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Bombay High Court Refuses To Pass Omnibus Direction Stopping Domain Name Registrar GoDaddy From Registering Names Containing “Swiggy” TradeMark

Amisha Shrivastava
24 Jan 2023 3:51 PM GMT
Bombay High Court Refuses To Pass Omnibus Direction Stopping Domain Name Registrar GoDaddy From Registering Names Containing “Swiggy” TradeMark
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The Bombay High Court directed GoDaddy, a Domain Name Registrar to inform food delivery service Swiggy each time a domain name containing its trademark ‘SWIGGY’ is registered. The court however, refused to stop GoDaddy from registering future domain names infringing Swiggy’s trademark.
“…it would not be appropriate to continue the ad-interim order granted in terms of prayer clause (g), as it would amount to granting an omnibus and global temporary injunction, operating in futuro. Each instance of infringement would require the Plaintiff to rush to this Court for a direction in this very suit or separate proceedings against specific parties but an omnibus direction as contained in prayer clause (g) could not have been granted”, the court held.

Justice Manish Pitale said that Swiggy will have the liberty to seek relief against each future infringement once it comes to know of the same from GoDaddy.

Last year, Swiggy had approached the Bombay High Court in a trademark infringement suit alleging that the defendant, claiming to be Swiggy’s employee, duped a person and took money from him promising to bring him on board the Swiggy Instamart platform. He shared UPI QR code bearing Swiggy logo for the payment.

According to the plaintiff, other persons were also duped by the defendants. The plaintiff found that the defendants were using infringing domain name btpl.info and swiggyinstamart.co.in.

On November 29, 2022, the court directed GoDaddy to a) suspend the infringing domain names and b) not register any domain name containing the plaintiff’s marks without prior authorization. GoDaddy approach the High Court seeking modification and part recall of the order in respect of the second direction.

Senior Advocate Sharan Jagtiani for GoDaddy submitted that the registration of domain name is an automated process without any manual intervention. GoDaddy has no way to access the legitimacy of any domain name by a prospective Registrant. It can at best be asked to suspend any existing registration, but it cannot prevent the registration of a domain name containing the registered trademark of the plaintiff.

Jagtiani further said that an action pertaining to infringement or passing of binds only the parties to such an action. The plaintiff must seek relief in each individual instance of infringement.

Advocate Hiren Kamod for the plaintiff submitted that GoDaddy in Snapdeal Private Limited v. GoDaddy.com LLC before the Delhi High Court has said that it could potentially prevent the registration of domain names containing Snapdeal’s registered trademark. Hence, it cannot claim now that this is technologically impossible. Further, GoDaddy is only seeking the recall to not lose out on profit as the prospective registrant can go to other domain name registrars if GoDaddy doesn't register the infringing domain names.

Kamod further said that being the registered proprietor of the trademark, the plaintiff is entitled to exercise its right to prevent infringement of trademark by including it in domain names of other entities.

The court relied of the Snapdeal case in which Snapdeal sought a similar relief as Swiggy and stated, “the stand being taken before this Court is in the teeth of the stand taken on affidavit by the very same party before the Delhi High Court in the aforementioned case.”

The court noted that GoDaddy will have to use an alternative algorithm to prevent future registration of infringing domain names. The court hence agreed with the plaintiff’s submission that GoDaddy is avoiding this merely because it may have to bear some financial burden. Therefore, the court found no substance in GoDaddy's contention that it is technology impossible to prevent future registration of infringing domain names.

The court said that the plaintiff has to claim reliefs in context of specific instances of infringement by individuals against whom orders can be passed. Even in a “John doe” action, specific instance of infringement is identified though it may not be known who is responsible for the infringement, the court reiterated.

In the Snapdeal case, Delhi HC despite rejecting GoDaddy's contention about lack of technology, still refused the relief and said that Snapdeal will have to approach the court for each instance of infringement. In fact, the Delhi HC specifically stated that it is a cumbersome process, but it cannot be helped, the court noted.

The court applied the same reasoning in the present case to refuse an omnibus and global temporary injunction. However, the rights of the plaintiff cannot be ignored, the court stated and directed GoDaddy to inform Swiggy about each occasion where registration of a domain name containing the mark ‘Swiggy’ is granted.

Case no. – Commercial IP Suit (Lodging) No. 26549 of 2022

Case Title – GoDaddy.com LLC & Anr. (Applicants) in Bundl Technologies Pvt. Ltd. v. Aanit Awattam & Ors.

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