Snapdeal Private Limited v. Godaddycom LLC and Others
In the High Court of Delhi
CS(COMM) 176/2021 and LA 5407/2021
Before Justice C. Hari Shankar
Decided on April 18, 2022

Relevancy of the case: Trademark infringement suit against domain name registrars (DNRs) selling domains similar to the plaintiff’s registered trademark

Statutes and Provisions Involved

• The Information Technology Act, 2000 (Section 2(1)(w), 79)
• The Trade Marks Act, 1999 (Section 28, 29) 
• The Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 (Rule 3(d))

Relevant Facts of the Case

• The plaintiff is the registered proprietor of “SNAPDEAL” trademarks. 
• The defendants are DNRs (domain name registrars) offering to register domain names, including the thread “SNAPDEAL”. Also, DNRs are providing brokerage services and enabling potential registrants who want to register themselves as “SNAPDEAL”, a domain name similar to it, at higher prices.
• Parties operating these infringing domain names are using these websites for illegal activities such as lucky draws, fake customer care, etc. The rogue websites that offer illegal services utilising the plaintiff’s trademarks keep mushrooming.
• DNRs extract domain names using an algorithm from an existing domain name registry.
• It is also alleged that the DNRs are hiding the names of registrants and providing them with privacy services, which is illegal. 
• The petition is not against the registrants but against the DNRs. 

Prominent Arguments by the Advocates 

• The plaintiff’s counsel submits that the DNRs are facilitating infringement by providing the registered trademark as a domain name. They are also infringers themselves. The defendants provide alternative domain names for their profit, which would be under the course of trade. Hence, they are active participants and beneficiaries of infringement.
• The plaintiff’s counsel argued that the DNRs are not intermediaries as per Section 2(1)(w) of the Information Technology Act, 2000. This is because they provide alternate services besides being a conduit between parties. The petitioner’s counsel requests that the court issue an omnibus injunction against DNRs. It would entail not making available any domain name that has “SNAPDEAL” in it in the future.
• The defendants’ counsel submitted that they are intermediaries as they do not select the receiver of the transmission. They only provide a platform between the registrants and registries.
• The defendants’ counsel points out that DNRs cannot adjudicate whether a particular domain name is infringing as they do not create the domain name but only trade it. The domain names are sourced from registries using an algorithm and are freely tradable between DNRs. The obligation to ensure that the registered domain names are not infringing in nature is not on the DNRs but on the registrants. If the court accepts the plaintiff’s plea, it would need to block most of the words known in the English language.

Opinion of the Bench

• The DNRs were held as “intermediaries” as they fall under the ‘means’ part of the definition in  Section 2(1)(w) of the Information Technology Act, 2000. Moreover, the alternative domain names provided to the registrants come within the ambit of expressions “information” and “data”. They were not provided with the “safe harbour”, which provides for immunity to the intermediary from incurring any liability. Specifically, this is provided under Section 79, as they infringed the registered trademark of a third party. Further, they also offered services in excess of the one that falls in the natural course of services provided by an intermediary.
• Domain names provided by the DNRs are deceptively similar to the plaintiff’s registered trademark, “SNAPDEAL”. Therefore, the defendants infringed the plaintiff’s trademark within Sections 28 and 29 of the Trade Marks Act, 1999.
• The quia timet action that the plaintiff seeks cannot be granted as such an action cannot be predicated on hypothetical or imaginary infringement. It is not permissible for the court to hold in advance that every domain name containing the word/thread/string, “SNAPDEAL” would necessarily infringe in nature.
• Further, it noted that the plaintiff would need to draw the court’s attention separately to every infringing domain. This is for the court to examine whether such domains are infringing or not.

Final Decision

• The bench rejected the interim injunction.

Anjini Pandey, an undergraduate student at Dr. Ram Manohar Lohiya National Law University, prepared this case summary during her internship with The Cyber Blog India in May/June 2022.