Delhi High Court: A Single Judge Bench of Amit Bansal, J. granted interim injunction in favour of WhiteHat Education Technology Private Limited and directed to suspend access and operation of the impugned website/domain name whitehatsr.in and take down the domain name.
Background
Plaintiff was an edutech start-up offering online education services and in 2020, the plaintiff was acquired by Think & Learn (P) Ltd. Plaintiff had registrations of the mark ‘WhiteHat Jr’ as well as other derivatives in Class 38. Plaintiff used the domain name whitehatjr.com, which was registered in 2018 and on account of exclusive and extensive use of the plaintiffs’ trade mark, the mark ‘WhiteHat Jr’ had acquired the status of ‘well-known’ trade mark.
Submissions on behalf of the Plaintiff
In 2022, plaintiff came across the defendant’s website www.whitehatsr.in, who was in the business of providing services pertaining to digital marketing under the marks ‘WhiteHat Sr’ (impugned mark). Further, it was submitted that the impugned marks were being used as part of the defendant’s domain name whitehatsr.in, which was registered in 2020.
Analysis, Law, and Decision
The Court noted that a legal notice was sent by the plaintiff to the defendant to cease the usage of the impugned mark, but the defendant claimed that the impugned marks were different from the marks of the plaintiff’s and were being used for different services, that is, consultancy services.
The Court opined that after comparing the marks and the domain name of the plaintiff and the defendant, it was clear that the marks used by the defendant were deceptively similar to those of the plaintiff. Further, the Court opined that “the replacement of the suffix ‘Sr’ in ‘WhiteHat Jr’ would not result in a material difference to distinguish the marks of the defendant from those of the plaintiff. The consumers would be misled that the defendant was in some manner associated/affiliated with the plaintiff or the services were connected to that of the plaintiff”.
The Court held that prima facie a case had been made out on behalf of the plaintiff and balance of convenience was also in favour of the plaintiff. Further, the Court held that irreparable harm would be caused to the goodwill and reputation of the plaintiff if the defendant continued to use the impugned mark.
The Court held that the defendant and its agents, representatives and /or all other acting for and on its behalf were restrained from using the mark ‘WhiteHat Sr’ or any other deceptively similar variant thereof as a trade mark, trade name, domain name, as a part of its email address/es or in any other manner which amounted to infringement of the plaintiff’s trade marks. Further, the Court directed Godaddy.com LLC to suspend access and operation of the impugned website/domain name whitehatsr.in and take down the domain name of the defendant. The Court also directed the defendant to take down all social media pages including Facebook, Instagram, and LinkedIn, which infringed the plaintiff’s trade marks.
The matter would next be listed on 21-3-2023.
[WhiteHat Education Technology (P) Ltd. v. Vinay Kumar Singh, 2022 SCC OnLine Del 4474, decided on 12-12-2022]
Advocates who appeared in this case :
For the Plaintiff: Advocate Shwetasree Majumdar;
Advocate Prithvi Singh;
Advocate Rohan Krishna Seth;
Advocate Archita Nigam.
