Bombay High Court orders GoDaddy to notify Swiggy whenever a domain name containing the mark 'Swiggy' is registered
Bombay High Court orders GoDaddy to notify Swiggy whenever a domain name containing the mark 'Swiggy' is registered
The Bombay High Court in the matter of Bundl Technologies Private Limited vs. Aanit Awattam alias Aanit Gupta and others considering a 'peculiar situation' wherein entities posing as associates of Swiggy were deceiving people's money under the assurance of bringing them on board the 'Swiggy Instamart' platform, passed an interim order directing GoDaddy an internet registrar, to notify Swiggy every time a domain name containing the mark 'Swiggy' is registered.
The Court was adjudicating an application filed by GoDaddy.com LLC and GoDaddy India Web Services Private Limited seeking clarification/modification/recall of order dated 29th November, 2022 by which the High Court had ordered GoDaddy to suspend present as well future registrations of domain names containing the mark 'Swiggy' during pendency of a suit filed by Swiggy.
The November 2022 order was passed on a plea moved by Swiggy against persons using domain names deceptively alike marks. For modification of the order GoDaddy moved the present application before the High Court.
The counsel appearing for GoDaddy informed the Court that as registration of domain names is an automatic process without any human intervention it could suspend present registrations but not future registrations. He stated that the direction is beyond their capacity and if the condition was not recalled, GoDaddy would be said to have committed action of contempt.
Further, he stated that although a registered proprietor of the trademark holds rights in rem, while exercising such a right, it is necessarily in personam. On this basis, the counsel contended that every time when the plaintiff notices such infringement, it will have to approach the Court for a specific order.
On the other hand, Advocate Hiren Kamod for Swiggy highlighted that GoDaddy had stated before Delhi High Court that subject to technical, financial, and resourcing issues, it could potentially prevent a user from registering names with the exact word, in respect of which the plaintiff in the case held a registered trademark. Hence, based on this reasoning, GoDaddy cannot not contend that the direction was unattainable technologically to comply with only because it would entail some costs.
According to him, GoDaddy indicating that other registrars may register infringing names even if they suspended registrations, demonstrated that GoDaddy sought modification of the order to not lose out on profit. On this basis, it was argued that the application deems to be dismissed.
The single judge Justice Manish Pitale noted that even though GoDaddy cannot prevent future registrations, given the peculiar situation wherein the customers were affected due to nefarious activities of entities claiming to be associated with Swiggy, it could inform Swiggy when a domain name containing its mark is registered.
It was brought to the notice of the High Court that the compliance was possible if GoDaddy utilized an alternative algorithm.
"In that light, the contention raised on behalf of the Plaintiff is correct to the extent that of GoDaddy.com LLC is avoiding to do so, merely because it may have to bear some financial burden in that regard. Therefore, there is no substance in the contention raised on behalf of GoDaddy.com LLC and GoDaddy India Web Services Private Limited, that technologically it is impossible to comply with the ad-interim order granted in terms of prayer," observed the Court.
Thereafter, the Court noted that there was no doubt that the plaintiff claiming infringement of its registered mark is required to claim reliefs in context of specific instances of infringement, relatable to individuals against whom orders can be passed by the Court.
The Court opined, "Even in a 'John-Doe action,' specific instance of infringement is identified, although there may be lack of information regarding the details of the individual or individuals who are responsible for such infringement."
Therefore, the Court determined that it was not proper to continue the ad-interim order as it would amount to granting an omnibus and global temporary injunction, operating in futuro.
