Important Instructions from Delhi High Court to Domain Name Registrars in India

Indian e-commerce company, Snapdeal Private Limited (Snapdeal) has approached the Delhi High Court seeking a permanent injunction restraining 32 domain name registrars (DNRs) for trademark infringement, fraudulent marketing, unfair business practices, damages, restitution of accounts and other remedial measures for the registration of several domain names containing its trademark ‘SNAPDEAL’.

The Department of Telecommunications (hereafter, “DoT”) and the National Internet Exchange of India (NIXI) were also named as defendants

On April 18, 2022, the Court ruled that such an expansive order could not be granted, without identifying the specific domain names, and for each identified domain name, a specific relief must be sought by Snapdeal.

In this case, the main issue to be considered by the Court was “if the court would intervene in all cases involving infringement of registered domain names, especially considering that they are registered for thousands and thousands of domain names, especially for well-known marks?”

GoDaddy.com, one of the few defendants to appear, said it had an abuse policy in place, which allowed trademark owners to fill out a form to request suspension/locking of the domain name making the object of the complaint and the latter would then comply with the orders made by the Court.

Against this, the Court held that the abuse policy was not sufficient as it nevertheless required IP owners to go to court. The Court highlighted the fact that the DNRs offered alternative domain names themselves, without anyone asking for the same.

Given the grim scenario, in the interest of justice, the Court held that DNRs should put in place an effective mechanism whereby any trademark owner, who has an objection to a registration granted to a particular domain name, may approach said DNR and request cancellation/transfer of said domain name. The same must be taken into account fairly through the mechanism which must be independent and impartial, for example, through an ombudsman.

The Court further held that if such cancellation/suspension/transfer was not agreed through such mechanism, the intellectual property owner could exercise his remedies in accordance with the law. The Court also suggested a mechanism where the abuse policy would not just deal with the suspension/locking, but also the cancellation/transfer of infringing domain names. The Court ordered that such a policy of abuse be implemented by the DNRs through a specific set of officials based in India, to ensure that if the transfer/cancellation is not authorized under the abuse policy, trademark owners can exercise their remedies before the courts. in India, against the DNR.

Accordingly, the Court ordered the defendants to file an affidavit no later than July 31, 2022 to decide on a mechanism to prevent trademark abuse through the registration of domain names, as well as to disable the functions privacy policy and to make available the details of the person registering domain names on the ‘Whois’ database. (a public database that contains information collected when someone registers a domain name.)

In the meantime, the Central Government Permanent Advocate has been instructed to seek instructions from the DoT, as to how all DNRs, who offer their services in India and earn income from India despite being based outside other countries, could be made to implement the orders passed by the courts in India.

The case is now scheduled for a rehearing on August 3, 2022