Date: 13th July, 2022
Case No: CS (COMM) 176/2021
Coram: HON’BLE JUSTICE PRATHIBA M. SINGH, DELHI HIGH COURT
Plaintiff: SNAPDEAL PRIVATE LIMITED
Respondents: GODADDYCOM LLC AND ORS.
Plaintiff’s Mark: SNAPDEAL
Decision: Domain Name Registrars directed to develop a mechanism for cancellation/transfer of domain names
The Plaintiff, a registered proprietor of trade marks ‘SNAPDEAL/SNAP DEAL’ and its formative marks, filed the present suit seeking permanent injunction against registration of domain names by Defendant Nos. 1 to 32 (‘DNRs’), which contain the Plaintiff’s registered trade mark SNAPDEAL. The Plaintiff in their Interim Injunction (I.A. 5407/2021) sought relief from the Hon’ble Court to restrain from registering domain names which contain the Plaintiff’s registered trade mark ‘SNAPDEAL’.
Some brief findings from the judgement in I.A. 5407/2021 of this Hon’ble Court, passed by Justice C. Hari Shankar are as follows:
- The DNRs registered domain names infringing the mark SNAPDEAL and also provide similar infringing domain names to persons who log on to the DNRs’ website. (Para 13)
- The DNRs are masking the identity of the registrants of such domain names and provide privacy services, which is considered illegal. (Para 13)
- The concept of ‘Quia timet’ meaning ‘since he fears’, was referred to in the matter, stating that an action can be taken well in advance against any prospective infringement that may take place in the future. (Para 93)
- However, a suit based on ‘Quia timet’ cannot be predicted on hypothetical or imaginary infringements, the Hon’ble Court in the judgement stated that it would be completely impermissible to restrain DNRs from registering domain names which contain the word SNAPDEAL, as they maybe anticipated to be infringing in nature. (Para 95)
- The Hon’ble Court observed that no orders can be passed to operate in the future and thus cannot restrain the DNRs from registering domain names which contain the word ‘SNAPDEAL’.
- It was further observed that the Plaintiff does not have any other means but to file suits/petitions against each domain name that are found to be infringing, while recognizing that it’s a long and cumbersome exercise.
Lastly, the Hon’ble Court in I.A. 5047/2021 accepted that the reliefs of the Plaintiff cannot be granted under Order XXXIX Rule 1 and 2 of the CPC. It further rejected the prayer of the Plaintiff to injunct the DNRs from offering any domain names containing the mark SNAPDEAL.
The focal point of the present Order dated 13th July, 2022 appears to be the current situation wherein a trade mark owner is compelled to approach the Courts in India to seek a favourable order against an infringing domain name, and then request the DNRs for suspension or locking of the said domain name, which is repetitive and a tedious task. [Para 6]
The Defendant Nos 1 to 4’s Learned Counsel submitted that GoDaddy had implemented an abuse policy, as per which the trade mark owner will fill up a form against a domain name and seek its suspension or locking, and further submitted that the same would be abided by the orders passed by the Courts of India. [Para 7]
One other finding of the Hon’ble Court was that despite the consumers’ need for an alternate domain name, the DNRs suggest alternate domain names on their own. [Para 8]
In order to avoid multiple suits being filed before the Courts in India, the Hon’ble Court observed that in this day and time the trade mark owners should be able to approach DNRs directly, to seek cancellation/transfer of infringing domain names, through a mechanism which is fair, independent and impartial, and as an example advised the setup of an Ombudsman. If the domain name in question fails to be cancelled/suspended/transferred, then the IP owner can proceed as per the law to seek remedies. The abuse policy be implemented by the DNRs through a specified set of officials based in India. [Para 9 and 10]
The Hon’ble Court stated that the current abuse policy of GoDaddy should not only deal with suspension or locking of domain names, but should also cancel/transfer the infringing domain names. [Para 10]
The Hon’ble Court directed Defendant Nos. 1 to 4 to file affidavits seeking reply on whether an independent and impartial mechanism be put in place by them:
- to prevent the abuse of trade marks through registration of domain names?
- to disable the privacy protect features and make available the details of the registering person in respect of domain names on the ‘Whois’ database.
Lastly, instructions have been sought from the DoT (Defendant No. 3) to make international DNRs implement orders of the Courts in India, especially those who have no offices in India but are generating revenues from the country.
The matter has been listed for 3rd August, 2022 along with another matter i.e. DABUR INDIA LIMITED Vs. ASHOK KUMAR AND ORS. CS (COMM) 135/2022, dealt by this Hon’ble Court, wherein the authorities have been directed to look at manners in which the DNRs, who do not have offices or assets in India, effect the orders of the Indian Courts in a better manner.
