In this case, HT Media Ltd. (Plaintiff No. 1) is engaged in the business of print media, internet, radio, etc. and is one of the foremost media houses in India with its leading English publication ‘Hindustan Times’. Plaintiff No. 2 is a Subsidiary of Plaintiff No.1 and is also engaged in the business of print media with its Hindi leading publication ‘Hindustan’. Plaintiff Nos. 1 and 2 belong to the ‘Hindustan Times’ Group.

Plaintiff is a registered proprietor of the trademarks ‘Hindustan’ and ‘Hindustan Times’ in India and enjoys both statutory rights under the Trade Marks Act, 1999 (the Act) as well as rights under the common law, arising from goodwill and reputation with respect to the Trademarks. The Plaintiff submits that the trademarks have been continuously and uninterruptedly used by the Plaintiffs and its Group or Subsidiaries, since the 1920s and 1930s, respectively, and form a necessary and dominant part of the corporate name of the ‘Hindustan Times’ Group.

It was further submitted that Brainlink International Inc. (hereinafter “the Defendant No.1”) is a New York-based Corporation and claims to be engaged in the business of providing IT related support services to its customers. According to the website of Defendant No. 1 (www.brainlink.com), Defendant No. 2 is the co-founder of Defendant No.1 and the main person in the decision-making activities of Defendant No.1. Also, the Defendant No.1 is the registrant or owner of the Domain name www.hindustan.com.

Additionally, it was submitted that the Defendants are infringing and cybersquatting, in violation of the Plaintiffs’ Trademark rights in their Marks ‘Hindustan’ and ‘Hindustan Times’. In view thereof, the Plaintiffs had issued a cease and desist Notice dated 24.12.2019 to the Defendants to acquire the Domain name but the Defendants quoted an exorbitant amount of US $ 3 million in the reply dated 14.02.2020 to sell the Domain name. When the Plaintiffs responded on 02.03.2020 with a counteroffer, the Defendants clandestinely filed a Declaratory Suit for non-infringement against the Plaintiffs in the United States District Court for the Eastern District of New York, around 09.03.2020.

It is crucial to note that the Defendants had launched the website to provide ‘daily news content relating to Indian – American interests, stock-market reports from India and America and interactive polls daily on Indian – American issues’. Moreover, the Defendants have no use for the Domain name other than to profit from squatting on the same.

The Defendants had acquired the impugned domain name in the year 1996 in bad faith to ride upon the goodwill and reputation of the Plaintiffs’ publications. Thus, use by the Defendants, without any authorization or license or consent from the Plaintiffs amounts to Trademark infringement under Section 29 of the Act and passive holding of the Domain name amounts to Passing Off and unfair competition of the Plaintiffs’ Trademarks.

Therefore, the Plaintiffs approached the Delhi High Court to restrain the proceedings of a Foreign Court by an anti-suit injunction as Defendants are amenable to the personal jurisdiction of this Court and are further willing to sell the domain name to the Plaintiffs.

Issues

1. Whether the High Court in the present case has the jurisdiction to restrain the proceedings of a Foreign Court by an anti-suit injunction?
2. Whether the Plaintiff is entitled to a permanent injunction against the Defendants from instituting or filing any other suit/applications/proceedings in any Court of Law in relation to the impugned Domain name or any issue which forms the subject matter of the present Suit.

Judgment

The Court relied on Modi Entertainment Network & Another v. W.S.G. Cricket Pte. Ltd., (2003) 4 SCC 341 wherein principles have been laid down in case of grant of anti-injunction suit as under:

1. In exercising discretion to grant an anti-suit injunction the court must be satisfied with the following aspects:
1. the defendant, against whom the injunction is sought, is amenable to the personal jurisdiction of the court;
2. if the injunction is declined, the ends of justice will be defeated and injustice will be perpetuated; and
3. the principle of comity — respect for the court in which the commencement or continuance of action/ proceeding is sought to be restrained — must be borne in mind.
2. In a case where more forums than one are available, the court in the exercise of its discretion to grant an anti-suit injunction will examine as to which is the appropriate forum (forum conveniens) having regard to the convenience of the parties and may grant an anti-suit injunction in regard to proceedings which are oppressive or vexatious or in a forum non-conveniens.

The Court further observed that usually there are three tests which are repeatedly employed by the Courts to make the determination and which are:

1. defendant purposefully availed himself of acting in the Forum State or causing a consequence in the Forum State;
2. cause of action must arise from the defendant’s activities there;
3. the acts of the defendant or consequences caused by the defendant must have a substantial enough connection with the forum to make an exercise of jurisdiction over the defendant reasonable.”
   

Therefore, the Court held that it is evident from the complaint filed by the Defendant in the USA, that the Defendant had not used the Domain name www.hindustan.com since 2000. Thus, it is crystal clear that the sole motive of the Defendants for getting the impugned domain name registered was only to exploit the goodwill of the Plaintiff and set a classic example of cybersquatting.

Thus, the Court emphasized bad faith on the part of the Defendants when the Plaintiffs approached the Defendants to buy the domain name and the exorbitant price was quoted against such offer. Further, the Court stressed on the conduct of the Defendants in quoting an exorbitant amount to sell the impugned Domain name to a Trademark owner or to a third party, is evidence of bad faith, as also held by this Court in Acqua Minerals Ltd. v. Pramod Borse and Anr.

Further, the Court held that a substantial and integral part of the cause of action in terms of Section 20(c) of Code of Civil Procedure, 1908 had arisen well within the jurisdiction of the Court and looking at the case as set out by the Plaintiff, it prima facie also had personal jurisdiction over the Defendants.

Thus, on the aforementioned, the Court concluded that the suit before the Eastern District New York is vexatious and oppressive as the Plaintiffs had never asserted trademark rights in the United States. Further, due to the bad faith and ill-conduct of the Defendants, the Plaintiff’s goodwill will be spoiled globally.

Therefore, the Court held that the Plaintiffs have made out a prima facie case for grant of an anti-injunction suit and restrained the Defendants from proceedings further before the US District Court or any other Court of Law or Authority with regard to the subject matter of the present suit until the next date of hearing i.e. 29.05.2020.