While reiterating that a domain name has all the characteristics of a trademark, and its registration can constitute infringement and passing off, the Delhi High Court emphasised that DNRs are not passive intermediaries. They actively profit by offering alternative infringing domain names, premium-priced domains based on well-known marks, and other value-added services. This active participation and profiteering from infringement make them complicit.
Finding that the infringing domain names were identical to the Plaintiff’s well-known and distinctive marks (‘COLGATE’, ‘COLPAL’) and were used to deceive the public, the Court granted a Dynamic+ interim injunction against the seven identified infringing domain names and any future infringing domains. This injunction restrained the use of the domain names, directed the DNRs to disclose registrant details and suspend the domains, along with a direction to the MeitY/DoT to issue blocking orders.
The Court noted that these cases were not one-off instances but part of a large-scale fraud, wherein a Special Investigation Team, IFSO, was constituted by the Delhi Police to investigate. Since a major challenge for law enforcement was the delay by banks in providing information sought for investigations, the Court directed the RBI and the Indian Banks’ Association (IBA) to formulate a Standard Operating Procedure (SOP) to ensure timely and efficient sharing of information with Law Enforcement Agencies (LEAs).
A Single Judge Bench of Justice Prathiba M. Singh observed that a significant loophole was the mismatch between the account holder’s name registered with the bank and the name provided for billing to the DNR, with no verification mechanism in place. After multiple directions to the RBI and NPCI, the RBI issued a Circular mandating the implementation of a ‘Beneficiary Bank Account Name Look-Up Facility’ for RTGS and NEFT transactions. This facility allows the remitter to verify the beneficiary’s account name before initiating a transfer, thereby helping to prevent fraud.
The Single Judge observed that by using a well-known trademark, a whole network is built to deceive consumers. Infringers open bank accounts for a temporary period, collect money, and withdraw it before the trademark owner can take effective action. Even after a court grants an injunction against one domain, new infringing domains are registered, continuing the same fraudulent pattern.
Further, the Bench noted that these are not isolated incidents but systemic issues requiring significant changes and measures from various stakeholders, including DNRs, Domain Name Registries, ICANN, banks, telecom providers, government ministries (MeiTY, DoT), and law enforcement agencies. The Bench also noted that the “privacy protect” feature, often offered as a default bundled service by DNRs, was a major impediment to identifying infringers. This practice required IP owners to approach a court in almost every case, which is impractical given the sheer volume of infringing registrations.
As the plaintiffs faced difficulties in enforcing court orders against DNRs, especially those without a physical presence in India, the Bench directed all DNRs offering services in India to appoint Grievance Officers in compliance with the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021. For non-compliant DNRs, the Bench directed MeitY/DoT to take appropriate action, including blocking their services in India, which prompted several DNRs to comply.
The Bench analysed the agreements governing the domain name system (ICANN-Registry, ICANN-DNR, etc.) and found that DNRs have significant obligations, including verifying registrant data, investigating inaccuracies, and acting against abuse. The NIXI Agreement for ‘.in’ domains is even stricter, prohibiting anonymous/proxy registrations and mandating e-KYC. The Bench, therefore, pointed out that DNRs are completely failing in their obligation to verify the accuracy of details provided by registrants, as evidenced by the widespread use of fake and fictitious information.
The Bench held that while privacy is important, it cannot be a blanket cover for illegal activities. Under both GDPR and the Indian DPDP Act, disclosure of personal data is permissible for a “legitimate interest”. Thus, the Bench affirmed that seeking information to curb IP infringement and cyber fraud constitutes a legitimate interest, mandating disclosure by DNRs.
The Bench pointed out that DNRs who fail to observe due diligence and actively participate in or profit from infringement lose their “safe harbour” protection under Section 79 of the IT Act. Their conduct crosses the line from being an intermediary to an active participant in the unlawful act. The Bench also rejected the DNRs’ argument that IP infringement does not affect “public order.” The large-scale, systematic fraud that dupes the public and erodes trust can disturb the “even tempo of the life of the community” and thus impact public order.
Lastly, the Bench endorsed the use of “Dynamic Injunctions” to tackle mirror/redirect websites without requiring the plaintiff to file a new suit for every new iteration. It also introduced the concept of a “Dynamic+ Injunction” to protect future works of a copyright owner as soon as they are created, to prevent immediate piracy on rogue websites. Further, in cases of repeated non-compliance, the Bench directed the authorities to block the services of the non-compliant DNR itself under Section 69A of the IT Act.
Briefly, the dispute relates to a batch of commercial suits filed by various trademark owners against the misuse of their trademarks through the fraudulent registration of domain names by unknown persons. As far as the nature of misuse is concerned, the infringing domain names incorporate the plaintiffs’ full trademarks or distinctive parts thereof and are used for illegitimate purposes, such as creating fake websites that impersonate the plaintiffs to collect money under the guise of offering jobs, dealerships, or franchises; hosting websites to sell counterfeit and pass-off products; and posing as the plaintiffs to offer fraudulent services.
The primary challenge is the inability to identify the actual perpetrators (Registrants), as the WHOIS Data Directory Services records provided by the Domain Name Registrars (DNRs) contain largely fictitious or incomplete details. The only contact point is often an email address, but other data like addresses and mobile numbers are typically inaccurate, and robust verification mechanisms are absent.
The suit was initially filed concerning the domain name ‘colgatepalmoliveindia.in’, which was used by an individual named Vishal Sharma to send fraudulent job interview emails and solicit money from the public. In April 2019, the court granted an ex parte injunction, directing Defendant No. 1 (NIXI) to block the domain name and disclose the registrant’s details. The banks were also directed to block the accounts used for collecting money.
When GoDaddy.com LLC, a DNR for some of the infringing domains, was impleaded as a party to adjudicate the issues effectively, the investigation into fraudulent bank accounts revealed a larger conspiracy. One of the accounts was opened using the credentials of one Rohit Nanda, who claimed his identity was stolen. This led to the involvement of the Cyber Crime Unit and UIDAI, which discovered that two Aadhaar cards had been issued with the same name and address but different details. Over time, the injunction was extended to cover several other infringing domain names as they were discovered.
Appearances:
Advocates Saif Khan, Achuthan Sreekumar, Prajjwal Kushwah, Imon Roy, Achyut Tiwari, Kanupriya Chawla, Swastik Bisarya, Rohil Bansal, and Shivang Sharma, for the Plaintiff
Senior Advocate C.M. Lall, along with Advocates Akshita Jain, Darpan Wadhwa, Mrinal Ojha, Debarshi Dutta, Arjun Mookerjee, Nikita Rathi, Jewel Bhateja, Nikhil Gupta, Yogesh Singh, Shivam Tiwari, Anmol Dhindsa, Danish Faraz Khan, Abhigyan Siddhant, Rahul Sharma, Tanmay Nirmal, Tentu Satyanarayan, Tanmaya Nirmal, Kushagra Goel, Lovesh Goel, Tanya Singhal, Akshay Goel, Shivam Narang, Lalit Kashyap, Sunil Gautam, Nishant Gautam, Vardhman Kaushik, Prithviraj Dey, Nirupam Lodha, Kshitij Parashar, Vanshika Thapliyal, and Ananya Mehan, for the Defendants
