Star India Pvt. Ltd. & Anr. vs Oxibuzz.Com & Ors.

I.A. 2285/2024 in CS(COMM) 250/2020

“2.

The present suit has been filed by the Plaintiff No.1 -Star India Pvt. Ltd. and Plaintiff No.2 - Novi Digital Entertainment Pvt. Ltd. seeking permanent injunction restraining the Defendant No. 1-74 from hosting, streaming or communicating, in any manner the Plaintiffs’ cinematograph film ‘Dil Bechara’.

3.

The Plaintiff No.1 claims to enjoy exclusive rights in respect of the said cinematograph film. The same was scheduled to be released on the platform of Plaintiff No.2 i.e. DISNEY+ HOTSTAR on 24th July, 2020. There was an apprehension at the time when the suit was filed that the said film could be illegally and unlawfully broadcasted on various rogue websites. Accordingly, the following parties were arrayed as Defendants in the suit:

i)

Defendant Nos.1 to 74 - are rogue websites.

ii) Defendant Nos. 75 & 76 - Domain Name Registrars (DNRs)

iii) Defendant Nos. 77 to 85 - Internet Service Providers (ISPs)

iv) Defendant Nos. 86 - Department of Telecommunications (DoT)

v)

Defendant Nos. 87 - the Ministry of Electronics and Information Technology (MEITY)

vi) Defendant Nos. 88 - Ashok Kumar

4.

Accordingly, this Court had granted injunction vide order dated 13th July, 2020 and directed DoT and MeitY to block the access to the said rogue websites. The operative portion of the said order is set out below: […]

5.

Pursuant to the said order of injunction, MeitY and DoT have already blocked the said rogue websites and the DNRs had also locked and suspended the respective domain names. The ISPs have also ensured that the blocking orders are implemented.

6.

Today, ld. Counsel for the Plaintiff confirms that in addition to Defendant No.75 – Godaddy LLC, Defendant No.76 – PDR Ltd. had also suspended the domain names/websites.

7.

In the present case, all the websites were served but there is no appearance for any of the parties. Further, order dated 21st September, 2021also records that service has been completed in this matter. In view of the fact that service is complete and there is no contest, the suit is decreed in terms of paragraph 62(i) and (ii) of the plaint.

8.

Insofar as the DNRs are concerned, whichever websites are within their control they shall continue to remain blocked and suspended. The DNRs shall not be charged any amounts for the suspension of these domain names, inasmuch as the same has been directed to be blocked and suspended under orders of this Court.

9.

Insofar as Dot and MeitY are concerned, they shall make the blocking orders operate permanent against these rogue websites. The ISPs shall give effect to such blocking orders.

10.

No further reliefs are pressed for.

11.

Decree sheet be drawn accordingly. All pending applications are disposed of.”

“(A) Directions to DNRs and Registry Operators

(i)

The DNRs and Registry Operators shall, henceforth, not resort to masking of details of the registrants, administrative contact and technical contact on a default basis as an ‘opt-out’ system. At the time of registration of the domain names, a specific option shall be provided for the Registrant and it is only if the said Registrant chooses for privacy protection, that the said service shall be offered as a value added service upon payment of additional charges. The additional charges shall not be made a part of the default package for registration of domain names.

(ii)

Whenever any entity or individual having legitimate interest, law enforcement agencies (LEAs) or the Courts, request for disclosure of data relating to any infringing or unlawful domain name, the following data shall be disclosed by the concerned DNR as soon as possible but not later than 72 hours in terms of the Intermediaries Guidelines 2021:

(a)

Name of the Registrant;

(b)

Administrative contact;

(c)

Technical contact;

(d)

Addresses of the above mentioned persons/entities;

(e)

Mobile numbers of the above mentioned persons/entities;

(f)

Email address of the above mentioned persons/entities;

(g)

Any payment related information such as details of credit card, debit card, UPI number, payment platform identities, bank account details, etc., which may be available with the DNR;

(h)

Details of any value added services such as hosting of website, brokerage, or any other services offered by the DNR or by Registry concerned.

(iii)

If any particular domain name is restrained by an order of injunction or has been found to be used for illegitimate and unlawful purposes, the said domain name shall remain permanently blocked and shall not be put in a common pool in order to disable re-registration of the same very domain name by other DNRs. The appropriate steps in this regard shall be taken by the concerned Registry Operator to ensure that all DNRs having an agreement uniformly give effect to the said direction.

(iv)

In the case of trademarks/brands, which are well-known or are invented, arbitrary or fanciful marks, which have attained reputation/goodwill in India, if a Court of Law directs that there would be an injunction on making available the infringing domain name with different extensions or mirror/redirect/alphanumeric variations, the same shall be given effect to by the DNRs and no alternate domain name shall be made available in respect of such brands and marks.

(v)

Upon an injunction being issued by the Court in respect of any domain name and the same being communicated to the DNRs, the DNRs shall ensure that no alternative domain name is promoted or being suggested to a prospective Registrant. Any promotion of alternative domain names of an injuncted domain name would disentitle the concerned DNR for safe harbour protection under Section 79 of the IT Act.

(vi)

In respect of descriptive and generic marks, the restraining/injunction orders would be qua the specific domain name and any extension of restraining/injunction order for other infringing domain names would be with the intervention of the Joint Registrar before whom the application under Order I Rule 10 of Code of Civil Procedure, 1908 along with affidavit shall be filed and the injunction would be extended. Where any party is aggrieved by the order of the Joint Registrar, the application may be moved or placed before the ld. Single Judge.

(vii)

Upon orders being passed by a Court, the infringing domain name shall be transferred to the Plaintiff/trademark owner/brand owner, upon payment of usual charges.

(viii)

Search engines and DNRs shall not provide any promotion or marketing or optimization services to infringing and unlawful domain names.

(ix)

All DNRs offering services in India shall appoint Grievance Officers within a period of one month from today failing which they would be held as non-compliant DNRs.

(x)

Service by email to the respective Grievance Officer’s details would be henceforth sufficient service for Court orders and any DNRs who insist upon services through MLAT or through other modes of services shall be held to be non-compliant DNRs.

(xi)

In appropriate cases where an entity has repeatedly not complied with orders of the Court, and in the opinion of the Court it is a case where the interest of society at large is being adversely affected, such as cases of frauds, the Court may direct the appropriate authority to block access to the said entity under Section 69A of the Information Technology Act, 2000 read with Information Technology (Procedure and Safeguard for Blocking for Access of Information by Public) Rules, 2009.

(xii)

All Registry Operators having valid agreements with ICANN shall take appropriate steps to implement the Trademark Clearing House services and make the same available to all brand owners & registered proprietors of trade marks.

(xiii)

All DNRs offering services in India or to customers in India shall undertake verification of Registrant's details at the time of registration and periodic verification of the same. The verification shall be done in terms of KYC requirements mentioned in Circular No. 20(3)/2022-CERT-In dated 28^th April, 2022 issued by Indian Computer Emergency Response Team. This is in line with the NIXI Accreditation Agreement.

(xiv)

All DNRs who are enabling registration of domain names which are administered by NIXI as a Registry Operator shall comply and provide requisite registration data to NIXI within one month of this judgment and also update the same on a monthly basis.

(B) Directions to the Government

(xv)

The following directions are issued to MeitY, MHA and other relevant Government authorities:

(a)

The Government shall hold a stake holder consultation with all DNRs and Registry Operators offering services in India and explore the possibility of putting in place a framework similar to the one used by NIXI by all DNRs for the purpose of domain name registration.

(b)

Consider nomination of a nodal agency such as NIXI as the data repository agency for India with which all the Registry Operators and the DNRs would maintain details related to Registrants on a periodic basis so that the said details are made available to the Courts, LEAs and the governmental authorities for the purpose of enforcement of orders of Courts and for preventing misuse. Alternatively, DNRs shall be directed to localize the data in India for easy access. Irrespective of the decision, it is made clear that processing of personal information would be strictly in terms of the DPDP Act and applicable Rules.

(c)

In case of a DNR or Registry Operator, which does not comply with the orders of the Courts or with request from LEAs, the offering of services of such DNRs or Registry Operator be blocked by MeitY and DoT under Section 69A of the Information Technology Act, 2000 read with Information Technology (Procedure and Safeguard for Blocking for Access of Information by Public) Rules, 2009.

(d)

MeitY along with NIXI shall coordinate with ICANN to enable brand owners in India to avail of TMCH facilities on reasonable terms and conditions so that they can receive notifications whenever any conflicting /infringing domain names are proposed to be registered by any third parties across the globe.

(xvi)

The CGPDTM could also consider publishing the list of well-known marks along with the official and authentic website details of the trademark owners so that if any consumer or user wishes to verify the authentic website, the same would be made possible through the website of the Intellectual Property Office. The same shall also act as sufficient notice to all potential Registrants as to the actual websites of the well-known marks/brands.

(C) Directions qua grant of ‘Dynamic +’ injunction

(xvii)

The dynamic + injunction would apply under the following circumstances:

(i)

Wherever the brand/trademark appears as it is in the domain name;

(ii)

Wherever brand/trademark appears with a prefix or suffix which could lead to confusion;

(iii)

Wherever the brand/trademark appears as an alphanumeric variation.

(xvii)

Whenever there is a legitimate Registrant who opposes the suspension of the domain name, if the same is communicated by the said Registrant to the concerned DNR, the DNR may then ask the IP owner to obtain a Court order.

(D) Directions to Banks

(xviii)

All banks shall mandatorily implement the ‘Beneficiary Bank Account Name Lookup’ facility in terms of the RBI circular dated 30^th December, 2024 for all online payments including payment by UPI through applications such as Google Pay, Paytm, etc. All banks shall also abide by the Standard Operating Procedures dated 31^st May, 2024 issued by Central Economic Intelligence Bureau for processing and responding to requests received from LEAs.”