By Divij Joshi; originally published on SpicyIP’s website
In an interesting and important order and judgement delivered by Justice Gautam Patel, the Bombay High Court has shed some clarity on the nature of reliefs applicable in domain name cybersquatting disputes – disputes relating to the wrongful or fraudulent use of trademarks as domain names.
The order dated June 12, in Hindustan Unilever v. Endurance Domain and Ors. is available here. In brief, the court held that domain name registrars can not be expected to ‘block access’ to a domain name, and can only be asked to temporarily suspend specific domain names. The judgement helps clarify the role and liability of domain name registrars in online trademark disputes.
Hindustan Unilever filed a suit against various domain name registrars, the National Internet Exchange of India (NIXI) as well as unknown defendants for an apparently open and shut case of cybersquatting, using HUL’s trademark in domain names for fraudulent businesses.
HUL prayed for injunctions against each of the defendants in the following terms:
“That pending the final hearing and disposal of the Suit, this Hon’ble Court be pleased to direct the Defendant(s) forthwith to suspend and ensure the continued suspension of and block access to (…) Fraudulent Domain Name(s).”
While the finding of cybersquatting and fraudulent behavior was uncontroversial, the judgement hinged on the grant of the prayers on the above terms.
Intermediary Responsibility Meets “Eternal Vigilance”
At the outset, the court rejected the prayers for injunctions against NIXI and the IN Registry, noting that these entities have no control, nor responsibility, over the registration or functioning of specific domain names. NIXI, which administers the INRegistry, merely administers the functioning of other domain name registrars in India, particularly those responsible for registering website domain names under the ‘.in’ Top Level Domain (domains ending with ‘.in’).
The second issue was whether the prayers against the impugned domain name registrars (Endurance, GoDaddy and Porkbun) to “ensure the continued suspension” and to “block access to” the domain names could be granted. After a helpful explanation of the functioning of the domain name system, the court comes to two conclusions:
First, the court states that the domain name registrars are not responsible for ensuring access to any online resource. The blocking of any website, therefore, is possible only through an order for blocking information issued by the Government or by a court, to an ISP. As an aside, Justice Patel also appears to conclude that blocking orders are ineffective remedies given the ease with which they can be circumvented. In any event, the Court concludes that the prayer for blocking access cannot be granted against the registrars.
Secondly, and most importantly, the court held that the function of the registrars is to respond to specific disputes, relating to particular instances of cybersquatting. Domain name registrars can only suspend the registration of specific domain names found to be infringing or otherwise illegal. Domain name registrars cannot be expected to permanently block access to domain names without a specific finding that there is infringement or fraudulent behavior.
The court came to this conclusion on the basis that the process of domain name registration is automated and registrars do not currently maintain forms of “block lists” and do not have the responsibility to continuously monitor domain name registrations for potential infringement. The primary rationale for denying such an injunction was the apparent technical inability of registrars to conduct such monitoring and automatic suspension of domain names containing specific trademarks.
The court also denied the plaintiff’s prayer that the court devise a ‘suitable mechanism’ to prevent the plaintiff from repeatedly coming to court in cases of cybersquatting. The court held that it is not for the court to ease the burden of litigants involved in such disputes, and in the process also compromise the court’s own oversight of such disputes. The below paragraph is particularly informative of Justice Patel’s position:
“Eternal vigilance is not just the price of liberty; it is also the cost of doing large-volume business. I do not think it is for any court to come up with mechanisms to protect the Plaintiff’s interest at low or no cost, or by turning a plaintiff into judge, jury and executioner, let alone sub-contracting out what I believe to be a serious judicial function of assessing and balancing rival merits. What should or should not be suspended (or blocked) is for a government to decide, not some litigant. There are no shortcuts.”
The Bombay HC’s analysis of the issues is refreshing and important, for a number of reasons:
First, the Court goes into the role of specific intermediaries involved in such disputes and examines their responsibilities from the lens of their technical abilities and their role in enabling the communication. Courts have previously implicated various technical intermediaries for enforcing orders, including domain name registrars, without deliberating on the legal responsibilities or abilities of these intermediaries to enforce certain orders.
Second, the court recognises the role of judicial scrutiny in disputes relating to website blocking. Unlike the Delhi High Court, which has taken to routinely granting ‘dynamic injunctions’ encompassing wide-scale web-blocking without adequate judicial scrutiny, this order recognises that such orders for blocking should not be left to the plaintiff alone, or for the defendant to deliberate upon its legality – they must be issued after appropriate judicial review.