The Bombay High Court on Monday passed an interim order directing GoDaddy, an internet domain registrar, to inform Swiggy whenever a domain name containing the mark ‘Swiggy’ is registered [Bundl Technologies Private Limited vs Aanit Awattam alias Aanit Gupta & Ors].
Justice Manish Pitale stated that although GoDaddy could not prevent future registrations, given the peculiar situation wherein the public was affected due to nefarious activities of entities claiming to be associated with Swiggy, it could inform Swiggy when a domain name containing its mark is registered.
The direction was issued in light of a ‘peculiar situation’ wherein entities posing as associates of Swiggy were duping people of money under the promise of bringing them on board the ‘Swiggy Instamart’ platform.
The Court was hearing an application filed by GoDaddy seeking modification of a November 2022 order by which the High Court had directed GoDaddy to suspend present as well future registrations of domain names containing the mark ‘Swiggy’ during pendency of a suit filed by Swiggy.
The November 2022 order was passed on a plea by Swiggy against persons using domain names deceptively similar to its mark.
GoDaddy then moved the present application for modification of the order.
The counsel for GoDaddy informed the Court that it could suspend present registrations but not future registrations as registration of domain names is an automatic process without any human intervention.
He stated that if the condition was not recalled, GoDaddy would be vulnerable to an action of contempt, even though compliance with the direction is beyond their capacity.
Further, he stated that although a registered proprietor of the trademark holds rights in rem, while exercising such a right, it is necessarily in personam.
On this basis, he argued that on each occasion when the plaintiff notices such infringement, it will have to approach the Court for a specific order.
On the other hand, Advocate Hiren Kamod for Swiggy pointed out that GoDaddy had stated before Delhi High Court that subject to technical, financial and resourcing issues, it could potentially prevent a user from registering names with the exact word, in respect of which the plaintiff in the case held a registered trademark.
Hence, he stated that GoDaddy could not claim that the direction was impossible to technologically comply with only because it would entail some costs.
According to him, GoDaddy indicating that other registrars may register infringing names even if they suspended registrations, demonstrated that GoDaddy sought modification of the order to not lose out on profit.
Further, he cited two judgments of the Delhi High Court.
In one, the Court had specifically directed the registrar to prevent future infringing registrations.
In the other, it was held that GoDaddy was not justified in claiming that it could not take any steps under the automated technology to be able to prevent registration of infringing domain names.
On this basis, it was argued that the application deserved to be dismissed.
The Court noted that the stands taken by GoDaddy before it was in the teeth of the stand taken by them on affidavit before Delhi High Court.
It further noted that compliance was possible if GoDaddy utilized an alternative algorithm.
“In that light, the contention raised on behalf of the Plaintiff is correct to the extent that Defendant No. 15 is avoiding to do so, merely because it may have to bear some financial burden in that regard,” the Court added.
Hence, it held that there was no substance in the submission that compliance with the direction was technologically impossible.
Thereafter, the Court stated that there was no doubt that the plaintiff claiming infringement of its registered mark is required to claim reliefs in context of specific instances of infringement, relatable to individuals against whom orders can be passed by the Court.
“Even in a “John-Doe action”, specific instance of infringement is identified, although there may be lack of information regarding the details of the individual or individuals who are responsible for such infringement,” the Court elaborated.
Hence, the Court determined that it was not proper to continue the ad-interim order as it would amount to granting an omnibus and global temporary injunction, operating in futuro.
However, keeping the interest of Swiggy in mind, it directed GoDaddy to inform Swiggy every time a domain name containing the mark ‘ Swiggy’ is registered so that it could take appropriate action.
Senior Advocate Sharan Jagtiani along with Advocates Rohan Cama, P Mehta, Debarshi Dutta and Arjun Bose, instructed by Solaris Legal, appeared for the applicants.
Advocates Hiren Kamod, Vaibhav Keni, Neha Iyer, Rohan Lopes, Prem Khullar and Anees Patel, instructed by Legasis Partners, appeared for the plaintiff.
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