Snapdeal Private Limited v. Godaddycom LLC and Others

Snapdeal Private Limited v. Godaddycom LLC and Others

CS(COMM) 176/2021

Decided on April 18, 2022

Relevant Facts of the Case

The plaintiff is the owner of the "SNAPDEAL" trademark. The defendants are domain name registrars (DNRs) who offer to register domain names that include the word "SNAPDEAL". The DNRs also provide brokerage services that enable potential registrants to register themselves as "SNAPDEAL", or a similar domain name, at inflated prices. Those who operate these infringing domain names use them for illegal activities, such as fake customer care and lucky draws. These rogue websites continue to multiply.

The DNRs use an algorithm to extract domain names from existing registries. It is also alleged that the DNRs provide privacy services that hide the names of registrants, which is illegal. It is important to note that the legal action is not against the registrants but against the DNRs.

Arguments by the Plaintiff

The lawyer representing the plaintiff claims that the Domain Name Registries (DNRs) are helping others infringe on a registered trademark by providing it as a domain name. The DNRs themselves are also infringing. The defendants are making a profit by providing alternative domain names, which are considered a part of their business. Therefore, they are actively participating and benefiting from the infringement.

The plaintiff's lawyer argues that the DNRs cannot be considered intermediaries under Section 2(1)(w) of the Information Technology Act, 2000 because they offer other services besides being a conduit between parties. The petitioner's counsel requests that the court issue a comprehensive injunction against DNRs. This would prohibit them from making any domain name containing "SNAPDEAL" available in the future.

Arguments by the Defendant

The defence counsel argued that their clients are intermediaries as they don't select the recipient of the transmission. They only provide a platform between the registrants and registries. Furthermore, the defence counsel pointed out that DNRs cannot determine if a certain domain name is infringing, as they don't create the domain name but only trade it. The domain names are sourced from registries using an algorithm and are freely tradable between DNRs. It's the responsibility of the registrants to ensure that the registered domain names are not infringing. If the court accepts the plaintiff's plea, it would require blocking most of the words known in the English language.

Courts Judgement

The DNRs acted as intermediaries which fall under the 'means' section of the definition in Section 2(1)(w) of the Information Technology Act, 2000. The alternative domain names provided by them come under the category of "information" and "data". However, they were not given the "safe harbour" immunity, which protects intermediaries from incurring any liability, as they violated a third party's registered trademark. They also provided services beyond the natural course of their intermediary services.

The domain names provided by the DNRs were deceptively similar to the plaintiff's registered trademark, "SNAPDEAL". Therefore, the defendants violated the plaintiff's trademark under Sections 28 and 29 of the Trade Marks Act, 1999.

The plaintiff's quia timet action cannot be granted as it cannot be predicated on hypothetical or imaginary infringement. It is not within the court's power to declare in advance that every domain name containing the word "SNAPDEAL" would necessarily infringe the trademark.

The plaintiff would need to bring to the court's attention every infringing domain separately, in order to examine whether they are infringing or not.

The bench rejected the interim injunction.

Conclusion

In conclusion, the court ruled that while Domain Name Registrars (DNRs) may function as intermediaries under the Information Technology Act, they do not enjoy safe harbor immunity if they facilitate trademark infringement. The defendants in the case were found to have violated the plaintiff's trademark rights by providing domain names deceptively similar to "SNAPDEAL". However, the court declined to grant a comprehensive injunction against all domain names containing "SNAPDEAL", as it would require individual examination of each domain name for infringement. Instead, the plaintiff was directed to bring forward each infringing domain name separately for examination.

This judgment clarifies the responsibilities of DNRs in cases of trademark infringement and emphasizes the need for individual examination of alleged infringements rather than blanket injunctions.