ADOBE, INC ….. Plaintiff
Versus
NAMASE PATEL AND OTHERS ….. Defendants
Date of the order:- 29.11.2022
Plaintiff was founded in 1982 and it is the second largest US based personal software company, and claims to have annual turnover in the region of US dollars five billion. The present suit concerns itself with “ADOBE‟, “SPARK‟/”ADOBE SPARK‟ and “PHOTOSHOP‟ trademarks, registered in favour of the plaintiff and, as per the plaint, infringed by Defendant 1 Namase Patel.
ADOPTION OF THE TRADEMARK “ADOBE”
The plaintiff claimed to have adopted the word marks “ADOBE‟ as early as in 1986, and to have been using it, in respect of its products and services, worldwide since then. The plaint asserts that the use of the mark “ADOBE‟ was commenced in India, by the plaintiff, in 1993. The registration held by the plaintiff, for its marks “ADOBE‟ and “PHOTOSHOP‟.
“ADOBE‟ also forms part of the domain names www.adobe.com, www.adobe.net and www.adobe.in owned by the plaintiff. The plaintiff also claimed proprietorial rights in respect of the trademark “SPARK‟/”ADOBE SPARK‟ which, though not registered in India, was the name given by the plaintiff to its suite of mobile and web tools used to create visual content, which debuted on 19th May 2016.
Defendant 1 was said to be infringing the plaintiff‟s “ADOBE‟ mark by his domain names www.addobe.com and www.adobee.com. There can possibly be no dispute about the fact that the domain names www.addobe.com and www.adobee.com are confusingly similar to “ADOBE‟ mark and, therefore, infringed the “ADOBE‟ mark and the adobe domain names of the plaintiff within the meaning of Section 29 of the Trademarks Act.
FRAUD IN EMAIL SERVICE BY DEFENDANT
Defendant 1 was also using the “catch-all” e-mail service provided by Above.com. A catch-all e-mail service is stated to be a service provided by which the person availing the services of the provider would acquire access to all e-mails, which may misspell the domain of the e-mail ID, which follows after “@”. Defendant 1 was ensuring that if, while attempting to communicate with, hypothetically, a person having the e-mail ID [email protected], the person communicating misspelled the second part of e-mail ID and, therefore, sent a mail to [email protected] or [email protected] , despite no such e-mail ID actually being in existence, the e-mail would be directed to e-mail ID of Defendant 1. Defendant 1 using the aforesaid unwholesome service provided by Above.com, was securing access to various confidential e-mails including e-mails . As the e-mail would stand delivered to the inbox of Defendant 1, the person sending the email would not bounce back to the sender, who would be under the impression that the e-mail stood delivered to the correct recipient.
Defendant 1 was infringing the plaintiff‟s “ADOBE‟ mark and also infringing, in the process, in an infringing fashion, the “PHOTOSHOP‟ and “SPARK‟ marks of the plaintiff. The confusing similarity between the www.addobe.com and www.adobee.com marks of Defendant 1, with the “Adobe” mark of the plaintiff, it is alleged, has also resulted in the Defendant 1 passing off his services as those of the plaintiff.
Defendants 2 to 10 were Internet Service Providers (ISPs), which provided gateways to enable access to the impugned domains owned by Defendant 1 and were impleaded by the plaintiff to ensure effective implementation of the reliefs granted by the Court in the proceedings.
Defendant 11 was the Department of Telecommunications.
Defendant 12, Sea Wasp LLC, was the Domain Registrar of the impugned domains of Defendant 1.
HABITUAL OFFENDER DEFENDANT NO.1
Defendant 1 Namase Patel was habitually involved in cyber squatting and infringing of domain names of various entities. The order passed by the National Arbitration Forum deals with infringement, by Defendant 1, of the domain names www.underarmour.com and the orders of the WIPO Arbitration and Mediation Centre confirms infringement, by Defendant 1, by use of (i) the domain name “theharrtford.com‟, of the marks “HARTFORD‟, “THE HARTFORD‟ and other such marks which included the word “HARTFORD‟, owned by The Hartford Fire Insurance Company, and (ii) the domain name www.dior.com, registered in favour of Christian Dior Couture. Other similar orders have also been placed on record.
DEFENDANT NO.1 WAS NOT TRACEABLE
Defendant 1 was absent from the proceedings ever since issuance of summons. It was impossible to trace him. Efforts have also been made through the Cyber Cell of the Mumbai Police, which has also filed a status report indicating that it was not possible to trace Defendant 1, though the e-mail ID of Defendant 1 continues to remain in use.
Defendants 1, 12 and 13 have all been proceeded ex parte in the present matter.
The Cyber Cell‟s report of the Mumbai Police indicates that the last known IP address of Defendant 1 was in the US.
Accordingly, the suit was decreed in the following terms:
Defendant 1 and all associated with him were permanently restrained from registering any domain names which incorporate or otherwise use the plaintiff‟s trademark “ADOBE‟, “PHOTOSHOP‟ or “SPARK‟ in a manner which would infringe the plaintiff‟s registered trademarks or would otherwise infringe the said trademark.
Access to the websites www.addobe.com and www.adobee.com were permanently blocked.
Defendant 12 was directed to transfer the domain names www.addobe.com and www.adobee.com to the plaintiff, so as to avoid their misuse after expiry of their term.
Additionally, the plaintiff was also given the damages claimed in the suit of ₹ 2,00,01,000/-. These damages were intended to be deterrent in nature given the nature of activities of Defendant-1 and the fact that he stands recognized, even in foreign jurisdictions, as being an inveterate and habitual cyber-squatter and domain name infringer.
Read , Reviewed & Edited by
NEERAJ GOGIA, Advocate