Delhi High Court passes John Doe order in favour of Dabur in trademark infringement suit against websites

The Delhi High Court last week passed a John Doe order granting interim relief in favour of Dabur (plaintiff) in a trademark infringement suit alleging that various domain names and websites have started using the name and trademark 'DABUR' in an attempt to pass off as the plaintiff [Dabur v Ashok Kumar]..Justice Prathiba M Singh said that the plaintiff has been able to make out a prima facie case and grave loss would be caused to it if interim relief is not granted.."Irreparable loss will be caused to the plaintiff if an ex-parte injunction is not passed in favour of the plaintiff. The loss to public is also incalculable," the Court said. It, therefore, ordered blocking of three such websites. The Court also passed a John Doe order directing the Central government to issue orders to Internet Service Provides (ISPs) to block all websites bearing the mark 'Dabur' except the plaintiff's.John Doe orders are blanket cease and desist injunctions that are issued against anonymous entities. They are usually issued in suits involving an infringement of IPR, since it is often practically impossible to track down every infringing party..Dabur India limited filed the present trademark infringement suit seeking permanent injunction and damages in respect of infringement of its various intellectual properties, including the trademark 'DABUR' copyright in the labels and packaging of its various products, passing off and unfair competition.Their case was that there were several domain names using the name of Dabur. Those websites like www.daburdistributor.com daburdistributorships.in portrayed themselves as the plaintiff and called for franchisees and distributors to register themselves for being appointed as agents for selling Dabur products. Dabur contended that it was being forced to seek John Doe orders since the names or other details of persons who were operating such websites were not clear, since they were protected due to privacy concerns. Hence, it sought directions against ISPs and the Ministry of Communications and Ministry of Electronics and Information Technology (MEITY) to block the offending websites. .The Court noted that the internet era has brought various challenges to IP owners and this case was a reflection of the same. The mark DABUR is a well known trademark in India as it was coined in 1884 having more than 150 years old reputation and the goodwill in the plaintiff's business is unquestionable, the Court opined.It said that under these circumstances, the use of aforementioned domain names and hosting of websites in a manner so as to deceive the general public as also small businesses should not be permitted. ."The legal rights of the plaintiff are severely affected by the use of the mark 'DABUR', as also various logo of various products and images thereof. Moreover, apart from the rights of the plaintiff, which are being infringed, it would also not be in public interest to permit these domain names and website to operate, so as to continue to deceive and cheat the general public in India and abroad," the order stated..The Court also observed that such practices of hiding or masking details of the registrants who hold domain name is increasingly being resorted to by persons to impinge upon the owners of trademarks and names.The Court, therefore, issued notice and proceeded to pass interim order in favour of Dabur. It passed the following directions to curb any malpractice or monetary harm to public as also to the franchisees and distributors who may pay monies to such websites:"1) Defendant Nos. 4 and 5 (registrars) shall immediately block the domain names, as also the websites. Status quo shall be maintained in respect of the said domain names and the same shall be locked with immediate effect. The Defendant 4 and 5 are restrained from transferring the said domain names or creating any third party interest on the same.2) Defendant No. 2 and 3 i.e. DoT and MEITY shall issue directions to all ISPs to block the said websites as also any other websites, except the Plaintiff's websites, bearing the mark 'DABUR'.3) Defendant No. 4 and 5 shall also disclose to counsel for plaintiff and file affidavit before this court as to the details of the registrants or the persons who have registered the above-mentioned domain names along with their complete contact details, postal address, email address, bank account details, and telephone number, etc. Let the said affidavit be filed within one week from receipts of the copy of the infringing domain names.4) The registrants if the infringing domain names must cease all use of the domain names and pull down the websites from host.5) Defendant 4 and 5 are also restrained from allowing any third-party, apart from the plaintiff, from registering domain names using the mark/name 'Dabur'.6) Defendant 6 and 14 i.e. the internet services providers shall give effect to this order immediately.7) Upon the disclosure of names of restraints of domain names, the plaintiff is permitted to implead them as the defendant in the present suit. In case the plaintiff comes across any order domain names or websites with the mark DABUR, they are permitted to approach the court with an application of appropriate relief."The matter will be heard again on April 25. .Advocates Anirudh Bakhru and Umang Tyagi appeared for Dabur in the suit filed through advocates Prabhu Tandon and Kripa Pandit (Ashwath Legal)..[Click here to Read Order]