Casio India Co. Limited vs Ashita Tele Systems Pvt. Ltd. and Another

Rajiv Sahai Endlaw, J.—The senior Counsel for the plaintiff while making final arguments on 9th July, 2008 and as recorded in the order sheet of that date has confined the claim in this suit to that of permanent injunction for restraining the defendant No. 1 from applying for registration of the domain name with the word CASIO, with the defendant No. 2 or with any other agency.

The issue involved in the present suit is as to whether a person can acquire a domain name with the name which is the trademark of another party. The trade mark subject matter of the present suit is CASIO. The plaintiff claims to be a 100% subsidiary of M/s Casio Computer Company Limited, Japan which is the registered owner, including in India, of the trademark CASIO for various products. The defendant No. 1 registered the domain name www.casioindia.com in its own name with the defendant No. 2 which is the Registrar of domain names. The plaintiff instituted the present suit objecting to the same. The plaintiff alongwith the suit also filed an application for interim relief. The said application for interim relief came to be decided by order dated 8th September, 2003 vide which it was held that the defendant No. 1 cannot be permitted to continue with the use of trademark and brand name CASIO in its domain name and the defendant No1 was restrained from using the name CASIO in its website www.casioindia.com. The record reveals that the defendant No. 1 preferred an appeal before the Division Bench of this Court against the said order but this appeal was dismissed in default on 25th April, 2005. The following issues were framed in this suit on 3rd March, 2005:

Whether the suit is bad for non-joinder of necessary parties? OPD

Whether the suit has not been properly valued for purposes of court fee and jurisdiction? OPD

Whether the plaintiff does not have the locus standi to maintain the present suit? OPD

Whether this Court has no jurisdiction to entertain the suit? OPD

Whether the suit is barred by limitation? OPD

Whether the domain name of the defendants is identical and confusingly similar to the plaintiff''s trade mark? OPP

Whether the defendant No. 1 has no right or legitimate interest in respect of the domain name in question? OPP

Whether the domain name was registered in favour of the plaintiff and is being used by the defendants in bad faith? OPP

Whether defendant No. 1 is gaining illegal and unauthorized benefit out of illegal usage of the domain name to the detriment of the plaintiff? OPP

To what relief is the plaintiff entitled.

The defendant No2 did not contest the suit. The defendant No. 1 also stopped appearing w.e.f. 8th August, 2006 and were proceeded ex parte on 6th September, 2006 and remain ex parte. The plaintiff led ex parte evidence by filling affidavit by way of examination-in-chief. The senior Counsel for the plaintiff during the course of hearing further informed that the defendant No. 1 has pursuant to the order dated 8th September, 2003 (supra) already de-registered the objectionable domain name. The apprehension of the plaintiff is that the defendant No. 1 may again apply for registration of domain name with the trademark of the plaintiff with some other agency or even with the defendant No. 2 in the event of any delay on the part of the plaintiff in renewing the registration of its domain name.

The matter has been considered at length in the order dated 8th September, 2003 on the interim relief claimed by the plaintiff. The defendant has thereafter not led any evidence and has not even cross examined the witness of the plaintiff. There is thus no change in position as existed on 8th September, 2003. Even though in the absence of defendant issue-wise finding is not required, it is noted that onus of issues 1 to 5 was on the defendant, which has not been discharged.

The name CASIO has a transborder reputation. There can be no doubt that the defendant No. 1 if permitted to use the word CASIO in its domain name would be able to deceive the public at large and the public at large is likely to believe that the goods/services offered by the defendant No. 1 are sponsored by the plaintiff. This is not the position. It is the case of the plaintiff that though at one time the proprietor of the defendant No. 1 was appointed as the distributor of the plaintiff but the said agreement has now come to an end and the defendant No. 1 has no authorization to represent himself to be connected with the plaintiff in any manner whatsoever. This Court has, while dealing with the prayer of the plaintiff for interim relief, held that if the defendant is permitted to carry on business under a name which is sufficiently close to the name under which the plaintiff is trading and that name has acquired reputation, the public at large is likely to be misled that the defendants'' business is the business of the plaintiff or is a branch or department of the plaintiff and the defendant in such a case becomes liable for an action in passing off. The mode of carrying on business, is increasingly shifting to internet and if the defendant is permitted to have the trademark of the plaintiff in its domain name, as aforesaid, the defendant No1 would be able to pass off its goods and services as that of the plaintiff and which cannot be permitted in law. I hold that the domain name earlier adopted by the defendant is identical and confusingly similar to the trade mark of the plaintiff. The witness of the plaintiff has proved that Casio, Japan is the registered owner of trade mark Casio in India and has registered several domain names like casio.com, world.casio.com, casio.at, etc; that the plaintiff is 100% subsidiary of Casio, Japan and has exclusive right to use trademark Casio in India. I hold that the plaintiff is entitled to maintain this suit and the defendant has no right or legitimate interest in the domain name earlier adopted and further hold that the defendant had registered and used the same in bad faith and unless restrained from use in future will derive illegal advantage for itself and to the detriment of the plaintiff.

I, therefore, pass a decree of permanent injunction in favour of plaintiff restraining the defendant No. 1 and its employees, agents, nominees, assigns from using the trademark/name CASIO as a domain name and further restraining the defendant No. 1 from registering any domain name with the defendant No. 2 or with any other agency with the word CASIO alone or in conjunction with any other word and/or deceptively similar thereto. However, in the facts of the case, the plaintiff is left to bear its own costs. The decree sheet be prepared accordingly.