Order of the Delhi HC in the Amul case a criticism on Domain Name Registrars and the quagmire of IPR
Domain names have been nominated by the courts of law to come under the limits of the rights given to trademarks under the Intellectual Property Law regime set in effect.
The domain name, to put it simply, is the address or identity of the person or individual involved on the Internet.
The technology of domain names, which offers a play in the joint, is quite complicated. In order to better grasp the same, the rights involved and the solutions available, it is important to break down the working regime for these domain names.
For instance, if we take example of Intellectual Property Appellate Board (IPAB), i.e. www.ipab.gov.in. Here, “ipab” is known as the second-level name which provides room for ‘intellect’ and creativity to be featured. The part after the name i.e. “gov.in” is referred to as the top-level domain [in short “TLD”] which can be country-specific like ‘gov.in’ or general like ‘.com’.
The Internet Company for Assigned Names and Numbers ( ICANN) allows for a dispute settlement mechanism in cases of violation. Domain Name Recorders (DNRs) are organisations through which the claimant applies for the purchase of a domain name. These DNRs, if registered with ICANN, shall obey the internal dispute resolution mechanism as given by ICANN.
Now, coming to the order of the High Court of Delhi, which has created a seismic change in these kinds of cases, inasmuch as that order is quoted as a precedent in virtually all sorts of related cases, praying for the same relief.
Order Vide dated 28 August 2020 passed by the Gujarat Cooperative Milk Marketing Federation Ltd. &Anr. V. AmulFranchise.in & Ors., the Court, though grappling with fraudulent/rogue websites of the 'Amul' brand, has gone ahead and has prohibited the DNRs concerned from selling domain names for sale containing the term 'Amul.' The related findings are derived from the following:
“… The defendant Nos. 26 to 34 are further restrained from offering for further sale the domain names so directed to be suspended/blocked/deleted by this order and also those containing names/domain names/websites having the words/expressions AMUL with or without a prefix or a suffix. The defendant Nos. 35 to 37 are directed to block access of defendant Nos. 1 to 8 websites…”
The concern expressed by the counsel for the concerned DNR was summarily rejected by the Court based on the following analogy.
“… Learned counsel for the defendant No. 26 states that the defendant No. 26 is the Registrar of defendant Nos. 1, 2, 4, 5 and 8. He further states that he is not aware as to whether there is any technology by virtue of which, defendant No. 26 can ensure that the websites with name AMUL therein will not be made available for sale. This contention of learned counsel for defendant No.26 is prima facie not acceptable as defendant No.26 must be operating its filters to ensure that websites under obscene and/or words denoting illegality are not available for sale.”
The Court seems to have developed on the premise that DNRs have in-built ‘filters’ which ought to ‘ensure’ that ‘obscene’ words and words which symbolize ‘illegality’ are not offered to the public at large for sale.
A recent judgment passed by the Bombay High Court throws some light on this aspect of the matter. This judgment dated June 12, 2020, was passed in the matter titled Hindustan Unilever Limited v. Endurance Domains Technology LLP & Ors. The issue was similar i.e. use of variants of the plaintiff’s domain name to register fake and fraudulent websites.
The Bombay High Court succinctly dealt with the technology at hand and made the following crucial observations.
“… Now domain names are, typically, never ‘owned’. They are always registered for a fee and for a specified time, typically a one-year minimum. The process of registering a domain name is trivial. One only has to look up availability of a combination of words and choose a desired top-level or other domain (.in, .com, .net, etc). The entire process of registration is automated and requires no manual intervention. Certainly there is no human element involved in overseeing or assessing the legitimacy of any chosen domain name. Once the domain name is registered, it must point somewhere to be effective. Left idle, it defaults to the domain name registrar’s name servers…”
The High Court of Bombay contends with the technology inasmuch as it observes that there is no human element entangled in respect of the legality of the domain name involved. The registration process is also automated. If the process by which the applicant applies for a domain name and finally registers it in his / her name is computer controlled, assuming that there is filtration to ensure that such obscene or illegal words are not put up for sale is, with the absolute respect, incorrect.
To draw further light from the judgment of the Bombay High Court, on this very aspect, the quintessential observations made in this behalf are extracted hereafter.
"19. So much for blocking access. But to ask for the ‘continued suspension’ of domain name registration is also technically incorrect. Any domain name Registrar can always suspend a domain that is registered. But the entire process of registration itself is entirely automated and machine-driven. No domain name registrar can put any domain names on a black list or a block list. The notion that domain name registrar’s have a person or a team of persons scanning and checking every domain name application betrays a wholesale lack of understanding of how domain name registration actually works. If a user wanted to register, say, chroniclesofwastedtime.com, there is no individual at any domain name registrar to question, to ask why, what for or anything. If the domain name is free, the applicant can take it to registration. That is all there is to it. That registration will continue until suspension or expiry."
This, in essence, would mean that any applicant can file an application for obtaining a registration qua a domain name through any DNR which will be, most probably, registered by a process which is entirely automated and requires no manual intervention.
The query that now emerges is this: what solution is there for the person in whose name the trade mark involved has been registered? It is for this same purpose that the DNRs, as well as web hosts of the domain name involved, allow for a dispute settlement mechanism without the interference of the Judiciary, in particular in cases of fake websites and infringements of intellectual property rights.
Once such a procedure has been used without avail, it is appropriate for the person involved to contact the Court or other law enforcement authorities and to request specific redress under that name.
Recently, the High Court of Delhi has issued dynamic injunctions in cases where fake websites are involved without any injunction to the DNRs concerned. The Court gave the complainant the liberty of knocking on the doors of the Court of First Instance to array other rogue website(s) carrying out related unlawful activities.
However, to restrain the DNRs from offering for sale, such domain names which contain specific word(s) is not, with respect, technologically feasible.