The Delhi High Court has observed that the Domain Name Registrars (DNRs) must 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 or transfer of the same.
Justice Pratibha M Singh added that 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," the Court observed.
It added "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."
The Court was dealing with a suit filed by Snapdeal Private Limited seeking permanent injunction restraining the infringement of trademarks, passing off, unfair trade practices, damages, rendition of accounts and other reliefs.
Snapdeal is the registered proprietor of the trademarks 'SNAPDEAL'/'SNAP DEAL' and its formative marks. Defendant Nos. 1 to 32 were the Domain Name Registrars engaged in the business of creation, registration and sale of domains to the Registrants. Defendant No.33 was the Department of Telecommunications and Defendant No.34 was the National Internet Exchange of India (NIXI).
It was the case of the Plaintiff that the said DNRs had registered various domain names containing the Plaintiff's registered trademark 'SNAPDEAL'.
The Court noted that the Defendants were offering their domain names registering services in India and were also providing related services to customers based outside of India, through their websites. It also noted that the said Defendants did not have any offices or assets in India.
"In the above background of the matter, 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 Court said.
The Court directed the Centre's counsel to seek instructions from the DoT, as to the manner in which 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 now be heard on August 3.
Case Title: SNAPDEAL PRIVATE LIMITED v. GODADDYCOM LLC AND ORS.
Citation: 2022 LiveLaw (Del) 653