Intermediaries are liable for trademark infringement if they facilitate domain name registrations that include registered trademarks, and blanket injunctions against future registrations require specific instances of infringement.

JUDGMENT

LA. 5407/2021 in CS(COMM) 176/2021

1. The plaintiff is the registered proprietor of the following trade marks:

Trademark	Registration No.	Class	Registration Date	Status
	1950285	35, 38	15/04/2010	Registered
SNAP DEAL	1950286	35, 38	15/04/2010	Registered
SNAPDEAL.COM	2102124	35, 38	18/02/2011	Registered
SNAPDEAL	2126759	39	07/04/2011	Registered
	3203510	35	05/03/2016	Registered
	3525400	35	14/04/2017	Registered
	3525401	35	14/04/2017	Registered
	3525407	35	14/04/2017	Registered
	3191889	35	22/02/2016	Registered

2. The plaintiff refers to these marks, collectively, as the "SNAPDEAL trade marks" and I shall use the same expression.

3. Defendants 1 to 32 in this plaint are Domain Name Registrars ("DNRs", hereinafter), who provide domain names for parties who may seek to register their respective websites under such domain names. Defendant 33 is the Department of Telecommunications and Defendant 34 is the National Internet Exchange of India (NIXI).

4. The plaint alleges that various third parties, with whom the plaintiff has no connection or association whatsoever, are registering domain names which include the "SNAPDEAL" word/thread. These domain names, it is alleged, are infringing in nature, as the plaintiff is the registered proprietor of the "SNAPDEAL" trade mark. It is also alleged that such third parties are, through the websites operating under the said domain names, carrying out illegal activities, such as providing lucky draws etc. and are also, in certain cases, posing as customer care centres for the plaintiff's products. All this, it is submitted, is taking place without the plaintiff's license or authorization.

5. I may note, at this juncture, that none of the said registrants have been impleaded as a party in this plaint. Accordingly, the Court need not concern itself, in the present case, with the allegedly illegal activities of such registrants. It is obviously impermissible for the Court to return any qualitative finding in that regard, without the registrants themselves being impleaded in the proceedings.

6. The relief sought by the plaintiff is solely against the DNRs.

7. According to the plaintiff, by offering, for registration, domain names which include the thread "SNAPDEAL", the domain registrants are facilitating infringement of the plaintiff's registered mark and are also themselves infringers within the meaning of Sections 28¹ and 29² of the Trade Marks Act, 1999 ("the Trade Marks Act").

8. This, submits the plaintiff, has provoked the plaintiff to approach this Court on multiple occasions, inter alia, by way of CS (COMM) 1214/2018 (Snapdeal Pvt. Ltd. v. Aadi Sins) and CS (COMM) 621/2019 (Snapdeal Pvt. Ltd. v. Grievance Officer of Twitter India Twitter International Company) and CS (COMM) 264/2020 (Snapdeal Pvt. Ltd. v. snapdealluckydraws.org.in).

9. In Snapdeal Pvt. Ltd. v. Aadi Sins, this Court, vide order dated 1st November, 2018, injuncted registrants using domain names including the thread "SNAPDEAL" from infringing the registered SNAPDEAL marks of the plaintiff. The concerned DNRs were also directed to suspend such fraudulent domain names and banks were directed to freeze the accounts in which the websites operating under the said domain names directed persons to deposit monies. This injunction was, vide order dated 8th January, 2019, extended to further domain names found to be indulging in similar activiti