Bombay High Court
Godaddy.Com Llc vs Bundl Technologies Private ... on 28 February, 2023
Bench: K.R. Shriram, Rajesh S. Patil
Digitally
signed by 1/6 3.COMAPL-5084-2023.doc
GAURI GAURI AMIT
GAEKWAD
AMIT Date:
GAEKWAD 2023.03.02 IN THE HIGH COURT OF JUDICATURE AT BOMBAY
10:35:12
+0530 ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
COMMERCIAL APPEAL (L) NO.5084 OF 2023
IN
COMMERCIAL IP SUIT (L) NO.26549 OF 2022
GoDaddy.com LLC & Anr. .....Appellants
Vs.
Bundl Technologies Pvt. Ltd. & Ors. .....Respondents
----
Mr. Sharan Jagtiani, Senior Advocate a/w. Mr. Rohaan Cama, Adv. Mrinal
Ojha, Adv. Debarshi Dutta and Mr. Arjun Bose i/b. Solaris Legal for
appellants.
Mr. Hiren Kamod a/w. Mr. Vaibhav Keni, Ms. Neha Iyer, Mr. Rohan Lopes,
Mr. Prem Khullar and Mr. Anees Patel i/b. Legasis Partners for respondent
no.1.
Mr. S.K. Dhekale, Court Receiver present.
----
CORAM : K. R. SHRIRAM &
RAJESH S. PATIL, JJ.
DATED : 28th FEBRUARY 2023
P.C. :
1 On 29th November 2022 an order came to be passed in the suit
in terms of prayer clauses - (e) and (g). Prayer clauses - (e) and (g) read as
under :
(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
Hon'ble 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.
2 Soon thereafter, appellants took out an application being
Interim Application (lodging) No.38837 of 2022 seeking clarification/
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modification/recall of order dated 29th November 2022. Appellants were
more concerned with the grant of prayer clause - (g). Appellants' prayer to
recall the grant of prayer clause - (g) was granted by the impugned order
dated 23rd January 2023. The Court while granting the relief in its
concluding paragraph 28 replaced prayer clause - (g) with a modified
order. Paragraph 28 of the impugned order reads as under :
28. Hence, for the reasons stated above the ad-interim relief
granted by the order dated 29 th November, 2022, in terms of
prayer clause (g) is recalled and instead the order is modified
to the extent that the ad-interim relief granted in terms of
prayer clause (e) shall continue to operate and the Defendant
Nos. 15 and 16, by way of an ad-interim direction, 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.
Upon such information being provided to the Plaintiff, it
would be at liberty to take appropriate action in the matter.
3 Appellants are aggrieved that the onus is being put on
appellants that appellants shall inform plaintiff on each occasion that
registration of a domain name is granted, which contains the registered
trademark of plaintiff "Swiggy", through the automated process of
registration of appellants. It is appellants' case that world over there are
about 2600 Registrars like appellants through whom such registration can
also be made but this onus is placed only on appellants to inform plaintiff.
4 Mr. Jagtiani submitted that the order goes beyond what
plaintiff, i.e., respondent no.1, had prayed for in the plaint. Mr. Jagtiani also
submitted that there are various softwares which respondent no.1 can use
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to track the domain names containing the infringing trademark of
respondent no.1 as stated in ground (i) in the appeal memo.
5 We have to also note that Mr. Jagtiani stated that if plaintiff
identifies any such domain and makes a request with the Court's order,
appellants will immediately comply with the Court's order as has been done
in the past.
6 In our view, this matter requires consideration.
7 At this stage, it will be apposite to reproduce paragraphs 14,
19, 20, 27, 28 and 29 of the order dated 12 th June 2020 in Interim
Application No.1 of 2020 in LC-VC-GSP-24 of 2020 (Commercial IP Suit
(lodging) No.......... of 2019) which read as under :
14. Before I turn to the prayers and the relief, I should set out
the contours of the underlying technology. This is necessary
because the plaint and the IA seem to muddle distinct
technical aspects. A domain name is simply an easy-to-
remember or mnemonic for an internet protocol address. The
IP address is a string of numbers in four sets separated by a
period. Each set can be of up to three digits. Domain Name
Servers or DNS are the internet equivalent of a telephone
directory. They maintain a list of domain names and translate
these to IP addresses. The name servers have different types
of 'records' and these are used to re-direct internet traffic
appropriately. CName records, for instance, will redirect web
traffic; MX records will deal with email and messaging traffic
and so on. Now domain names are, typically, never 'owned'.
They are always registered for a fee and for a specified time,
typically a one-year minimum. The process of registering a
domain name is trivial. One only has to look up availability of
a combination of words and choose a desired top-level or
other domain (.in, .com, .net, etc). The entire process of
registration is automated and requires no manual
intervention. Certainly there is no human element involved
in overseeing or assessing the legitimacy of any chosen
domain name. Once the domain name is registered, it must
point somewhere to be effective. Left idle, it defaults to the
domain name registrar's name servers. If a domain name is to
be used to point to a website, certain records have to be
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changed to match those of the webhost -- an entity such as
GoDaddy, for instance. It is entirely possible to combine
multiple records under a single domain name, so that emails
under that domain name are hosted by one entity (say,
Google), while the website is hosted elsewhere. The technical
reality is far more complex than this, but this much is enough
to understand something fundamental: a domain name may
have its registration suspended, but the domain name
registrar cannot 'block access' to that domain name. Blocking
access is another matter altogether. It is an instruction,
usually under directions of a government agency such as our
Department of Telecommunications, issued to internet service
providers -- those intermediaries who provide internet
connectivity -- not to honour access requests to that domain
name or URL. This is important because it means that it is
entirely unworkable to ask a domain name registrar to 'block
access' to a domain name. The registrar can only be asked to
suspend the registration. A webhost may be ordered to take
down a website, i.e. to withdraw shared or dedicated web
hosting services. But this again is not the same as 'blocking
access'.
xxxxxxxxxxxx
19. So much for blocking access. But to ask for the 'continued
suspension' of domain name registration is also technically
incorrect. Any domain name Registrar can always suspend a
domain that is registered. But the entire process of
registration itself is entirely automated and machine-driven.
No domain name registrar can put any domain names on a
black list or a block list. The notion that domain name
registrar's have a person or a team of persons scanning and
checking every domain name application betrays a wholesale
lack of understanding of how domain name registration
actually works. If a user wanted to register, say,
chroniclesofwastedtime.com, there is no individual at any
domain name registrar to question, to ask why, what for or
anything. If the domain name is free, the applicant can take
it to registration. That is all there is to it. That registration
will continue until suspension or expiry.
20. A 'continued suspension' is therefore not possible or
practicable at least in the current technology. In other words,
as Dr Saraf points out, once the present registration is
suspended, that suspension will continue until the end of the
registration period. Upon that end of registration period,
there is a further period of two to three weeks as a cooling-
off period for the registrant to apply for re-registration in
case the registration has inadvertently lapsed. Obviously, that
cooling-off period would also be covered by the present
order. However, once the domain name is released from
registration by one domain name registrar then it is released
worldwide across the entire cyber system and network of the
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internet. This means that any person can then attempt and
will succeed in getting a registration through any other
registrar or even the very same registrar by a process that is
entirely automated and requires no manual intervention.
xxxxxxxxxxxx
27. As regards prayer clause (k), for the technical reasons I
have outlined above, it is not possible to pass an order
granting an injunction operating either dynamically or
otherwise in future in this fashion. The very technology
behind domain name registration does not permit this. There
is a technical distinction between blocking a website or
access to a website and blocking the registration of a domain
name. It is the technology governing the latter that makes the
grant of prayer clause (k) unfeasible.
28. That said, it is always open to the Plaintiffs to
communicate with Endurance Domains, GoDaddy and
Porkbun and request without intervention of the Court relief
for the suspension of any infringing domain name
registrations and the suspension of any web hosting
privileges. The domain name registrars or webhosts are not
bound to accede to any such request, but are only required to
consider it. If they believe the request to be valid and
justified, they may act on it. I am, however, making it clear
that if any innocent third-party is prejudiced by these actions,
then the Plaintiff and the domain name registrar in question
will certainly be held to account.
29. Mr Tulzapurkar then wants an order in terms of prayer
clause (m). That prayer rejects itself for ad interim relief. Mr
Tulzapurkar says the Plaintiff cannot be expected to
constantly make applications every time a new domain name
is discovered. I do not see why not. The Plaintiff is not short
of resources and skills, even in the legaldepartment; and the
Plaintiff is a well-known and well-established litigant. HUL
has more than enough resources, not the least of which is Mr
Tulzapurkar himself. He is always welcome in this Court so I
see no difficulty in allowing him to making repeated
applications. Eternal vigilance is not just the price of liberty;
it is also the cost of doing large-volume business. I do not
think it is for any court to come up with mechanisms to
protect the Plaintiff's interest at low or no cost, or by turning
a plaintiff into judge, jury and executioner, let alone sub-
contracting out what I believe to be a serious judicial
function of assessing and balancing rival merits. What should
or should not be suspended (or blocked) is for a government
to decide, not some litigant. There are no shortcuts. All this:
prima facie; two mantra words that seem to have become
some sort of balm in the frenzied jurisprudence of interim
and ad interim litigation.
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8 Therefore, appeal admitted.
9 Ad-interim in terms of prayer clause - (a) is granted, which
reads as under :
(a) Pass an interim order of stay of effect and
operation of part of the judgment and order dated
23 January 2023 passed in Interim Application
(Lodging) No.38837 of 2022 in Interim Application
(Lodging) No.26556 of 2022 in Commercial IP Suit
(Lodging) No.26549 of 2022, to the extent of the
direction against the Appellants to inform the
Respondent No.1 on each occasion that the
registration of a domain name is granted, which
contains the registered trademark of the
Respondent No.1 "Swiggy" (as contained in
paragraph 28 of the judgment and order dated
23 January 2023).
10 Affidavit in reply to the interim application to be filed and copy
served within two weeks from today. Rejoinder, if any, to be filed and copy
served within two weeks thereafter.
11 Interim application and appeal for hearing to come up as per
its turn in due course.
12 Mr. Kamod is seeking stay of this order. Stay refused.
(RAJESH S. PATIL, J.) (K. R. SHRIRAM, J.)
Gauri Gaekwad
