Domain Name Registrars and the imbroglio of Intellectual Property Rights: A critique of the Delhi HC's order in the Amul case

Domain names have received the nod of the courts of law to fall under the umbrella of protection accorded to trademarks under the Intellectual Property Law regime put in place.

A domain name, to put it simply, is the address or identity of the concerned person/entity on the internet.

The technology concerning domain names, which provides the play in the joint, is somewhat complex. In order to appreciate the same properly, the rights involved, and the remedies available, one needs to break down the scheme of working of these domain names.

Let’s take the domain name of the High Court of Delhi, ie www.delhihighcourt.nic.in, as an example. Here, “delhihighcourt” is known as the second-level name which provides room for ‘intellect’ and creativity to be featured. The part after the name i.e. “nic.in” is referred to as the top-level domain [in short “TLD”] which can be country-specific like ‘gov.in’ or general like ‘.com’.

The Internet Corporation for Assigned Names and Numbers (ICANN) provides for a dispute resolution process in cases of infringements. Domain Name Registrars (DNRs) are entities to which an applicant applies for purchase of a domain name. These DNRs, if registered with ICANN, have to follow the in-house dispute resolution process as provided by ICANN.

Now, coming to the Delhi High Court’s order which has, to my mind, created a seismic shift in these kinds of matters, inasmuch as the said order is being cited as a precedent in almost all kinds of similar cases, praying for identical reliefs.

Vide order dated August 28, 2020 passed in Gujarat Cooperative Milk Marketing Federation Ltd. & Anr. v. AmulFranchise.in & Ors., the Court, while dealing with fraudulent/rogue websites having the brand ‘Amul’, has gone ahead and restrained the concerned DNRs from offering the domain names for sale which contains the word ‘Amul’. The relevant observations are extracted hereafter:

“… The defendant Nos. 26 to 34 are further restrained from offering for further sale the domain names so directed to be suspended/blocked/deleted by this order and also those containing names/domain names/websites having the words/expressions AMUL with or without a prefix or a suffix. The defendant Nos. 35 to 37 are directed to block access of defendant Nos. 1 to 8 websites…”

The concern expressed by the counsel for the concerned DNR was summarily rejected by the Court based on the following analogy.

“… Learned counsel for the defendant No. 26 states that the defendant No. 26 is the Registrar of defendant Nos. 1, 2, 4, 5 and 8. He further states that he is not aware as to whether there is any technology by virtue of which, defendant No. 26 can ensure that the websites with name AMUL therein will not be made available for sale. This contention of learned counsel for defendant No.26 is prima facie not acceptable as defendant No.26 must be operating its filters to ensure that websites under obscene and/or words denoting illegality are not available for sale.”

The Court seems to have progressed on the premise that DNRs have in-built ‘filters’ which ought to ‘ensure’ that ‘obscene’ words and words which symbolize ‘illegality’ are not offered to the public at large for sale.

With utmost respect and humility at my command, I sincerely submit that this is an incorrect understanding of the issue at hand and the technology revolving around the issue.

A recent judgment passed by the Bombay High Court throws some light on this aspect of the matter. This judgment dated June 12, 2020, was passed in the matter titled Hindustan Unilever Limited v. Endurance Domains Technology LLP & Ors. The issue was similar i.e. use of variants of the plaintiff’s domain name to register fake and fraudulent websites.

The Bombay High Court succinctly dealt with the technology at hand and made the following crucial observations.

“… Now domain names are, typically, never ‘owned’. They are always registered for a fee and for a specified time, typically a one-year minimum. The process of registering a domain name is trivial. One only has to look up availability of a combination of words and choose a desired top-level or other domain (.in, .com, .net, etc). The entire process of registration is automated and requires no manual intervention. Certainly there is no human element involved in overseeing or assessing the legitimacy of any chosen domain name. Once the domain name is registered, it must point somewhere to be effective. Left idle, it defaults to the domain name registrar’s name servers…”

The Bombay High Court reasons with the technology inasmuch as it observes that there is no human element which is tangled insofar as overseeing the legality of the concerned domain name is concerned. Even the process of registration is automated. If the process through which an applicant applies for a domain name and, ultimately, gets it registered in her/his name, is automated, to assume that there are filters which shall ensure that such obscene or illegal words are not offered for sale, is, with utmost respect, erroneous.

To draw further light from the judgment of the Bombay High Court, on this very aspect, the quintessential observations made in this behalf are extracted hereafter.

"19. So much for blocking access. But to ask for the ‘continued suspension’ of domain name registration is also technically incorrect. Any domain name Registrar can always suspend a domain that is registered. But the entire process of registration itself is entirely automated and machine-driven. No domain name registrar can put any domain names on a black list or a block list. The notion that domain name registrar’s have a person or a team of persons scanning and checking every domain name application betrays a wholesale lack of understanding of how domain name registration actually works. If a user wanted to register, say, chroniclesofwastedtime.com, there is no individual at any domain name registrar to question, to ask why, what for or anything. If the domain name is free, the applicant can take it to registration. That is all there is to it. That registration will continue until suspension or expiry."

What would this amount to? This, in essence, would mean that any applicant can file an application for obtaining a registration qua a domain name through any DNR which will be, most probably, registered by a process which is entirely automated and requires no manual intervention.

The question which now arises is this: what remedy does the person have, in whose name the concerned trademark has been registered? It is for this very reason that the DNRs as also webhosts of the concerned domain name provide for a dispute resolution process without intervention of the Court, especially in cases of fraudulent websites and violation of intellectual property rights.

Once such mechanism has been taken recourse to without avail, then the concerned person shall necessarily approach the Court or other law enforcement agencies and seek specific relief in this behalf.

Recently, the Delhi High Court has granted dynamic injunctions in cases where fraudulent websites are involved without any injunction operating on the concerned DNRs. The Court has granted liberty to the plaintiff to knock the doors of the Court to array other rogue website(s) who carry on similar illegal activities.

The access to these websites, after application of mind by the Court, can then be suspended, as directed. One such order is dated July 20, 2020, titled as Snapdeal Private Limited v. Snapdeallucky-draws.org.in & Ors. This is an approach which falls in line with the technology as also aims to provide effective relief to the plaintiff without burdening it to approach the Court by filing a novel action.

However, to restrain the DNRs from offering for sale, such domain names which contain specific word(s) is not, with respect, technologically feasible.