• Neetika Gandhi

PROTECTING OWNERSHIP IN THE VIRTUAL SPACE: A CLASSIC CASE OF CYBERSQUATTING



The Delhi High Court in the present case [1], granted an ex- parte anti- suit injunction against the Defendants from using the domain name <hindustan.com>. The Plaintiffs, who are the owners of the well- known trademarks ‘HINDUSTAN’ and ‘HINDUSTAN TIMES’, amongst others, in classes 16 and 38 in India, brought an action seeking permanent injunction against the Defendants from using directly/indirectly the domain name <hindustan.com> as well as for restraining the Defendants from proceeding further against the Plaintiffs in the suit titled Brainlink International, Inc. v. HT Media Ltd. & Anr. (Civil Action No.1 20-cv-01279) before the United States District Court for the Eastern District of New York. The Defendants, after the failed negotiations with the Plaintiffs to sell the domain name for USD 3 Million, filed a declaratory suit for non-infringement in the United States.


The High Court while deciding on the issue of anti- suit injunction against the Defendants employed the following three tests to determine if an anti- suit injunction can be granted:

If the Defendant was amenable to the personal jurisdiction of the Court;

If injustice would be caused to the Plaintiff, if the injunction was refused owing to the Defendant’s illegal activities;

If the acts of the Defendant or their consequences have a substantial enough connection with the forum to make exercise of jurisdiction over the Defendant reasonable.


Applying the aforesaid tests, the Court held that since a significant and an integral part of the cause of action arose in Delhi thus, as per the relevant laws in India[2], the Defendants were amenable to the personal jurisdiction of the Court. In this regard, the Court noted that the Defendants were targeting the public in India, including Delhi, by providing news and information on the Indian- American issues. Further, the Plaintiffs were carrying on business in Delhi. Moreover, all the negotiations between the parties had their origin in Delhi.


While deciding on the second issue, the Court held that the domain name registration by the Defendants was in bad faith as defined under the relevant clause of the Uniform Domain-Name Dispute-Resolution Policy (UDRP) since the Defendants held unto the domain name, which was dysfunctional since 2000, for no legitimate business but solely to earn monetary benefits from the Plaintiffs.


The Court also held that the suit instituted by the Defendants in the United States was vexatious as the Plaintiffs were not asserting their rights on the marks in the United States and the Defendants had filed the suit solely to frustrate the Plaintiffs from availing suitable remedies. Thus, the Plaintiffs had prima facie made their case in favour of the anti- suit injunction.

[1] HT Media Limited & Anr. Vs. Brainlink International, Inc. & Anr

[2] Section 20 of the Civil Procedure Act- Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction-

(c) the cause of action, wholly or in part, arises.

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