Availing of Privacy Protected Services by third party, leaves IP Owner Unprotected. Dabur India Limited v. Ashok Kumar & Ors1
Dabur India sought for a permanent injunction against anonymous registrants of domain names and websites who were using the name/mark DABUR and thereby portraying themselves as authorized franchisee dealers and distributors of Dabur Private Limited, before the Hon’ble High Court of Delhi.
Based on the above contentions, the court was convinced that apart from the trademark rights of Dabur India being infringed, public interest was also being negatively affected by the operation of the said fake domains and the webpages hosted thereon, giving rise to likelihood of mis-association and consumer confusion.
The court concluded that the attempt was not to merely pass off but to completely impersonate the Plaintiff itself, and therefore declared it not to be in public interest to allow such domains to operate
The court cited the judgment UTV Software Communications Ltd and Ord v. 1337X to and Ors, 2019(78)PTC 375 (Del) where the court had directed DOT/MEITY to frame certain policies such that a warning may be issued via emails or pop ups to the viewer while going through pirated/infringing content inter alia cautioning them to cease viewing the same. If the warning were not heeded and the viewer continued to access the pirated content, then a fine may be levied upon the viewer itself.
Accordingly, the court granted ex parte injunction in favour of the Plaintiff and ordered the domain registrars to immediately block the above mentioned websites and restrained them from transferring the said domains or create any third party interest on the same.
The court was also pleased to extend its order for temporary injunction in respect of additional Dabur formative domain names as may be found to have been registered by the time the details of the registrants of the presently impugned domains have been disclosed and they have been properly impleaded in the present suit.
This direction was given keeping in mind that it is not physically possible to keep track of all the websites hosting pirated content and individually blocking the same. If the viewers were to access content more responsibly then they can safeguard themselves from being deceived. However, till date no such policy has been framed and this court has summoned DoT/MEITY inter alia seeking instructions with respect to the said policy as one has to keep in mind that it is not possible for the ISPs to keep a track of all the websites carrying reference to the mark DABUR and blocking the same as even during the course of the hearing new infringing websites have been coming up and keeping a track of the same seems to be impossible.
Additionally, the court directed the domain registrars of the impugned domain names to provide all details of the registrants, and directed the respective registrants of the impugned domains to immediately cease use thereof and also pull down the websites hosted therein with immediate effect and de-activate any corresponding email addresses.
Apart from granting temporary injunction, Learned Justice Pratibha M. Singh went beyond to question the services provided by domain registrars to hide or redact details of the registrants.
In the present case, multiple DABURformative domain names had been registered by third party entities only with the motive of cheating the general public into making them believe that they are indeed the Plaintiff and thereby deceive them by offering to provide fake franchisee and distributor services. The reason the Plaintiff had been obliged to seek, and consequently the court to grant, a John Doe order is because of the blanket masking services provided by the registrar organizations such that the said third party registrants could not be identified and therefore could not be properly impleaded in the present infringement suit.
By allowing third party entities to avail ‘privacy protect services’, there has been a significant rise in the registrations of domains impinging upon the trademark rights of legitimate brands and their holders. Such registrants have comfortably nestled under the redacted information services provided easily enough by domain registrars, and stayed hidden, protected until legal intervention has been sought.
The court drew parallels with the transparency of owner details in respect of trademark registrations as well as company name registrations, such as organization name and contact information etc. being easily accessible for the general public to view, and for aggrieved third parties to suitably seek redressal against. However, in the affidavit deposed by the representative of NIXI, the strict policies of the European GDPR (which came into effect on May 25, 2018) and providing indiscriminate privacy protection coverage was relied upon, thereby justifying their privacy protection services. But such adherence and due compliance by the domain registrars have opened the floodgates to unscrupulous cyber squatters propagating fraudulent practices and hurting the goodwill and reputation of established brands.
In the contrary, the LA O2 advisory by NIXI regarding ‘Accurate WHOIS Information in DOMAIN clearly specifies about obtaining accurate and reliable contact information from the registrants and had prohibited services like ‘Privacy Protection’. But under the garb of the GDPR the domain registrars continue to provide such services, and not only that, the services providers don’t ensure that the information so provided is accurate, making it cumbersome for the court to point out the infringers and enforce their orders in this regard.
Thus it may now be time to enforce the LA O2 advisory and legislate on restricting privacy protection services in respect of domain name registrations (keeping in mind the GDPR policy) and curate an effective mechanism, so that misuse can be curbed by enabling legitimate right holders to accurately identify the necessary parties misusing their intellectual property and/or trade identity.
In abiding with the strict policies of the European GDPR, and providing indiscriminate privacy protection coverage, domain registrars have opened the floodgates to unscrupulous cyber squatters propagating fraudulent practices and hurting the goodwill and reputation of established brands.
Thus it may now be time to legislate on restricting privacy protection services in respect fo domain name registrations, so that misuse can be curbed by enabling legitimate right holders to accurately identify the necessary parties misusing their intellectual property and/or trade identity. This is becoming increasingly necessary to thwart fraud and impersonating practices, and protect the legitimate rights of brand owners as well as the interests of the general public.
As of date, written statements are yet to be filed by the defendants including the domain registrant organizations with respect to their stance on the privacy protected services and the present case is listed on December 01, 2022 for the next hearing.
Parallelly, another such matter was brought up in the court of Learned Justice Pratibha M. Singh where the plaintiff Snapdeal Private Limited has sought for permanent injunction against the Domain Name Registrars who are engaged in business of creation, registration and sale of domain names (carrying infringing reference to the name/mark SNAPDEAL) to the Registrants.
Upon the court expressing its inhibitions regarding the certain module of the DNRs which suggests potentially infringing alternatives to the registrants, the counsel for GoDaddy informed regarding the existence of an abuse policy which enables trademark owners to seek suspension/locking of the domain name complained for. However, the said mechanism is not sufficient to completely eradicate the intervention of the court and therefore the court called upon the said domain name registrars to create a mechanism by which a trademark owner who has an objection to the registration granted to any domain name, can approach the said DNR and seek cancellation/transfer for the said domain name. The same shall be fairly considered through a mechanism which out to be independent and impartial, for example through an Ombudsman. If such cancellation/ suspension as sought is not agreed through the said mechanism, the IP owner can then proceed to avail its remedies in accordance with the law. However, the counsel for the DNR is yet to file a detailed affidavit as to whether an impartial mechanism could be put in place to prevent the abuse of trademarks and also to disable the privacy protection features such the details of the Registrant are ready available on the WHOIS data base.
The said matter has also been listed for hearing on December 01, 2022
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