IP infringement, John Doe orders and privacy protect features for domain names
01 May 2022
In March, the Delhi High Court passed a John Doe order, also called the Ashok Kumar order in India, against the Defendants in the case of Dabur India Limited v. Ashok Kumar & Ors.1.
A John Doe order is passed when the violator’s identity is unknown. In this case, the Defendants cannot be identified, with nary an information found on domain name database www.whois.com.
The Defendants committed trademark infringement against Dabur India Limited, a major player in India’s manufacturing industry which has been operating since 1884. The Defendants infringed Dabur India’s intellectual property rights using websites and domain names bearing the latter’s well-known trademark “DABUR.” Among these are the sites https://www.daburdistributor.com and https://www.distributorships.com which also include terms like ©2021 Dabur Distributor and ©2020 Dabur Distributor. The identity of the domain name registrants are protected using privacy protect features.
The sites show Dabur’s products which include pharmaceuticals, toiletries and food items. Said websites are also used as registration and payment channels for parties wishing to be authorized dealers and franchisees of Dabur.
The company filed the trademark infringement suit on the grounds of passing off and unfair competition. Likewise, it cited the Defendant’s copyright infringement of its labels and product packaging.
“The Court strongly pointed out the gravity of violations through such domains and noted that the registrants thereof were in fact attempting to ‘completely impersonate’ Dabur and not merely infringing or committing actions of passing off,” said Aditi Verma Thakur, senior partner at Ediplis Counsels in Bengaluru.
Under the John Doe order, the Defendant is prohibited from engaging in IP infringement against the Plaintiff using its websites. The Order also called for the blocking of these sites.
In its decision, the Delhi High Court noted that the disabling of privacy protect features may be important in getting the domain name registrant’s name on the domain name database and other databases.
According to Ranjan Narula, managing partner at RNA in Gurgaon, there are two aspects of privacy protect features in connection with domain names. One is when a genuine domain name registrant wants to conceal his identity to protect his privacy. The other involves a cyber squatter who registers a domain name by providing incorrect or incomplete details and then masks his identity. Thus, if the domain names and websites are created to commit fraud, it is difficult to track them even with a court order.
“Therefore, my view is, even if privacy protect feature is to be continued, the domain registrars should ask for identification documents of the company or person before registering the domain name. This will help to enforce court orders and also curb this practice of creating domain names using well-known marks and giving the impression to consumers and traders that the domain holder has a connection with the brand,” said Narula.
“The privacy protect feature is actually not relevant when it comes to taking action against an infringing domain owner whose identity has been masked by a privacy protect feature,” Thakur added. “Even if the identity of the infringer is not available, it is possible to initiate domain name dispute resolution complaints with WIPO and .IN Registry as well as civil suits for infringement and passing off before courts in India, and relevant reliefs are granted.”
What are the implications of this case to IP and privacy laws in India?
“In my view, the balance has to be drawn between protecting privacy and IP rights,” said Narula. “The privacy law should not be used by the parties as a refuge to commit fraud or pursue illegal activities. The privacy laws in India are still to be formally codified. The Bill in this regard is pending before the parliament. However, many companies are following the General Data Protection Regulation (GDPR) given their business and connections with Europe. Therefore, in that context, the companies that store data outside India - servers located outside India - will find it difficult to implement court directions if they are contrary to GDPR regulations,“ he explained.
Granting John Doe orders in cases where the defendant is unidentifiable and the IP infringing activity is widespread is common in India. Often, John Doe orders are issued in cases involving movie piracy and sports event telecasts where many websites offer torrents to illegally download the movies or illegally telecast an event.
Espie Angelica A. de Leon