Delhi High Court - OrdersAtc Ip Llc & Anr vs Owner Of <Https://Atcindiatower. In/> ... on 19 December, 2023Author:Prathiba M. SinghBench:Prathiba M. Singh$~4\n                                    *          IN THE HIGH COURT OF DELHI AT NEW DELHI\n                                    +                                   CS(COMM) 246/2019 & I.A. 19488/2023\n                                               ATC IP LLC & ANR.                                                            ..... Plaintiffs\n                                                              Through:                                     Mr. Neel Mason, Mr. Vihan Dang,\n                                                                                                           Ms. Pragya Jain, Mr. Ujjawal\n                                                                                                           Bhargava, Advs (M. 7999640697)\n                                                                                   versus\n\n                                               OWNER OF <HTTPS://ATCINDIATOWER. IN/>\n                                               & ORS                                        ..... Defendants\n                                                              Through: Mr Gagan Gupta, Adv. with Mr\n                                                                       Jaikiran, legal officer of nixi for D-3\n                                                                       (M. 9868066879)\n                                               CORAM:\n                                               JUSTICE PRATHIBA M. SINGH\n                                                        ORDER%        19.12.20231.         This hearing has been done through hybrid mode.2.         The present suit has been filed by the Plaintiffs seeking enforcement\n                                    of its rights in the marks 'ATC India' and 'ATC India Tower'.3.         The Plaintiff No.1- ATC IP LLC. has been engaged in providing\n                                    infrastructure for telecom services, mobile tower installation and services\n                                    relating to telecom operators and site owners. The Plaintiff No.2- ATC\n                                    Telecom Infrastructure Pvt. Ltd. is its Indian subsidiary and is a registered\n                                    infrastructure company. The Plaintiffs provide services to various telecom\n                                    service providers such as Airtel, Vodafone, Jio, etc. The services which areCS(COMM) 246/2019                                                                                   Page 1 of 9This is a digitally signed order.The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.\nThe Order is downloaded from the DHC Server on 21/12/2023 at 22:20:58\n                                     provided include establishment, maintenance and provision of the\n                                    telecommunication infrastructure including towers, antenna systems, power\n                                    supply, battery back-up, pre-fabricated shelter and other ancillary services.4.         The Plaintiffs own the trademark and logo 'ATC' which are\n                                    registered in various classes i.e., 35, 37 and 38. The Plaintiffs also claim\n                                    the copyright in the artistic works of the 'ATC' logo. The Plaintiffs have\n                                    registered various country level and top-level domain names as listed in\n                                    para 14 of the plaint across various jurisdictions including in India.5.         The case of the Plaintiffs is that they own the rights in the following\n                                    trademarks:-,                                                                  ,                       and\n\n\n\n\n                                                                             .6.         In addition, the Plaintiffs also claims rights in the mark 'ATC' since\n                                    1955 globally and in India since 2005. The Plaintiffs also advertises and\n                                    publishes                 its           business                 on            its         two    websites     i.e.,\n                                    https://www.americantower.com and https://www.atctower.in.7.         In the present suit, the Plaintiffs were aggrieved by the registration of\n                                    the       domain             name            https://atcindiatower.in-                      Defendant   No.1   andCS(COMM) 246/2019                                                                                              Page 2 of 9This is a digitally signed order.The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.\nThe Order is downloaded from the DHC Server on 21/12/2023 at 22:20:58\n                                     https://www.atctower.in.net - Defendant No.2 . The said websites have\n                                    identical content as the Plaintiffs' website. The Defendant Nos. 1 and 2,\n                                    also claim to offer identical services as that of the Plaintiffs' and were\n                                    collecting various amounts from prospective customers through bank\n                                    accounts in Punjab National Bank, Canara Bank and State Bank of India.\n                                    They were also conducting their services through mobile numbers which\n                                    were registered with Airtel, Vodafone, Jio and BSNL. These two impugned\n                                    domain names, were thus, injuncted in the present suit and the order dated\n                                    10th May, 2019 was passed. The order dated 5th October, 2023 which\n                                    captures the said order reads as under:-"3. Vide order dated 10th May 2019 this Court granted an ex-\n                                                      parte injunction directing Defendant Nos. 3-NIXI and Defendant\n                                                      No. 4-Radix FZC to is able/block the impugned domain names,\n                                                      as also communicate the details of the persons who had\n                                                      registered the impugned domain names to the Plaintiffs. Further,\n                                                      Defendant Nos. 5 to 7 (i.e. the Banks) were directed to disclose\n                                                      and file before the Court the details of the persons who had\n                                                      opened the bank accounts identified in the plaint as also freeze\n                                                      the said bank accounts, and Defendant Nos. 8 to 11 (i.e. the\n                                                      telecom service providers) were directed to disclose the details of\n                                                      the registered users of the mobile numbers identified in the\n                                                      Plaint."8.         After the restraint order was passed by the Court, the matter\n                                    remained pending. No one has represented the said domain names. The\n                                    operators of the domain names are obviously not interested in contesting\n                                    the matter. Ld. Counsel for the Plaintiff submits that one of the domain\n                                    names i.e., https://www.atctower.in.net has become available and is beingCS(COMM) 246/2019                                                                      Page 3 of 9This is a digitally signed order.The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.\nThe Order is downloaded from the DHC Server on 21/12/2023 at 22:20:59\n                                     registered by the Plaintiffs. Insofar as the https://atcindiatower.in is\n                                    concerned, in order to bring an end to the present suit, NIXI, which was\n                                    earlier deleted from the array of parties, has again been issued notice.9.         Today, Mr. Gupta, ld. Counsel appears for NIXI. Accordingly, NIXI\n                                    is now re-impleaded as a party to the present suit. Mr. Neel Mason, ld.\n                                    Counsel submits that the said domain name was registered by one Mr. Dilip\n                                    Mehra, who is impleaded as Defendant No. 12 through the domain name\n                                    registrar Wild West Domains, LLC. The registry of this domain name is\n                                    NIXI. The said domain name registrar has not appeared before this Court\n                                    neither has the Registrant appeared.10.        Mr. Neel Mason, ld. Counsel for the Plaintiffs further submits that\n                                    Order XIII(A) application has been moved as the operators of the above\n                                    stated domain names are not interested in contesting the matters.11.InRockwool International A/S & Anr. v. Thermocare Rockwool\n                                    (India) Pvt. Ltd., 2018:DHC:6774, the Court while adjudicating observed\n                                    pre-conditions for passing off a summary judgement. The relevant part of\n                                    the same is set out below:"13. In the present case, the Court is at this stage dealing with\n                                                      applications for summary judgment. The kind of cases that can\n                                                      be decided in a summary manner have to be those cases where a\n                                                      party has no real prospect of succeeding in the claim. A perusal\n                                                      of Order XIII A Rule 3 as amended by theCommercial Courts\n                                                      Actreads as under: "Order XIII-A Summary Judgment1.........2.........3. Grounds for summary judgment. - The Court may give a\n                                                      summary judgment against a plaintiff or defendant on a claim if\n                                                      it considers that - (a) the plaintiff has not real prospect ofCS(COMM) 246/2019                                                                      Page 4 of 9This is a digitally signed order.The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.\nThe Order is downloaded from the DHC Server on 21/12/2023 at 22:20:59\n                                                   succeeding on the claim or the defendant has no real prospect of\n                                                  successfully defending the claim, as the case may be; and (b)\n                                                  there is no other compelling reason why the claim should not be\n                                                  disposed of before recording of oral evidence."14. The pre-conditions for passing of a summary judgment under\n                                                  this provision are:i) that there is no real prospect of a party succeeding in a claim;ii) that no oral evidence would be required to adjudicate the\n                                                  matter;iii) there is a compelling reason for allowing or disallowing the\n                                                  claim without oral evidence."12.        Accordingly, inMallcom (India) Limited v. Rakesh Kumar,\n                                    2019:DHC:1643 the ld. Single Judge of this Court has observed:"24. The test for summary judgment, as prescribed in Rule 3 ofOrder XIIIA of the CPCas applicable toCommercial Courts Actis, that "the defendant has no real prospect of successfully\n                                                      defending the claim" and that "there is no other compelling\n                                                      reason why the claim should not be disposed of before\n                                                      recording the oral evidence". Rule 1 of Chapter XA of the Delhi\n                                                      High Court (Original Side) Rules merely provides that "At the\n                                                      time of Case Management hearing, a Court, may of its own,\n                                                      decide a claim pertaining to any dispute, by a summary\n                                                      judgment, without recording oral evidence" and Rule 3 therein\n                                                      reiterates the language aforesaid of Rule 3 of Order XIIIA qua\n                                                      grounds for summary judgment."13.        Applying the testslaid down inthe above stated cases, for an\n                                    application under Order XIII A, to the facts of the present case, all the\n                                    essentials have been fulfilled for passing of a summary judgement as thereCS(COMM) 246/2019                                                                      Page 5 of 9This is a digitally signed order.The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.\nThe Order is downloaded from the DHC Server on 21/12/2023 at 22:20:59\n                                     is no real prospect of the Defendants succeeding in a claim, as they are also\n                                    not contesting the present matter even after summons being issued.14.         On behalf of NIXI it is submitted by Mr. Gupta, ld. Counsel that he\n                                    has no objection if the Court directs transfer of the said domain name i.e.,\n                                    https://atcindiatower.in/- Defendant No.3 to the Plaintiffs. For the said\n                                    purpose, NIXI would issue authorisation.15.        A perusal of the record would show that the case of the Plaintiffs are\n                                    that they are the registered proprietor of the mark 'ATC', 'ATC Logo',\n                                    'ATC India' etc., which are in dispute. There are various registrations\n                                    which have been obtained. The Plaintiffs also have long and extensive use\n                                    across several countries of the world which is evident from the number of\n                                    websites and domain names which are registered by it. Some of which have\n                                    been listed in paragraph 14. The same would show that the Plaintiffs'\n                                    businesses span across various continents and countries including India,\n                                    Taiwan, Italy, United Kingdom etc.,16.        The Plaintiffs' websites are also openly accessible and show\n                                    sufficient usage and goodwill in the mark. The impugned websites also\n                                    reflect that the logos and the marks of the Plaintiffs had been copied. The\n                                    screenshots thereof are extracted below:-CS(COMM) 246/2019                                                                      Page 6 of 9This is a digitally signed order.The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.\nThe Order is downloaded from the DHC Server on 21/12/2023 at 22:20:59CS(COMM) 246/2019                                                                      Page 7 of 9This is a digitally signed order.The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.\nThe Order is downloaded from the DHC Server on 21/12/2023 at 22:20:5917.         In view of the fact that www.atctower.in comprises of the entire\n                                    mark of the Plaintiffs, it is capable of being misused by third parties.\n                                    Accordingly, this is a case where summary judgment deserves to be passed.18.        The suit is decreed against the operators of both these domain names\n                                    by a permanent injunction restraining them from using the marks 'ATC',\n                                    'ATC India', 'ATC Tower' including the impugned domain names.19.        The said injunction shall be given effect to by the concerned domain\n                                    name registrars. Insofar as www.atctower.in is concerned, NIXI shall take\n                                    steps to issue the authorisation and facilitate the transfer of the domain\n                                    name to the Plaintiffs.CS(COMM) 246/2019                                                                      Page 8 of 9This is a digitally signed order.The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.\nThe Order is downloaded from the DHC Server on 21/12/2023 at 22:20:5920.        Once the domain names are transferred to the Plaintiffs, the disabling\n                                    and blocking order shall no longer operate.21.        No further reliefs are pressed. The suit is decreed.22.        Decree sheet be drawn accordingly.23.        All pending applications, if any, are disposed of.PRATHIBA M. SINGH, J.DECEMBER 19, 2023\n                                    mr/ksCS(COMM) 246/2019                                                                                        Page 9 of 9This is a digitally signed order.The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.\nThe Order is downloaded from the DHC Server on 21/12/2023 at 22:20:59