Delhi High Court Passes John Doe Order: Questions Privacy Protect Features on Domain Name Databases

Introduction

John Doe orders are an effective remedy for right owners when the infringers are unknown. In cases involving trademark infringement especially in the digital era today, such John Doe orders become all the more essential. In the case of Dabur India Limited v. Ashok Kumar & Ors.1, the Delhi High Court passed a John Doe Order restraining the Defendants from engaging in trademark infringement through their websites. The Court passed an interim injunction in favour of the Plaintiff, directing the blocking of the websites of the unknown Defendants.

Background

The Plaintiff is an Indian manufacturer of a variety of products including pharmaceuticals, toiletries and food products and is more than 150 years old. In the present case, they claimed infringement of its intellectual property rights, including its well-known trademark “DABUR”, copyright in the labels and packaging of its products, passing off and unfair competition.

Further, the Plaintiff claimed that the Defendants operated various domain names and websites, including, https://www.daburdistributor.com, https://www.distributorships.com, etc. using the mark “DABUR” and showcasing various products of “DABUR”. These websites allegedly passed themselves off as the Plaintiff and called for franchisees and distributors to register themselves by paying a hefty fee, for being appointed as agents for selling the Plaintiff’s products. In a blatant attempt to impersonate the Plaintiff, the Defendants also included terms such as ©2021 Dabur Distributor and ©2020 Dabur Distributor on their websites.

The Plaintiff further claimed that despite a search on www.whois.com, the database for domain names, no details, names or addresses of the Defendants’ could be found and hence they were constrained to initiate a John Doe action.

Decision

The Court found that the Plaintiff had made a prima facie case in their favour and passed an interim order to block the various rogue websites “in order to curb any malpractice or any monetary harm to the public as also to the franchisees and distributors who may pay monies to the websites, and to protect the Plaintiff’s rights in various intellectual properties, which are being violated on the websites of the Defendants.” Furthermore, the Court also ordered the concerned authorities to disclose the identities of the persons who had registered these websites.

In addition, the Court in this case noted that the practice “of hiding or masking the details of the Registrants who hold domain names is increasingly resorted to by persons who register such domains which impinge upon owners of trademarks and names...” Unlike trademark registrations where the identity of the registrants is public information, in the case of domain names, the identity can be concealed. Therefore, the Court noted that “It appears that disabling of privacy protect features may be essential to ensure that the identity of the persons registering domain names is clearly visible on the https://www.whois.com database, as also other such databases.” Accordingly, the Court ordered Defendant Nos. 2 and 3, the Department of Telecommunications, Ministry of Communications and IT and the Ministry of Electronics and Information Technology to also disclose their stand in respect of privacy protect features, provided by domain name Registrars to their Registrants.

Comment

This case highlights the need for reform on the policies in this area and the need for more guidelines and frameworks keeping in mind the digital trademark infringers in the online space. As noted by the Court, privacy protection features that conceal the identity of the registrants of domain name owners are being used by infringers to register domain names with mala fide intentions. Therefore, there is a need to reform features and privacy policies keeping in mind the rights of intellectual property holders as well. The identity of the domain name registrants should be available through databases such as www.whois.com as this would help curb infringement of intellectual property rights through rogue websites and domain name registrations.

For any questions, please feel free to write to the author, Ms. Vrinda Sehgal at vrinda@iprattorneys.com.

1. Dabur India Limited v. Ashok Kumar & Ors. CS (COMM) 135/2022 http://164.100.69.66/jupload/dhc/PMS/judgement/25-03-2022/PMS03032022SC1352022_122025.pdf