This post is co-authored with Aditya Singh, a dear friend and a final year law student at NLSIU.
Madras HC has added a new chapter to the tale of dynamic injunctions that will have salient implications for the domain name and copyright protection regime in India. Dynamic injunctions were developed as a quick remedy enabling right-holders to directly implead infringing rogue websites (Order I Rule 10 of CPC for instance, allows for additional parties to be added to the suit), thereby extending the ambit of the injunction without having to take the judicial order route umpteen times. Later, dynamic injunction paved the way for its advanced variants like dynamic plus injunctions (protection extended to future ‘yet to be created’ copyrighted works) and superlative injunctions (see Arnav’s post for superlative injunctions).
Galaxy Health Insurance v Hostinger Operations UAB involves a situation where an unnamed defendant was holding itself out as a licensed health insurance provider using the name and details of Galaxy Health Insurance. In the first order dated 29.04.2025, the HC directed the DNR to block the infringing domain name. The order on next date(18.06.2025) restrained the domain name registrar (DNR) from registering any domain name which is deceptively similar to the domain name www[dot]galaxyhealth[dot]com till the pending adjudication of the concerned applications. This direction was further extended in the third order dated 14.07.2025. This third order restricted the DNR from putting up for sale or registering “any domain name comprising ‘Galaxy Health’ or any name phonetically similar thereto” ,if the concerned applicant has an Indian business address. In this post, we discuss the reasoning employed in the three orders and highlight certain issues with them. Nevertheless, we also argue for the provision of such a pre-emptive remedy in a restricted set of situations, which is for well-known marks, for reasons we elaborate below.
Dissecting the Instant Case:
On the reasoning front, the Court just notes that in the absence of such an injunctive relief, public interest would be adversely impacted if unauthorized individuals are allowed to undertake fraudulent activities in the health insurance sector. However, Galaxy Health Insurance was concerned with the usage of the vague term ‘deceptively similar’ in the second order issued and therefore asked for a modification of the relief. And the Court took notice of it and observed that the use of ‘Galaxy Health’ or any other name which is phonetically similar would be construed as likely to cause confusion or deception. This is how the modified phraseology in the third order (noted above) came to be.
Pre-Existing Jurisprudence:
Madras HC’s order however is not the first instance Courts have encountered the request for such a pre-emptive recourse. The pre-existing jurisprudence by the Bombay HC in GoDaddy.Com v Bundl Technologies (“Swiggy”) and the Delhi HC in Snapdeal v GoDaddy (“Snapdeal”) have been in contrast to Galaxy Health, where both the forums rejected the prayer for such omnibus injunctions. In Snapdeal, the DHC conceded that blocking of domain names is technologically feasible. It also denied safe harbour to the DNR under Section 79A, IT Act, stating that it is a DNR’s duty to prevent IP infringement. Moreover, it also observed that allocating a domain name that infringes a trademark constitutes ‘use’ on part of the DNR. Nevertheless, it denied a permanent injunction blocking the ‘SNAPDEAL’ keyword as that would amount to the assumption that any domain application containing the said keyword in their domain name is likely to infringe the trademark. An in futuro (i.e., the injunction will operate for future actions of infringement) omnibus injunction cannot be granted.
In similar stead, the first prong of reasoning in Swiggy was also that an action of infringement cannot be anticipated before its occurrence. The BHC buttressed this by stating that an action of trademark infringement is a suit in personam i.e., the action lies between the trademark owner and alleged infringer. Thus, each action of alleged infringement by registration of a similar trademark will have to be brought before the court separately. The second prong strangely stemmed from cases stating that IP disputes are arbitrable and thus an action in personam.
Concerns Stemming from the Present Case:
We definitely perceive certain issues with Madras HC’s orders. First of course is the glaring absence of a detailed discussion on law before issuing such a consequential injunction; there is no substantive exploration of the different prongs entailed in a temporary injunction inquiry. The second problem is the criterion of ‘phonetically similar’ in the direction issued which will be challenging for a DNR to assess and determine. Most importantly, however, this new variant of dynamic injunction, on a broader level, exists uneasily with the statutory framework. Section 29 of the Trademarks Act is a multi-part and detailed provision that involves the satisfaction of various elements for the establishment of infringement in different conditions [for instance s. 29(2) is for similar goods/services and 29(4) for different goods/services].Any wide-ranging pre-emptive injunction will amount to a presumption that the necessary elements of infringement under different sub-provisions of s. 29 are always satisfied, across all sorts of situations; such an approach ignores the complex nature of trademark infringement in principle. The Court ought to have substantively established, beyond mere remarks without sufficient proof, that the use of Galaxy health or its phonetic variants will, in most probability, be infringing. As in, the mark is known enough to cause confusion and consequently cause harm in different ways. As we argue in this post, such a pre-emptive remedy in a limited fashion should be available only to well-known marks for which other players, whether in the same market or others, have, in most circumstances, little to no justification for their adoption.
Making a Case for Tempered Pre-Emptive Protection:
Despite meting out criticisms for the incomplete reasoning in Galaxy Health, we believe that pre-emptive protection may be necessary in case of domain names. Firstly, as held by the SC in Satyam v Siffynet, domain names are not mere internet addresses. It performs the critical role of a ‘business identifier’ and thus the value of maintaining an exclusive identity is critical. As also observed in Snapdeal, Section 28, Trademarks Act provides exclusive usage rights to the proprietor in all channels. Thus, while domains in themselves are not trademarks, only the proprietor has the right to use trademarks in domain names. The Iowa District Court in Green Products v. Independence Corn By-Products had aptly analogized a domain name to the exterior of a store and stated that replication of the exterior with a different interior still amounts to infringement.
Secondly, replication and infringement in case of domain names is far quicker and cheaper as opposed to the brick-and-mortar world. It costs much more to design a similar mark/ trade dress and initiate its production. On the contrary, an infringer merely has to register similar domain names for as little as a few hundred. For instance, in Snapdeal, 50 similar domain names had already been registered by the time infringements were discovered. There remain many such pending cases where consumers have been deceived.
Thirdly, while it is probable that a pre-emptive measure might render a false positive error (plaintiff who should not prevail, succeeds in protecting a trademark). The harm to society in a false negative error (when an owner who should prevail fails to protect a trademark) is far greater than a false positive. This is because there are many alternative words for the applicant to opt for and thus the externality costs incurred by them will not be significant. On the contrary, failure to offer timely protection to an existing trademark reduces its source-identification ability, creates consumer confusion, reduces market efficiency by increasing search costs and has other ramifications such as loss of reputation, etc. Such error costs increase in case of domain names because all the counterfeits coupled with the original website are available next to each other with a single search. The counterfeits/ junior can even bump their domain above the senior by paying the search engines. In contrast to the senior hunting down each replication, it is more convenient for a veritable junior to appeal their case and seek registration or opt for a different name. In the case of Swiggy, say, the Court may allow potential registrants to specifically demonstrate why their registration should be accepted by the DNR, therefore taking them out of the coverage of such injunctions. This is where we also concede that pre-emptive protection may cause hardships to actors who are engaging in a nominative fair use of the mark, say for purposes of setting up a parody website. Nevertheless, we consider the peculiar nature of problems caused due to this phenomenon of mushrooming of infringing domain names as requiring the sort of remedy we propose, in line with the justifications laid out above.
Having opined why pre-emptive measures are necessary, it is also necessary to preserve the abovementioned idea that infringements cannot be assumed. Thus, we propose that protection only ought to be granted to domains whose replication is very likely. To that end, such pre-emptive protection should only be offered to well-known marks’ domains where a facts specific confusion and harm assessment is not warranted. Instead, a cause of action arises in Section 29(4) where the imitation leads to unfair advantage being derived or where the imitation dilutes and blurs the senior’s mark. Herein, there are multiple cases in line of Daimler(Mercedes) v Eagle Flask which state that there is no presumed bona fide reason for a junior to use a well-known mark. Further, these cases also state that it is presumed that the primary association drawn will be with the senior in case of a well-known mark. For instance, a ‘mercedes’ could have multiple meanings but the primary association drawn will be to the German Automobile giant. Moreover, the junior need not be a competitor for there to be infringement in case of a well-known mark. This is to say that there is a strong pre-existing presumption sans the specific facts of imitation in case of well-known marks. In such scenarios, it is more prudent to have an adamant applicant take recourse if they consider their application to be veritable.
Conclusion:
So readers, did you see the shift? Now the infringing website will not even be allowed to be registered, which was not the case with the dynamic and dynamic plus injunctions discussed before (the websites had to be blocked/suspended, taken down). This remedial innovation will continue to raise concerns, considering the similar state of controversy that dynamic injunctions have always remained in with regards to the potential judicial overreach and overextension of protective entitlements. It remains to be seen how other HCs respond to this monumental development.
Thanks to Swaraj sir, Praharsh, and Bharathwaj for their helpful comments!