Prathiba M. Singh, J. (Oral)

1. This hearing has been done through hybrid mode.

2. The present set of suits and proceedings have been filed before this Court, by a large number of trademark and brand owners, seeking reliefs against misuse of their marks / names / brands by unauthorized persons, who register such marks as part of their domain names. The issues that arise in these cases is that the proliferation of these fraudulent domain names has resulted in enormous damage and monetary loss running into lakhs of rupees to innocent and gullible members of the public, owing, inter alia, to inadequate verification of registrants and privacy protect features offered by domain name registrars (hereinafter “DNRs”).

3. The matters have been heard from time to time. There are several issues that arise in respect of the mode of registration of domain names, verification of domain names, privacy protect features, hosting of websites on the fraudulent domain names, payments being received from innocent persons etc. Vide order dated 3rd August, 2022, it was directed that in certain matters, copies of petitions and any additional information for investigation of FIRs, be provided to Ms. Sethi, ld. ASC, and Mr. Lamba, ACP, IFSO, Special Cell. A joint meeting was directed between the Delhi Police, National Payments Corporation of India (hereinafter “NPCI”), DoT, Ministry of Electronics and Information Technology (hereinafter “MeitY”), Department of Telecommunication (hereinafter “DoT”), National Internet Exchange of India (hereinafter “NIXI”), and CERT-in. In addition, DNRs were directed to place proposals or affidavits on record, and Mr. Rao, ld. Senior Counsel, representing Internet Corporation for Assigned Names and Numbers (hereinafter “ICANN”), was to seek further instructions to make more comprehensive submissions. Vide order dated 3rd August, 2022, the following directions were issued:

“31. …Considering the large sums of money that are being fraudulently obtained from various unsuspecting customers, all due to the lack of an active mechanism identification of such fraudulent parties, it is clear to the Court that the following aspects need to be addressed in these matters:

(i) The manner in which the details of the domain name registrants, can be verified by the DNRs, at the time of registration of domain names;

(ii) The manner in which the privacy protect feature and proxy servers are made available: whether it is only upon a specific registrant choosing the said option, rather than as a standard feature as part of a ‘bundle’;

(iii) If the owner of a well-known brand or a trademark contacts any DNR, the manner in which the data related to the registrant can be provided, without the intervention of a Court, or any governmental agency;

(iv) Whether the identity of the owner of a domain name, which consists of a registered trademark or a known brand can be verified at the time of registration itself;

(v) If a specific link could be provided by the CGPTDM, covering a list of well-known marks, maintained by the Registrar of the Trademarks, or declared by any Court of law, which can then be used for expedited blocking of domain names consisting of such marks;

(vi) If there can be any agency that can be identified in India, such as NIXI, who can be made a repository of the data concerning the registrant, or an agency through which the data could be transmitted by the DNR, upon verification by NIXI, in case a trademark owner has a grievance against a specific domain name;

(vii) If any directions are issued to the DNRs, and the same are not implemented, the manner in which the implementation of the said orders can be ensured;

(viii) Since almost all domain names are registered only after payments are made through credit card, or other online payment methods or apps, is it possible, upon request by any identified agency, to provide the information relating to the person who has made the payment, to the trademark owners. This should be discussed in the aforementioned meeting to be held on 30th August, 2022.

…

34. The report and the outcome of the meeting held on 30th August, 2022, along with the affidavits by the DNRs, shall be placed on record, on or before 31st August, 2022.”

4. Pursuant to the above directions, various parties made their submissions on 13th September, 2022 and certain issues were dealt with vide order dated 13th September, 2022. Vide the said order, in view of the fact some urgent steps needed to be taken for ensuring compliance by DNRs, the following directions were issued:

“13. Accordingly, the DNRs who are represented before the Court today, shall revert by tomorrow on the following aspects:

(1) Whether they have appointed Grievance Officers in terms of IT Rules 2021

(2) If they have done so, details of the said Grievance Officers including the name, designation, postal address, e-mail address and telephone numbers.

14. The above details shall be placed before the Court tomorrow. List all these matters for this specific purpose tomorrow, i.e., on 14th September, 2022 at 3:00 pm.”

5. Today, further submissions have been made by the Plaintiffs, ld. Senior Counsels and counsels representing DNRs, etc. There are various aspects on which submissions have been addressed. The same are set out below along with further directions.

Status Reports on Probe by the Delhi Police into Unlawful Collection of Monies

6. Pursuant to the direction given vide previous order dated 3rd August, 2022, to the Delhi Police, which has constituted a Special Investigation Team (SIT) to inquire into these and similar cases, status reports have been filed in the following matters:

7. Ms. Sethi, ld. ASC, has taken the Court through some status reports today. For instance, in CS (COMM) 233/2022, the Delhi Police has filed a status report to the effect that 20 complaints were received by NPCI in the name of Bajaj Finance Limited. Nine complainants have provided documents, and FIRs have also been registered. Following this, certain bank accounts have also been frozen. Most of the status reports show that monies have been collected illegally by using the brand names, marks and business names of the Plaintiffs under the garb of offering distributorships, franchisees, employment etc. The said amounts are deposited in bank accounts opened in individual names but represented as belonging to the Plaintiffs and are withdrawn almost instantaneously. The magnitude of the fraud being committed is still to be unearthed. Investigations are still continuing.

8. Submissions are still being heard by the Court as to the action taken by the Delhi Police in these matters.

9. It is directed that the investigations already continuing, shall further continue in accordance with law and the police shall take all the necessary action. By the next date, i.e., 1st December, 2022, further status reports shall be placed on record in respect of all the suits being considered in this batch and any other relevant information.

Status Report by MeitY and Meeting with Stakeholders

10. Mr. Harish V. Shankar, ld. CGSC, has filed a status report on behalf of MeitY, as was directed by the Court vide order dated 3rd August, 2022. The said report records that meetings were held on 24th and 30th August, 2022 with various stakeholders. To this end, a batch of questionnaires was prepared by MeitY and sent to the stakeholders. It is submitted that MeitY is still in the process of receiving all responses and preparing its recommendations.

11. The said questionnaires have been compiled, along with some of the responses received and placed on record by MeitY. As per the said status report, post the order dated 3rd August, 2022, the following developments have taken place:

“a) To address the key issues ascertained under Para-No.10 to 15 and 31, on 3rd of August, 2022, the Hon'ble Court directed MeITY and DoT to conduct a meeting in MeITY premises.

b) On 21.08.2022, MeITY communicated the questionnaire to all stakeholders and invited them to attend the pre-meeting on 24.8.2022 and the final meeting on 30.8.2022 respectively. A copy of the questionnaire is DOCUMENT D3-A(Colly).

c) On 21.08.2022 & 25.08.2022, MeITY prepared responsive information to the questions posed to ICANN. A copy of the same is DOCUMENT D3-B.

d) On 24.08.2022, MeITY conducted a pre-meeting with the relevant stakeholders including ICANN in which MeITY discussed the key issues of subject matter. In due course of time, MeITY received response from various stakeholders such as Delhi Police, CERT-IN and Domain Name Registrars.

e) On 30.08.2022, MeITY conducted the final meeting and based on the inputs received, discussed the key issues and recommendations to be submitted before Hon’ble High Court and the same were forwarded for conveying to this Hon’ble Court.

f) The Action Taken Report and the outcome of the meeting alongwith all relevant documents are DOCUMENT D3-C(COLLY).”

12. Basis the above report, this Court notes that the participants in the meeting dated 30th August, 2022, included MEITY, NIXI, DoT, Cert-IN, IFSO, Delhi Police, ICANN, NPCI and some DNRs. The status report has also annexed the responses received from the Cyber Law and E-Security division, MeitY, Digital Economy and Digital Payments Division, ICANN, NIXI, NPCI and Delhi Police, DoT, to the questionnaires provided by MEITY. The office of the CGPDTM is yet to reply. The said office shall also provide its response to MeitY by 30th September, 2022.

13. Insofar as DNRs are concerned, the questionnaires appear to have been sent to 25 DNRs, out of which, only two DNRs have responded namely, Hiox LLC, and Newfold Digital.

14. Insofar as the remaining DNRs are concerned, some of them are represented before this Court today. Any further DNRs who now wish to send responses to MeitY, including Hosting Concepts BV, Public Domain Registry (PDR), Endurance International, Bigrock, and GoDaddy LLC, as also any other DNRs, shall have the opportunity to do so by 30th September, 2022. The DNRs may also provide copies of their affidavits, filed before this Court, if they wish the same to be considered by MeitY, to Mr. Harish V. Shankar, ld. CGSC, so that the same can be passed on to the concerned authorities. Additionally, the DNRs who wish to participate in the said meetings with MeitY, are permitted to do so. The details of the said meetings shall also be obtained from the ld. CGSC Mr. Harish Vaidyanathan, if any of the parties wish to give their inputs.

15. Considering the status report filed today and the submissions made, it is directed that the deliberations which are currently underway, shall continue. All the stakeholders to whom questionnaires have been sent and any other stakeholders who wish to give their comments and responses to MeitY are permitted to do so by 30th September, 2022. The responses may be sent to the officer at the email address provided below:

"Name: Sh. Pradeep Kumar Verma, Scientist D,

Address: Ministry of Electronics and Information Technology,

Electronics Niketan, 6, C.G.O. Complex, New Delhi-110003.

Email ID: Pradeep.verma@meity.gov.in."

16. Pursuant to these meetings, MeitY shall file recommendations in respect of the aspects contained in paragraph 31 of the order dated 3rd August, 2022, as extracted above. Along with the recommendations, the questionnaires sent and responses received from all parties shall be compiled and placed on record by MeitY in all these connected matters, by 1st December, 2022.

Submissions with respect to Mismatch of Payment Details

17. At this stage, ld. Counsels for the Plaintiffs have also brought to the notice of the Court that whenever payments for purchase of domain names are accepted, there is frequently a mismatch between the name of the account holder of the bank account in the bank records, and the name given in the billing details at the time of purchase using the same bank account. There is currently no verification to check that the name of the account holder is the same as the name entered at the time of purchase.

For e.g., if the bank account is in the name of Mr. XXXX and the billing detail is given as M/s. Dabur, the said mismatch is not checked and only the account number is verified.

18. Ld. Counsels seek directions as to whether this issue can be resolved in some manner, so that the impostors would be unable to mislead people by representing themselves as being the owners of the Plaintiffs’ brands or businesses.

19. Let this issue be considered in the meetings to be held by MeitY with the stakeholders. NPCI shall also give its views, so that the same can be captured in the recommendations.

Submissions of DNRs with respect to Grievance Officers and Grievance Redressal Mechanisms

20. Pursuant to the directions passed in paragraphs 31-33 of the previous order dated 3rd August, 2022 and in the previous order dated 13th September, 2022, various DNRs have made submissions today as to their grievance officers and their mechanisms for implementation of Court orders in cases of infringing and fraudulent domain names/websites.

A. Submissions on behalf of Newfold LLC and its Group Entities

21. Mr. Dayan Krishnan, ld. Senior Counsel, appears on behalf of the following six DNRs:

• Endurance Domains Technology LLP (Defendant No.2);
• BigRock Solutions Ltd. (Defendant No.3);
• PublicDomainRegistry.com (Defendant No.4);
• Domainshype.com, LLC (Defendant No.23);
• DomainAdministration.com, LLC (Defendant No.26); and
• FastDomain Inc. (Defendant No.31).

(hereinafter collectively “Newfold Group”).

22. With regard to the issue of grievance officers, he submits that as per the instructions which he could obtain at short notice, a common grievance officer has been appointed by all these five DNRs. The individual who is the Grievance Officer is Mr. Prabhat Kamat. The email details of the said Grievance Officer, for each entity, are as under:

23. In so far as the grievance redressal mechanism is concerned, Mr. Krishnan submits that the Newfold Group is in compliance with Rule 3(2)(a) of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 (hereinafter “IT Rules 2021”), as whenever any complaint is made by any user or victim, the acknowledgment is issued to said user/victim, within 24 hours and the complaint is disposed of within 15 days from the date of its receipt. He further submits that if any order is issued by any Court of competent jurisdiction or any order, notice or direction is issued by a governmental or competent authority, the same would be complied with in terms of the Rules 2021. Similarly, if any order granting injunction or directions with respect to infringing domain names or other orders with respect to infringing domain names are passed by this Court or any Court of law, the Grievance Officer would facilitate giving effect to such orders and ensure that the same are complied with, upon receiving a communication at the email addresses set out above. Mr. Krishnan however, submits that considering the time differences and the fact that some coordination may be required for such compliance across different offices of the DNRs, reasonable time of 48 to 72 hours maybe afforded for the purposes of the said compliance.

24. These submissions on behalf of the Newfold Group are recorded and the Newfold Group shall be bound by the same, in all matters where infringing domain names are involved. If the said Grievance Officer is changed in the future, such change shall also be notified by prominently publishing it the websites of each of the entities of the Newfold Group.

B. Submissions on behalf of GoDaddy LLC

25. Insofar as GoDaddy LLC (hereinafter “GoDaddy”) is concerned, Mr. Darpan Wadhwa, ld. Senior Counsel, submits that they are unable to obtain instructions as to whether any grievance officer has been appointed in terms of Rule 3 of the Rules, 2021. It is however submitted that from a perusal of the website, there is one grievance officer by the name Mr. Karen Gaydos, with the following address and e-mail:

Address: 2155 E GoDaddy Way,

Tempe AZ 85284

E-mail: grievanceofficer@godaddy.com.

26. It is submitted that the said individual could be functioning as the Grievance Officer under the Rules, 2021. He seeks further time to seek confirmation in this regard.

27. At this stage, ld. Counsels for the Plaintiffs have brought to the attention of this Court various problems with compliance of previous injunction/suspension orders and orders seeking details of registrants, where GoDaddy’s current mechanism for reporting grievances has not been responsive or failed to comply with Court orders in time. By way of illustration, the Court’s attention has been drawn to:

(i) CS(COMM) 154/2021 titled Godrej Properties Ltd. v. Ashok Kumar & Anr.:

• In this suit concerning the mark ‘GODREJ PROPERTIES’, vide order dated 18th July, 2022 read with order dated 14th March, 2022, various domain names which were brought to the notice of the said DNR are yet to be taken down. The operative portion of the order dated 14th March, 2022, reads as under:

“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 Plaintiff’s 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.godaddy.com/AbuseReport), 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 Plaintiff’s 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.

3. Additionally, Mr. Mehta, learned Senior Counsel appearing on behalf of the Plaintiff, during the course of hearing, has handed over a list of domain names, in respect of which, he submits that injunction orders are already operating and therefore Defendant No.2 be directed to disclose directly to the Plaintiff, various details of these registrant(s) to enable the Plaintiff to implead them as parties. List has been handed over to Mr. Darpan Wadhwa.

4. I find merit in the submissions made by Mr. Mehta. Accordingly, Defendant No.2 is directed to disclose to the Plaintiff whatever details of the registrant(s), as enumerated in the list, are available with Defendant No.2, within a period of two weeks from today, for the purpose of impleadment alone. ”

• Thereafter, vide order dated 18th July, 2022, this Court further directed as under:

“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.

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. ”

• In this regard, Mr. Wadhwa, ld. Sr. Counsel, submits that the said orders do not specifically require GoDaddy to provide details of registrants in case of impugned domain names supplied by further affidavit by the Plaintiffs. He submits that the directions in respect of such domain names were only limited to their suspension.
• A perusal of the above orders shows that these submissions have been recorded clearly in the order dated 18th July, 2022 as well. Moreover, GoDaddy was directed to file an affidavit which has still not been filed despite almost eight weeks having passed by.

(ii) CS(COMM) 95/2021 titled The Himalaya Drug Company & Ors. v. Ashok Kumar & Ors.:

• In this suit concerning the mark ‘HIMALAYA’ and related marks, ld. Counsel for the Plaintiff draws attention to the order dated 18th February, 2022, where the following directions were issued:

“12. Though this application is not listed today, it has been taken up qua the prayer in the application, seeking interrogatories, from Defendant 16, in the form of true and correct name, address, contact information of the person(s) who are the registrants of the domain names www.himalayapharmacy.in, www.himalayawelness.in, www.himalayadistributor.in, www.himalayafranchise.org.in and www.masterfranchise.org.in.

13. Defendant 16 is directed to provide, to the plaintiff, the aforesaid details in respect of any of the said domain names which are registered with Defendant 16.”

• It is the Plaintiff’s contention that the details of registrants of two of the domain names i.e. www.himalayapharmacy.in and www.himalayawelness.in., have not been provided till date.
• At this stage, Mr. Khan, ld. Counsel on behalf of GoDaddy, submits that the two domain names which the Plaintiffs claim to not have received registrant details for, are not registered by GoDaddy in the first place. This has in fact, been pleaded in paragraph 53(c) of the plaint.
• Ld. Counsel for the Plaintiff to communicate by way of email, to counsel for GoDaddy as to whether any compliances are to be made or if any further details are to be given. If so, the same shall be provided by GoDaddy, within a week, after receipt of the said email.

(iii) CS(COMM) 475/2022 titled Fashnear Technologies v. Meesho Online Shopping Pvt. Ltd.:

• In this suit concerning the Plaintiffs’ mark ‘MEESHO’, and its related marks, it is submitted that the Court’s direction has not been complied with. The following directions were issued vide order dated 20th July, 2022;

“4. In the meantime, all the three fake online marketplaces with the infringing domain names being ‘www.meeshogift.in’, ‘www.meeshogift.com’ and ‘www.meeshoonlineluckydraw.in’ are restrained from operating and shall remain suspended or deactivated by the Domain Name Registrar (“DNR”). The Defendant No.19 - Department of Telecommunications (DoT) and Defendant No.20 – Ministry of Electronics and Information Technology (MEITY) shall issue blocking orders for the said three domain names, till further orders of this Court. All the Internet Service Providers (ISPs) shall also give effect to these directions, within 24 hours.

5. The contact details of the persons, who have registered domain names shall be handed over to ld. Counsel for the Plaintiff by the DNR - GoDaddy and other Registrars. Upon the details of the registrants of these domain names being made available to ld. Counsel for the Plaintiff, the same shall be supplied to Ms. Sethi and Mr. Lamba, so that they can carry out further investigation into the matter. All the concerned banks shall further ensure that the bank accounts connected to the said three domain names are frozen and blocked.

6. The DNRs will also inform the Plaintiff, if the said domain names have availed of any other services of the DNR such as cloud server, website development and hosting services. If so, the details used for making any payments such as credit card details, bank accounts details and any IP address of such persons who have registered the said domain names for availing the said services, shall also be provided to ld. Counsel for the Plaintiff. After collecting said details, the ld. Counsel for the Plaintiff shall forward the same to Ms. Sethi and Mr. Lamba.

7. The DNRs shall further ensure that no other fake websites/domain names containing the mark/name ‘MEESHO’ is registered by them. If the Plaintiff gives notice of any other infringing websites, the DNRs shall deactivate the said website/domain name, within 48 hours.

8. Ld. Counsel for the Plaintiff shall file an affidavit giving the details of such websites after submitting the same to the DNR. If any domain names, which are brought to the notice of the DNR, are not deactivated, an explanation shall be provided by the DNR to the Plaintiff as to why the said domain names were not deactivated, and the Plaintiff shall be at liberty to move an application before the Court in this regard.”

• It is submitted by Mr. Chopra, ld. Counsel for the Plaintiffs, that qua the domain names mentioned in the subsequent affidavits filed by the Plaintiffs, the details of the registrants have not been provided by GoDaddy. In respect of the said domain names, an email dated 4th September, 2022, sent on behalf of GoDaddy, has been received by the Plaintiff. The said email reads as under:

“Dear Vivek,

As informed by our client, GoDaddy.com LLC, the following domain names which had been registered through it, have been locked and suspended.

1. meesholuckydraw.in

2. meeshouluckydrawcenter.com

3. meesholuckydraws.com

4. meeshouluckydrawwinnername.com

5. meeshoprizedepartment.in

6. meeshostore.shop

7. meeshowinnernamelist.com

8. meeshowinnerslist.com

9. meeshoseller.com

10. meeshoshopping.com

GoDaddy would be able to provide corresponding registrant details upon specific directions being passed by Court afore-mentioned domain names.

Thanks and regards,

Shweta. ”

• In response to the Plaintiff's submissions, Mr. Wadhwa, ld. Sr. Counsel, submits that the direction does not apply in respect of further affidavits which contain additional impugned domain names, as filed by the Plaintiffs. He submits that once the orders are passed for each of the domain names, the orders can be implemented, and such orders have been implemented in the past.
• A perusal of the order dated 20th July, 2022 clearly shows that the impugned domain names had to be suspended/blocked, and the details of the registrants had to be provided by the DNRs, to the Plaintiffs. Considering that the injunction granted is a dynamic injunction, it is clear that if there is any further affidavit is filed for suspension of additional DNRs, the said domain names must also be deactivated/suspended/locked. If this is not done, the concerned DNR has to provide a reason for the same. In any event, the Court has seen various domain names in the list of additional impugned domain names, qua which are clearly infringing and action is yet to be taken by GoDaddy on such domain names. The said impugned domain names are as under:

• In respect of the above domain names, it is directed that they shall be blocked/suspended and locked, and status quo shall be maintained qua them, failing which action in accordance with law, would be liable to be taken. Further, all details as captured in the order dated 20th July, 2022 above, available relating to the registrants of these domain names with GoDaddy, shall be provided to counsel for the Plaintiff within a week. The same shall also be filed before this Court along with an affidavit.

(iv) CS(COMM) 524/2022 titled Bombinate Technologies Private Limited v. KOO COIN & Ors.:

• In this suit concerning ‘KOO’, which is also pending before this Court though not listed today, it is submitted that GoDaddy is yet to give effect to the directions passed by this Court vide order dated 1st August, 2022. The directions issued vide the said order read as under:

“23. The DNR-Go Daddy LLC, is also represented before this Court today. GoDaddy LLC is directed to disclose to the Plaintiff the details of the registrants of these domain names, as also any billing information, subscribers’ information, and any other information which may be available. This information be provided by ld. Counsel for GoDaddy LLC within 48 hours. An affidavit shall be filed by GoDaddy LLC before the Court, stating as to whether it is a customer of the Defendant No.1’s website. If any other services are being provided by GoDaddy LLC to these three networks, details of the same shall also be stated in the said affidavit.

24. Further, the URLs as mentioned in Annexure A and B of the Plaint, shall also be blocked by MEITY, as also the ISPs.”

• Thereafter, the Court issued the following directions vide order dated 24th August, 2022:

“3. On the said date, Ms. Shweta Sahu, ld. Counsel had appeared but had not received instructions from her client. It is submitted by Ms. Sahu that they have not yet been engaged in this matter. Ms. Shweta Sahu, ld. Counsel submits that since the counsel had not been engaged in this matter by GoDaddy, the order dated 1st August, 2022 was not communicated to GoDaddy.

4. However, ld. Counsel for the Plaintiff submits that the copy of the order was e-mailed to GoDaddy on 8th August, 2022 and 17th August, 2022 by her office. An advance copy of this application is also been stated to have been served by e-mail to GoDaddy on 22nd August, 2022 and the automatic reply of the same is stated to have been received showing that the same has been duly sent at legal@godaddy.com and has been delivered.

5. Ms. Majumdar, ld. Counsel for the Plaintiff submits that GoDaddy has an office in India at Gurgaon. The contact details are set out below:

GoDaddy India Web Services Private Limited

003, Tower 4A, DLF Corporate Park,

MG Road Gurgaon – 122002

Email: legal@godaddy.com”

• However, ld. Counsel for the Plaintiffs submits that till date, no action has been taken by GoDaddy, and in fact the Plaintiffs have filed a contempt petition in the said case.

(v) CS(COMM) 584/2022 titled Organo Gold Holdings Limited v. Origano Gold Private Limited & Ors.:

• In this case pending before the Coordinate Bench of the IP Division, concerning the mark ‘ORGANO GOLD’, despite the injunction order having been passed on 26th August, 2022, the impugned domain name is yet to be taken down. The said order of the Co-ordinate Bench dated 26th August, 2022, reads as under:

“15. Having considered the submissions made by the learned counsel for the plaintiff, perused the plaint and the documents filed therewith, I am of opinion that plaintiff has been able to make out a good prima facie case in it favour. The balance of convenience is also in favour of the plaintiff and against the defendants. The plaintiff and the general public are likely to suffer irreparable injury in case an ad interim injunction, as prayed for, is not granted. The mark depicted by the defendants is almost identical to that of the plaintiff’s. The goods in questions are also similar. The plaintiff is the registered proprietor of the mark and is therefore, statutorily entitled to protection thereof.

16. Accordingly, an ex parte ad interim injunction in terms of prayer made in paragraph 12 of the application is granted in favour of the plaintiff and against the defendants, till further orders.”

• The email sent by the Plaintiff intimating GoDaddy of the order dated 26th August, 2022 along with the impugned domain names as per their application, has also been sent to M/s GoDaddy vide emails dated 27th August, 2022, 31st August, 2022, 5th September, 2022 and 7th September, 2022. Such emails are stated to have been sent to various email addresses of GoDaddy, i.e., legal@godaddy.com, HQ@Godaddy.com, Courtdisputes@godaddy.com. It is the submission of ld. Counsel for the Plaintiffs that till date, the domain name - www.origanogold.com (listed in para 12 of their application) and the website is still active.
• The Court has accessed the said domain name during the course of the hearing today and finds that the same is still active. Mr. Wadhwa, ld. Senior Counsel, submits that he has no instructions in this regard.

C. Submissions on behalf of Hosting Concepts B.V.

28. Ms. Kritika, ld. Counsel appearing for Hosting Concepts B.V, submits that there is a grievance cell manned by a number of individuals, who operate between 4:30 am to 6:00 pm Central European Time. There is also an abuse email address provided on the website. However, there is no Grievance Officer as of now, as directed under the Rules, 2021. Similar directions as that passed for GoDaddy today shall be extended to Hosting Concepts B.V as well, inasmuch as a Grievance Officer must be appointed in consonance with the Rules, 2021, by 20th September, 2022. Further, the name and contact details of the Grievance Officer shall be prominently displayed and accessible on the website of Hosting Concepts B.V.

D. Submissions on behalf of Google LLC

29. Mr. Aditya Gupta, ld. Counsel appearing for Google LLC, one of the DNRs, submits that insofar as Google is concerned, the details of the Grievance Officer are prominently published on the website and are as under:

“1. Legal Requests related to Content Removal

If you see content on a Google product that you believe violates applicable local laws or your rights, you can submit your request for removal or disabling of any specific content from Google services by filling up the appropriate webforms below ("Grievance Redressal Mechanism"):

For all Google products other than YouTube: Use the webform here where you can submit a removal request for different legal issues including submission of a court order that you may have obtained in your favor. This troubleshooter can be used for all relevant Google products and services (except YouTube).

For YouTube: Use the dedicated YouTube Help Center here where you can submit a removal request for different legal issues, including submission of a court order that you may have obtained in your favour.

These are dedicated reporting mechanisms for content removal. Submitting your request using the above reporting mechanisms ensures that your request reaches the relevant support team directly for their review. Providing complete information through these dedicated reporting mechanisms (including a valid court order, if relevant) will help us process your request expeditiously. Please note that if you submit your request using any other means (eg. emails, faxes, physical mail etc), it will take us longer to get to your request and to review it.

3. Service of Summons or notices to Google LLC in India

If you would like to serve any summons or notices in civil proceedings against Google LLC in India, the below email ID and address can be used. Please use the options for reporting content for removal as listed in Section 1 above instead if you are not serving any summons or notices in civil proceedings.

Google LLC

attn: Paul Nicholas

1600 Amphitheatre Parkway

Mountain View, CA 94043

USA

E-Mail:support-in@google.com. ”

30. This stand of Google is taken on record.

31. This Court has been hearing these DNR matters from time to time and several orders have been passed directing such DNRs to suspend/block infringing domain names and also provide registrant details. Further orders seeking inputs by DNRs as to their Grievance Officer and a mechanism to promptly ensure compliance with such orders have been passed.

32. However, insofar as GoDaddy is concerned, there is no clarity as to their position as on date. Clearly, there is no mechanism for enforcement of the Court’s orders, as there seems to be no individual, who can be contacted through email or phone, for the purpose of giving effect to the orders passed by the Court. It is noted that Mr. Wadhwa has sought further time to verify the same.

33. As last and final opportunity, this Court permits GoDaddy, to appoint/inform the Court of the requisite Grievance Officers, latest by 20th September, 2022, in accordance with the Rules, 2021, and notify the same prominently on their websites, making the details of the Grievance Officers easily accessible in India. Upon failing to do so, MeitY and DoT are free to proceed against GoDaddy, in accordance with law. If GoDaddy is in compliance with the Rules, 2021 by 20th September, 2022 and appoints a Grievance Officer, it is permitted to move an application seeking modification of today’s order.

34. Insofar as those DNRs which have appointed Grievance Officers are concerned, including Newfold Group and Google, it is made clear that they ought to function in accordance with law including the Rules, 2021. In such cases, Plaintiffs are permitted to make advance service in cases relating to domain names registered with the said DNRs to the Grievance Officers through the contact details of the grievance officers. It would then be expected in such cases, that the said DNRs would enter appearance or facilitate the compliance and give effect to the orders or directions passed by Courts.

35. No other DNRs have made any submissions before this Court today. MeitY is directed to look into the issue of appointment of Grievance Officers by the other DNRs who are parties in these suits. The said list of DNRs is as under:

36. If the said DNRs have not appointed Grievance Officers, one week’s time shall be given to them for making the appointments in accordance with the Rules, 2021. If the said compliance is not made by DNRs, MeitY is free to proceed in accordance with law against such DNRs who are offering their domain name registration, hosting and related services in India, without complying with the local laws. A status report be put up by MeitY by the next date, on this aspect including the steps taken by MeitY pursuant to the directions contained above.

37. List for further submissions in all connected matters, on 1st December, 2022.

38. Interim orders, wherever granted, to continue.

39. The original signed copy of this order shall be placed in the lead matter being CS(COMM) 135/2022 titled Dabur India vs. Ashok Kumar, and in all other suits, the digitally signed copies shall be placed.

40. These shall be treated as part-heard matters.