Tata Sky Ltd. v. National Internet Exchange of India
(2019) 259 DLT 468
CS (COMM) 1202/2016
In the High Court of Delhi
Before Justice Rajiv Sahai Endlaw
Decided on April 2, 2019

Relevancy of the case: Dynamic injunction against domain names

Statutes & Provisions Involved

• The Information Technology Act, 2000 (Section 2(w))
• The Companies Act, 2013 (Section 16)
• The Trade Marks Act, 1999 (Section 57)
• The Patents Act, 1970 (Section 19)
• The Information Technology (Intermediaries Guidelines) Rules, 2011 (Rule 3(11))

Relevant Facts of the Case

• The conflict between the parties arose due to the suspected use of the plaintiff’s “TATA SKY” label by the defendant and its minor changes in domain names.
• The plaintiff applied for a dynamic injunction in the light of repeated registrations of such misleading domain names.

Prominent Arguments by the Advocates

• The counsels for defendants number 1 and 2 stated that defendants do not have any adjudicatory powers to determine whether a domain name of which registration is sought is similar or deceptively similar to the trademark and domain name of the plaintiff; it is further stated that the defendants, however, have devised a dispute resolution mechanism, whereunder on a grievance being received with respect to registration of any particular domain name, the same is referred to arbitration in accordance with the policy of the defendant number 1 and 2.
• They contended that no general order can be issued directing them to auto block registration of any domain name which may be infringing the mark/domain name of the plaintiff or which may be similar or identical to the domain name of the plaintiff or amounting to “passing off” as the plaintiff.
• The counsel for the plaintiff has contended that a general direction should be issued to defendant number 1 and 2. He argues that the plaintiff ought not to be compelled to repeatedly institute suits or resort to arbitration, as devised by defendant number 1, NIXI.

Opinion of the Bench

• The Honourable Judge was of the opinion that there was a public interest issue that could only be determined by the Chief Justice.

Final Decision

• The suit was disposed of.
• The file was asked to be forwarded to the Hon’ble Chief Justice for the passing of appropriate orders on the above matters which are considered to occur in the public interest.
• The counsel for the plaintiff was ordered to approach the secretariat of the Hon’ble Chief Justice for finding out further development in the matter.

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