Trademark protection in cyber space presents a unique challenge to brand owners. The possibility of registering domain names with multiple combinations of name strings, coupled with several generic and country code top-level domain (TLDs) name extensions, makes it practically impossible for brand owners to eliminate infringement in the domain name system.
With the opening up of TLDs, cases of cybersquatting have steadily increased, posing new enforcement challenges to brand owners. This has forced brand owners to look beyond conventional actions under the various domain name dispute resolution policies and approach courts in a quest to obtain blanket orders against stakeholders involved in the domain name registration process.
The Bombay High Court’s June 2020 decision in Hindustan Unilever v Endurance Domains and others sheds light on the nature of judicial reliefs that can be granted in cases of cybersquatting in India. This order also delved into the role registrars play during domain name registrations.
Hindustan Unilever Limited (HUL), one of India’s largest business houses, owns and operates the domain name www.hul.co.in and its global parent owns and operates www.unilever.com. HUL had filed an application against several fraudulent third-party domain name holders.
The issue before the court was on the nature and form of injunction to be granted and against whom the injunctions should be granted to potentially prevent fraudulent domain name registrations in the future.
HUL sought reliefs/directions for suspension, continued suspension and blocking access to the fraudulent third-party sites and associated email addresses against:
- INRegistry (a government registry of domains registered with the .in domain name) and the National Internet Exchange of India (NIEI); and
- Domain name registrars of the fraudulent and similar domain names: GoDaddy, Endurance domains and Porkbun (registrars).
In addressing the relief sought against the .INRegistry and NIEI, to direct de-registration or blocking access, the court held that the relief was misdirected as neither was a registrar, nor did they receive any registration fee and therefore, the reliefs sought cannot be granted.
No blanket relief
While addressing the relief sought against the registrars, the court laid down the contours of the underlying technology, the process behind domain name registrations and the technicalities associated with the same:
- The process of registering a domain name is trivial, completely automated and does not involve any manual intervention.
- A domain name may have its registration suspended, but a registrar cannot ‘block access’ to that domain name. ‘Blocking access’ is an instruction usually given by the government to an internet service provider and directing a registrar to block access is not feasible.
- The court also expressed its apprehension about passing any order for blocking access: they are ineffective because they can be easily bypassed. With respect to the ‘continued suspension’ request, the court reiterated the automated process of registering a domain name and that any suspension would continue only for the registration period (one year).
“The court refused to grant any blanket injunction that would operate dynamically or in future.”
Relying on this fundamental framework, the court allowed only ‘suspension’ and directed the infringing third-party domain names to be suspended by the respective registrars.
HUL also sought a blanket injunction against the .INRegistry, NIEI and the registrars to stop registration of any deceptively similar domain name and asked the court to devise a suitable mechanism to deal with further infringing domain names encountered by HUL.
The court refused to grant any blanket injunction that would operate dynamically or in future.
While addressing the request for a suitable mechanism, the court held that: “Eternal vigilance is not just the price of liberty; it is also the cost of doing large-volume business.
“I do not think it is for any court to come up with mechanisms to protect the plaintiff’s interest at low or no cost, or by turning a plaintiff into judge, jury and executioner, let alone sub-contracting out what I believe to be a serious judicial function of assessing and balancing rival merits.”
The order passed by the Bombay High Court is of grave importance and relevance—it laid down the role of specific intermediaries and courts’ ability to enforce directions passed against them and chose to refrain from passing any ‘dynamic injunctions’ that are generally granted by the Delhi High Court.
Going forward, the order shall be a fundamental reference point when deciding matters relating to cybersquatting in India.
NV Saisunder is a fourth-generation lawyer and leads the technology, media and IP law practice at Eshwars. He can be contacted at: firstname.lastname@example.org
Aanchal Nichani is an associate at Eshwars. She can be contacted at: email@example.com
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