The court established that unauthorized use of well-known trademarks through misleading domain names constitutes trademark infringement requiring injunction.

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