inc. - Appellant
Versus
Sumit Pandey - Respondent
CS(COMM) 240 of 2021
Decided On : 09-11-2021
Important Points
Subject
Intellectual Property - Trademark Law
Act Referred
TRADE MARKS ACT: S.135, S.2, S.29
Headnote
(B) Legal requirements for establishing trademark infringement - Demonstrable similarity between registered trademarks and the accused marks is key; unauthorized use leading to confusion among consumers is critical. (Paras 13-16)
(C) Court found prima facie infringement of trademarks - Domain names transferred to plaintiff by WIPO; plaintiff not pressing for damages therefore case resolved without further adjudication. (Paras 14-17)
Facts of the case:
The plaintiff, a manufacturer of storage devices, claimed that Defendant 1 registered misleading domain names implicating the plaintiff’s trademarks, allegedly charging for unauthorized customer support.
Findings of Court:
Court decreed permanent injunction preventing Defendant 1 from using domains infringing the plaintiff's trademarks after determining prima facie infringement.
Issues: Primary issues concerned the unauthorized use of trademarks through domain names by Defendant 1 and plaintiff's rights based upon previous infringing actions.
Ratio Decidendi: The trademarks at issue were found to be well-known, and the unauthorized use through domain names was deemed infringing under the law, necessitating injunction.
Result: Suit decreed as per the terms specified, restraining Defendant 1 from further infringement.
| Table of Content |
|---|
| 1. infringement of trademark rights (Para 1 , 2 , 3 , 4 , 5 , 6) |
| 2. fraudulent misrepresentation of services (Para 7 , 8 , 9 , 10) |
| 3. prayer for injunctions and domain blocking (Para 11 , 12) |
| 4. court's preliminary findings of infringement (Para 13 , 14 , 15 , 16) |
| 5. decree in favor of plaintiff (Para 17) |
| 6. final order and disposal of application (Para 18 , 19) |
ORDER (Oral) 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 plaintiff's 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 plaintiff's 
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 plaintiff's 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 TRADE MARKS ACT , 1999.
5. The plaint provides a tabular depiction of the various registered trademarks of the plaintiff, thus:
| Trade Mark | Number | Class | Date |
| WESTERN DIGITAL | 1345682 | 9 | March 18, 2005 |
| WESTERN DIGITAL | 2646539 | 35 & 37 | December 20,2013 |
| WD | 1349235 | 9 | April 6, 2005 |
| WD | 2491589 | 9 | March 7, 2013 |
| 1325732 | 9 | December 14, 2004 |
| 2646540 | 35 & 37 | December 20,2013 |
| MY PASSPORT GO | 3792265 | 9 | March 29, 2018 |
| MY PASSPORT | 1695178 | 9 | June 4, 2008 |
| MY CLOUD | 2505854 | 9 & 42 | April 2, 2013 |
| MY ELEMENTS | 2523270 | 9, 16, 42 | May 1, 2013 |
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 plaintiff's 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 n
