Indian e-commerce company, Snapdeal Private Limited (Snapdeal) approached the Delhi High Court seeking permanent injunction restraining 32 Domain Name Registrars (DNRs) for infringement of trademarks, passing off, unfair trade practices, damages, rendition of accounts and other reliefs for registering several domain names containing its registered trademark ‘SNAPDEAL’.
The Department of Telecommunications (hereinafter, “DoT”) and the National Internet Exchange of India (NIXI) were also adjoined as defendants
The Court on 18th April, 2022 had held that such an extensive Order could not be granted, without identifying the specific domain names, and for every domain name identified, a specific relief had to be sought by Snapdeal.
In the present matter, the primary issue for consideration before the Court was “whether the court would intervene in every matter involving infringement of registered domain names, particularly considering that they are registered in respect of lakhs and lakhs of domain names, especially for well-known trademarks?”
GoDaddy.com, one of the few defendants which appeared on record, submitted that it had implemented an abuse policy, which enabled the trademark owners to fill up a form to seek suspension/locking of the domain name complained of and the same would then abide by the orders passed by the Court.
Against this, the Court opined that, the abuse policy was not sufficient as it required the IP owners to approach a court of law nevertheless. The Court pointed out the fact that DNRs offered alternate domain names on their own, without anyone seeking the same.
Considering the grim scenario, in the interest of justice, the Court held that, DNRs would have to set up an effective mechanism by which any trademark owner, who has an objection with regards to a registration granted to any particular domain name, could approach the said DNR and seek cancellation/transfer of the said domain name. The same ought to be fairly considered through the mechanism which ought to be independent and impartial, for e.g., through an Ombudsman.
The Court further held that, if the said cancellation/suspension/transfer was not agreed through the said mechanism, the IP owner could avail its remedies in accordance with law. The Court also suggested for a mechanism wherein the abuse policy would not merely deal with suspension/locking but also cancel/transfer the infringing domain names. The Court directed that, such an abuse policy should be implemented by the DNRs through a specified set of officials based in India, to ensure that if the transfer/cancellation was not permitted under the abuse policy, trademark owners could avail their remedies before the Courts in India, against the DNR.
Accordingly, the Court ordered the Defendants to file an affidavit latest by July 31, 2022 to decide a mechanism to prevent the abuse of trade marks through registration of domain names, as also, to disable the privacy protect features and make available the details of the registering person in respect of domain names on the ‘Whois’ database. (a public database that houses information collected when someone registers a domain name.)
In the meantime, the Central Government Standing Counsel was directed to seek instructions from the DoT, as to the manner in which all DNRs, who are offering their services in India and earning revenues from India despite being based out of other countries, could be made to implement orders passed by Courts in India.
The matter is now listed for further hearing on August 3, 2022