The Delhi High Court has passed a partly ex-parte ad-interim order on August 28, 2020 which was further modified on September 08, 2020 against certain defendants running deceptive websites, restraining them from the unauthorised use of the well-known trademark ‘AMUL’, as a prefix or suffix in their domain names. The defendants were also restrained from using the mark in a commercial sense such as for franchisees, distributors, jobs etc., thereby giving an impression to the public at large that they were part of the genuine websites of the plaintiffs who owned the trademark, AMUL.
In the case in focus, i.e., Gujarat Cooperative Milk Marketing Federation Ltd. & Anr v. Amul Franchise & Ors,[1] the plaintiffs filed a suit on receiving numerous complaints from across the country about fraudulent websites were impersonating and deceiving the public by creating an impression that they were the authorised representatives of the plaintiffs. The defendants included (i) the fraudulent websites; and (ii) the registrars who authorised the domain names.
The defendant-websites created an impression that they were legitimately offering services, including dealership, distributorship, franchises, and jobs, on behalf of the plaintiffs and, in turn, directed individuals to deposit money into their bank accounts.
Plaintiffs had an additional grievance against the domain name registrars who, despite having received multiple take-down notices, registered these fake websites, made them available to the public at large, and took no affirmative action against the defendant-websites. The plaintiffs also issued legal notices to the concerned banks including, State Bank of India, and Canara Bank, to freeze the bank accounts of the fake entities and provide details of the account holders, but to no avail.
The court refused to accept the defendant-domain name registrars’ contention that they were unaware of any technology which would ensure websites with the term, ‘AMUL’, would be unavailable for sale. It observed that the domain name registrars contain website filters to ensure that illegal and/or obscene words would not be available for sale.
By making out a prima facie case in its favour, providing sufficient indication of the irreparable loss that, both, the plaintiffs and public would suffer, and by fulfilling the balance of convenience test, the court granted the plaintiffs a partly ex-parte, ad-interim injunction until the next date of hearing on November 19, 2020.
The order also directed the defendant-domain name registrars to suspend/block/delete the domain names as mentioned in the plaint, excluding the plaintiffs’ two genuine, authorised and recognised domain names,[2] within 36 hours of the receipt of the Court’s order. The Court further directed that the defendant-domain name registrars be prohibited from the further sale of these banned websites and avoid registration of any domain names with the word or expression, ‘AMUL’, with or without the prefix or suffix. The relevant banks were ordered to furnish account details of the defendants, and to freeze the aforementioned defendants’ accounts[3]. Lastly, the court granted the plaintiffs leave to implead and seek necessary relief if they discovered any other website or domain name or entity which infringed the plaintiffs’ trademark ‘AMUL’ or carried out similar fraudulent and deceptive activities.
[1] CS (COMM) 350/2020 on Aug 28, 2020
[2] I.A. 7806/2020 on Sep. 8, 2020.
[3] Id.