Yahoo! Inc. v. Akash Arora & Anr(1999) Delhi HC

10th July, 2023 - 6:17 am Categories: Trademark 0 Comments

Introduction

The issue at hand is considered to be one of the most important examples of cybersquatting in India. The illegal practice of registering a well-known brand or business name as a domain name in order to drive traffic and increase earnings to one’s website is referred to as cybersquatting. The act of Akash Arora in adopting a domain name of “Yahoolndia” which is fairly close to the trademark of “Yahoo!” which has a high reputation and goodwill in society brought the current case to light. The brand “Yahoo!” has a high reputation and goodwill in society. Users were signing up for the Yahoolndia domain, and it also offers a variety of additional services that are comparable to those offered by Yahoo. Which is known as the practice of passing something off as something else. 

Facts Of The Case

The plaintiff Yahoo INC. was the owner of both the trademark “Yahoo” and the domain name “yahoo.com,” which are both well-known marks that have a distinct identity and reputation in the eyes of the general public all over the world. In addition, Yahoo was a legally recognised firm beginning in the year 1995 and possessed trademark registrations in 69 countries throughout the globe, with the exception of India. Yahoo’s headquarters are located in Sunnyvale, California.

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The defendant, Akash Arora, registered a domain name for his company and gave it the moniker “Yahoo India”  with the goal of providing internet services in a way that was like to that of Yahoo Inc. As a result of this, Yahoo Inc. filed an application for an interim injunction in order to prohibit the defendant from using the domain name ‘yahooindia.com’ or any other name that is similar to its trademark in any way. It sued Akash Arora for allegedly using a trademark that was confusingly similar to its own and for trying to pass off his services as those provided by Yahoo Inc. It did this by filing a lawsuit against Akash Arora.

Brief History

This lawsuit was initiated by the plaintiff in order to seek a permanent injunction restraining the defendants, their partners, servants, and agents from operating any business and/or selling, offering for sale, advertising, and dealing in any manner in any services or goods on the Internet or otherwise under the trademark/domain name ‘Yahooindia.Com’ or any other mark/domain name that is identical or deceptively similar to the plaintiff’s trademark ‘Yahoo!’ and also

In addition to this, the plaintiff has also submitted an application under Order 39 Rules 1 & 2 of the Code of Civil Procedure, praying for an ad interim temporary injunction restraining the defendants from operating any business and/or selling, offering for sale, advertising, and in any manner dealing in any services or goods on the Internet or otherwise under the trademark/domain name ‘Yahooindia.Com’ or any other mark/domain name which is identical with or deceptively similar to Yahoo India.

As a result, the plaintiff sought not only for a permanent injunction but also for an ad interim injunction to prevent the defendant from continuing their actions.

Issues

• Is an intellectual property right applicable to the protection of a domain name?
• Does the defendant’s act of registering the name ‘Yahoo India’ amount to passing-off of services given by Yahoo INC.? If so, does this constitute an infringement of the plaintiff’s trademark in accordance with the pertinent sections of the Trade and Merchandise Marks Act?

Petitioner’s Contention

Counsel for the petitioner argued that the plaintiff is the owner of the well-known trademark “Yahoo!” and domain name “Yahoo.Com,” which have acquired distinctive reputation and goodwill, and that the defendants, by adopting the name “Yahooindia” for similar services, have been passing off the defendants’ services and goods as that of the plaintiff’s trademark “Yahoo!” which is identical or deceptively similar to the plaintiff’s trademark.

 It was argued that the plaintiff’s domain name, which functions as a trademark, is entitled to the same level of protection against passing off as a trademark. He further contended that trademark and domain name are not mutually exclusive and there is an overlap between trademark and services rendered under domain names.

And thus by adopting a deceptively similar trademark ‘Yahooindia’, the defendants have verbatim copied the format, contents, layout, colour scheme, and source code of the plaintiff’s prior created regional section on India at Yahoo.com.sg, passing off their services as the plaintiff’s.

Defendant’s Contention

Counsel for the defendant refuted the above allegations and argued that the trademark rules in India are concerned with products, and that as a result, the requirements of the Indian Trade Marks Act do not apply to the facts and circumstances of the current case, which exclusively involves goods. It was also argued that the plaintiff’s trademark and domain name, which is “Yahoo!,” is not registered in India. As a result, there cannot be an action for infringement of the registered mark, nor could there be any action of passing off. This is because the services that were provided by both the plaintiff and the defendants cannot be considered to be goods within the meaning of the Indian Trade Marks Act, which is concerned only with goods and not services.

Because the defendants have been using disclaimer, there is no chance of any deception; as a result, no action of passing off is maintainable against the defendants. further argued that the word “Yahoo!” is a general dictionary word and is not vented; as a result, it could not have acquired any distinctiveness. further argued that since the defendants have been using disclaimer, there is no chance of any deception. He also argued that the people who use the internet and try to reach the website are all educated in technology and literate, so there is no chance that a customer would reach the website of the defendants with the intention of reaching the website of the plaintiff. As a result, he argued that this is not a case of an unwary customer, which is required for a claim of trademark infringement and passing off in order to be admissible.

Judgement

The court came to the conclusion that Akash Arora was responsible for the infringement of the “Yahoo” trademark and issued a restraining order against him based on the theory that he was engaging in cybersquatting by using a domain name that was confusingly similar to that of Yahoo INC. while also providing services that were comparable to those provided by Yahoo INC. The reasoning for this judgement was that the reputational value of a company is heavily dependent on its name and trademark, which is particularly true in the case of Yahoo Inc. Accordingly, it was decided that the word “Yahoo” had built up its reputation, and that the defendant needed to stop using the domain name “yahooindia.com” permanently. This was because it was determined that the word had gained its reputation. Yahoo Inc. was awarded the right to prevent others from passing off its products.

Analysis

The case known as “Yahoo Inc. v. Akash Arora” is a seminal one in the history of “cybersquatting” in India. Because of this case, the Delhi High Court has made history by establishing for the first time that a domain name is entitled to the same degree of legal protection as a trademark. This is significant because it illustrates a fundamental problem in intellectual property law relating to passing off in accordance with Indian trademark law. The applicability of Sections 29 and 27 of the Trade and Merchandise Marks Act was another topic that was examined in this case.

Before this judgement, domain names could not be registered as trademarks because of the uniqueness test that had to be passed first. When it came to the registration of a trademark, domain names were considered a legal grey area. If a website name is to be considered for trademark registration, it must first be determined whether or not it is strong enough to serve as a trademark for the company’s products and services in addition to serving as a domain name for the website in question. As a result, the court has the authority to halt the operation of firms that employ marks that are confusingly similar to one another. According to the Trade and Merchandise Marks Act, the passing-off principle was interpreted as follows: If a particular defendant conducted his business under a name similar to a “famous” and “distinct” domain name of the plaintiff, and under the condition that both businesses were in the marketplace, then the public could be misled into mistaking the goods or services of one business for those of the other business due to the similarity between the two names.

Author: Himanshi Gupta, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.