Godrej Properties Ltd vs Ashok Kumar & Anr on 18 July, 2022

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Delhi High Court - Orders

Godrej Properties Ltd vs Ashok Kumar & Anr on 18 July, 2022

1. Vide previous order dated 14th March, 2022, a mechanism was agreed upon with the consent of both the parties as to the manner in which the infringing/offending domain names would be deactivated or suspended by the Defendant No.2 - GoDaddy India Web Services Private Limited (hereinafter, "GoDaddy"). The said mechanism is set out below:

"2. Having heard learned Senior Counsels for the Plaintiff and Defendant No.2 and with the consent of the parties, this Court directs that for any future domain names, which contain the Plaintiffs trademark "Godrej Properties" or any part thereof and which the Plaintiff believes to be the subject of phishing attempts;

(a) Plaintiff shall report to Defendant No.2, GoDaddy.com LLC these domain names, as per their Phishing tool (available at https://supportcenter.godaddv.com/AbuseRep CS (COMM) 154/2021 Page 1 of 6 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:20.07.2022 12:14:33 ort), as detailed in paras 30 and 31 of the reply filed by Defendant No.2 to the instant application.

(b)Defendant No.2, GoDaddy.com LLC shall process the request and act on it, if Defendant No.2 finds the Plaintiffs request to be valid and justified.

(c)If Plaintiff is unable to get relief from Defendant No.2, Plaintiff shall be at liberty to approach this Court by filing an affidavit or an application before the Court or the learned Joint Registrar, as the case may be, listing the domains against which it has lodged complaints, along with any other evidence it wishes to rely upon to seek their suspension.

Plaintiff shall serve a copy of the affidavit or application upon GoDaddy.com LLC in advance. Upon satisfaction of the Court or the learned Joint Registrar, as the case may be, an appropriate order shall be passed, directing Defendant No.2 to suspend the identified domains. If and when such an order is passed. Plaintiff shall communicate the same to Defendant No.2 for compliance.

(d)Upon Defendant No.2's assurance that it would comply with the aforementioned order.

Plaintiff agrees that Defendant No.2 shall be deleted from the array of parties on the next date of hearing."

2. Today, Mr. Jayant Mehta, ld. Senior Counsel appearing for the Plaintiff that there are 26 domain names for which requests have been sent to GoDaddy between 30th May, 2022 to 18th June 2022. However, no action has been taken by GoDaddy in this regard. He submits that GoDaddy has CS (COMM) 154/2021 Page 2 of 6 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:20.07.2022 12:14:33 also not responded as to the reasons for which the order dated 14th March, 2022 has not been implemented.

3. On the other hand, Mr. Darpan Wadhwa, ld. Senior Counsel, appearing for the Defendant No.2 - GoDaddy submits that the Plaintiff is merely disclosing the partial facts of the case. He submits that a total of 70 domain names were requested by the Plaintiff to be suspended/taken down. Out of those 70 domain names, 39 domain names have already been deactivated/suspended. Only 31 domain names have not yet been deactivated/suspended. Thus, GoDaddy has established its bona fides.

4. Mr. Wadhwa further submits that insofar as the 31 domain names which have not been deactivated/suspended are concerned, GoDaddy is bound by its Anti-Phishing Policy. Therefore, it is submitted that if there is a view within the Defendant No.2 - Company that the requested domain names do not violate the said Anti-Phishing Policy, they cannot be taken down or suspended, without specific orders from the competent Court. He also submits that the Plaintiff has not written or requested for deactivating these domain names as no affidavit has been filed by the Plaintiff till date, in terms of the order dated 14th March, 2022.

5. In response, Mr. Mehta, ld. Senior Counsel for the Plaintiff submits that emails have been written by ld. Counsel for the Plaintiff on 6th July, 2022, and the Plaintiff did not want the matter to precipitate as matter as he was hoping for a response from the ld. Counsel for GoDaddy. A reply was received that the ld. Counsel for GoDaddy would revert, however, he has not reverted in this regard till date.

6. Heard ld. Senior Counsels for the parties. A perusal of the terms mechanism set out hereinabove, which were agreed upon between the CS (COMM) 154/2021 Page 3 of 6 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:20.07.2022 12:14:33 parties vide order dated 14th March, 2022, clearly shows that once the Plaintiff communicates the details of an infringing domain name to GoDaddy, the said Domain Name Registrar ('DNR') is expected to process the Plaintiff's request, if it finds the request to be `valid and justified'. Thus, until and unless the DNR finds the request to be invalid and unjustified, the request should be processed. It would not be permissible for the DNR to simply sit over the request on behalf of the Plaintiff for domain name suspension, especially in the face of the order dated 14th March, 2022 passed by the Court.

7. At this stage, Mr Wadhwa, ld. Senior Counsel points out illustratively that insofar as one of the domain names, being 'www.godrejofficial.in', in respect of which a request was made by the Plaintiff is concerned, only one page content is available on the said domain name. He submits that such usage may not amount to phishing. Hence, GoDaddy would not have taken action as per its Anti-Phishing Policy. The content of the said domain name is set out below:

CS (COMM) 154/2021 Page 4 of 6 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:20.07.2022 12:14:33

8. A perusal of the above domain name which has been illustratively relied upon shows that this is a classic case of misuse of the Plaintiff's mark 'GODREJ'. The request in this case cannot be treated as a simple phishing request, but has to be considered in the context of the suit filed by the Plaintiff for the infringement of its trademark 'GODREJ', as also, the order dated 14th March, 2022 passed by the Court in respect of the same. The request of the Plaintiff in this case, therefore, has to be processed in the background of the suit, the orders passed by the Court, as also, GoDaddy's Abuse policy, and not on a standalone basis.

CS (COMM) 154/2021 Page 5 of 6 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:20.07.2022 12:14:33

9. Since time has been sought by Mr. Wadhwa, ld. Senior Counsel, without commenting further at this stage, the DNR - GoDaddy is directed to place an affidavit on record giving the reasons and justification qua each of the domain names which have not yet been suspended/deactivated, as to why the said domain names have not been deactivated or suspended. In the said affidavit, the DNR shall clarify as to whether, in respect of any of these domain names, it is offering any services apart from domain names registration, such as hosting services, cloud servers, website development, etc., and if so, the details of the same shall also be placed on record. Further the complete details of the registrants of these domain names viz., name, address, phone number, email address, IP addresses, PAN card, credit card details if any shall also be filed in the affidavit.

10. It is made clear that if this Court finds that the DNR's stand is not sustainable in light of the present suit, as also, the order dated 14th March, 2022, this Court would pass appropriate directions on the next date of hearing.

11. The list of domain names, handed over to the Court today by the Plaintiff, shall be placed on record by way of an affidavit.

12. List on 3rd August, 2022.

PRATHIBA M. SINGH, J.

JULY 18, 2022/dk/ad CS (COMM) 154/2021 Page 6 of 6 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:20.07.2022 12:14:33

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Delhi High Court - Orders