Domain Name Registrars Must Create Mechanism for Trademark Owners to Seek Cancellation or Transfer of Objectionable Domain Name: Delhi High Court
The Delhi High Court has observed that Domain Name Registrars (DNRs) must create a mechanism whereby any trademark owner who has an objection to the registration granted to a domain name, can approach the said DNR and request the cancellation or transfer thereof.
Judge Pratibha M Singh added that the same should be considered fairly through the mechanism which should be independent and impartial, for example, through an ombudsman.
“If the requested cancellation/suspension/transfer is not accepted through the said mechanism, then the intellectual property owner may exercise their remedies in accordance with the law”, the Court observed.
He added “Thus, there should be a mechanism where the abuse policy not only deals with suspension/locking, but should also be able to cancel/transfer infringing domain names. Such abuse policy should also be implemented by the DNRs through a specific set of officials based in India, to ensure that if in any case the transfer/cancellation is not permitted under the misuse policy, the trademark owner shall avail themselves of their remedies in the courts in India, against such decision of the DNR.”
The Court dealt with an action brought by Snapdeal Private Limited seeking a permanent injunction restraining trademark infringement, fraudulent marketing, unfair trade practices, damages, accountability and other relief.
Snapdeal is the registered owner of the “SNAPDEAL” https://www.livelaw.in/”SNAP DEAL” marks and its formative marks. Defendants 1-32 were domain name registrars engaged in the business of creating, registering and selling domains to registrants. Respondent #33 was the Department of Telecommunications and Respondent #34 was the National Internet Exchange of India (NIXI).
It was the Applicant’s case that said DNRs had registered various domain names containing Applicant’s trademark “SNAPDEAL”.
The Court noted that the defendants offered their domain name registration services in India and also provided related services to customers based outside India, through their websites. He also noted that the said defendants had no offices or assets in India.
“In the above context of the case, it should be noted that a lawsuit cannot be sued in perpetuity as an infringement of a particular trademark and to expect the plaintiff to sue or move a request each time a domain name containing his trademark is registered, would also make this an extremely cumbersome and expensive exercise,” said the Court.
The Court ordered counsel for the Center 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, may have to implement the orders passed by Courts in India.
The case will now be heard on August 3.
Case Title: SNAPDEAL PRIVATE LIMITED v. GODADDYCOM LLC AND ORS.
Quote: 2022 LiveLaw (Deleted) 653
Click here to read the order