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IN THE HIGH COURT OF DELHI AT NEW DELHI
40
CS(OS) No. 1346/2011
GROUPON,INC ..... Plaintiff
Through Mr. Sanjay Jain, Sr. Adv. with
Mr. Rajinder Kumar, Adv.,
Mr.Ashish,
Adv., Mr.Deepak, Adv., Ms. Prabha
Sahay Kaur, Adv. and Ms. Namisha
Gupta, Adv.
versus
MOHAN RAO AND ANOTHER ..... Defendants
Through
CORAM:
HON'BLE MS. JUSTICE GITA MITTAL
O R D E R
27.05.2011
CS (OS) No.1346/2011
1. Subject to the plaintiff taking steps within one week, issue
summons in the suit to the defendants by ordinary process, registered
A.D. post, through approved courier.
2. The notice to the defendants shall indicate that a written
statement to the plaint shall be positively filed within four weeks of
the receipt of the summons. Liberty is given to the plaintiff to file
replication and rejoinder within two weeks of the receipt of the advance
copy of the written statement and reply.
3. The parties shall file all original documents in support of
their respective claims alongwith their respective pleadings. In case
parties are placing reliance on a document which is not in their power
and
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possession, its details and source shall be mentioned in the list of
reliance which shall be also filed within the pleadings.
4. Admission/denial of documents shall be filed on affidavit by the
parties within two weeks of the completion of the pleadings. The
affidavit shall include the list of the documents of the other party.
The deponent shall indicate its position with regard to the documents
against the particulars of each document.
5. Learned counsel for the plaintiff submits that his client would
be willing to explore the possibility of settlement by mediation.
6. The summons shall indicate that it is open to the parties to
access the facility of negotiating a settlement with the other side
before the Delhi High Court Mediation and Conciliation Centre in the
court complex. In case the defendants are so desirous of pursuing
negotiations, it shall be open to them to do so. Such participation in
mediation shall be without prejudice to their rights and contentions in
the suit.
7. In such eventuality, the defendants shall inform the plaintiff
as well as his counsel of the same by a written notice. Such written
notices shall be treated as consent of the parties to the mediation
process. The plaintiff and/or defendants may then approach the Delhi
High Court Mediation and Conciliation Centre for facilitating mediation
in the matter and proceeding in accordance with the rules of the Centre.
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8. The parties shall place the copy of this order as well as the
written notice before the Delhi High Court Mediation and Conciliation
Centre.
9. During the course of mediation, it shall be open to the mediator
to join any other person(s) considered necessary for effective mediation
and dispute resolution.
10. The Registry shall enclose the information brochure published
by Samadhan ? the Delhi High Court Mediation and Conciliation Centre with
the summons.
11. The parties shall appear before the Joint Registrar for
marking of exhibits on 5th September, 2011.
12. The matter shall be fixed before the court for reporting
outcome of the mediation/framing of issues on 9th November, 2011.
IA No.8969/2011 (Under Order 39 Rule 1 and 2 CPC)
13. Notice, returnable on 9th November, 2011.
14. The plaintiff has filed the suit premised on its rights in the
mark ?GROUPON?. The plaintiff has claimed that the predecessors-in-title
of the plaintiff had coined the word ?GROUPON? in the year 2002 as a
blend of the words ?group? and ?coupon?. The ?GROUPON? business is
registered by plaintiff on 14th October, 2008.
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The details of the change in the corporate charter and the
acquisition of the rights of the plaintiff in this coined word ?GROUPON?
have been set out in the plaint.
Since June, 16, 2009, the plaintiff has even changed its corporate
charter to reflect the corporate name change to ?GROUPON, INC? in the
records of Delaware Secretary of State.
15. So far as the plaintiff?s business is concerned, it involves
promotion from its website of goods and services of other companies and
businesses such as retail outlets, cafes, restaurants, museums, events
and shows by providing coupons, rebates, price-comparison information,
product reviews, links to the retail websites of other companies and
businesses and discount information.
16. In order to qualify for a discount coupon, users of the website
www.groupon.com are required to sign up for the deal offered on the
website on that particular day. Provided that the minimum number of
people sign up for the deal offered on that day, each person who has
signed up to purchase the deal is issued the GROUPON discount coupon
which can then be presented to the relevant retail outlet, restaurant,
caf? or event to obtain the designated discount. Users are invited to
register their email addresses and becomes subscribers, following which
they will receive an e-mail each day notifying of the deal offered on
that day.
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17. As per the plaint, since 2008, the ?GROUPON? business has
focused on expanding its offerings all over the world. It currently
offers deals in over 500 markets in 40 countries across five continents
and is expanding into additional markets and countries. ?GROUPON? has
over 50 million subscribers worldwide and it runs over 650 online deals
per day. The website www.groupon.com averages more than 1,50,00,000
unique visitors per day.
18. So far as the Indian presence is concerned, the plaintiff has
asserted that its website www.groupon.com receives significant traffic
from India. In the fourth quarter of 2010 alone, over 30,000 unique
visitors from Indian IP addresses visited the said website. The
plaintiff?s acquisition of India based buying websites in January, 2011,
is stated to have received huge media attention. The plaintiff has
placed on record the details and documentation which manifest that it
appears to have made substantial investment in ?GROUPON? website and name
on a worldwide basis through electronic and print media, including
newspapers, magazines and on the internet. The plaintiff has also placed
before this court, representative advertising and promotional material
relating to ?GROUPON? website and its name in India. The expenses
incurred by the plaintiff for the period 2008-2011 are in excess of USD
500 million dollars for worldwide advertising and promotion on the
?GROUPON? brand.
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19. To support its claim of high quality of service and the
distinction attached to the coined word by which the plaintiff is
carrying on business, it is pointed out that as per reports in 2010,
Google attempted a buyout of ?GROUPON? for USD 6 billion and in yet
another evaluation worth of the plaintiff has been evaluated at USD 4.75
billion. As such, prima facie, it would appear that ?GROUPON? name and
brand has achieved a worldwide standing.
20. Extensive details with regard to the plaintiff?s claim of it
being a coined word and plaintiff being the first in the world to use the
same have been made. The said trademark is stated to have been
registered in United States of America. The first application for the
trademark ?GROUPON? was made on 5th November, 2007 which was registered
on 7th October, 2008. In addition, ?GROUPON? mark stands registered in
favour of the plaintiff since 22nd September, 2009. In India, the
plaintiff has made an application for registration of trademark ?GROUPON?
in Class 35 since 26th March, 2010 which is stated to be pending.
21. Apart from the above, the plaintiff claims to be owning
hundreds of domain names which incorporate the mark ?GROUPON? in several
countries as detailed in the plaint. The plaintiff is also hosting
several websites corresponding to the afore-stated ?GROUPON? domain names
on account of the spectacular standing of the plaintiff?s business and
services under the trademark, trade name and brand ?GROUPON?. It
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has received attention from media internationally and Indian Media which
are available on various third party websites including newspaper
articles.
22. The plaintiff has placed material on record which would
manifest that it had launched its website www.groupon.com in November,
2008 which features daily deals on the best products and services to do,
see, eat and buy in more than 500 markets and 40 countries, and is
expanding into additional markets and countries.
23. In connection with its business ?GROUPON? was adopted in 2002
by the petitioner?s predecessors-in-title and subsequently used by the
petitioner as its house mark since as far back as 2008 globally and since
2011 in India. Stemming from the strong clientele, market share and
goodwill that the petitioner enjoys, ?GROUPON?is a reputed mark in many
parts of the world and is duly registered and/or applied for registration
in various jurisdictions including India.
24. The plaintiff?s business involves promotion from the said
website of goods and services of other companies and businesses such as
retail outlets, cafes, restaurants, museums, events and shows by
providing coupons, rebates, price-comparison information, product
reviews, links to the retail websites of other companies and businesses
and discount information.
25. In order to qualify for a discount coupon, users of the website
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www.groupon.com are required to sign up for the deal offered on the
website on that particular day. Provided that the minimum number of
people sign up for the deal offered on that day, each person who has
signed up to purchase the deal is issued with a ?GROUPON? which can then
be presented to the relevant retail outlet, restaurant, caf? or even
obtain a discount. Users are invited to register their email addresses
and become subscribers, following which they receive email each day
notifying of the deal offered on that day.
26. Since 2008, the ?GROUPON? business has offered deals in
numerous locations. It currently offers deals in over 500 markets in 40
countries across 5 continents and is expanding into additional markets
and countries. ?GROUPON? has over 50 million subscribers worldwide and
it runs over 650 online deals per day. The website www.groupon.com
averages more than 1,50,00,000 unique visitors per day. Copies of the
relevant website extracts are annexed hereto and marked ANNEXURE B.
27. In these circumstances, the plaintiff has claimed exclusive
common law rights in its coined name and mark ?GROUPON? by its use as a
business name, trademark and domain name. It has also claimed rights
acquired on account of long, continuous and extensive international use
of ?GROUPON? in India and in any case, by modes accessible in India as
detailed above and the substantial expenditure
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incurred in the promotion and advertisement worldwide.
28. In the given background, prima facie it would appear that the
mark ?GROUPON? is associated with the business of the plaintiff and would
be entitled to the status of ?well known mark? within the meaning of
Sections 2(1)(zg) and 11(6) of the Trademark Act, 1999 which entitles it
to protection.
29. The suit has been necessitated in view of the actions of the
defendants who were able to procure registration for domain name
?www.groupon.in? in September, 2009. All objections of the plaintiff to
the defendants user of ?GROUPON? have been of no avail inasmuch as the
defendants have been utilizing the registration in order to compel the
plaintiff to enter into a tie up with it, in order to trade on the
goodwill and reputation of the plaintiff. The correspondence in this
regard between the parties has been placed on record. The plaintiff also
points out that the dishonesty in the conduct of the defendants is writ
large in the face of the record inasmuch as while engaging the plaintiff
in the afore-noticed extensive correspondence, it never informed the
plaintiff about the pendency of its application for registration of the
trade mark ?GROUPON? till the same was actually registered on the 5th
March, 2011. The plaintiff has placed on record this objection filed
before the IPAB, Chennai seeking rectification of the defendants?
registration.
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30. The plaintiff has placed the comparative tabulation of the
similarity between the websites of the plaintiff as against that of the
defendant in para 16 of the plaint. A bare perusal thereof would show
that apart from the identity of the trademark ?GROUPON? there are
similarities of the colour palettes, geometric logo as well as other
essential features which are normally associated with website including
navigation bar in the website. The scheme of the website put on the
internet by the defendants as placed on record by the plaintiff would
prima facie show that it tantamounts to a virtual copy of the plaintiff?s
website.
31. In addition thereto, it is pointed out that the defendants had
originally promoted the website ?GROUPOFF? which prima facie is the word
play off of the brand ?GROUPON? which would redirect the visitors to the
site of ?www.groupon.in? clearly suggesting that the business and site in
question have association with the business being carried out by the
plaintiff under the trademark ?GROUPON?.
32. On a consideration of the totality of the circumstances placed
by the plaintiff before this court in the plaint, the application and the
documents on record, it would appear that the plaintiff has made out a
prima facie case for grant of ex parte ad interim injunction in its
favour.
33. It is noteworthy that in the application dated 29th September,
2009 filed by the defendant to seek registration of the word ?GROUPON?,
the
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defendant had claimed the user of the said word mark since 12th
September, 2009 which is the date on which the defendants got the domain
name registration. Nowhere in the correspondence placed before this
court do the defendants explain as to why the word ?GROUPON? has been
adopted. The same clearly manifest mala fide and dishonesty in the
adoption of the trademark ?GROUPON? in respect of identical services. It
is evident that the same would tantamount to suggest to the public at
large that the services and trade of the defendants have an association
with the business of the plaintiff.
34. It is clearly evident that having regard to the goodwill of the
trade mark ?GROUPON? of the plaintiff, it would appear that the plaintiff
would suffer grave and irreparable loss and dilution of the value
attached thereof in case the defendants were not restrained from ad
interim prohibitory injunction from using the trade mark ?GROUPON?. Apart
from the rights of the plaintiff, valuable rights of the innocent and
ignorant public at large would be impacted by the misuse of the mark by
the defendants. Balance of convenience and interest of justice are also
in favour of the plaintiff and against the defendants.
35. It is accordingly directed that the defendants, their partners,
sister concerns, group companies, servants, agents, representatives etc.
shall stand restrained from using the mark ?GROUPON? and/or any deceptive
variation thereof upon or in relation to their business,
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products, services and/or as part of their trade mark/trade name,
website, web address, internet domain name, e-mail address and from in
any manner, passing off or attempting to pass off or causing, enabling or
assisting others to pass off their business, products and services as and
for the business, products and services of the plaintiff.
The plaintiff shall comply with the provisions of proviso to Order
39 Rule 3 within two weeks.
Dasti.
GITA MITTAL, J
MAY 27, 2011
aa
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