The Bombay High Court opined that complying with a direction to ensure that users are prevented from registering names that infringe trademark rights only requires an alternative algorithm subject to technical, financial and resourcing issues. Therefore, Defendants (GoDaddy) were directed to ensure compliance with such a direction and inform Plaintiff (Swiggy) whenever a domain name with the mark “Swiggy” is granted.
Brief Facts:
Plaintiff is engaged in the business of operating an online marketplace through its website along with applications for mobile and handheld devices. A suit was filed against Defendants No. 1 to 13 for infringing the registered trademark of the Plaintiff (“Swiggy”) concerning the Swiggy Instamart Platform.
It was alleged that Plaintiff had received an email from a third person who informed him that Defendant No.3 had been approaching people, pretending to be an employee of Plaintiff and falsely promising people to bring them on board the “Swiggy Instamart Platform” in exchange for some payment. Even after depositing the money, nothing happened, the people directly approached Plaintiff and that’s how the foul play of Defendant came to light.
Further, Plaintiff requested the Court to issue directions to Defendants No. 15 and 16 being the Registrar of the impugned domain names to suspend the domain names and not to register any name containing “Swiggy” without prior authorization of the Plaintiff and the said direction were issued. It is against the said direction that the present application has been preferred by Defendants No. 15 and 16 to recall/modify the order.
Contentions of the Defendants No. 15 and 16 (“Applicants”):
It was submitted that Defendant No.16 is not even a Domain Name Registrar and therefore, the directions cannot as such apply. Regarding the relief of not registering any name containing “Swiggy” without prior authorization of the Plaintiff, it was argued that registration of a domain name is an automated process and hence, it would be improbable to comply with such a direction.
Further, the legitimacy of any domain name cannot be assessed by the Domain Name Registrar. It was also argued that even though a registered proprietor of the trademark has rights in rem, the said rights become in personam when exercised. Moreover, a dynamic injunction having a future effect cannot be granted against parties who have not been identified yet.
Contentions of the Plaintiff:
It was contended that at the most the Defendants would have to incur some cost to introduce a procedure for preventing users from registering names that infringe trademark rights. The same cannot be a ground to allege impossibility to comply with the said direction of the Court.
Observations of the Court:
It was observed that the Defendants would have to come up with an alternative algorithm to ensure compliance with the said direction. The Hon’ble Delhi High Court in another case involving the Defendants noted that such an algorithm itself was devised by an individual domain name Registrar like Defendant No.15. It would be not without technical, financial and resourcing issues, but there is still a possibility and chance to prevent users from registering names that infringe the registered trademark.
Further, it was opined that any relief sought on basis of rights in Intellectual Property Rights is an action in personam. Further, claiming infringement requires a revelation of identity or individual against whom such an injunction is sought. Hence, granting a continuing ad interim injunction would amount to granting an omnibus global temporary injunction that operates in future. Whenever such infringement occurs, Plaintiff may approach the Court.
The decision of the Court:
Based
on the abovementioned reasons, the High Court directed the Defendants
to inform Plaintiff whenever a domain name with the mark “Swiggy” is
granted and upon receiving such information, Plaintiff was granted the
liberty to take appropriate action. Accordingly, the application was
disposed of.
Case Title: GoDaddy.com LLC & Anr (Applicants) in the matter of Bundl Technologies Private Limited v. Aanit Awattam alias Aanit Gupta & Ors.
Coram: Hon’ble Justice Manish Pitale
Case No.: Interim Application (Lodging) No. 38837 and 26556 of 2022 in Commercial IP Suit (Lodging) No. 26549 of 2022
Advocates for Applicants: Advs. Mr. Sharan Jagtiani, Mr. Rohan Cama, Mr. P. Mehta, Ms. Debarshi Dutta, Mr. Arjun Bose
Advocates for Plaintiff: Advs. Mr. Hiren Kamod, Mr. Vaibhav Keni, Ms. Neha Iyer, Mr. Rohan Lopes, Mr. Prem Khullar, Mr. Anees Patel
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(With input from news agency language)
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