Relying on the decision of UTV Software Communication Ltd. vs. 1337X.To [2019 SCC OnLine Del 8002], the Delhi High Court has held that the real test for declaring a website ‘rogue’ is qualitative, focused on the primary purpose and effect of facilitating infringement, and not a quantitative count of infringing content. The Court followed the binding Division Bench decision in Department of Electronics and Information Technology v. Star India Pvt. Ltd. [FAO(OS) 57/2015] and held that the test for a rogue website is qualitative, whether the primary purpose and effect is to facilitate infringement, and not a quantitative assessment of how much content is infringing.
The Court reiterated that URLs can be changed within seconds, making URL-level blocking a futile exercise, and blocking the entire domain name is the appropriate remedy where the website is overwhelmingly infringing. Accordingly, Defendant Nos. 2 to 10, including Dreamscape Networks, NameCheap, GoDaddy, Dynadot, Spaceship, HOSTINGER, July Name Limited, TLD Registrar Solutions and Internet Domain Service BS Corp, were directed to suspend the 126 enumerated websites/accounts of Defendant No. 1.
Briefly, Reliance Industries Limited filed a commercial suit before the Delhi High Court against Rahul Meena and 13 other defendants seeking urgent interim relief in respect of alleged infringement of its registered and well-known trademark ‘JIO’. The plaintiff complained that various websites were unlawfully incorporating the mark ‘JIO’ in its entirety as the leading, essential and dominant feature, and were using the impugned marks ‘JIO’/ ‘JIO LOTTERY’/ ‘JIO LOTTERY GAME’ in relation to lottery, gaming, payment-related and allied services, which were identical or deceptively similar to the plaintiff’s well-known “JIO” formative trademarks.
Defendant No. 1 was arrayed on the basis of registrant data available in the impugned domain names; Defendant Nos. 2 to 10 were Domain Name Registrars (Dreamscape Networks, NameCheap, GoDaddy, Dynadot, Spaceship, etc.) impleaded for preservation and disclosure of registrant particulars; Defendant No. 11 was Google LLC, the intermediary owning and operating the ‘Blogger’ platform; Defendant Nos. 12 and 13 were the Union of India through MEITY and the Department of Telecommunications; and Defendant No. 14 was a John Doe/Ashok Kumar.
A Single Judge Bench of Justice Purushaindra Kumar Kaurav perused the objectionable websites and the content being used on them, and observed that the same prima facie satisfied the test of a ‘rogue website’ as laid down by the Delhi High Court in UTV Software Communication Ltd. and Others vs. 1337X.To and Others (2019 SCC OnLine Del 8002).
The Court further observed that applying the quantitative standard would impose a disproportionate and onerous burden on every right owner, would virtually ensure that no website would ever be eligible for a takedown/blocking order, and would render right owners remediless. The Court also noted that if the test required a website to contain only illicit material, every rogue website could add a small percentage of legitimate content to escape being declared infringing.
