Domain Name I

According to Snapdeal, by offering for registration, domain names which include ‘Snapdeal’, Domain Name Registrars (DNRs) are facilitating infringement of Snapdeal’s registered mark and are also themselves infringers within meaning of Sections 28 and 29 of The Trade Marks Act, 1999.

If domain names are deceptively similar to ‘Snapdeal’, GoDaddy is indulging in infringement of Snapdeal’s registered mark. Mr. Carlos A. Becerra, employee of GoDaddy, has clearly acknowledged, GoDaddy could potentially prevent users from registering domain names with exact letters ‘Snapdeal’ or a word or string of which ‘Snapdeal’ is a part. GoDaddy does not provide any alternative domain name containing a word or string: ‘GoDaddy’. It is unacceptable, DNRs cannot vouchsafe: alternative domain names, thrown up on their websites, would not contain any trademark which is already registered. It is every DNRs’ responsibility to ensure, alternative domain names do not infringe any registered trademark. If algorithms work in such manner, there is a possibility of infringing alternative domain names being made available to an aspiring registrant. DNRs have to discontinue use of such algorithms. If consequence is DNRs would not be able to provide alternatives, so be it.

A quia timet action cannot be predicated on hypothetical or imaginary infringements. It is not permissible for Court to hold, in advance, every prospective alternative domain name, containing word/thread/string ‘Snapdeal’, would necessarily be infringing in nature and, thereby, injunct in an omnibus and global fashion. It would be attributing to Court, a clairvoyance which it does not possess. Snapdeal necessarily has to go against each domain name it finds infringing. There is no shortcut to justice. In all such cases, DNRs would themselves be infringers within meaning of The Trade Marks Act, 1999.

DNRs would have to modulate their algorithms in such a way as not to make available, to prospective registrants, potentially infringing alternatives – as GoDaddy has apparently done in respect of its own domain name. A situation in which algorithms of DNRs make available, to prospective registrants, infringing domain names, leaving proprietors of infringed trademarks to repeatedly knock at doors of Court cannot be allowed to continue in perpetuo.

Hon’ble Justice C. Hari Shankar of Hon’ble High Court of DelhiSnapdeal Private Limited v. GoDaddyCom LLC, [I.A. 5407/2021 in CS (COMM) 176/2021].