The Delhi High Court has reiterated its stand of not granting any omnibus injunction to the domain name registries (DNRs). In a case where the plaintiff had sought an injunction, against offering, by the DNRs, to any aspiring registrant, of any domain name containing the ‘SNAPDEAL’ thread, the Court held that the plaintiff must necessarily petition the Court against each domain name that it finds to be infringing.
It was of the opinion that it cannot be held, in advance, that every prospective alternative domain name, containing the word/thread/string ‘SNAPDEAL’ would necessarily be infringing in nature and, thereby, injunct, in an omnibus and global fashion, DNRs from ever providing any domain name containing ‘SNAPDEAL’.
The Court noted that the cause of action, in any trademark infringement suit, must be with respect to the particular infringing trademark/trademarks and hence the Court cannot pass an order, to operate in futuro, restricting the defendants from offering for registration any domain name which includes the thread ‘SNAPDEAL’. According to the Court, that would be attributing, to the Court, a clairvoyance which it does not possess.
However, it may be noted that the High Court in Snapdeal Private Limited v. Godaddycom Llc also held that the DNRs must discontinue providing alternative domain names or find some way or the other to ensure that infringing domain names are not provided. It rejected in this regard the contention of the DNRs that as the process by which alternative domain names are sourced from the Domain Name Registry is automated, they cannot vouchsafe to the alternative domain names not being infringing in nature.
Observing that infringement of intellectual property rights is not condonable in law, the Court held that it is not open to anyone to contend that its activities are so carried out that it cannot guarantee against infringement.
The Court though in its Judgement dated 18 April 2022 held that the DNRs are ‘intermediaries’, within the meaning of Section 2(1)(w) of the Information Technology Act, 2000, it was of the view that the provision of safe harbour under Section 79 of the said Act cannot prima facie be available to the DNRs, to the extent that the alternative domain names provided by them to aspiring registrants infringed the registered trademark of the plaintiff.
The Court also observed that an intermediary, which operates for profit, as a business enterprise, cannot seek amnesty under Section 79(1), especially, in respect of liabilities which arise from such activities, which are beyond the activity of providing access to a communication system as contemplated by Section 79(2)(a).