Delhi High Court: In a batch of commercial suits, addressing the widespread misuse of well-known trade marks through the registration of fraudulent domain names by unknown entities for impersonation, phishing, sale of counterfeit goods, and other deceptive practices aimed at defrauding consumers, the Single Judge Bench of Prathiba M. Singh, J., elaborated upon the applicability of safe harbour protection in cases of intellectual property infringement and the enforcement of dynamic+ injunction to safeguard against such domain name fraud.
What measures may be directed by the Court against DNRs who refuse to comply with the Court orders?
Intermediary obligations of due diligence and safe harbour protection
The Court examined the recurring issue of non-compliance by DNRs and Registry Operators with orders passed by Indian courts, particularly in cases involving infringing domain names. It noted that several such entities, especially those operating from foreign jurisdictions, had adopted an unreasonable stance by insisting that aggrieved parties obtain orders from foreign courts, such as courts in the United States, or follow international procedures like the Hague Convention or Mutual Legal Assistance Treaty (MLAT), even in urgent situations. The Court observed that this practice resulted in significant delays and rendered Indian court orders ineffective, thereby compelling the Court in certain instances to direct blocking of services of non-compliant DNRs to ensure adherence. While the plaintiffs sought such blocking under Section 69-A, IT Act on grounds of sovereignty, public order, and prevention of offences, the DNRs opposed these measures, claiming protection as intermediaries under Section 79, IT Act and cautioning against inconvenience to innocent registrants.
In addressing the scope of intermediary liability, the Court relied on Shreya Singhal v. Union of India, (2015) 5 SCC 1, to reiterate that safe harbour protection under Section 79, IT Act is available only to genuine and passive intermediaries. It clarified that intermediaries would lose such protection if they were found to be actively involved in, or facilitating, unlawful activities, including trade mark infringement. The Court further held that this determination must be made on a case-by-case basis. Importantly, it emphasised that the provisions of the IT Act do not override the TM Act and that obligations under the latter remain independent unless there is a direct inconsistency. Consequently, DNRs that failed to take adequate steps to curb infringement, or that actively promoted alternative infringing domain names to maximise revenue, would not be entitled to safe harbour protection and could be treated as primary infringers, thereby exposing themselves to liability, including monetary damages.
On the question of whether non-compliant DNRs could be blocked, the Court analysed the threshold of “public order” under Section 69-A, IT Act. It distinguished between isolated instances of intellectual property infringement, which may amount to issues of law and order, and systemic, large-scale violations involving fraud and deception of the public. Applying the test of the gravity and societal impact of the conduct, the Court held that consistent infringement, coupled with fraudulent activities that deceive consumers and erode trust in digital platforms, could indeed disturb public order. It noted the growing prevalence of technologically sophisticated frauds and the consequent need to preserve consumer confidence in online interactions. In such circumstances, the Court concluded that continued non-compliance by DNRs could not be permitted to undermine judicial authority, and therefore, competent authorities could be directed to block the services of such entities to ensure effective enforcement of Court orders and protection of public and economic interests.
Dynamic+ injunction
In UTV Software Communication Ltd. v. 1337X.To, 2019 SCC OnLine Del 8002, this Court has already recognised the grant of dynamic injunctions as being necessary in such cases. The observations read as under:
“It is desirable that the Court is freed from constantly monitoring and adjudicating the issue of mirror/redirect/alphanumeric websites and also that the plaintiffs are not burdened with filing fresh suits. However, it is not disputed that given the wide ramifications of site-wide blocking orders, there has to be judicial scrutiny of such directions and that ISPs ought not to be tasked with the role of arbiters, contrary to their strictly passive and neutral role as intermediaries.”
The Court then considered the nature and scope of reliefs to be granted in such cases. It noted that the plaintiffs had sought comprehensive remedies, including injunctions against existing infringing domain names, prevention of future registrations incorporating their well-known marks and registered trade marks, and directions to Registry Operators to ensure that such infringing domain names do not resolve to active websites. Additional reliefs included transfer of infringing domain names, as well as their locking and blocking. The plaintiffs had also sought integration of their protected trade marks into mechanisms such as trade mark clearing systems to enable early detection and notification of infringing registrations. The Court observed that DNRs had been permitting registration of domain names incorporating well-known marks, global brands, and corporate names, thereby facilitating misuse and deception.
The Court emphasised that a uniform approach could not be adopted for all categories of trade marks, and reliefs must be tailored based on the nature and distinctiveness of the mark. It identified different categories of marks involved in such disputes, including invented or fanciful marks, descriptive marks that have acquired secondary meaning, and dictionary words that have become well-known through use. It held that invented, arbitrary, and fanciful marks are entitled to the highest degree of protection, while other categories may require closer scrutiny before the grant of injunctions. Accordingly, the Court concluded that the scope of relief, particularly in relation to blocking and restraint orders, must be calibrated depending on the character of the mark in question.
With respect to enforcement mechanisms, the Court emphasised the need to streamline the process for disclosure of registrant details and ensure prompt access to such information. It held that in cases involving patent illegality, especially where domain names incorporate well-known trademarks or brand names, broader enforcement considerations must prevail.
The Court directed that infringing domain names ought to be restrained, and in respect of future registrations, DNRs should proactively protect well-known trade marks by referring to the list maintained by the Controller General of Patents, Designs and Trade Marks (CGPDTM) and incorporating such marks into blocking or reserved lists. It further observed that DNRs must implement effective technological measures to give practical effect to such directions. At the same time, it clarified that any legitimate disputes, such as cases involving criticism or fair use by genuine registrants, would have to be adjudicated by courts of law.
On the issue of privacy and disclosure of registrant information, the Court referred to the contractual framework governing DNRs and Registry Operators, which permits disclosure of data where a party demonstrates a legitimate interest. It held that such disclosures would now be governed by applicable data protection laws, including the DPDP Act. The Court clarified that requests made by intellectual property owners, law enforcement agencies acting on their behalf, or in instances of cyber fraud, would constitute legitimate interest. Accordingly, it directed that DNRs and Registry Operators holding such data are under a mandatory obligation to disclose registrant details in such circumstances.
[Dabur India Ltd. v. Ashok Kumar, 2025 SCC OnLine Del 9651, decided on 24-12-2025]
Advocates who appeared in this case:
For the Plaintiff: Anirudh Bakhru, Ankur Chhibber, Prabhu Tandon, Avijit Sharma, Kripa Pandit, Christopher Thomas, Bhanu Gupta, Archita Mahlawat, Sazid Rayeen, Advocates
For the Respondent: Darpan Wadhwa, C.M. Lall, Senior Advocates, Yashvardhan Singh, Geetanjali Viswanathan, Yash Raj, Kruttika Vijay, Aishwarya Kane, Yash Raj, Alipak Banerjee, Shweta Sahu, Parva Khare, Brijesh Ujjainwal, Pradyumn Sharma, Shivani Chaudhary, Mohd. Kamran, K.G. Gopalakrishnan, Kunwar Raj Singh, Nisha Mohandas, Apoorv Kurup, Kirti Dadheech, Akshay Goel, Shivam Narang, Lalit Kashyap, Shubhendu Anand, Piyush M. Dwivedi, Kushal Gupta, Mohd Umar, Prashant Prakash, Ateev Kumar Mathur, Amol Sharma, Sarfaraz Khan, Abdul Wahid, Rajesh Kumar Gautam, Deepanjal Choudhary, Sanjay Gupta, Tanmay Garg, Aman Siwasiya, Varun Pathak, Thejesh Rajendran, Tanuj Sharma, Vinay Yadav, Ansh Kalra, Divyanshu, Kamna Behrani, Susmit Pushkar, Ananya Mehan, Nirupam Lodha, Kshitij Parashar, Vanshika Thapliyal, Rajesh Kumar Gautam, Likivi K Jakhalu, Dinesh Sharma, Deepak Gogia, Aadhar Nautiyal, Shivangi Kohli, Advocates