Bombay High Court: In an interesting case regarding domain name dispute, Manish Pitale, J., held that the Court cannot restrict a domain name registrar from registering certain marks which may lead to trademark infringement in futuro.
The Court held that a suit for trademark infringement is a suit in personam, therefore, in such a suit, directions cannot be issued to restrict third parties, and in each instance of infringement, the proprietor of the mark has to rush to the Court for seeking relief.
Alleged Trademark Infringement & Swiggy Instamart Scam
The instant application filed by GoDaddy.com LLC and GoDaddy India Web Services Pvt. Ltd. (the applicant-defendants) for seeking clarification/modification/recall of the Bombay High Court's order directing the appellants not to register any domain name containing the mark ‘SWIGGY' without prior authorization of the Plaintiff.
The genesis of the case is that on being apprised of a scam where some innocent persons were duped into parting with various sums of money on the false promise of being brought on board the Swiggy Instamart Platform, the plaintiff, i.e., “Swiggy” filed a suit in the Bombay High Court for infringement of its trademark “Swiggy” pertaining to Swiggy Instamart Platform. The plaintiff claimed that the defendants 1-13 even shared a UPI QR code, bearing a logo Swiggy Instamart, through which the said person made payment on the false representations given by the defendants.
On further query, the plaintiff found that the said defendants were also using infringing domain names “btpl.info” and “swiggyinstamart.co.in”. On 24-08-2022, the Court, while granting ex-parte ad-interim reliefs, directed defendants 15 and 16 to provide the information sought by the plaintiff.
By the impugned order dated 29-11-2022, the Court opined that unless the impugned domain names are suspended, there is possibility of further misuse of the Plaintiff's registered trademark ‘SWIGGY'. Therefore, the Court granted the following ad-interim reliefs:
“(e) pending the hearing and final disposal of the suit, an order be passed directing the Registrar of Domain Names / Defendant Nos. 15 and 16 to suspend the impugned domain names;
(g) pending the hearing and final disposal of the suit this Court be pleased to pass an order directing Defendant Nos. 15 and 16 not to register any domain name containing the Plaintiff's mark ‘SWIGGY' without prior authorization of the Plaintiff.”
Grievances of the Defendants
Aggrieved by the aforesaid order, defendants 15 and 16 approached the Court with the instant application submitting that though they would be complying with the ad-interim relief granted in terms of prayer clause (e), they would not be able to do so, insofar as prayer clause (g) is concerned and the same deserves to be recalled.
The applicant-defendant argued that as a matter of law, such a direction could not have been passed as the underlying technology of registration of Domain names is an automated process without any manual intervention. Therefore, it is impossible to comply with the ad-interim order granted in terms of prayer clause (g) and if the said direction is not recalled, the applicant-defendant would be vulnerable to an action of Contempt, even though compliance with the direction is beyond their capacity.
Analysis by the Court
Technological Constraints in Domain Name Registration
With regard to the contention of the applicant-defendant that the underlying technology of registration of the domain names is a fully automated process with no manual intervention and that therefore, the applicant-defendant has no control over the manner in which a domain name registration is granted to a potential domain name registrant, the Court referred to the applicant-defendant's stand in Snapdeal Private Limited v. GoDaddy.com LLC, before the Delhi High Court wherein, the applicant-defendant had admitted that subject to technical, financial and resourcing issues, it could potentially prevent users from registering names with the exact word or string of words that would infringe the registered trademark of the Plaintiff.
In the Snapdeal case (supra) the Delhi High Court had recorded that the defendant cannot claim that it has absolutely no knowledge or idea of the alternative domain names that are suggested when an application is made for registration of the domain name with such a Domain Name Registrar since such suggestions are made on the basis of an algorithm developed by the Registrar itself.
Therefore, the Court opined that if a direction in the nature of the ad interim relief in terms of prayer clause (g) is granted, the applicant-defendant would have to utilize an alternative algorithm to ensure compliance and it has been avoiding the same to avoid some financial burden. Resultantly, the Court held that there was no substance in the contention that technologically it is impossible to comply with the ad-interim order granted in terms of prayer clause (g).
Legal Constraints in Granting an Omnibus Injunction
The Court noted that it is a recognized position that in cases of Intellectual Property Law, every time the Plaintiff initiates an action and seeks remedy, it is an action in personam. Which is why in Hindustan Unilever Limited v. Endurance Domains Technology LLP, the Bombay High Court had held that every time a new domain name is registered, which the Plaintiff alleges to be an infringement, it will have to approach the Court for specific orders.
The Court observed that in every case of trademark infringement, the plaintiff claiming infringement of its registered mark is required to claim relief in the context of specific instances of infringement, relatable to individuals against whom orders can be passed by the Court. Even in a “John-Doe action”, a specific instance of infringement is identified, although there may be lack of information regarding the details of the individual or individuals who are responsible for such infringement.
Therefore, the Court opined that it would not be appropriate to continue the ad-interim order granted in terms of prayer clause (g), as it would amount to granting an omnibus and global temporary injunction, operating in futuro. The Court stated,
“Each instance of infringement would require the Plaintiff to rush to this Court for a direction in this very suit or separate proceedings against specific parties but an omnibus direction as contained in prayer clause (g) could not have been granted.”
Resultantly, the Court allowed the instant application and recalled the ad-interim relief granted in terms of prayer clause (g).
However, considering that the public at large has suffered due to the nefarious activities of defendants 1-13, the Court opined that the rights of the plaintiff could not be ignored and directed that the ad-interim relief granted in terms of prayer clause (e) shall continue to operate and the applicant-defendant shall inform the Plaintiff on each occasion that registration of a domain name is granted, which contains the registered trademark of the Plaintiff “Swiggy”, through the automated process of registration of the said Domain Name Registrar.
[GoDaddy.com LLC v. Bundl Technologies (P) Ltd., 2023 SCC OnLine Bom 227, decided on 23-01-2023]
Advocates who appeared in this case:
For the Applicant-defendant: Sharan Jagtiani, Senior Advocate a/w Rohan Cama, P. Mehta, Debarshi Dutta and Arjun Bose, Advocate i/by Solaris Legal,
For the Plaintiff: Hiren Kamod, Vaibhav Keni, Neha Iyer, Rohan Lopes, Prem Khullar and Anees Patel, Advocates i/by Legasis Partners
*Kamini Sharma, Editorial Assistant has put this report together.