Misuse of IP rights on internet has augmented in recent times and the frequency of domain name litigations being witnessed is testimony to the same. In this issue, we discuss a recent case decided by the Delhi High Court, namely, Info Edge (India) Ltd. v. Mr. Rakesh Kalia, wherein the misuse of IP rights of job portal www.naukri.com by the Defendant by coining a deceptively similar domain name, www.naukrinews.com was in issue. The case in detail has been discussed here below:
Brief Facts of the Case
In the instant case, Info Edge (India) Ltd. (hereinafter referred to as “Plaintiff”) had prayed to restrain Mr. Rakesh Kalia (hereinafter referred to as “Defendant”) from infringing its trademark, passing off, unfair competition and infringement of copyright.
Contentions of the Plaintiff:
The Plaintiff claims to be a leading internet company, incorporated in 1995 which operates the job portal www.naukri.com. The portal provides online recruitment classifieds and related services for job seekers and corporate customers.
- The Plaintiff claimed that over the years, the impugned portal had grown to be the country’s leading job portal having, as on June 30, 2015, a database of about 42 million job seekers.
- That the word “NAUKRI” forms the most significant and distinctive part of the Plaintiff’s subsidiary, Naukri Internet Services Private Limited, which was incorporated in the year 1999.
- That Plaintiff is also the owner of a number of domain names other than “NAUKRI.COM” which contains the word, “NAUKRI” as a prominent feature.
- That it is the registered proprietor of the word mark, “NAUKRI” in respect of computer software in classes 9 and 16.
- That it has extensively advertised its services under the mark “NAUKRI” and in the year 2014-2015, it had spent over INR14 crores / 140 Million to promote “NAUKRI.COM” website and earned revenue over INR 340 crores / 3.4 Billion.
- That by virtue of extensive use, advertisements, registrations and the quality of services rendered thereunder, the trademark and domain name “NAUKRI” / “naukri.com” had become exclusively identified with the Plaintiff.
- That the Defendant, who is an Indian national, had registered a deceptively similar domain name www.naukrinews.com.
- The Plaintiff further alleged that the Defendant is also the Managing Director of a company named Mellcon Engineers Pvt. Ltd., which was at one time, a customer of the Plaintiff’s job portal, “NAUKRI.COM” and the said company was used by the Defendant to misuse the Plaintiff’s database to promote its own activities under the domain name, “naukrinews.com”.
- That in 2011, Plaintiff had received an e-mail from one of its customers, wherein it was stated that he had registered himself with “NAUKRI.COM”, but he had been receiving emails from other consultancies for the same profiles, which were on the Plaintiff’s website.
- On learning this, the Plaintiff immediately wrote an e-mail to the Defendant and called upon him to cease and desist from sending such e-mails to job seekers, who were registered with “NAUKRI.COM”. However, the Defendant refused to make such compliances.
- That the Plaintiff has been receiving several complaints from its clients with regard to the Defendant’s attempt to use their job profiles on his job portal, www.naukrinews.com without their consent.
- That in view of rising complaints, the Plaintiff was compelled to take legal action against the Defendant and hence instituted the present suit.
- The Plaintiff has alleged that the Defendant’s companies register themselves as prospective employers on the Plaintiff’s website “NAUKRI.COM” under different names and thereby access its database. Thereafter, they use the said database to bombard the customers of “NAUKRI.COM” with spam e-mails from domain names like, naukrinews.com that are similar to “NAUKRI.COM” and the unsuspecting customers pay up for the said services to the point that sometimes, they have been told that the job portal, naukrinews.com is a sister concern of the Plaintiff.
The Defendant did not appear in the case.
Court’s holding in the case:
The Delhi High Court, in view of the submissions and averments made in the plaint alongwith the evidence placed on record, prima facie found that the Plaintiff was entitled to grant of an ex parte ad interim injunction.
Thus the Court, till the next date of hearing, restrained the Defendant from using the marks NAUKRINEWS.COM, NAUKRINEWS.CO.IN, NAUKRINEWS.IN or any other mark comprising of the word, “NAUKRI” that is likely to deceive the public into believing that the Defendant’s services are in some manner connected with the Plaintiff’s registered trademark “NAUKRI” and/or job portal.
Misuse of IP rights over the internet is highly vulnerable owing to the ease of access it offers. The facts of the instant case showcase a situation wherein the trademark of right holder has been allegedly misused and encashed upon by the Defendant for its services.
(*‘Naukri’, a Hindi word, translated in English means Job)