delhi high court declares itc’s bukhara as a well-known mark

Delhi High Court directs Domain Name Registrars to come up with a mechanism for the prevention of unauthorised domain name registrations

The Delhi High Court in its order (dated July 13, 2022) in the case of Snapdeal Private Limited Vs. GoDaddy.com LLC and Ors., CS (COMM) 176/2021, pronounced an order directing Domain Name Registrars (“DNRs”) to file an affidavit explaining whether an independent and impartial mechanism can be put in place by them to prevent the abuse of unauthorized registration of domain names (in which trademark rights do not vest with the person intending to obtain the domain name registration).

In the present case, Snapdeal sought a permanent injunction restraining the infringement of their trademarks, including passing off and unfair trade practices, damages, rendition of accounts and other reliefs. The suit was filed against various Domain Name Registrars (including GoDaddy), the Department of Telecommunications and the National Internet Exchange of India.

In the last order, dated April 18, 2022, the predecessor bench held that the relief claimed by the Plaintiff was too wide a relief to be sought since without identifying each particular domain name, a blanket relief against all future acts of infringement cannot be sought.

Justice Pratibha Singh (in her order dated July 13, 2022), while noting the earlier order expressed – ‘…it is noticed 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 also make it an extremely cumbersome and expensive exercise’.

The counsel representing the DNRs contended that there is an existing abuse policy which enables trademark owners to fill up a form to seek suspension/locking of the infringing domain name. It is however pertinent to note that the mechanism in place, however, only works subsequent to the issuance of an order passed by a judicial authority.

On this point, Justice Singh stated that, ‘This abuse policy may not be sufficient as the same still requires the IP owner to approach a court of law. The question that arises is as to whether the intervention of the Court would be required in every case involving the registration of infringing domain names, particularly considering that they are registered in respect of lakhs and lakhs of domain names, especially for well-known trademarks. In fact, DNRs offer alternate domain names on their own, without anyone seeking the same.

Justice Singh further said that ‘In the opinion of this Court, time has come for DNRs to create a mechanism by which any trademark owner who has an objection to the registration granted to any domain name, can 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 eg., through an Ombudsman. If the cancellation/suspension/transfer as sought is not agreed to through the said mechanism, then the IP owner can avail of its remedies in accordance with law.

Thus, 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.

While the order directs the DNRs to submit their response through an Affidavit, the order failed to account for the WIPO established mechanisms in place including UDRP and INDRP that assist trademark owners in re-possessing the infringing domain names.

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