It was moreover claimed that the use of ‘TheSpartanPoker’ was identical/deceptively similar to ‘Spartan Poker’, which was bound to create confusion in the minds of the public. The Plaintiffs relied on Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd. and Suresh Dhanuka v. Sunita Mohapatra to argue that a domain name was recognizable as a trademark, and therefore any use of such domain name would amount to trademark infringement.
The Respondents claim that they had coined the term ‘Spartan’, as well as had made the applications for the trademarks. Further, it was contested that the Plaintiffs were never shareholders of the company, but were simply paid the remuneration for the services that they provided.
Holding of the Court
On the 25th of April 2017, Justice Soumen Sen found that the Calcutta High Court had the jurisdiction to try the matter even though the company was incorporated in Maharashtra. It was observed that the Respondents would not be inconvenienced if the matter was tried in this Court, as the website that hosted online poker was an interactive one, and had been made especially accessible within its jurisdiction.
In a separate judgement delivered on the 12th of May 2017, Justice Sen ruled for the Respondents in the present matter. The observations made were as follows:
The nature of business as well as the emails exchanged between the parties prove that there existed a Partnership between the parties. It was additionally held that since the joint venture was formed between the Plaintiffs and the Respondents, the Respondent No. 7 could not use the mark ‘Spartan’ to the exclusion of the Plaintiffs and deny the benefits of earnings to the Plaintiffs by using said mark.
It was held that a domain name is chosen as “an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding Internet location.” The Court went on to state that a domain name must necessarily be peculiar and unique to the business, as maintaining an exclusive identity was critical.
The Court observed that it is now well settled in India that domain names are to be protected along the same lines as trademarks, citing the Satyam judgement. The court however differentiated the Satyam judgement from the present matter, as the domain name ‘www.spartanpoker.com’ was not identified with Rajat Agarwal, Plaintiff No.1 – unlike the Satyam case. Further, the Court observed that not only had the Respondent No. 7 applied for the registration of ‘Spartan’, the Plaintiffs had incurred no substantial expenditure apart from the registration of the domain name. The Plaintiffs did not spend on developing the web page, trade dress and designing of the mark and related expenses for its registration.
Therefore, the Court did not restrain Spartan Online from the use of ‘www.thespartanpoker.com’, stating that the Plaintiff would be able to claim damages from the Respondents in the event that their trademark oppositions are successful. The Respondents were additionally directed to disclose all their transactions and accounts starting from 15th March, 2015.
News Source- SpicyIP