The Single Bench of the Delhi High Court in the case of Snapdeal Private Limited vs GoDaddyCom LLC & Ors.consisting of Justice Prathiba M. Singh opined that the Domain Name Registrars (“DNRs”)need to create a mechanism by which any trademark owner who has an objection to the registration granted to any domain name, can 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 e.g., through an Ombudsman.
Facts
This suit was filed seeking permanent injunction restraining the infringement of trademarks, passing off, unfair trade practices, damages, rendition of accounts and other reliefs. The Plaintiff is the registered proprietor of the trademarks ‘SNAPDEAL’/’SNAP DEAL’ and its formative marks. Defendant Nos. 1 to 32 are DNRs engaged in the business of creation, registration and sale of domains to the Registrants. Defendant No.33 is the Department of Telecommunications (“DoT”) and Defendant No.34 is the National Internet Exchange of India (NIXI). It is the case of the Plaintiff that the said DNRs have registered various domain names containing the Plaintiff’s registered trademark ‘SNAPDEAL’ and prayed that the Defendant Nos.1 to 32 ought not to offer any such domain names.
Procedural History
The Predecessor Bench on the application seeking interim injunction had held that such a wide order, without identifying the specific domain names, cannot be granted and for every domain name specific relief has to be sought by the Plaintiff after identifying the domain name.
Observations of the Court
The Bench noted 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.”
Regarding the question thatwhether the intervention of the Court would be required in every case involving registration of infringing domain names, it was opined that:
“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 fairlyconsidered 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.”
Judgment
The Bench asked the learned CGSC to seek instructions from DoT, as to the way all DNRs, who are offering their services in India and earning revenues from India despite being based out of other countries, could be made to implement orders passed by Courts in India. The matter will be heard again on 3rdAugust, 2022.
Case:Snapdeal Private Limited vs GoDaddyCom LLC & Ors.
Citation: CS (COMM) 176/2021
Bench: Justice Prathiba M. Singh
Decided on: 13th July 2022
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