Trademarks – Domain name registration – No omnibus injunction against DNR offers – Registries however to ensure infringing domain names are not suggested as alternatives
The Delhi High Court has reiterated its position not to grant omnibus injunctions to domain name registries (DNRs). In a case where plaintiff sought an injunction against DNR’s offer to any aspiring registrant of any domain name containing the thread “SNAPDEAL”, the Court held that plaintiff must necessarily petition the Court against each domain name that it finds to be infringing.
He was of the view that it could not be considered, in advance, that any possible alternative domain name, containing the word/thread/string “SNAPDEAL” would necessarily be infringing in nature and, therefore, injunctive, d an omnibus and global way, DNR never provides a domain name containing “SNAPDEAL”.
The Court noted that the cause of action, in any trademark infringement action, must relate to the trademark(s) at issue and therefore the Court cannot make an order, to operate in the future, prohibiting the defendants from offering for registration any domain name that includes the thread “SNAPDEAL”. According to the Court, this would be to attribute to the Court a clairvoyance which it does not possess.
However, it may be noted that the High Court of Snapdeal Private Limited v. Godaddycom Llc also ruled that DNRs should stop providing alternate domain names or find some way to ensure that infringing domain names are not provided. He rejected in this regard the DNRs’ assertion that since the process by which alternate domain names are obtained from the domain name registry is automated, they cannot guarantee that alternate domain names are not infringing in nature.
Observing that the violation of intellectual property rights is not tolerable in law, the Court held that it was not open to anyone to claim that his activities are carried out in such a way that he cannot guarantee against the violation. .
The Court, although in its judgment of 18 April 2022, held that DNRs were “intermediaries” within the meaning of section 2(1)(w) of the Information Technology Act 2000 information, it was of the view that the provision of safe harbor under section 79 of the said Act cannot At first glance be available to DNRs, to the extent that alternate domain names they provided to future registrants would infringe the applicant’s trademark.
The Court also observed that an intermediary, which operates for profit, as a commercial enterprise, cannot apply for amnesty under Article 79(1), in particular, with regard to the liabilities arising from such activities, which go beyond the activity of providing access to a communications system as contemplated by Article 79(2)(a).