Bundl Technologies Private Limited Vs Aanit Awattam alias Aanit Gupta & Ors Interim Application (Lodging) No. 38837 and 26556 of 2022 in Commercial IP Suit (Lodging) No. 26549 of 2022
The Plaintiff, the registered proprietor of the trademark SWIGGY had approached the Bombay High Court aggrieved by nefarious activities of few Defendants who had duped innocent persons on the false promise of being brought on board the SWIGGY Instamart platform. It was learnt that such Defendants were illegally using the infringing domain names “btpl.info” and “swiggyinstamart.co.in”. GoDaddy was one of the Defendant in the case.
By an interim order dated 29 November 2022, the Bombay High Court had granted an ex-parte relief in favour of the Plaintiff, directing the Domain name Registrar GoDaddy, interalia , to not register any domain name containing the Plaintiff’s mark SWIGGY without prior authorization of the Plaintiff, pending the hearing and final disposal of the suit.
Aggrieved by the said direction, GoDaddy had filed the present application stating that the direction could not be compiled with on the following counts:
(i) the underlying technology for registration of domain names is a fully automated process, with no manual intervention and the Domain Name Registrar, cannot assess the legitimacy of any domain name chosen for registration by a prospective Registrant.
(ii) the direction is against the requirements of law, as although a registered proprietor of the trademark holds rights in rem, an action pertaining to infringement or passing off is necessarily a right in personam. A dynamic injunction cannot be granted against the parties who have not even been identified.
Regarding the first issue the Court observed that the there is no substance in the contention that technologically it is impossible to ensure compliance with the said condition. The Defendant would have to utilize an alternative algorithm and it may have to bear some financial burden in that regard.
Regarding the matter of Law, the Court agreed with the Defendant’s contention that a claim for infringement is necessarily an action in personam and not an action in rem. The Plaintiff claiming infringement of its registered mark is required to claim reliefs in the context of specific instances of infringement, relatable to individuals against whom orders can be passed by the Court. The Court upheld that for each instance of infringement the Plaintiff would have to approach the Court although it may be cumbersome exercise.
However, the Defendant was directed by way of an ad-interim direction, to inform the Plaintiff, on each occasion that registration of a domain name is granted, which contains the registered trademark “SWIGGY” , through the automated process of registration of the said Domain Name Registrar.
Authors: Sonu Shaji, Ruchi Singh