Delhi High Court: In a suit for permanent injunction filed for protecting the ‘Dream11 Marks’, the Single Judge bench of Navin Chawla, J. granted permanent injunction in favour of Dream11 and held that the defendant was operating under a domain name www.dream11.bet which was deceptively similar to that of Dream11.
Background
Plaintiff 1 is a private company incorporated in 2007 and in 2013, underwent a change of name from ‘Adwaiya Realtors Private Limited’ to ‘Dream11 Fantasy Private Limited’. Plaintiffs fantasy sports platform under the trade mark/trade name ‘Dream11’, adopted in 2012, was an online multi-player game where the participants draft imaginary and virtual teams of real players of a professional sport. Moreover, plaintiffs had been the ‘Official Fantasy Partners’ of all International Cricket Council (ICC) events starting from 2018 wherein their website/mobile application bearing the ‘Dream11 Marks’ had been partners for such events such as the Vivo Indian Premier League (IPL), KFC BBL, Hero CPL T20, NBA, Vivo Pro Kabaddi, International Hockey Federation, Hero Indian Super League, and T20 Mumbai.
Plaintiffs had signed a Central Sponsorship contract with the Board of Cricket Control of India (BCCI) for the IPL in 2019. The plaintiffs also had a long-term ‘Official Fantasy Sports Provider’ deal with the ICC for all the tournaments, which were particularly widespread during the ICC Men’s Cricket World Cup 2019. For both tournaments, the plaintiffs organized daily contests and season-long fantasy games for fan engagement utilizing their services bearing the ‘Dream11 Marks’. Plaintiff 1 was the registered proprietor of trade marks which were protected under the provisions of Trade Marks Act, 1999 (Act) and plaintiff 2 was the registered proprietor of the domain name www.dream11.com.
Submissions on behalf of the Plaintiffs
Plaintiffs contended that in 2019 they learnt about the domain name www.dream11.bet which was being operated by the defendant and a YouTube Channel, which contained match-prediction videos. After an investigation being conducted by the plaintiff, the investigator was able to access the defendant’s website which contained the ‘Dream11 Marks’ of the plaintiffs and was revealed to be a betting/gambling platform.
Counsel for the plaintiffs submitted that the acts of the defendant, which primarily included the adoption of the plaintiffs’ trade mark ‘Dream11 Marks’, amounted to infringement of the registered trade marks of the plaintiffs and passing off the services of the defendant as those of the plaintiff. Counsel stated that the adoption of ‘Dream11 Marks’ as a part of their trade name and domain name by the defendant was mala fide and was intended to trade upon the reputation and goodwill of the plaintiffs. Counsel also submitted that the adoption of the ‘Dream11 Marks’ by the defendant for the activities of betting and gambling were illegal under statutes, including but not limited to the Public Gambling Act, 1867.
Analysis, Law, and Decision
The Court opined that the plaintiffs had been able to prove that they were the registered proprietor of ‘Dream11 Marks’ and the domain name adopted by the defendant www.deam11.bet was deceptively similar to that of the plaintiffs and was clearly intended to ride on the goodwill and reputation of the marks of the plaintiffs. The adoption of the domain name www.dream11.bet was a clear case of infringement of the marks of the plaintiffs and amounted to passing off the services of the defendant as that of the plaintiffs. The defendant not only intended to take unfair advantage of the marks of the plaintiffs and ride on the reputation of the plaintiffs’ marks, but also deceived unwary consumers of their association with the plaintiffs. Such acts of the defendant would also lead to dilution of the mark of the plaintiffs.
Therefore, the Court granted permanent injunction in favour of Dream11 and restrained defendant from using the mark ’Dream11’ or any deceptively similar variant as a trade mark, trade name or domain name which would amount to infringement of and/or passing off the plaintiff’s trade marks.
[Sporta Technologies Pvt. Ltd. v. Virat Saxena, 2022 SCC OnLine Del 4107, decided on 25-11-2022]
Advocates who appeared in this case :
For the Plaintiff(s): Advocate Prithvi Singh;
Advocate Rohan Krishna Sethi;
Advocate Parkhi Rai.
