Delhi High Court - Orders
New Balance Athletics Inc vs Nbstoresinindia.In & Ors on 27 March, 2024
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~33
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 12/2022 and I.A. 263/2022, 20922/2022, 24631/2023,
2418/2024, 2419/2024
NEW BALANCE ATHLETICS INC ..... Plaintiff
Through: Mr. Gunjan Kumar, Advocate with
Mr. Sushant Kumar Advocate (M:
8920054413).
versus
NBSTORESININDIA.IN & ORS. ..... Defendants
Through: Mr. Akshay Goel, Mr. Shivam
Narang, Mr. Paras Arora & Ms.
Vishali Nahar, Advocates for D-13
(M: 9811783019).
Mr. Sandeep Kumar Mahapatra,
CGSC and Mr. Tribhuvan, Adv. for
D-15 (M: 9811472444).
Mr. Apoorv Kurup, Ms. Nidhi Mittal
and Mr. Gurjas Narula, Advocates for
D-16 (M: 8447971163).
Mr. Naveen Kumar Jain, Mr. Praveen
Kumar Jain, Advocates for D-17 with
Mr. Jaya Kiran, Legal Manager
(NIXI). Mr. Rajeev, Manager (NIXI)
(M: 9971759700).
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 27.03.2024
1. This hearing has been done through hybrid mode.
2. The present suit is a case pertaining to Domain Name Registrars (DNRs) wherein various rogue websites emerge infringing the Plaintiff's mark.
CS(COMM) 12/2022 Page 1 of 8This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/04/2024 at 20:40:13 I.A. 2419/2024 ( for exemption)
3. The present application has been filed on behalf of Defendant No. 13 seeking exemption from filing an affidavit. Allowed subject to all just exceptions. Application is disposed of.
I.A. 2418/20244. Today, Mr. Todd Han, who has deposed the affidavit on behalf of the Dynadot LLC as also Mr. Alex Levit - General Counsel of the company has appeared virtually before this Court.
5. The issue that has arisen in this case is that certain infringing domain names were injuncted by this Court vide order dated 7th January, 2022. As per the said order, the domain names which infringed the rights of "New Balance" were www.nbshoesindia.com and www.newbalanceindia.co.in, which were known to be misrepresenting themselves as being linked to the Plaintiff. The infringing domain names were as under:-
i) NB STORESININDIA.IN
ii) NBSHOESINDIA.COM
iii) NEWBALANCEINDIA.CO.IN
iv) NB-INDIA.COM
v) NEWBALANCEINDIA.IN
vi) NEWBALANCE.IN
vii) NEWBALANCEINDIASTORE.IN
viii) NEWBALANCEINDIASTORES.IN
ix) NBSTORESINDIA.IN
x) NBSTOREININDIA.IN
6. The domain names at serial Nos. (v) and (vi) were registered with Dynadot LLC i.e., Defendant No. 13. The order required Dynadot LLC to CS(COMM) 12/2022 Page 2 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/04/2024 at 20:40:13 suspend and render inoperative the domain name at serial Nos. (v) and (vi). The relevant directions given by the Court vide order dated 7th January, 2022 is set out below:-
"24.(i) Defendants 1 to 10 as well as any other entity acting through them or on their behalf are restrained from using the registered "NEW BALANCE" and "NB" trademarks of the plaintiff in any manner, whatsoever including by reflecting the said marks on their websites at any point or position.
(ii) The defendants are also restrained from operating through websites which are deceptively similar to that of the plaintiff and, thereby violating the copyright held by the plaintiff in its Websites.
(iii) Defendants 11 to 14 are directed forthwith to suspend and render inoperative, till further orders, the domain name registrations held by Defendants 1 to 10."
7. Over a number of hearings, it was noticed that the said infringing domain names were not suspended and this led to the Court taking a serious note of the matter. On 31st May, 2023, the Court records that Defendant No. 13 has failed to comply with the direction passed by this Court on 7th January, 2022, 24th January, 2022, 11th February, 2022 and 3rd June, 2022. In view thereof, the Court directed Ministry of Electronics and Information Technology (hereinafter, 'MeiTY') to take action for non-compliance as under:-
"2. Counsel for the plaintiff submits that defendants no. 11 to 14 and defendants no.26 to 28 are foreign DNRs who have failed to comply with the repeated directions passed by this Court on 7th January, 2022, 24th CS(COMM) 12/2022 Page 3 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/04/2024 at 20:40:14 January, 2022, 11th February, 2022 and 3rd June, 2022.
3. Therefore, in accordance with the directions passed by this Court on 9th November, 2022 in CS(COMM) 567/2022, the defendant no. 15, Department of Telecommunication (DoT) and the defendant no. 16, Ministry of Electronics and Information Technology (MeitY) respectively are directed to immediately take action within two weeks against the following DNRs for non-compliance of the orders passed by this Court:
DEFENDANT NO. DOMAIN NAME
REGISTRAR
1API GmbH Defendant no.11
Alibaba.com Singapore Defendant no.12
ECommerce
Pvt.Ltd.
Dynadot LLC Defendant no.13
Endurance Digital Domain Defendant no.14
Technology LLP
NameSilo, LLC Defendant no.26
Internet Domain Service BS Defendant no.27
Corp
NETIM Sarl Defendant no.28
4. Status report as to the action taken by defendants no.15 and 16 in respect of these DNRs be filed at least one week before the next date of hearing."
8. This resulted in the main website of the Defendant No. 13 i.e., CS(COMM) 12/2022 Page 4 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/04/2024 at 20:40:14 www.dynadot.com being blocked in India by MeiTY. This order i.e., of 31st May, 2023 was also reiterated by the Court on 24th August, 2023 in the batch of domain name matters. The relevant portion of the said order dated 24th August, 2023 is set out below:-
"3. Today, ld. counsel for the Plaintiff submits that blocking orders were initially issued by DOT and these DNRs were blocked from offering their services. However, the said blocking order does not appear to be in force currently. The websites are accessible and are offering their services to Indian customers.
4. A copy of the e-mail has been sent to the ld. CGSC, which states that currently these DNRs, against whom action was directed to be taken by this Court, are offering their services in India. The matter is extremely serious. In these cases, it is seen that repeated orders have been passed by this Court as also Coordinate Benches directing take down and blocking of various domain names which are infringing upon rights of IP owners. In a large number of cases, it is also noticed that these websites which are illegally registered by unknown persons are also used for duping Indian consumers and users from substantial amounts of money. It is under these circumstances that these orders are passed which the DNRs are expected to give effect to. If the DNRs do not abide by the orders passed by this Court, it is only then that an order such as the above one dated 31st May, 2023 has been passed.
5. Let a compliance affidavit be filed by DOT and MeiTY as to what steps were taken pursuant to order dated 31st May, 2023 and under what circumstances were the blocking ordered initially and has the blocking been removed/withdrawn.
6. The names of the concerned officials who issued such orders shall also be placed before the Court inasmuch as non-implementation of orders passed by Indian Courts and Indian authorities can have a CS(COMM) 12/2022 Page 5 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/04/2024 at 20:40:14 deleterious impact on law and order, on security as also enforcement of Court orders. Let the compliance affidavit be filed within two weeks."
9. In the meantime, however, in October, 2023, Dynadot LLC registered two parallel domain names to conduct its businesses in India namely www.d.in and www.dynadot.in. This is seriously objected to by ld. Counsel for the Plaintiff, who submits that Dynadot LLC was guilty of non- compliance of order passed by this Court. Thus, strict action deserves to be taken.
10. On behalf of Dynadot LLC, two applications have been filed stating that in the order dated 26th May, 2023 passed in the batch matter i.e., CS(Comm) 135/2022, Dynadot LLC had entered appearance and had also intimated to the Court that the grievance officer as required in the Intimidatory Guidelines and Rules was appointed. The email ID provided by Dynadot in the said matter was: [email protected]. It is stated that the email relating to the orders passed in the present matter were not served to the Grievance Officer and hence there was a gap in the implementation of the said orders.
11. Today, Mr. Alex Levit, General Counsel for Dynadot has submitted to the Court that after the appointment of the Grievance Officer, all the Court orders which are received on the Grievance Officer's email are duly implemented by Dynadot. He submits that Dynadot itself does not have any role to play in the registration of the domain names and conduct of any illegal and any unlawful activities by the said domain name holders apart from allowing the domain name registration itself. He stated that the domain name Company is not involved with the registrants of the domain name.
CS(COMM) 12/2022 Page 6 of 8This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/04/2024 at 20:40:14
12. He further assures the Court that any order sent at the email address of the Grievance Officer shall be duly complied with and implemented by Dynadot LLC without exception. He further assures the Court that an affidavit shall be filed by Dynadot LLC putting this assurance in writing. The email address of the grievance officer is as follows:
[email protected]
13. The Court has, in addition, directed that if within a reasonable period of one week, the order sent at the Grievance Officer's email are not implemented by Dynadot, then a senior official's email address would also be given to the Court so that the Registry can serve the order at the said official's email address to ensure compliance.
14. Ld. Counsel for the Dynadot along with the two officials assures the Court that such an affidavit be filed within two weeks giving the details of the Grievance Officer as also the said officials.
15. In view of the above assurance given by Mr. Alex Levit, which is also confirmed by Mr. Todd Han, the domain name of the Dynadot LLC being www.dynadot.com is directed to be unblocked by MeiTY within three working days. This is subject to the said affidavit being filed within two weeks. Let the affidavit be filed by Dynadot LLC within two weeks.
16. Application is disposed of subject to filing of the affidavit. I.A. 24631/2023 ( u/O XXXIX Rule 2a)
17. The present application has been filed by the Plaintiff under Order XXXIX Rule 2A of CPC and Section 2(B), Sections 11 and 12 of the Contempt of Courts Act, 1971 seeking initiation of contempt proceedings.
18. The registration of the parallel domain names after the main website of Dynadot was blocked under orders of this Court is definitely an attempt in CS(COMM) 12/2022 Page 7 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/04/2024 at 20:40:14 showing scant regard to the orders of this Court. However, in view of the undertaking which Dynadot has given as recorded above, Mr. Mahant, ld. Counsel submits that he does not want to press the contempt application.
19. The application is disposed of.
I.A. 20922/2022 ( direction)
20. On behalf of M/s NameSilo, LLC, Mr. Shivam Narang, ld. Counsel submits that both the domain names www.nbshoesindian.com and www.nbstoreindia.com have been suspended by M/s NameSilo, LLC. He hands across documents to show this. The documents which have been handed over show that these two domain names were created on 10th August, 2021 and 5th November, 2021 respectively. It is stated by the Counsel for NameSilo, that in furtherance to the order of injunction of this Court dated 7th January, 2022, the domain names were blocked.
21. However, ld. Counsel for the Plaintiff submits that no steps were taken by NameSilo after the grant of injunction by this Court to suspend the stated domain names.
22. Accordingly, let an affidavit be filed giving out the details as to the manner in which the order of the Court was complied with by NameSilo.
23. List on 15th April, 2024.
CS(COMM) 12/2022 and I.A. 263/2022 (for stay u/O XXXIX R1&2)
24. List on 15th April, 2024.
PRATHIBA M. SINGH, J MARCH 27, 2024 mr/bh CS(COMM) 12/2022 Page 8 of 8 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/04/2024 at 20:40:14