The Delhi High Court has expressed concern over the lack of effective mechanism for identifying parties who fraudulently use websites and domain names consisting of well known brands and trademarks, thereby obtaining money illegally.
Justice Pratibha M Singh was dealing with a bunch of pleas filed by trademark and brand owners, seeking reliefs against misuse of their marks and names by unauthorized persons, who register such marks as part of their domain names.
The Court noted that in some of these cases, there was a simple misuse of the domain name and the intention of the registrant was to obtain monetary benefit.
"The same could be 'cyber-squatting' cases. Some others intend to gain monetarily from the trademark owner's goodwill by selling their products using such domain names, bearing the Plaintiff's mark. In other cases, the infringers have gone a step further and distributorships, franchises, dealerships, etc. have been offered fraudulently and large sums of money have been collected from unsuspecting customers. Initially, in each of these suits, the domain names are identified. However, the process of registration of infringing domain names has become successive and continuous," the Court said.
The pleas thus raised the issue that the proliferation of such domain names had resulted in enormous damage to innocent and gullible members of the public, who have been led to believe that the websites hosted on some 'impostor' domain names, belong to the actual brand owners.
Another issue pertained to masking of identities by persons registering the domain names and that even if such information is unmasked, the information being collected by the domain name registrars (DNRs) at the stage of registration of the domain name was unsatisfactory.
"The sheer quantum and magnitude of domain names which are capable of being registered, especially by persons who intend to indulge in fraudulent activities would make it almost impossible for IP owners to avail of their remedies qua each and every domain name. Especially in the case of marks which are well known, there ought to be a more efficient framework which needs to exist," the Court said.
Therefore, considering the "sheer scale of illegal and unlawful collection of monies" taking place by using websites and domain names of well known brands, the Court directed that a joint meeting be held between Delhi Police, Cyber Crime Cell and members of the NPCI, DoT, MeitY and CERT-In.
The Court said that the meeting shall be convened on August 30 to enable coordination and cooperation between the agencies in the investigation of the matter.
The Court also sought recommendations by Department of Communications and Ministry of Electronics and Information Technology on the following aspects:
- The manner in which the details of the domain name registrants, can be verified by the DNRs, at the time of registration of domain names;
- The manner in which the privacy protect feature and proxy servers are made available: whether it is only upon a specific registrant choosing the said option, rather than as a standard feature as part of a 'bundle';
- If the owner of a well-known brand or a trademark contacts any DNR, the manner in which the data related to the registrant can be provided, without the intervention of a Court, or any governmental agency;
- Whether the identity of the owner of a domain name, which consists of a registered trademark or a known brand can be verified at the time of registration itself;
- If a specific link could be provided by the CGPTDM, covering a list of well-known marks, maintained by the Registrar of the Trademarks, or declared by any Court of law, which can then be used for expedited blocking of domain names consisting of such marks;
- If there can be any agency that can be identified in India, such as NIXI, who can be made a repository of the data concerning the registrant, or an agency through which the data could be transmitted by the DNR, upon verification by NIXI, in case a trademark owner has a grievance against a specific domain name;
- If any directions are issued to the DNRs, and the same are not implemented, the manner in which the implementation of the said orders can be ensured;
- Since almost all domain names are registered only after payments are made through credit card, or other online payment methods or apps, is it possible, upon request by any identified agency, to provide the information relating to the person who has made the payment, to the trademark owners.
A direction was also given to discuss the aforesaid in the meeting to be held on August 30.
The Court directed that all the said aspects shall also be dealt with by the specific affidavits to be filed by the DNRs, who were offering their services in India.
"If the DNRs are offering any other additional services by themselves, or through their affiliate / associate companies, such as web hosting, cloud services, etc., the said affidavits shall contain any additional data, or information, that the DNRs obtain in such cases, and if so, in what manner is this data stored with them," the Court added.
The Court directed that the report and the outcome of the meeting, along with the affidavits by the DNRs, shall be placed on record, on or before 31st August, 2022.
The matter will now be heard on September 13.
Case Title: DABUR INDIA LIMITED v. ASHOK KUMAR AND ORS and other connected matters