Domain Name Registrars (“DNR”) assist users in registering websites with a domain name of their choice. DNRs collect information from the user and submit it to the respective domain registry. This has resulted in several users misusing intellectual property of third parties either unintentionally or with the intent of riding upon the goodwill of such third parties. Consequently, DNRs, the ad-hoc gatekeepers of the internet, have come under intense scrutiny of the courts.
Why are DNRs being sued in Courts
Cases of cybersquatting wherein a proxy domain name is registered by the registrant with the sole intention of malicious profiting are not new or unknown. However, cases of innumerable domain names bearing infringing trademarks/ names being registered by DNRs have become rampant.
Approaching the World Intellectual Property Organization (“WIPO”) for reliefs against each domain name is neither feasible nor efficient since the resolution process for a domain name dispute is rather time consuming, even though registering a domain name takes only a few minutes. Also, the WIPO does not issue orders against future domain names, which may be infringing the rights of the Applicant. Right holders/ Plaintiffs thus seek reliefs such as (a) grant of an injunction order directing DNRs to block such infringing domain names; (b) seeking damages from DNRs for aiding and abetting in the said infringement; and (c) directing DNRs to not register any domain names, which may infringe their rights in the future, from the Courts, which appear to be a faster and a more efficient remedy. It also ensures protection against future infringement.
Additionally, many DNRs allegedly charge a fee for masking/ privacy services, therefore, they may be commercially incentivised to actively engage in infringement.[1] Such masking adds a layer to the WIPO process of challenging the domain name, whereas Courts are more likely to pass an order against a John Doe/ Ashok Kumar, who is not identified in the pleadings before the Court, as long as the necessary impleadment of parties is done after the registrant details are provided by the DNR upon an order of the Court.
As per Indian laws, intermediaries are obligated to publish their privacy policy on their websites and have an effective grievance redressal mechanism in place.[2] In case the intermediary, in this case a DNR, fails to comply with such obligation, the DNR loses its safe harbor protection and will be liable for punishment under the law for the time being in force.[3]However, when it comes to paid privacy services being offered by DNRs, the Courts here are yet to decide whether the same may have an impact on the safe harbor extended to DNRs.
Issues pending adjudication before Courts in India
Trademark Infringement is Essentially a Commercial Dispute: Although Courts have the power to direct blocking of fake websites under Section 69A of the Information Technology Act, 2000 (“IT Act”), the same cannot be used to block a website, which may have a domain name infringing the IPR of an entity as that would fall within the four corners of a commercial dispute.
Safe Harbor afforded to DNRs: As DNRs do not initiate any transmission, do not decide the receiver of the transmission and do not modify any information provided to them prior to sending it to the domain name registry, they would ideally fall within the definition of “intermediary” under the IT Act and are entitled to safe harbor protection.[4] However, would such safe harbor protection be available in the event a DNR/ intermediary abets or aids in committing an unlawful act is up for consideration.[5] Courts are contemplating whether registering a fake website or a website bearing a domain name, which is infringing the IPR of an entity by a DNR, would constitute an unlawful act enough to disentitle it from safe harbor protection.
Most DNRs are located abroad and not subject to jurisdiction of Indian Courts: Most DNRs, even though offering services to users in India, are based abroad and it needs to be determined whether they can be bound by the directives passed by the Indian Courts, unless the same is served to them through proper channels as prescribed by the relevant treaties such as the Hague Convention. The counter argument by right holders/ plaintiffs is that the time taken to complete service through the proper channels is too long, thus making implementation of Court orders slow. On the other hand are voluntary associations like the Internet Corporation for Assigned Names and Numbers (“ICANN”) from where DNRs obtain accreditation on an international scale[6]. The ICANN has also categorically submitted before the Indian Courts that owing to it being a voluntary body, headquartered in the United States, it cannot be forced to give effect to the orders of Indian courts, to take action against a DNR.[7] At the same time, ICANN also maintains the view that DNRs must follow local laws of their respective jurisdiction.
Whether DNRs are in a position to adjudicate upon infringement: The Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 (“IT Rules”) lay down a number of gatekeeping compliance obligations on intermediaries to ensure a safe environment online[8] and to ensure no infringement exists on their platforms.[9] Presently, the Delhi High Court also maintains that a DNR cannot by itself decide whether a domain name that is sought to be registered is infringing or not and the same has to be brought to the Court’s attention for the Court to decide.[10] This stance of the Delhi High Court has been challenged in an appeal before a division bench and the issue is yet to be resolved.
Feasibility of in future injunction orders: The challenge faced by the Courts is that no matter how many proxy domain names are officially removed by DNRs, new domain names similar to the previously suspended ones crop up like a hydra head. Although Indian courts have been hesitant in granting blanket (future) injunction orders, it appears that a marked shift to address this issue is on the march. A ‘Dynamic Injunction’ appears to be an example. The Delhi High Court has recently passed such a dynamic injunction order, restraining certain websites from streaming not just existing content, but also future content of six American studios.[11] Such dynamic injunction orders, which restrain a potential future violation, leave the adjudication of such infringement on DNRs. While it may be efficient and cost effective for the right holder, it places an obligation on the DNR, which it is not competent to discharge. Hence, it is up for consideration by the courts and policymakers.
While Courts in India are adjudicating upon the above issues, recently, the Delhi High Court in a suo moto petition clarified that DNRs cannot be allowed to facilitate scams and a certain responsibility must be imposed upon them. It has been categorically held that if DNRs want to do business in India, they must follow orders passed by Indian courts against infringing websites/ content.[12] The Delhi High Court has also in the past observed that DNRs must establish an independent and impartial mechanism, whereby any aggrieved right holder, who has an objection to a registration granted to any domain name, can approach the DNR and seek cancellation/ suspension/ transfer of the said domain name in accordance with law.[13]
Courts in other countries such as Germany have expressly decided that DNRs are duty bound to disconnect infringing websites. As the ongoing matters proceed, law makers may have to decide whether to adopt a proactive approach and develop appropriate regulations, laying down the criteria for holding DNRs liable and a mechanism by which enforcement can be sought against DNRs found in violation, while ensuring that undue obligations are not placed on DNRs for adjudicating matters beyond their remit.
For further information, please contact:
Pallavi Rao, Partner, Cyril Amarchand Mangaldas
pallavi.rao@cyrilshroff.com
[1] Paragraph 21, Snapdeal Private Limited v Go Daddy Com LLC & Ors (Delhi High Court CS (COMM) 176 of 2021) 2022 SCC OnLine Del 1092.
[2] Rule 3(1)(a) & Rule 3(2) of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021.
[3] Rule 7 of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021.
[4] Section 79, IT Act.
[5] Section 79(3) (a), IT Act .
[6] All DNRs have to be accredited by the ICANN and have to enter into a Registrar Accreditation Agreement (2013) with the ICANN.
[7] Paragraph 7, Star India Private Limited & Anr. v.MHDTV.World & Ors., 2022/DHC/4741.
[8] Rule 3(1)(a), IT Rules.
[9] Rule 4, IT Rules.
[10] Paragraph 87, Snapdeal Private Limited v Go Daddy Com LLC & Ors (Delhi High Court CS (COMM) 176 of 2021) 2022 SCC OnLine Del 1092.
[11] Paragraph 22, Universal City Studios LLC and Ors. v. DotMovies.Baby and Ors, 2023 SCC OnLine Del 4955.
[12] Court on its own motion v. Ministry of Electronics and Information Technology, W.P. (C) 4731 of 2019, Delhi High Court.
[13] Snapdeal Private Limited v Go Daddy Com LLC & Ors (Delhi High Court CS (COMM) 176 of 2021) 2022 SCC OnLine Del 1092.
