EBAY, INC …Plaintiff
Versus
MOHD. WASEEM T/AS SHOPIBAY & ORS. …..Defendants
Date of Order:- 17.11.2022
REASON FOR FILING THE PRESENT CASE
The present suit was filed by Ebay Inc/plaintiff to protect their trademark ‘eBay/EBAY ’, The plaintiff seeks for a decree of permanent injunction against the defendants restraining them from using the marks ‘SHOPIBAY ’ or any other mark deceptively or confusingly similar to the plaintiff’s registered trade mark ‘eBay/EBAY ’, which would amount to either infringement, passing off, dilution, tarnishment of the plaintiff’s mark; and/or unfair competition.
Despite service, No one appeared on behalf of the Defendants and they were then proceeded ex-parte.
Plaintiff is a company who provides an online marketplace for the sale of goods and services through their e-commerce platform, which utilizes the domain name www.ebay.com.
The domain name www.ebay.com was registered in the year 1995 and is accessible to users globally, including in India. It was submitted that the website of the plaintiff, that is, www.ebay.com, at the time of filing the present suit, is ranked as the 11th most visited website in the United States of America and the 42nd most visited website globally.
The plaintiff informed the Hon’ble High Court that it has country-specific domain names for countries such as Australia, Hong Kong, Netherlands, Taiwan, Austria, Philippines, Thailand, Belgium, Ireland, the United Kingdom, Canada, China and Japan etc, to connect local buyers to sellers. The plaintiff also has a domain name specific for Indian users, that is, www.ebay.in, which was created on 16.02.2005.
It was submitted by the plaintiff that it has extensive presence on social media platforms, including but not limited to Twitter, Facebook, Linkedin and Google+. The plaintiff has hundreds of thousands of followers on each platform, and in the case of social-media platform Facebook, the plaintiff has almost 11 million followers.
How the Plaintiff came to know about the Infringement?
In May, 2017, the plaintiff came across a trade mark application filed by the defendant no. 1 seeking registration of the mark SHOPIBAY before the Trade Marks Registry bearing application no. 3470343 under Class 35, dated 30.01.2017. The said application was opposed by the plaintiff on 20.06.2017.
Upon investigation, it was discovered that the domain names, www.shopibay.com (registrant country being the United Kingdom) and www.myshopibay.com (registrant region being Haryana, India) were both registered in the name of the defendant no. 2. A more thorough investigation before the Ministry of Corporate Affairs, the Government of India, revealed that the defendant no. 1 was one of the directors of the defendant nos. 2 and 3.
Plaintiff claimed that the website hosted by the domain name www.shopibay.com offers consumers links to various e-commerce platforms, including hosting the plaintiff’s domain name www.ebay.com. The website of the defendants also prominently features the plaintiff’s ‘eBay Marks’ and makes a claim that the plaintiff is one of the partners of the defendants and was seen to offer the same services as that of the plaintiff, that is, e-commerce sales.
Plaintiff had issued multiple cease-and-desist letters in the year 2017 to the defendants but received no response up until the time of filing the suit.
EX-PARTE ADINTERIM INJUNCTION IN FAVOUR OF THE PLAINTIFF
Vide order dated 28.08.2019, The Hon’ble High Court of Delhi granted an ex-parte ad-interim injunction in favour of the plaintiff and restrained the defendants from using the impugned trade mark ‘SHOPIBAY’ or any other mark deceptively similar to the plaintiff’s registered trademarks, as part of any trade mark/trade name/domain name, until the next date of hearing.
Vide the same order, GoDaddy LLC (the Registrar of the domain names www.shopibay.com and www.myshopibay.com) were directed to block the aforementioned domain names, pending further orders of this Court.
It was noted by Joint Registrar (Judicial) on 20.12.2019, that the defendants had been duly served by way of e-mail, on the ID provided by them on the website of Ministry of Corporate Affairs. The plaintiff was directed to serve the defendants also through publication. The substituted service of the defendants was recorded in the order of the learned Joint Registrar (Judicial) dated 09.09.2020. Thereafter the Defendants were proceeded ex-parte.
Plaintiff has been able to prove that it is the registered proprietor of the ‘eBay Marks’, the details whereof are given herein above. The plaintiff has also been able to show its goodwill and reputation in the ‘eBay Marks’ not only in India but internationally. The mark adopted by the defendants, that is, ‘SHOPIBAY ’ is deceptively similar to that of the plaintiff and is clearly intended to ride on the goodwill and reputation of the marks of the plaintiff. It is an infringement of the marks of the plaintiff and amounts to passing off the goods and services of the defendants as that of the plaintiff.
As far as the domain name/website of the defendants is concerned, the same is also deceptively similar to that of the plaintiff. It is likely to deceive an unwary consumer of its association with the plaintiff.
The use of the ‘SHOPIBAY’, being phonetically similar to the mark of the plaintiff is likely to deceive unwary consumer of the association of these companies with the plaintiff.
Court observed no useful purpose would be served in insisting upon the plaintiff to file its affidavits of evidence. This is a fit case where Summary Judgment deserves to be passed in favor of the plaintiff.
Plaintiff was awarded the damages of a sum of Rs. 2 Lakh (Rupees Two Lakh only) in addition to the costs of the Suit.
Counsel for the plaintiff filed her Bills of Costs, which Court founded reasonable. The plaintiff was granted decree to the said sum as well.
Permanent injunction in terms of the prayers of the plaint was granted in favour of the plaintiff and against the defendants.
Defendant no. 2 and 3 were directed to change the name of the companies ‘Shopibay Internet Private Limited’ and ‘Shopibay Ventures Private Limited’ so as to remove the mark/word ‘SHOPIBAY’ from the said company names.
The matter was decreed accordingly.
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