In an interesting decision by DHC in Snapdeal Private Limited v. Godaddycom LLC and Ors.^[1], the DHC observed that the Domain Name Registrars (‘DNRs’) could be held liable for trademark infringement under Sections 28 and 29 of the TMA if such DNRs offer alternative domain name registration options, which incorporate a registered trademark, for a price.

The instant matter dealt with an omnibus injunction sought by Snapdeal Private Limited (‘Plaintiff’), which would operate in futuro to restrict DNRs from registering any domain names in future which contain the trademark ‘SNAPDEAL’. The Plaintiff alleged that there were several rogue third parties who are registering domain names with the term ‘Snapdeal’ incorporated in it and it is impractical to either monitor this or to approach the Court every time the Plaintiff learns of this. The Plaintiff also argued that DNRs are not ‘intermediaries’ within the meaning of Section 2(1)(w) of the Information Technology Act, 2000, (‘IT Act’) and do not enjoy safe harbor protection under the IT Act. The DNRs countered by arguing that they were in fact ‘intermediaries’ within the meaning of the IT Act and enjoyed safe harbor protection as the process of providing alternate domain name registration options to prospective registrants is entirely automated in nature and they have no control over it.

The DHC partially rejected the arguments made by the defendants in this case and held that although DNRs are ‘intermediaries’ within the meaning of Section 2(1)(w) of the IT Act, since the DNRs were offering alternative domain name registration options for a price, they were clearly acting commercially for a profit. The Court further held that in offering alternative domain name registration options, the DNRs were using the trademark ‘SNAPDEAL’ in the ‘course of trade’ and hence were liable for infringement under Section 29 of the TMA. The Court observed that in order to avoid liability, DNRs would either have to modulate their algorithms in such a way as not to make available, to prospective registrants, potentially infringing alternatives, or avoid providing alternative domain names altogether.

However, the DHC rejected the specific prayer for a preventive interim injunction as sought by the Plaintiff in this case, as the Court was of the view that an allegedly infringing mark needs to be specifically identified and that it would be impermissible to opine on every potential infringement in future, which is a facts-based analysis, in advance. The DHC also observed that while quia timet actions were permissible, a quia timet action based on ‘hypothetical or imaginary infringements’ was not.

[1] Snapdeal Private Limited v. Godaddycom LLC and Ors., CS(COMM) 176/2021, dated April 18, 2022.