Granting interim relief to Dabur India Limited, the Delhi High Court has ordered for blocking of certain websites (John Doe) illegally using ‘DABUR’ domain name. “The attempt is to not merely infringe and pass off, but to indulge in complete impersonation,” it observed.
Justice Pratibha M Singh was of the view that DABUR India Limited made out a prima facie case for the grant of ex-parte injunction and the balance of convenience was also in it’s favour.
“Irreparable loss would be caused to the Plaintiff if an ex-parte injunction is not passed in favour of the Plaintiff. The loss to the public is also incalculable,” the Court said.
The order is John Doe since the owner name of the impugned domain names is hidden.
The Court noted that the practice of “hiding or masking the details of the Registrants” who hold domain names is increasingly resorted to by persons who register such domains which impinge upon owners of trademarks and names.
“Such Registrants seek to enjoy domain name registrations and host websites, in a concealed or a hidden manner, without disclosure of their identity. The domain names are used to the exclusion of the whole world including the trademark owner,” the Court said.
It added “Whenever any person or entity registers a mark, name, company, firm etc., the identity of such person is openly available. However, in the case of domain names, this is not so. It appears that disabling of privacy protect feature may be essential to ensure that the identity of the persons registering domain names is clearly visible on the https://www.whois.com database, as also other such databases.”
Accordingly, the Court directed the Centre to disclose its stand in respect of privacy protect features, provided by domain name Registrars to their Registrants.
“Let the affidavit on behalf of the Defendant Nos.2 & 3 be filed one week before the next date,” the Court ordered.
“Thus, it is an Indian brand which is more than 150 years old and has become a household name. Over the years, the Plaintiff has been a leading manufacturer and seller of a large variety of products to the Indian public, ranging from pharmaceuticals, toiletries, food products and medicinal preparations. The products belonging to the Plaintiff are also exported abroad. The goodwill in the Plaintiff’s mark and business is, thus, unquestionable,” the Court said.
It added “Under these circumstances, the use of the aforementioned domain names and the hosting of websites using the same, in a manner so as to deceive the general public as also small businesses, who may be enticed into seeking franchisees and distributorships, using the mark/name DABUR, ought not to be permitted.”
The Court was dealing with a suit filed by Dabur India Limited seeking permanent injunction and damages in respect of infringement of various intellectual properties, including the trademark ‘DABUR’, copyright in the labels and packaging of its various products, passing off and unfair competition.
It was thus the case of the plaintiff that various domain names and websites had started using the mark ‘DABUR’ and were depicting various products of ‘DABUR’.
Therefore, the Court was of the view that the legal rights of the Plaintiff were severely affected.
“Moreover, apart from the rights of the Plaintiff, which are being infringed, it would also not be in public interest to permit these domain names and websites to operate, so as to continue to deceive and cheat the general public in India and abroad,” the Court said.
Accordingly, the Court passed the following directions:
– Defendant Nos.4 & 5 shall immediately block the domain names, as also the websites https://www.daburdistributor.com. https://daburdistributorships.in, and www.daburfranchisee.in.
– Status quo shall also be maintained in respect of the said domain names and the same shall be locked with immediate effect. The Defendants 4 & 5 are restrained from transferring the said domain names or creating any third-party interest on the same.
– Defendant Nos.2 & 3 i.e., DoT and MEITY shall issue directions to all ISPs to block the said websites as also any other websites, except the Plaintiff’s websites, bearing the mark ‘DABUR’.
– Defendant Nos.4 & 5 shall also disclose to ld. Counsel for the Plaintiff and file an affidavit before this Court as to the details of the registrants or the persons who have registered the abovementioned domain names along with their complete contact details, postal address, email address, bank account. details, and telephone numbers, etc. Let the said affidavit be filed within one week from the receipt of the copy of this order. Upon receipt of this order, Defendants 4 & 5 shall communicate immediately the order to the registrants of the infringing domain names.
– The Registrants of the https://www.daburdistributor.com, infringing https://daburdistributorships.in, and www.daburfranchisee.in. shall cease all use of the domain names and pull down the websites hosted. on the said domain names with immediate effect. The email addresses reflected on the said websites shall also be de-activated. domain names
– Defendant Nos.4 & 5 are also restrained from allowing any third-party, apart from the Plaintiff, from registering domain names using the mark/name ‘DABUR’.
– Defendant Nos.6 to 14 i.e., the Internet Service Providers shall give effect to this order immediately.
– Upon the disclosure of the names of the registrants of the domain names, the Plaintiff is permitted to implead them as the Defendants in the present suit.
Case Title: DABUR INDIA LIMITED v. ASHOK KUMAR & OTHERS
Citation: 2022 LiveLaw (Del) 185
