Delhi HC Restrains Domain Name Registrars from Registering Infringing Domain Names

The Delhi High Court in Gujarat Cooperative Milk Marketing Federation Limited v. Amul Franchise[1] passed an ex parte ad interim order dated August 28, 2020, inter alia, directing several domain name registrars to suspend/block/delete certain fraudulent websites containing the well known mark ‘AMUL’ as part of their respective domain names, as well as restraining such domain name registrars from offering for further sale, any other domain names in future, containing the term “Amul” with or without a prefix or suffix.

The suit was filed by the plaintiff against multiple defendants, including: (i) certain domain name registrars; and (ii) banks where the principal defendants had opened a bank account; as they received complaints from across the country that fraudulent websites (incorporating the well known trademark ‘AMUL’) were being registered by such defendants, which was being used to deceive the public at large by drawing an association with the plaintiff, resulting in the defendants offering dealership, distributorship and jobs in relation to the trademark ‘AMUL’ and asking for deposits from individuals who were seeking such jobs/franchises/dealerships into various bank accounts.

The abovementioned interim order of the Delhi High Court also directed various defendants to disclose various bank account related details. This part of the interim order was modified by way of a subsequent order dated September 8, 2020 further directing a freeze of such bank accounts.

This order is extremely significant to protect brand holder rights being a first of its kind order which restrains domain name registrars from offering domain names in future to third parties which incorporate the plaintiff’s trademark or otherwise infringe plaintiff’s trademark rights. Further, this order demonstrates the ‘zero tolerance’ policy which Indian Courts have been adopting towards rogue and fraudulent websites and the owners and operators of such websites.

 

[1] CS(COMM) 350/2020.

Published In:Inter Alia - Quarterly Edition - September 2020 [ English
Date: September 30, 2020