Domain registrars and banks held accountable

By Manisha Singh and Simran Bhullar, LexOrbis
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The internet gives criminals many opportunities to defraud unsuspecting users. It is well known that one must not believe everything that is on the web. The imaginative ways that copyright infringers use to defraud internet users is getting out of control. Brand owners have become more vigilant of the infringement of their intellectual property (IP) taking place openly on the internet. Infringers operate through fake websites and offer bogus business opportunities. Now the courts have made it clear that domain registrars also have responsibilities to curb this problem.

Manisha-Singh,-Partner,-LexOrbis
Manisha Singh
Partner
LexOrbis

In the recent case of Gujarat Cooperative Milk Marketing Federation Ltd. and Anr. v Amul Franchise In and Ors. the Delhi High Court dealt with the famous Indian dairy brand, Amul, which is managed by the plaintiffs. The trademark was used in connection with the offer of a franchise through a website called www.amulfranchise.in and other false sites. People nationwide complained to the plaintiffs about such fraudulent websites that were unlawfully using the mark Amul in the domain names. The plaintiffs sued over 30 entities, many of whom they alleged had been duping the public by purporting to be authorized representatives of the plaintiffs. These defendants were accused of offering dealerships, distributorships, employment, franchises and other opportunities relating to Amul. The defendants asked those who responded to deposit sums, ranging from ₹25,000 to ₹1 million, into bank accounts maintained by them. The banks in which such accounts were opened are also defendants, as are nine domain registrars.

The plaintiffs said that they had made representations to the registrars asking that such domain names as GoDaddy, Big Rock, and Freenom be removed for using the trademark Amul. They alleged that because of the failure to take down the sites infringers continued to create fraudulent websites and misuse the trademark. They even submitted a list of domain names that were offered for resale. In June and July 2020 notices were sent to the registrars to take down the infringing websites and to banks to freeze the bank accounts held by the infringers. However, no action was taken by the defendants.

SimranBhullar,-Associate,-LexOrbis
Simran Bhullar
Associate
LexOrbis

The only authorized websites of the plaintiffs are www.amul.com and www.amuldairy.com, the homepages of which contain prominent warnings against defrauding sites. The domain registrars have so far argued that they are not aware of any technology by which they can ensure that the websites containing the trademark Amul will not be made available for sale. The court refused to accept this contention since there must be filters available to ensure that websites containing obscene words are not made available for sale. Similar filters can be used to comply with the demands of the plaintiffs. The court found in favour of the plaintiffs and granted an interim injunction, despite the fact that not all the defendants had appeared or taken part in the case. It was of the opinion that the common public as well as the plaintiffs would suffer irreparable loss if the websites were not banned immediately.

By a subsequent order, the court directed the registrars to suspend, block and delete the domain names as submitted by the plaintiffs and to refrain from offering for sale domain names consisting of the trademark Amul, except those which are genuinely owned by the plaintiffs. The court also ordered the defendant banks, the State Bank of India, Canara Bank, Punjab National Bank, Bank of Baroda, Bandhan Bank, IndusInd Bank, and Dena Bank, to furnish the details of the bank account holders, their addresses and contact details and their statement of accounts. The Department of Telecommunications, Ministry of Information Technology and National Internet Exchange of India were directed to block access to the fraudulent websites.

The plaintiffs were granted the right to seek relief from the court should they discover more such rogue websites. The plaintiffs did indeed find websites and email addresses that were using the mark Amuldairy and added, with the court’s consent, more defendants to the case. The matter is due to be heard next in November 2020.

In this case, the court adopted a purposive and rational approach to the use of infringing and bogus websites. It took notice of how infringers buy domain names and create rogue websites containing the names of well-known trademarks in order to dupe people. This approach will prove beneficial for brand owners as it offers wider enforcement of IP rights. It also recognises that enforcement and protection of those rights must move with the times. Most importantly, this powerful order will hold registrars of domain names to account in matters related to IP infringement.

Manisha Singh is a partner and Simran Bhullar is an associate at LexOrbis.

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