Delhi High Court has provided a solution to the misuse of domain names related to well-known brands purchased by anonymous and unrelated persons. In the case of the court issued guidelines that domain name registrars (DNRs) must follow.
In the decision, the court mandated that DNRs collect details of the registrants of domain names and perform electronic know-your-customer (e-KYC) verification, which should be periodically verified.
The court also observed that DNRs and registry operators could not hide information related to domain name registration from authorities during investigations by claiming privacy of the registrants.
DNRs operating in India have also been directed to appoint grievance officers in the country within one month and publish their contact details, so they can provide information on a domain name registrant.
The court also held that, any lawful service of notice or any other such communication – including court orders on the email address of the grievance officer and the registrant’s email address as provided to the DNR – would be considered sufficient. DNRs can no longer insist on such communication through the Mutual Legal Assistance Treaty.
Several cases involving trademark owners were being heard in Delhi High Court, seeking injunctions against misuse of their marks by unknown persons registering domain names that consist of either the full or a distinctive part of the trademark or the brand name. The accused had used the domain names, posed as the trademark owners and collected money from people under false promises of employment, wrongful information, or sold counterfeit or passed-off products and provided services.
The court noted that domain name registration details in records had not been verified, leading to email IDs created through temporary mobile numbers or registrations completed in public internet spaces. Data suggested that such registrations were often based outside India. The bank accounts used were also based on temporary and false information.
Attempts to track down persons behind such fraudulent registrations faced obstacles such as anonymity and privacy protection by DNRs of the registrants.
In its case analysis, the court observed that the financial fraud in such cases was worth millions of Indian rupees. The court said that for any effective injunction order to be passed, directions would be issued to the Reserve Bank of India (RBI), the regulatory authority of banks in India, the banks where accounts had been used for executing the fraud, the Internet Corporation for Assigned Names and Numbers (ICANN), the Ministry of Electronics and Information Technology and the National Payments Corporation of India. These entities were also involved in the case.
The court also directed DNRs to extend privacy protection to registrants only if they pay an additional service charge and not as a default part of domain registration. They are also required to provide details of registrants within 72 hours of a request.
The court has ordered that where a domain name has been found to have been used for illegitimate purposes, it shall be permanently blocked, making it unavailable for any future person to re-register it.
Injunctions sought by well-known brands shall be granted for infringing domains as well as any other similar variation of the infringing domain and the DNR shall ensure no alternative domain name is promoted or suggested to a prospective registrant. If a DNR does not comply with this, they will be disentitled from safe harbour protection under the law.
The court also directed that on court orders, an infringing domain name shall be transferred to the trademark owner after payment of usual charges. Search engines and DNRs have been directed to not promote, or market or extend optimisation services to infringing domains.
Registry operators with valid ICANN agreements have been directed to implement trademark clearing house services, making it available to brand owners and registered proprietors of trademarks.
The government has been directed to hold stakeholder consultation to explore a framework for domain name registration and establishing a nodal agency. It has been ordered that all non-compliant DNRs be blocked. The government must also co-ordinate with the ICANN and other organisations to ensure that brand owners in India can benefit from the trademark clearing house facility.
All banks have been directed to implement a “beneficiary bank account name lookup” facility for all online payments.
Finally, the court extended the protections on the Dabur trademark and ordered the takedown of infringing websites.
