Delhi High Court refuses relief to Snapdeal in suit against Domain Name Registrars

The Delhi High Court on Monday refused to grant relief to e-commerce platform Snapdeal in its suit seeking injunction against domain name registrars (DNRs) from offering any domain names with its trademark “SNAPDEAL” [Snapdeal Private Limited v GodaddyCom LLC and Ors]..Justice C Hari Shankar said that the court cannot pass an order to operate in futuro restricting the defendants from offering for registration any domain name that includes the thread “SNAPDEAL”, as that would be attributing to the Court a 'clairvoyance that it does not possess'.“The plaintiff has, therefore, necessarily to petition the Court against each domain name that it finds to be infringing. This may be a long and cumbersome exercise. It cannot be helped. There is no shortcut to justice,” the single-judge stated..The High Court was dealing with a suit and interim relief application filed by Snapdeal against a bunch of DNRs that provide domain names for parties seeking to register their websites.It was argued that various third parties that have no connection with Snapdeal are registering domain names with the “SNAPDEAL” word/thread, and are, therefore, infringing their trademark.The plaintiff alleged that by offering for registration domain names that include the thread “SNAPDEAL”, the domain registrants are facilitating infringement of the plaintiff’s registered mark and are themselves infringers within the meaning of Sections 28 and 29 of the Trade Marks Act.It was informed that the plaintiff had already approached the court multiple times seeking relief against individual domain names and reliefs have been granted in its favour. Yet these websites keep mushrooming creating an onus on the plaintiff to approach the Court repeatedly on coming to know of such websites..The plaint, therefore, sought a direction to the DNRs to cancel the domain names bearing the plaintiff’s trademark and to refrain from offering or registering any new domain names containing the plaintiff’s trademarks..After hearing counsel for both sides and deliberating on several issues, Justice Hari Shankar said that the plaintiff’s case faces a serious hurdle when it comes to relief sought because it is styled as a quia timet action (action seeking an interdiction against infringement even before such infringement takes place).The High Court's order noted that this can only be in respect of marks known to be prospectively infringing and cannot be predicated on hypothetical or imaginary infringements.“In my considered opinion, it is not permissible for the Court to hold, 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”. This, in my view, would be completely impermissible.”.The single-judge said that in the present case, the plaintiff has to necessarily come to the court, as it has been doing in the past, against every domain name that it perceived to be infringing its registered marks.“The Court would then have to examine whether such mark is, in fact, infringing and, if so, injunct the use of such mark/domain names. The cause of action, in any trademark infringement suit, has to be with respect to the particular infringing trademark/trademarks," the Court said. .However, the Court added that in all such cases, the DNRs would have to modulate their algorithm so that potentially infringing alternatives are not available to prospective trademark applicants.The order noted that trade mark owners cannot be made to repeatedly approach the Court in such cases. “In order to avoid such liability, in my opinion, the DNRs would either have to modulate their algorithms in such a way as not to make available, to prospective registrants, potentially infringing alternatives – as Defendant 1 has apparently done in respect of its own domain name – or avoid providing alternative domain names altogether. A situation in which the algorithms of the DNRs make available, to prospective registrants, infringing domain names, leaving the proprietors of the infringed trade marks to repeatedly knock at the doors of the Court cannot be allowed to continue in perpetuo,” the order stated. .Justice Hari Shankar also expressed regret on the Court's inability to grant any interim injunction as sought in the interim relief application against the DNRs, since their contention that such a relief cannot be granted under Order XXXIX Rules 1 and 2 of the Civil Procedure Code (CPC) has to be, prima facie, accepted."For the aforesaid reasons, the prayer (a) in IA 5407/2021 of the plaintiff, to the extent it seeks an injunction against Defendants 1 to 32 “offering any domain names which incorporate the plaintiff’s “SNAPDEAL” trademarks listed in para 10 of the plaint’, is rejected," the Court ordered. .Advocates Shwetasree Majumder, Tanya Varma and Devyani Nath appeared for the plaintiff, while the defendants were represented by Senior Advocate Dr Birendra Saraf, Advocates Gowree Gokhale, Alipak Banerjee, Moazzam Khan, Shweta Sahu, Apama Gaur and Aparimita Pratap..[Read Order]