An anti-suit injunction has always been a matter of interest when it comes to providing parties provisional relief. Anti-suit injunctions are orders passed by courts to restrain parties from commencing or pursuing proceedings in another jurisdiction or forum. While Indian Courts have the power to grant an anti-suit injunction to a party over whom it has personal jurisdiction, it is advised that the injunction be granted sparingly and not as a matter of routine. Recently, a single Judge of the High Court of Delhi (“Court”) had occasion to delineate the meaning and scope of such suits.
The suit was filed by Hindustan Times Media Limited (“HT Media”), an Indian media house seeking a permanent injunction against Brain link International Inc, (“Defendants”) a company incorporated in the United States, from using the domain name www.hindustan.com (“disputed domain name”), or adopting any mark deceptively similar or identical to its registered trademark, “Hindustan” and “Hindustan Times”. HT Media also asked to restrain the Defendants from proceeding with the suit ( Brainlink International, Inc. v. HT Media Ltd. & Anr. already filed before the United States District Court for the Eastern District of New York or from instituting or filing any other proceeding anywhere in relation to the subject matter of this suit.
HT Media, one of India’s foremost media houses, with operations in print media, radio, internet, etc., has statutory and common law rights over the trademarks “Hindustan” and “Hindustan Times”, in use continuously and uninterruptedly since 1920. The Defendant is a New York based Corporation, in the business of providing IT related support services. The Defendant in 1996 bought the disputed domain name www.hindustan.com which led to the present allegations of infringing and cyber squatting in violation of HT Media’s trademark rights.
HT Media issued a Cease and Desist Notice in December 2019 to acquire the disputed domain name but the Defendants in their response of February 2020 quoted an amount of US $ 3 Million to sell the disputed domain name. When HT Media responded in March 2020 with a counter offer, the Defendants filed a Declaratory Suit for non-infringement against HT Media in the United States District Court for the Eastern District of New York.
Three issues came up in the course of the hearing: firstly, were the Defendants guilty of trademark infringement and passing off by using HT Media’s marks without authorisation or consent and by squatting on the domain name?; secondly, did the suit fall under the personal jurisdiction of the Delhi court; and thirdly, was this a fit case for the grant of an anti-suit injunction?
- Trademark infringement by adopting domain name in bad faith
The Court noted that the Defendant had not used the disputed domain name since 2000. The Court held that a mere passive holding of the disputed domain name, without any use, evidences bad faith of the Defendants under Clause 4 of the Uniform Dispute Resolution Policy (UDRP) and amounts to trademark infringement. It referred to the case of Arun Jaitley v. Network Solutions Private Limited where it was held “the use of a well-known name without any reason by the Defendants as a Domain name and keeping in possession the disputed domain name without sufficient cause is violative of the ICANN policy and can be safely held to be a bad faith registration.”
The Court also observed that the Defendant’s bad faith was evident from the increase in the offer price for the disputed domain name from US $ 1 Million to US $ 3 million when approached by HT Media to buy the same.
The Court concluded that the existence of the disputed domain name would cause confusion and lead to erosion of HT Media’s reputation and goodwill and weakening of the value and strength of its trademarks, amounting to dilution and loss of business.
The next question was whether the Defendants were amenable to personal jurisdiction of this Court, and whether injustice would be caused to HT Media if the injunction was refused. Additionally, the Court also had to look into which would be the Forum Conveniens, i.e. the Forum with the appropriate jurisdiction, in case there were more than one Forum available to the Plaintiffs.
Citing section 134(2) of the Trademarks Act, HT Media contended that this Court would have jurisdiction as it had registered its trademarks and carries out business within its jurisdiction, and that it did not have any office in the USA. Additionally, the violation of the registered trademarks had arisen within India, as a result of which the suit ought to be tried in India itself. Lastly, HT Media argued that if an injunction were not granted, it would have to approach the New York court for redress, which ‘has no jurisdiction over the Plaintiffs or the subject matter of the dispute’.
The Court agreed with HT Media, observing that the notice and the ensuing email correspondence in which HT Media had shown interest in buying the disputed domain took place in Delhi, and preceded the New York suit, and was hence merely a counter-blast to HT Media’s legitimate exercise of their rights and availment of remedies. Thus, a substantial and integral part of the cause of action for HT Media to file the present suit, had arisen within the jurisdiction of this Court.
- Grant of Anti Suit injunction
Finally, the Court tackled the permissibility of the grant of anti- suit injunction. An anti-suit injunction involves a restraint on a party seeking to approach a foreign court. When an Indian Court is approached by a party for stay of its own proceedings, it delves into issues such as: Forum Conveniens, i.e. deciding on the appropriate forum; and the jurisdictional clause as to the choice of court depending on the dispute at hand etc. In determining which would be the appropriate forum, it takes into account the forum with which the dispute has a “real” and “substantial” connection.
In this case, the Court relied on the principles laid down in Modi Entertainment Network & Another v. W.S.G. Cricket Pte. Ltd. , wherein:
(1) In exercising discretion to grant an anti-suit injunction the court must be satisfied of the following aspects:
- (a) the defendant, against whom injunction is sought, is amenable to the personal jurisdiction of the court;
- (b) if the injunction is declined, the ends of justice will be defeated and injustice will be perpetuated; and
- (c) 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 exercise of its discretion to grant 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 anti-suit injunction in regard to proceedings which are oppressive or vexatious or in a forum non-conveniens. …………
(7) The burden of establishing that the forum of choice is a forum non-conveniens or the proceedings therein are oppressive or vexatious would be on the party so contending to aver and prove the same.
According to these principles, the Court thus, had to examine whether the Defendants were amenable to the personal jurisdiction of this Court, whether injustice would be caused to HT Media if the injunction were refused, and which would be the Forum Conveniens, if there was more than one forum available.
The Court was of the prima facie opinion that the suit before the Eastern District of New York, is vexatious and oppressive, as HT Media has not asserted trademark rights in the US and did not carry on any business there. Further HT Media’s trademarks were registered in India and its goodwill spilled over internationally.
After unsuccessfully attempting to sell the disputed domain name for an exorbitant amount in an attempt to profiteer, the Defendants filed a suit to further their intention to frustrate HT Media from availing appropriate remedies. Accordingly, the Court held that HT Media has successfully legitimised its trademark infringement action and made out a prima facie case for grant of an anti-suit injunction.
The Court granted an interim ex-parte injunction in favour of HT Media temporarily restraining the Defendants from proceeding with the suit in New York, or instituting any proceeding in any other court, in relation to the disputed domain name or to any issue which formed the subject matter of the present suit. The Court also restrained the Defendants from creating third party rights in the disputed domain name or using or any other mark identical/deceptively similar to HT Media’s trademarks.
The decision is yet another step in a series of judgments upholding trans border reputation and strengthening well-known marks and the associated goodwill. However, considering it is still at interim stage, Brainlink International Inc.’s defence is yet to be seen.. Further, it remains open as to whether Indian courts will uphold the grounds of personal jurisdiction and competent jurisdiction in deciding on the appropriate forum for adopting identical domain names, considering the Defendants have no presence in its jurisdiction.
The concept of personal jurisdiction when it comes to accessibility of websites to the relevant public is especially contentious. ‘Minimum contacts’ is a term used in the United States law of civil procedure to determine when it is appropriate for a court in one state to assert personal jurisdiction over a defendant from another state. Courts have divided websites into three categories, passive websites, interactive websites and commercial websites. American Courts have held in various precedents that a passive web page is enough to establish personal jurisdiction. These principles have not appeared in Indian courts as yet, but it would be a straightforward defence for the Defendant to argue that it has ‘minimum contact’s and is therefore, not liable to the personal jurisdiction of the Indian Court.
No specific rules govern the grant of an anti-suit injunction in India. Courts in India, being courts of both law and equity, usually issue injunctions on grounds of equity and to prevent miscarriages of justice. The test adopted most recently is whether the foreign proceedings are ‘oppressive or vexatious’. The objective is to determine how best the interests of justice will be served, that is, whether an anti-suit injunction is necessary in the interest of justice. Jurisprudence on this issue is slowly developing, and this case is a significant addition to this material.
2 (Civil Action No.1 20-cv-01279))
3 ( 2011 SCC Online Del 2660)
4 ((2003) 4 SCC 341)