Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2023 Supreme(Online)(BOM) 24823

HIGH COURT OF BOMBAY
MANISH PITALE, J
GoDaddy.com LLC & GoDaddy India Web Services Private Limited – Appellant
Versus
Bundl Technologies Private Limited – Respondent
INTERIM APPLICATION (LODGING) NO. 38837 OF 2022 | INTERIM APPLICATION (LODGING) NO. 26556 OF 2022 | COMMERCIAL IP SUIT (LODGING) NO. 26549 OF 2022

Advocates:
For the Applicants: Mr. Sharan Jagtiani, Mr. Rohan Cama, Mr. P.Mehta, Ms. Debarshi Dutta, Mr. Arjun Bose
For the Plaintiff: Mr. Hiren Kamod, Mr. Vaibhav Keni, Ms. Neha Iyer, Mr. Rohan Lopes, Mr. Prem Khullar, Mr. Anees Patel

A registered trademark must be actively protected, necessitating targeted legal action per instance of infringement, and dynamic injunctions should be specific rather than omnibus.

Headnote:(A) Intellectual Property Law - Trade Marks - Action for infringement - Plaintiff, an e-commerce entity, claimed defendants misused plaintiff’s trademark ‘SWIGGY’ to defraud users - Court granted ad-interim relief directing registrars of infringing domain names to suspend them - Defendants sought modification asserting inability to comply due to automated technology for domain registration. (Paras 3, 8, 28)

(B) Injunctive Relief - Dynamic injunctions - Court observed that such injunctions must be specific to identified parties and past infringement, not general or omnibus - Each instance of trademark infringement requires separate court intervention - Rights of the plaintiff in terms of trademark may require ongoing vigilance against domain name infringements. (Paras 18, 22, 24 28)

Facts of the case:
Plaintiff claimed that various innocent users were defrauded by defendants using the plaintiff's trademark to register domain names and promised incorporation into the ‘Swiggy Instamart Platform’. Plaintiff sought urgent ad-interim relief to prevent further misuse.

Findings of Court:
The Court partly allowed the application seeking modification of previous orders, recognizing the need for vigilance in trademark protection while ensuring that injunctions were not overly broad.

Issues: Whether the automated nature of domain name registration justifies the inability to comply with trademark injunctions and whether such injunctions can be generalized or should be specific to infringement incidents.

Ratio Decidendi: Court found that while automated technology complicates compliance with dynamic injunctions, a registered trademark must be protected actively, leading to necessity for targeted legal action per instance of infringement.

Result: The court modified the previous ad-interim order, continuing protections but requiring notifications to the plaintiff as per new directives.

Table of Content
1. background of plaintiff's claims against defendants for trademark infringement. (Para 1 , 2 , 3 , 4 , 5)
2. court’s orders stipulating ad-interim reliefs to prevent misuse. (Para 7 , 8 , 9)
3. defendants contest compliance with automated registration injunctions. (Para 10 , 11 , 12 , 13)
4. plaintiff counters, asserting legal grounds for injunctions against infringing domains. (Para 15 , 16 , 17)
5. court discusses implications of automated domain registration technology. (Para 18 , 19 , 20)
6. court affirms plaintiff's claims must be directed against specified infringers. (Para 21 , 22 , 23)
7. final ruling regarding the continuance and modification of ad-interim relief. (Para 24 , 25 , 26 , 27 , 28)

P. C. :

1. By this application filed by the Defendant Nos. 15 (GoDaddy.com LLC) and 16 (GoDaddy India Web Services Private Limited), the said Defendants are seeking clarification/modification /recall of order dated 29^th November, 2022, passed by this Court in Interim Application (L) No. 26556 of 2022.

2. The background of this application is that the Plaintiff herein filed the present Suit, being aggrieved by the Defendant Nos. 1 to 13 infringing the registered trademark of the Plaintiff i.e. “Swiggy”, pertaining to Swiggy Instamart Platform. The Plaintiff is an e- commerce entity engaged in the business of operating an online market place through its website www.swiggy.com along with applications for mobile and handheld devices.

3. The Plaintiff approached this Court alleging that in June, 2022, it received an e-mail from a person from Jamshedpur, Jharkhand, stating that the Defendant No. 3 had approached him, claiming to be an employee of the Plaintiff and thereafter the said Defendant, along with Defendant No. 1, collected Rs. 11,800/- from him under the promise of bringing the said person on board the “Swiggy Instamart Platform” of the Plaintiff. The Defendant No. 1 shared an UPI QR code, bearing a logo of the Plaintiff Swiggy Instamart, through which the said person made payment on the false representations given by the said Defendants.

4. The said person further informed the Plaintiff that other similarly situated innocent persons were duped by the said Defendants into parting with various sums of money on the false promise of being brought on board the Swiggy Instamart Platform of the Plaintiff.

5. It was when the said persons suspected foul-play, as further e-mail correspondences with the said Defendants and others did not lead to anything concrete, that they directly approached the Plaintiff and the entire conspiracy of the said Defendants came to light. In this backdrop the Plaintiff made further inquiries and found that the infringing domain names “btpl.info” and “swiggyinstamart.co.in” were being used illegally by such Defendants. 6. In this backdrop, the Plaintiff filed the present suit alongwith application for interim reliefs. The Plaintiff pressed for grant of ex-parte ad-interim reliefs, considering the urgency of the matter. By order dated 24^th August, 2022, this Court granted ex- parte ad-interim reliefs in favour of the Plaintiff. The said order was executed and the Court Receiver submitted his report.

7. When the application was subsequently listed before this Court on 29^th November, 2022, the Plaintiff pressed for grant of further ad-interim reliefs in terms of prayer clauses (e) and (g), which specifically pertained to Defendant Nos. 15 and 16, who have filed the present application. It was the case of the Plaintiff that Defendant Nos. 15 and 16, being the Registrars of the impugned Domain Names, ought to be directed to suspend the impugned domain names with a further direction not to register any domain name containing the mark “Swiggy”, for which the Plaintiff holds trademark registration, without prior authorization of the Plaintiff.

8. On 29^th November, 2022, this Court passed its order recording the submission of the learned Counsel appearing for Defendant Nos. 15 and 16, that the information soug

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