Delhi High Court: In an application challenging the order dated 29-5-2025 (‘impugned order’), wherein the domain names, www.bimasugam.com and www.bimasugam.in registered with the appellant had been transferred to the respondent, the Division Bench of C. Hari Shankar and Om Prakash Shukla, JJ, stayed the impugned order. The Court held that the transfer of domain names would effectively allow the respondent to exploit the domain names registered in favour of the appellant at the interim stage while the suit is still pending disposal.
Background
The instant application had been filed challenging the order dated 29-5-2025 (‘impugned order’) to the limited extent of transfer of the domain names www.bimasugam.com and www.bimasugam.in to the respondent.
The respondent company in the instant case is a not-for-profit company incorporated for establishment of the ‘Bima Sugam- Insurance Electronic Marketplace’. The appellant is an insurance agent who registered the domain names www.bimasugam.com and www.bimasugam.in soon after the Bima Sugam Marketplace had been publicly announced by IRDAI. The respondent had issued a legal notice claiming rights in the ‘BIMA SUGAM’ trade mark and calling upon the appellant to cease and desist from using the aforesaid names.
Vide the impugned order, the Court had restrained the appellant from using or selling the domain names containing the ‘BIMA SUGAM’ mark and had transferred the domain names in favor of the respondent.
In the present case, the appellant had sought a stay order on the transfer of domain names to the respondent claiming that the impugned order effectively allows the respondent to commercially exploit the domain name even though the final adjudication of the lis is pending disposal.
Analysis, Law and Decision
The Court noted that the appellant was the undisputed owner of the domain names www.bimasugam.com and www.bimasugam.in and had been using the same since October 2022. Transfer of the domain names in favor of the respondent effectively effaced the appellant’s registration at an interim stage itself.
The Court also noted that since the respondent had not registered the ‘BIMA SUGAM’ mark under the Trade Marks Act, 1999, the instant case was merely of passing off. Reiterating the principles laid down in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, wherein the Supreme Court had held that in order to make out a case for passing off, the plaintiff must demonstrate accumulation of sufficient goodwill prior to the use of its mark by the defendant, the Court observed that there had been no accumulation of goodwill by the respondent. The Court noted that the period of ‘continuous use’ of the ‘BIMA SUGAM’ mark by the respondent prior to the registration of domain names by the appellant was a mere 3 months.
Furthermore, the Court noted that the impugned order did not return a finding of goodwill which was crucial for an order for injunction. Since the three ingredients of passing off, i.e., goodwill, misleading user of mark by the defendant and damages suffered by the plaintiff, were crucial for establishing passing off, sans a specific finding of goodwill, the interim order of injunction could not have been passed.
The Court also noted that the impugned order restrained the appellant from using, selling or exploiting the domain names and this would sufficiently protect the respondent’s interests at the interim stage.
Thus, the Court held that a prima facie case had been made out by the appellant and the principle of balance of convenience and irreparable loss pointed in favour of stay of operation of the impugned order insofar as it related to the transfer of the domain names www.bimasugam.com and www.bimasugam.in to the respondent, pending disposal of the suit.
Therefore, the Court stayed the operation of the impugned order to the limited extent of transfer of domain names till the date of the next hearing, 12-1-2026.
[A Range Gowda v. Bima Suga, India Federation, FAO (OS) (COMM) No. 179 of 2025, decided on 30-10-2025]
Advocates who appeared in this case:
For the Appellant: J. Sai Deepak, Senior Advocate, Paritosh Dhawan, Advocate
For the Respondent: Mr. Akhil Sibal, Sr Adv. with Ms. Riddhie Bajaj, Ms. Swati Sharma, Mr. Rohin Koolwal and Mr. Pundreek Dwivedi, Advs.