Domain Name Registrars should create mechanism for removing infringing domains: Delhi High Court

The Delhi High Court has said that time has come for the Domain Name Registrars (DNRs) to create a mechanism for trademark owners to raise objections and seek cancellation of registration granted to any infringing domain name [Snapdeal Private Limited v GoDaddyCom LLC and Ors]..Justice Prathiba M Singh directed 32 DNRs to file an affidavit explaining whether an independent and impartial mechanism can be put in place by them to prevent the abuse of trademarks.The affidavit should also disclose if the privacy protect features of these infringing domains can be disabled so that the details of the registering person can be made available on the ‘Whois’ database, the Court said. .Justice Singh said that the mechanism ought to be an independent one – like an Ombudsman – so that the objections raised by the trademark owners are fairly considered.“Thus, there ought to be a mechanism where the abuse policy is not merely dealing with suspension/locking but should also be able to cancel/transfer the infringing domain names. Such an abuse policy should also be implemented by the DNRs through a specified set of officials based in India, to ensure that if in a case, the transfer/cancellation is not permitted under the abuse policy, the trademark owner would be able to avail of their remedies before the Courts in India, against such a decision of the DNR,” the order stated..It also directed the counsel appearing for the Department of Technology (DoT) to obtain instructions and inform how the DNRs based outside India but offering their services here can be made to implement the orders of Indian courts..The Court was dealing with a suit by e-commerce website Snapdeal seeking permanent injunction to restrain the infringement of its trademarks, passing off and unfair trade practices against DNRs that had registered various domain names containing its trademark.While Snapdeal made 32 DNRs defendants in the suit, only four of them entered appearance. .Counsel appearing for the DNRs said that GoDaddy (one of the defendants) has implemented an abuse policy which enables the trademark owners to fill up a form and seek suspension/locking of the domain names.However, the judge said that this abuse policy may not be sufficient since it still requires IP owners to approach a court.“The question that arises is as to whether the intervention of the Court would be required in every case involving registration of infringing domain names, particularly considering that they are registered in respect of lakhs and lakhs of domain names, especially for well-known trademarks. In fact, DNRs offer alternate domain names on their own, without anyone seeking the same,” the Court said. Therefore, the Court directed the counsel appearing for these DNRs to file an affidavit on the issue and listed the case for further hearing on August 3..Advocates Tanya Verma and Devyani Nath Suvangana appeared for Snapdeal.Advocates Shweta Sahu and Shreyansh Jain appeared for the DNRs.Central Government Standing Counsel (CGSC) Harish Vaidyanathan Shankar along with advocates Srish Kumar Mishra, Sagar Mehlawat and Alexander Mathai Paikaday appeared for DOT.National Internet Exchange of India was represented through advocates Praveen Kumar Jain and Shalini Jain..[Read Order]