EICHER LIMITED Vs. WEB LINK INDIA

JUDGEMENT

(1.) Plaintiff No.1 is a flagship company of the group of companies popularly know as EICHER Group which was started in 1948. Plaintiff No.2, Eicher Goodearth Limited (EGL) promoter company of the EICHER Group of companies. EGL, plaintiff No.2, is the proprietor of the mark registered as "EICHER" and the plaintiff No.1 and other companies of the EICHER Group are entitled to use said mark on account of authorisation/licence from EGL. The trade mark "EICHER" registered in India and abroad under various classes. The EICHER logo is also registered with the copyright office.

(2.) The plaintiffs over a period have achieved great reputation and goodwill in India and abroad and deal with the manufacturing and marketing of Tractors, Light Commercial Vehicles, Automotive Gears, Motorcycles, Generating sets, Diesel engines and Export of vehicles etc. Over a period of time the mark "EICHER" has acquired reputation and goodwill and is associated exclusively with the plaintiff. Apart from the word "EICHER" being used as a trade mark on the products of the plaintiff has also been adopted by the plaintiff as a domain name on the internet. In para 11 of the plaint the plaintiffs have given the details of various domain names registered using the name "EICHER". The plaintiffs' case is that they came to know in April,2001 that the defendants without any authorisation, permission or license of the plaintiff got illegally and unlawfully registered on 1.3.2000 the domain name "eichertractors.com" in their own name. On visiting the website of Network Solutions Inc. (Registering Authority of the domain names) it was confirmed that the defendants had got the same registered in their own name. The defendants got the domain name registered in bad faith and with a view to encash upon the reputation and goodwill enjoyed by the plaintiff. Confusion is bound to be created as any in user of this domain name would go to defendant's web site believing it to be that of the plaintiff. This according to the plaintiff constitute passing off action by the defendants and that its activities are taken to be that of the plaintiff or connected with the plaintiffs. The plaintiffs on coming to know of the unauthorised registration of the domain name "eichertractors.com" in the name of the defendants, filed the present suit for permanent injunction restraining the defendants from using the mark "EICHER" and/or "eichertractors.corn" as part of their domain name for transfer of the same to the plaintiff and for damages and delivery up etc. Along with the suit the plaintiffs also moved an application under Order 39 Rules 1 and 2 CODE OF CIVIL PROCEDURE, 1908 praying for ad-interim injunction against the defendants. The suit and the application came up for hearing on 10.9.2001 when an ex-parte injunction against the defendants was granted, restraining them from using the trade mark "EICHER" and/or "EICHERTRACTORS.COM" as part of their domain name or from transferring the said domain name to any other person or creating any third party interest in that domain name. The defendants were also restrained from launching any website under the aforesaid domain name. On receipt of the summons, the defendants put in appearance on 17.01.2002 when they were granted time to file their written statement. In the meanwhile, the plaintiffs filed the present application under Section 151 CODE OF CIVIL PROCEDURE, 1908 for direction to the defendants to transfer the domain name "eichertractors.com" to the plaintiffs subject to the final orders to be passed in the suit and on plaintiffs giving an undertaking that if the present suit is decided against the plaintiffs the domain name would be transferred back to the defendants. Notice of this application was issued to the defendants. They filed reply to the application. The defendants also filed a short reply to the plaint. By this order, I proposed to dispose of the said application.

(3.) The defendant No.1 is a web hoisting company and is engaged in creation of websites and domain names. The defendants do not dispute that they got the domain name "eichertractors.com" registered with the Registering Authority Network Solutions Inc. Their main defence is that in relation to the domain name, suit for passing off action is not maintainable. Their further defence is that the domain name "www.eichertractors.com" was got registered on 01.03.2000 at the instance of the plaintiff and at their own costs and the plaintiffs have failed to make the payment of Rs.84,900/- as per their invoice No.248 dated 29.05.2000. The defendants are ready and willing to transfer the domain name in favour of the plaintiffs on receipt of the entire costs allegedly incurred by them for registration of the said domain name. Learned counsel for the defendants contends that there cannot be an action of passing off with regard to the domain name "www.eichertractors.com" as the services rendered by the plaintiff and the defendants cannot be said to be goods within the meaning of Indian Trade Marks Act, which relates only to goods and not services. It is submitted that the persons using internet and seeking to reach the internet site are technically educated and literate persons and, therefore, there is no possibility of any customer reaching the internet site of the defendants with the intention of reaching the internet site of the plaintiff and thus it is not a case of unwary customers which is applicable in a case of infringement of trade mark and passing off.