The Delhi High Court, presided over by Hon’ble Justice Ms. Pratibha Singh, has yet again issued a significant order in the Burger King Corporation v. Swapnil Patil & Ors, granting Dynamic+ Injunction in favour of the plaintiff, Burger King Corporation, and against the defendants for unauthorised use of the plaintiff’s mark, “Burger King”, the Crescent Logo , and the Hamburger Refresh logo . Through this order, the court acknowledged the dynamic nature of website mirroring fraud and tried to balance the rights of the plaintiff with a consideration of public interest.
The plaintiff, Burger King Corporation, was established in 1954 and is currently the world’s second-largest quick-service restaurant company, operating over 18,000 restaurants in approximately 100 countries, with over 250 outlets in India. The plaintiff asserted that its trademark and name, “Burger King”, along with distinctive logos and , have been extensively used in relation to its restaurants and restaurant services since 1954. The plaintiff holds 1040 domain name registrations, including www.burgerking.com (registered in 1994), www.bk.com (registered in 1998), and India-specific domains like www.bkdelivery.in (registered in 2015) and www.burgerkingindia.in. The plaintiff’s brand has gained a strong reputation and goodwill globally and in India, where the trademarks “BK”, “Burger King”, and associated logos are exclusively associated with the plaintiff.
The defendants are engaged in fraudulent activities by falsely promoting Burger King franchises through misleading domain names and websites and unlawfully exploiting the plaintiff’s brand and trademarks. According to the plaintiff, the defendants deceitfully marketed fake franchises under Burger King’s trademarks, deceiving unsuspecting individuals and duping them of large sums of money.
The Court, in several previous orders dated May 10, 2022, July 28, 2022, December 21, 2022, February 1, 2023, February 20, 2023, April 19, 2023, etc., has noted that several domain names, websites, and related bank accounts were used for fraudulent activities, involving the illegal use of the plaintiff’s brand and marks to collect money deceitfully. The court granted the plaintiff an interim injunction against the defendants after determining that there was a prima facie case and that the plaintiff had the greater balance of convenience. The defendants were restrained from providing services, using, or registering business or domain names using the mark/name “Burger King” or the logos for any purpose, including collecting money under the guise of giving franchises under the Plaintiff’s brand name.
Furthermore, the court directed domain name registries, including GoDaddy.com LLC and Fast Domain Inc., to suspend or block the concerned domain names, making the corresponding phoney websites inaccessible. The National Internet Exchange of India (NIXI) has been instructed not to allow any domain name/website with the extension ‘. co.in’ or ‘.in’ having the mark “Burger king” with the words ‘Burger’ and ‘King’ combined.
The Cyber Cell/ Intelligence Fusion and Strategic Operations (IFSO) Delhi Police was given authorisation to examine provided cell phone numbers and retrieve Call Detail Record (CDR) records from telecom service providers, including Bharti Airtel, Reliance Infocom Ltd. and Bharat Sanchar Nigam Limited and investigate the matter. For the identified domain names/websites, the Ministry of Electronics and Information Technology (MEITY) and the Department of Telecommunications (DoT) were instructed to issue immediate blocking orders. In addition, a Mareva injunction was granted to freeze the connected bank accounts.
The matter arose again before Justice Pratibha Singh when Burger King came across newly operating websites engaging in fraudulent activities to defraud the public with invitations for franchises. The current application is to obtain an injunction against two specific domain names, www.burgerkingfranchisesindia.co.in and www.burgerkingfoodindia.com. These websites are identical to previously restrained domain names by the court and are actively involved in marketing phoney franchises and collecting money, similar to actions performed by previously restrained anonymous defendants.
In addition, the Plaintiff seeks a Dynamic Plus injunction against numerous domain name registrars, the Ministry of Electronics and Information Technology, and the Department of Telecommunications (MEITY/DoT), which will help the Plaintiff report fraudulent franchise websites and render a prompt response through blocking, locking, or suspension.
Recognising the dynamic nature of website duplication, particularly the development of mirror websites quickly after the injunction on earlier ones, the plaintiff cited UTV Software Communication Ltd. and Ors v. 1337x.to and Ors. In order to stop similar fraudulent acts from happening again, the plaintiff underlines the importance of taking preventive measures. In the aforementioned case, the court affirmed its authority to order MEITY, DoT, and ISPs to take action to stop current infringements and prevent the ones that may emerge in the future. Here, the court granted a permanent injunction prohibiting the defendant websites from hosting, streaming, and copyrighted content held by the plaintiffs and ISPs were directed to prohibit access to certain websites.
Subsequently, in Universal City Studios LLC. & Ors. v. Dotmovies.baby & Ors, the court stressed the necessity of effective and dynamic injunctions and recognised the dynamic nature of website duplication. It was observed that rogue websites could still be accessed via VPN servers and other means even when they were blocked by ISPs. In this case, the court granted an ex parte ad interim injunction to prevent rogue websites from streaming copyrighted content of the plaintiffs, including future works, from being reproduced, distributed, or made available online. This ‘Dynamic+ injunction’ was intended to safeguard copyrighted works as soon as they were created, saving copyright holders from irreversible loss.
Decision of the Court
Given the broader ramifications of the defendants’ actions and aiming to protect both the market’s integrity and consumer welfare, the court granted an injunction to prevent the restricted websites and their operators from using the aforementioned domain names or any others that contain the mark “BURGER KING” or the words ‘Burger’ and ‘King’ together. Given the dynamic nature of website duplication, notably the quick creation of mirror sites following the issuance of injunctions against earlier ones, the court granted a Dynamic+ Injunction. This action intends to swiftly protect the plaintiff’s rights and respond promptly to any infringing activities by the defendant.
The Plaintiff, by submitting an affidavit, can apply for impleadment under Order I Rule 10 CPC against any newly discovered domain names or websites advertising phoney franchises using the “BURGER KING” mark. After examining the document, the Joint Registrar may extend the injunction orders accordingly. Additionally, the court directed MEITY to ban the two domains mentioned above name websites, and subsequent enforcement is to be ensured by NIXI and ISPs.
The MEITY/DoT has also been directed to issue blocking orders for any information they receive on phoney franchises or websites in relation to Plaintiff’s mark. Websites like GoDaddy.com LLC have been directed to lock/suspend the domain names www.burgerkingfoodindia.com and www.burgerkingfranchiseindia.co.in and to disclose any information they may have on the registrant. Furthermore, the court has ordered Canara Bank to freeze the bank account and halt any activities such as withdrawals. The matter is also communicated to the Cyber Cell, which oversees similar matters and issues freezing orders.
What distinguishes this order of the Hon’ble Court from previous ones is the issuance of a Dynamic+ Injunction. The Delhi High Court has demonstrated a strong and proactive approach to protecting the integrity of the plaintiff’s “Burger King” brand and its trademarks while also prioritising the interests of the general public. This decision intended to prevent fraudulent activities, protect prospective franchisees from deceptive practices, and maintain the market integrity.
Authors: Manisha Singh and Puja Tiwari
First Published By: Mondaq Here