Snapdeal Private Limited v. GoDaddy.com LLC & Ors.

Relevant Acts and provisions

Information Technology Act, 2000

Section 2(1)(w)Section 79

Trade Marks Act, 1999

Section 28Section 29

Provisions considered: Sections 28 and 29 of the Trade Marks Act, 1999, and Sections 2(1)(w) and 79 of the Information Technology Act, 2000.

Brief facts

Snapdeal Private Limited, registered proprietor of its trade marks, sued a number of defendants including domain name registrars, complaining that numerous third parties, none of whom were impleaded, were registering domain names incorporating its mark to run fraudulent lucky-draw schemes and fake customer-care websites. Rather than suing each infringing registrant, Snapdeal sought a blanket, forward-looking injunction restraining the registrars from ever offering, to any prospective registrant, a domain name containing its mark.

Issues before the Court

1. Are domain name registrars intermediaries under Section 2(1)(w) of the Information Technology Act, 2000?
2. Does offering domain names containing a registered mark amount to infringement by the registrar?
3. Can courts grant a blanket, forward-looking injunction against registrars without identifying infringers?

Court's findings

The Court held that domain name registrars fall within the definition of intermediary in Section 2(1)(w) of the Information Technology Act, 2000, since they provide a service with respect to electronic records, namely domain names sourced from a common registry, even where they also offer value-added services such as suggesting alternative names.

The Court found that merely providing, through an automated algorithm, alternative domain names that happen to include a registered trade mark, without the registrar itself using the mark as a badge of origin or holding itself out as connected with the trade mark owner, did not by itself amount to infringement or passing off by the registrar.

The Court declined to grant the blanket injunction sought, holding that a court cannot restrain a domain registrar from offering, to the whole world, every possible domain name containing a given trade mark, since this would require the registrar to pre-adjudicate infringement and could block legitimate uses; each allegedly infringing domain name required proceedings against its actual registrant, though the Court directed registrars to strengthen their abuse-reporting and takedown mechanisms.

Decision

Interim relief was restricted to the specific domain names already identified; the prayer for a blanket, forward-looking injunction against the registrars was refused.

Cases cited

• Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd., (2004) 6 SCC 145

Authorities referred to in the decision. Please verify each citation in the judgment itself.

Keywords

Cybersquatting Domain Names Intermediary Liability Online Infringement Trademark Infringement