Delhi High Court: Pratibha M Singh, J. rejected to pass a permanent injunction order restraining GODADDY and other Domain Name Registrars (‘DNR’) from offering any domain name(s) which incorporate SNAPDEAL (‘plaintiff’s’) trademarks amounting to infringement of the registered trademark, passing off and unfair competition. Such a wide order, without identifying the specific domain names, cannot be granted and for every domain name specific relief has to be sought by the Plaintiff after identifying the domain name.
The present suit was filed seeking permanent injunction restraining the infringement of trademarks, passing off, unfair trade practices, damages, rendition of accounts and other reliefs. The Plaintiff is the registered proprietor of the trademarks ‘SNAPDEAL’/’SNAPDEAL’ and its formative marks and defendants are mostly DNR’s engaged in the business of creation, registration and sale of domains to the Registrants. It is the case of the Plaintiff that the said DNRs have registered various domain names containing the Plaintiff’s registered trademark ‘SNAPDEAL’. Thus, a prayer is sought under Order XXXIX Rules 1 & 2 Civil Procedure Code regarding not offering any domain names which incorporate the Plaintiff’s mark ‘SNAPDEAL’.
The Court mentioned an interim order dated 18-04-2022 passed by a predecessor Bench that noted such a wide order, without identifying the specific domain names, cannot be granted and for every domain name specific relief has to be sought by the Plaintiff after identifying the domain name. Relevant part of the order is mentioned below:
“…such rogue websites keep mushrooming, and that it is impracticable for the plaintiff to approach this Court repeatedly on coming to know of such websites.”
“…it is not permissible for the Court to hold, in advance, that every prospective alternative domain name, containing the word/thread/string “SNAPDEAL” would necessarily be infringing in nature and, thereby, injunct, in an omnibus and global fashion, DNRs from ever providing any domain name containing “SNAPDEAL”. This, in my view, would be completely impermissible.
“The cause of action, in any trademark infringement suit, has to be with respect to the particular infringing trademark/trademarks. The Court cannot pass an order to operate in futuro, restricting the defendants from offering, for registration, any domain name, which includes the thread “SNAPDEAL”, as that would be attributing, to the Court, a clairvoyance which it does not possess.
The plaintiff has, therefore, necessarily to petition the Court against each domain name that it finds to be infringing. This may be a long and cumbersome exercise. It cannot be helped. There is no shortcut to justice.”
The Court noted that a suit cannot be continued in perpetuity qua the infringement of a particular mark and to expect that the Plaintiff would file a suit or move an application each and every time a domain name containing its trademark is registered would make it an extremely cumbersome and expensive exercise.
Counsel for defendant brought before the Court “abuse policy” used by GoDaddy that enables the trademark owners to fill up a form to seek suspension/locking of the domain name complained of, but this abuse policy may not be sufficient as the same still requires the IP owner to approach a court of law.
The Court thus observed that there ought to be a mechanism where the abuse policy is not merely dealing with suspension/locking but should also be able to cancel/transfer the infringing domain names. Such an abuse policy should also be implemented by the DNRs through a specified set of officials based in India, to ensure that if in a case, the transfer/cancellation is not permitted under the abuse policy; the trademark owner would be able to avail of their remedies before the Courts in India, against such a decision of the DNR.
The Court directed an affidavit to be filed “as to whether an independent and impartial mechanism could be put in place by the Defendant 1 to 4 to prevent the abuse of trade marks through registration of domain names and to disable the privacy protect features and make available the details of the registering person in respect of domain names on the ‘Whois’ database.”
The Court also directed to seek instructions from Department of Telecommunications, ‘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.
[Snapdeal Private Limited v. GoDaddycom LLC, 2022 SCC OnLine Del 2044, decided on 13-07-2022]
Advocates who appeared in this case :
Ms. Tanya Verma & Ms. Devyani Nath Suvangana, Advocates, for the Plaintiff;
Ms. Shweta Sahu and Mr. Shreyansh Jain, Advocates for the D-1 to 4;
Mr. Harish Vaidyanathan Shankar, with Mr. Srish Kumar Mishra, Mr. Sagar, Mehlawat and Mr. Alexander Mathai Paikaday, Advocates, for the D-33;
Mr. Praveen Kumar Jain and Ms. Shalini Jain, Advocates, for the D-34.
*Arunima Bose, Editorial Assistant has reported this brief.