MCDONALDS CORPORATION & ANR. vs NATIONAL INTERNET EXCHANGE OF INDIA & ORS.
$~20
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 13th October, 2023
+ CS(COMM) 324/2020, I.A. 19806/2023
MCDONALDS CORPORATION & ANR. ….. Plaintiffs
Through: Ms. Rima Majumdar & Mr. Aditya Vats Sharma, Advocates (M: 9311953435).
versus
NATIONAL INTERNET EXCHANGE
OF INDIA & ORS. ….. Defendants
Through: Mr Brijesh Kumar Tamber and Mr Yashu Rustagi Advocates, (M. 9891125411).
Ms. Shweta Sahu and Mr. Brijesh Ujjainwal Advocates for D2 ,D5 to D8 (M: 998 711 5749).
Mr. Santosh Kumar Rout, Standing Counsel with Mr. B. K. Singh, Advocate for D-13, 14 to 17, 22, 26, 27, 31.
Mr. VK Gupta and Mr. Sunil Shukla, Advs. for D-40 (M: 9582206578).
Ms. Hetu Arora Sethi, ASC GNCTD with Mr. Arjun Basra, Adv. For IFSO Spl. Cell, Delhi Police (M: 9810368590).
Mr Ravi Prakash CGSC with Ms Astu Khandelwal and Ms Usha Jamnal, Advocates (M: 8744956276).
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (oral)
1. This hearing has been done through hybrid mode.
I.A. 19806/2023 ( for revival of domain name)
2. This is an application filed by the Plaintiff seeking revival of the domain name www.westlife.co.in
3. Vide order dated 17th August, 2020, an injunction was granted restraining the Defendants from using the McDonalds, the various variations of the Golden Arches logo including the mark and McDonald’s family of trade. The different variations of the Golden arches logo are set out below:
4. The said injunction was also extended to fake and fraudulent domain names vide order dated 5th November, 2020. The relevant extract of the said order is set out below:
2. It is the case of the plaintiffs and so contended by Ms. Priya Adlakha that after passing of the orders in two applications being I.As.6950/2020 & 8230/2020, the plaintiffs have come across two more fake and fraudulent domain names viz. franchisemcindia.org and mcdonaldfranchiseindia.org having mirror websites, which are registered with defendant No.5, Godaddy.com LLC, and another entity, namely eNom, Inc., respectively. In this regard, she has drawn my attention to document Nos.l & 2 filed along with this application along with the printouts of the search result of the impugned domain name mcdonaldfranchiseindia.org and franchisemcindia.org.
3. She states that as eNom Inc is not a party in this suit, the orders passed by this Court dated August 17, 2020 and September 17, 2020 may not be binding upon it and there is reasonable apprehension that the defendants have registered or in future may register several new domain names and operate infringing and fraudulent websites thereupon to circumvent the injunction orders passed by this Court.
4. She also states that the defendants may be opening new bank accounts and collecting the amount from those accounts and it would not be practically possible for the plaintiffs to file a fresh suit complaining about each and every domain name, fraudulent websites and bank accounts or to file impleadment application every time to seeks such relief. Therefore, the plaintiffs seek the leave’ of this Court that in case the plaintiffs come across new infringing activity in relation to the cause of action pleaded in the, suit, including registration of new domain name or bank account and / or opening new bank account by the defendants / imposters to receive money, the plaintiffs be allowed to file an affidavit before this Court on the basis of the affidavit filed, the Orders passed by this Court on August 17, ,2020 and September 17, 2020 be extended to the websites and bank account(s) to serve the end of justice.
xxx xxx xxx
7. It is also made clear that subject to the plaintiffs filing an affidavit about the fake and fraudulent domain names / mirror websites, the orders dated August 17, 2020 and September 17, 2020 shall also made applicable to those domain names / websites / bank account.
5. Vide affidavit dated 26th September, 2023 the Plaintiff had inadvertently also given a domain name related to the mark WESTLIFE, i.e., www.westlife.co.in as one of the domain name to be locked and suspended by the DNR GoDaddyLLC. It is submitted by the Plaintiff that the said website is the Plaintiffs own website and not one on which injunction is sought. It is stated by the Plaintiff that `WESTLIFE is the master franchise for the operations of McDonalds Restaurants in South India and the said domain name of its franchisee was inadvertently mentioned for the purpose of blocking.
6. The Court has perused the application and the documents filed with the application including the Affidavit due to which the present application has been moved. Clearly, the word WESTLIFE or domain names with the said mark are not covered by the injunction and thus, no affidavit in respect of blocking of websites with the name WESTLIFE could have been sought from the DNR without approaching the Court. The Plaintiff is cautioned that in future only those websites which are clearly covered by the order shall be communicated to the DNRs for the purpose of blocking/locking and suspension.
7. Insofar as the website www.westlife.co.in or other variations of the mark `WESTLIFE are concerned, in view of the fact that the said domain name belongs to the Plaintiffs franchisee, there shall be no blocking/locking of the said domain name.
8. Accordingly, the suspension of the website www.westlife.co.in shall stand lifted and the website/domain name shall be restored by the DNR. The Plaintiff is cautioned that it shall strictly abide by the order which is passed and not extend the same to any other domain names which are not covered by the injunction order. Even if any websites are using the golden arches logo, the Plaintiff is permitted to move an application before the Court for seeking extension of the interim order to such website/domain name.
9. In case there is any cost that is associated with the restoration of the website, the same shall be paid by the Plaintiff to the concerned DNR. It is made clear to the DNR concerned to ensure that the restoration of the website be carried out expeditiously after the payments of costs of restoration, if any by the Plaintiff.
10. It is further clarified that if the DNRs have any objection in respect of any affidavits submitted for blocking/locking and suspending any domain name and does not wish to block it on the ground that it is not covered by the order, they may notify the Plaintiff in which case the Plaintiff may move an application before the Court.
11. Application is disposed of.
CS(COMM)-324/2020
12. List on the date fixed.
PRATHIBA M. SINGH
JUDGE
OCTOBER 13, 2023
mr/am
CS(COMM) 324/2020 Page 2 of 2