Adobe, Inc (‘Adobe’) is a multinational company headquartered in San Jose, California which primarily deals in software for creation and publication of wide range of content, including graphics, photography, animation, etc. Adobe, approached the Delhi High Court seeking permanent injunction restraining to restrain Namase Patel, who had registered the domain names www.addobe.com and www.adobee.com (‘Infringing Domains’) for infringement, passing-off activities, dissemination of confidential information, unfair trade practices, transfer of domain names and rendition of accounts.

 

 

Adobe contended that it has been providing computer software and other IT-related services in the name of ‘ADOBE’ which was formed in 1980 and has been registered as a trademark in India as well as in foreign countries.

 

 

Adobe submitted that it discovered the said usage of the Infringing Domains when a few emails, which were meant for circulation within Adobe, were found to have been received by Namase Patel due to a typographical error in spelling of the domain name by the sender of the emails. The Court was informed that after having duly conducted a forensic audit, it was discovered by Adobe that the emails did not bounce back to the sender, instead were received by Namase Patel on its Infringing Domains. This was done by Namase Patel by availing services of ‘Above.com’ and utilizing a feature called ‘catch-all configuration’ wherein all the emails, which may have been sent with a spelling error of the Adobe’s domain name were received by him. Adobe further submitted that Namase Patel had registered the infringing domains and was making the use of them since several years.

 

 

The Court after considering all the submissions observed that Namase Patel was a habitual registrant of variations of well-known trademarks and subsequently there are several orders passed against him. Some of the variations of the well-known marks registered by Namase Patel are of – Under Armour, Christian Dior, AirFrance, Japan Airways, etc. Actions of Namase Patel are categorised as “Cyber-squatting” (which means making an unauthorized use of certain domain names which are similar to that of already registered trademarks) a such registration of well-known trademarks as domain names constitutes bad faith. Referring to the precedent in Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., 2004 wherein the Hon’ble Supreme Court of India had held that, cyber-squatting cannot be encouraged and is clearly contrary to law and the Uniform Domain Name Dispute Resolution (UDNDR) Policy, Adobe had made out a prima facie case. Accordingly the Court issued the following directions:

 

 

1. Namase Patel and anybody acting on his behalf were prohibited from using the Infringing Domains www.addobe.com and www.adobee.com, as well as from registering any domain name that comprises the Adobe’s trademarks 'ADOBE, 'PHOTOSHOP', 'SPARK' or any derivatives thereof.

 

 

2. The Cyber Cell of Mumbai Police was directed to conduct an investigation and file a status report on those who have registered the Infringing Domains www.addobe.com and www.adobee.com, as well as those using the email address namasepatel@yahoo.co.in. 3. Internet Service Providers were ordered to immediately ban the Infringing Domains, www.addobe.com and www.adobee.com.

 

The matter is listed before the Court on May 11th, 2022.