| CASE NAME | Sporta Technologies v. Hong Y1 F35 |
| CITATION | 2024 SCC OnLine Del 7310 |
| COURT | Delhi High Court |
| PETITIONER | Sporta Technologies Pvt. Ltd. |
| RESPONDENTS | Hong Yi F35 And Others |
| DECIDED ON | 16 October, 2024 |
INTRODUCTION
The case presents important matters of trademark infringement, passing off and copyright infringement in the online fantasy sports market. The Plaintiffs filed suit against the Defendants for infringing their registered trademarks and misleading consumers about their services. This case highlighted the significance of intellectual property rights as consumers are dealing in changing and developing digital worlds. Intellectual property issues will become increasingly important as they affect consumer confidence in fantasy sports verticals, more so than in other businesses. This case highlights the growing importance of protecting intellectual property in the fast-evolving online fantasy sports market. It shows how digital platforms, domain names, and website design can all become grounds for legal disputes when they carry the risk of consumer confusion. The case illustrates that established brands must actively safeguard their trademarks and copyrights to maintain consumer trust and brand integrity. It also demonstrates the courts’ willingness to act quickly when the infringement is clear and urgent, particularly in digital spaces where reputational harm can be swift. Finally, it underscores the need for vigilance against unauthorized use in the online world, where the effects of passing off or copyright infringement are immediate and widespread.
FACTS
- Background of the Parties
Plaintiffs: Plaintiffs Sporta Technologies Pvt. Ltd. is an Indian company, incorporated in 2007, and its parent company, Dream Sports Inc., is incorporated in Delaware, USA. The plaintiffs operate a fantasy sports platform named Dream11, which was developed and launched in 2012, and has since developed a massive following and investment, making it the leader in the Indian fantasy sports market.
Defendants: Defendants include Hong Yi F35, the operator of the website www.dream11com.in for which the plaintiffs allege infringement of the plaintiffs’ trademarks and copyright, and deception of consumers regarding the source and nature of the services the website offers.
- Plaintiffs’ Fantasy Sports Platform
Dream11 is a platform that allows registered users to register various teams virtually, and participate in fantasy sports contests on the performance of real people in real games. Users can draft their team, and compete in multiple fantasy teams, each assembling separate leagues and separate prize distribution based on how the users’ players perform. Legal professionals recognize the platform as a major player in the new and exciting fantasy sports industry.
Dream11 has attracted sizable investments by reputable investors which lending credibility hence driving consumer trust of the Dream11 brand.
- Trademark Registrations
The plaintiffs are the owners of several registrations of the trademark “DREAM11” in multiple Classes, including classes 9 (software), 16 (printed matter), 35 (advertising and business services), 41 (entertainment services), and 42 (scientific and technological services). The plaintiffs’ trademark registrations represent the goodwill and reputation that they built while competing in fantasy sports.
The plaintiffs are also protected by copyright of the user interface of their website, which allows for user interaction and engagement. Copyright protection extends to the visual aspects of their website, the layout of the site, and how the site is presented. The authors made various choices to optimize the user experience.
- Infringement Allegations
The plaintiffs allege that the defendants have established a mirror website that uses the “DREAM11” mark, without consent, and provides the same services, but it is alleged that it misleads consumers to believe they are using the official Dream11 platform.
In addition to this, the defendants’ website is alleged to link users to sites that support illegal betting and gambling. This led to a concern that the plaintiffs could face reputational damage indefinitely, which would reasonably detriment their goodwill and trust with respect to the user base.
- Court Proceedings
The plaintiffs filed a lawsuit and sought permanent injunctions to stop the defendants from using the “DREAM11” mark and other associated content. The High Court granted the plaintiffs an ex-parte ad-interim injunction against the defendants who failed to respond to the summons showing that the case was so urgent and serious that the court would act immediately.
The plaintiffs submitted in writing that there was no doubt that the Defendants had intentionally infringed the plaintiffs’ registered trademarks and that this was a blatant infringement of their intellectual property rights. In order to protect its brand, the plaintiffs sought immediate intervention from the Court.
- Domain Name Problems
Defendants operate a domain name “dream11com.in”, which the plaintiffs contend is confusingly similar to their domain “dream11.com”, and that the confusion will further dilute the image of its brand, and add to the future risk of confusing consumers in the marketplace.
The plaintiffs also contend that the defendants chose this domain name to induce and cause Takamatsu and utilize the goodwill and reputation of the plaintiffs’ Dream11 brand, and to attract users to their website who would be unaware of the brand.
- Prior Orders of the Court
The court has issued prior injunctions in favour of the plaintiffs against other infringers to uphold and stress the established rights the plaintiffs have over the trademarks registered in their name; and that the court is concerned in protecting the plaintiffs’ intellectual property rights and the integrity of the marketplace.
The plaintiffs had related the prior injunctions for help to their cause, and it showed a history and consistency of enforcement against the unauthorized use of their intellectual property.
ISSUES
- Trademark Infringement: Does the use of the mark “DREAM11” on the defendants’ website amount to the infringement of the plaintiffs’ registered trademarks and is it likely to confuse consumers?, extended to both online and offline markets?
- Possible Passing Off: Are the Defendants passing off by intentionally leading users to believe they are affiliated with and damaging the Plaintiffs’ goodwill in relation to their services?
- Copyright Infringement: Did the way the Defendants presented their site, infringe the Plaintiffs’ copyright regarding how their platform looked and felt?
- Implications of Not Contesting: What were the implications of the Defendants not fulfilling their obligation to appear or contest the suit and how does it affect the case?
CONTENTIONS
PLAINTIFFS’ CONTENTIONS
- Infringement of Trademark: The plaintiffs contend that the Defendants’ use of the “DREAM11” trademark is clearly unauthorized and therefore infringes on its trademark rights. They provided documentary evidence, in the form of screenshots from both websites, clearly showing substantial immediate and/or likely confusion, as consumers may be confused about the source of the two services.
- Passing Off: The plaintiffs argued the Defendants were deceiving consumers into believing a connection with the Dream11 platform. This could harm the plaintiffs’ reputation and goodwill, their brand has developed after years of being in business.
- User Interface Copyright: The plaintiffs argued the copyright in their proprietary user interface. The Defendants not only reproduce the same user interface on their website, but also entice users to click on that user interface, and profiting from illegal copyright infringement.
- Prior Injunctions: The plaintiffs refer to previous injunctions by courts to protect these trademarks from even those similar to these Defendants, alluding to rights they have already established and the ability to provide protection for their brand.
- Uncontested Nature of Suit: The plaintiffs have argued, and the defendants have not disputed, that as the defendants did not respond to the summons of the court, the plaintiffs are entitled to take a decree on their claim of “DREAM11”, on the merits and without contest.
DEFENDANTS’ CONTENTIONS
- Failure to Appear: The defendants did not take any steps to respond to the charges. Since the defendants did not appear, they did not have any opportunity to challenge the allegations made by the plaintiffs.
- Potential Defence: The defendants might have claimed, although they did not appear, that they did not intend the use of the mark to confuse the relevant public or the services were sufficiently different than those of the plaintiffs that confusion would not occur.
- No Evidence: The defendants may have claimed that the plaintiffs did not provide sufficient evidence that the use of the mark by the defendants was trademark infringement or passing off.
Judgment
- Trademark Infringement Found: The Court found that the Plaintiffs were able to establish their rights to the “DREAM11” trademark. The evidence of the use of the Plaintiffs trademark was largely hinged on the evidence presented and most importantly screenshots of the two sites that revealed to the relevant consumer that the Defendants were infringing the “DREAM11” trademark.
- Possible Passing Off Recognized: The court accepted that the actions of the defendants were likely to cause an assumption by consumers, bringing them within the territory of passing off. The fact that they were selling similar things further reinforced their conclusion.
- Copyright Infringement Affirmed: The court found that the defendants’ website infringed the copyright of the plaintiffs’ user interface. They took the user interface, infringing the plaintiffs’ rights.
- Decree for Permanent Injunction: The court granted the plaintiffs a permanent injunction against the defendants prohibiting any and all use of the “DREAM11” mark or any variants. The court also ordered the transfer of the domain name of “dream11com.in” to the plaintiffs.
- Costs: The court ordered that the defendants reimburse the plaintiffs their actual costs incurred with respect to this suit as the defendants evidently chose not to challenge the claims.
- Implications of no Defense: The court stated that by the defendants choosing to not contest the suit, they inferred that the defendants did not have a defense and it was that factor that assisted the plaintiffs claim in being successful.
CONCLUSION
The ruling provides an important precedent in intellectual property law, and especially for dealing with online platforms. This case also demonstrates the very high stakes of not responding to a court case, as failing to defend can often lead to the court issuing an Order by Default for the Plaintiff. Importantly, it reinforces that, to avoid legal punishments, directors and shareholders – even one who only has a nominal role – must comply with their fiduciary duties and legal requirements.
In an ever-expanding global market for fantasy sports and online gaming, protecting trademarks and consequently, copyright, is important for brand reputation and consumer trust. The decision in this case has implications beyond the immediate parties, affirming the rights of the plaintiffs and conveys warning to potential infringers of the consequences of particular unauthorized and infringing use of protected intellectual property.
Overall, this case demonstrates the relationship between corporate governance, intellectual property law, and consumer protection in the digital economy today. This ruling also highlights to companies, the obligation to protect their trademarks and copyrights from infringement. This ruling highlights the need for vigilance when it comes to protecting intellectual property rights to insure that established brand[‘]s goodwill is not worse because of unauthorized use. Finally, the implications of this tended to go beyond the parties involved, and complete the discourse on issues related to intellectual property protection in the digital age. Companies in a competitive area for example in the case of fantasy sports who want to protect their brands need to be diligent, and the case is a good reflection of the avenues available to enforce that protection if their brand is infringed on or misrepresented.
‘This article has been written by Tamanna Jain from University Five Year Law College, University of Rajasthan.’
