Domain Name Registrars are Intermediaries under Information Technology Act

Snapdeal Private Limited Vs Godaddycom LLC (Delhi High Court)

Conclusion: Domain Name Registrars (DNRs), by the application of the algorithm derived by whom the infringing domain names were becoming available to prospective registrants, would themselves be ‘infringers’, within the meaning of Section 29 of the Trade Marks Act, and liable in that regard. In order to avoid such liability, the DNRs would either have to modulate their algorithms in such a way as not to make available, to prospective registrants, potentially infringing alternatives or avoid providing alternative domain names altogether. A situation in which the algorithms of the DNRs made available, to prospective registrants, infringing domain names, leaving the proprietors of the infringed trade marks to repeatedly knock at the doors of the Court could not be allowed to continue in perpetuo.

Held: Assessee contended that  various third parties, with whom it had no connection or association whatsoever, were registering domain names which include the “SNAPDEAL” thread. These domain names, it was alleged, were infringing in nature, as assessee was the registered proprietor of the “SNAPDEAL” trade mark. The issue arose for consideration was whether the DNRs “intermediaries” within the meaning of Section 2(1); whether the providing of brokerage services, by the DNRs, violative of the IT Act or otherwise illegal; whether providing of domain names containing ‘SNAPDEAL’ violate the trademark rights of the plaintiff?  It was held that domain names would qualify as “electronic records”, as defined in sec. 2(1)(t), especially as the domain names which were provided by the DNRs were sourced from a common Domain Name Registry. As being persons who provide service with respect to the domain names, the DNRs would be “intermediaries” within the meaning of Section 2(1)(w). Further, merely on account of providing of brokerage services, it could not be said that the DNRs infringed the intellectual property rights of the plaintiff in any manner. It added that as the alternative domain name provided by the DNRs did not belong to the plaintiff, the DNRs were not required to obtain any permission from the plaintiff before providing such alternative domain names. The DNRs used the plaintiff’s registered “SNAPDEAL” mark by offering the infringing domain names up to any aspiring registrant for a price. By doing so, the DNRs were clearly using, in the course of trade, the allegedly infringing marks. Any allegation of infringement by use in the course of trade of the allegedly infringing domain names, would only lie at the door of the registrants was, therefore, prima facie, misconceived and had to be rejected. In view of the fact that the domain names were deceptively similar to “SNAPDEAL”, the Court said that the defendants were indulging in infringement of the plaintiff’s registered mark within the meaning of sec. 28 and 29 of the Trademarks Act. A situation in which the algorithms of the DNRs made available, to prospective registrants, infringing domain names, leaving the proprietors of the infringed trade marks to repeatedly knock at the doors of the Court could not be allowed to continue in perpetuo. The Court accepted the contention of the DNRs that a relief of interim injunction (injunction against Defendants 1 to 32 qua offering any domain names which incorporate the Plaintiff’s SNAPDEAL trademarks) could not be granted under Order XXXIX Rules 1 and 2 of the CPC. For the aforesaid reasons, the prayer 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’ was rejected.

FULL TEXT OF THE JUDGMENT/ORDER OF DELHI HIGH COURT

1. The plaintiff is the registered proprietor of the following trade marks:

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