YAHOO INC V AKASH ARORA & ANR

INTRODUCTION

The present case is one of the primary cybersquatting cases in India. Cybersquatting is the offence of registering a well-known trademark or company name, as the domain name to attain traffic and profits to their website. The present case came to light with the act of Akash Arora by adopting a domain name of “YahooIndia” which is quite similar to the trademark of “Yahoo!” which has a high reputation and goodwill in society. The domain YahooIndia was attaining users and also it is providing other services likely to that of Yahoo. Which is considered as the act of passing off.

ISSUES RAISED

  •  Whether the act of Akash Arora is subject to passing off.
  •  Whether the names of domains are protected as a trademark.

BRIEF FACTS

In the present case, the petitioner Yahoo had come to seek a permanent injunction restricting defenders from providing services, or selling any goods or any other kind of business under the trademark of Yahoo. Originally Yahoo was registered in 1995 in many countries. It provides various kinds of web services on the internet. It is also said to be the first web dictionary that allowed search. Akash Arora stated a domain name YahooIndia which is deceptively similar to that of Yahoo.Inc also it is offering the same services to the customers which are affecting the business of the plaintiff. Then the plaintiff approached the Delhi High Court for the present case.

COUNSELS APPEARED FOR THE CASE

Mr. Kapil Sibbal and Mr. Harish Malhotra were the counsels who appeared on behalf of the plaintiff and defendant respectively.

PLAINTIFF ARGUMENTS

“The counsel appearing for the plaintiff stated that the plaintiff was the owner of the trademark and the domain Yahoo andYahoo.com respectively, which acquired a high reputation, and goodwill and it is also well known for its services provided in India. The defendant adopting the “YahooIndia” as his domain name which is similar to that of the plaintiff trademark and with similar services rendered by the plaintiff comes under the act of passing off. It was also alleged that the defendant had copied the colour schemes, font styles, content, and formats. Thus it is subject to passing off and request the court to consider it and protect it as that trademark. It was also stated that the name Yahoo.com was registered on 18th January 1995. Yahoo and its variants are registered or pending registration in 69 countries and also provided a record that its application was pending in India. It was the first to name the web as yahoo and provided search services.”[1]

DEFENDANT ARGUMENTS

The counsel for the defendant by denying all the aforestated statements stated that the trademark act does not apply to services but to goods under sections 27[2], 29[3] and 30[4] of the Trademarks and merchandise Act hence both the services rendered by the petitioner and the defendant are not subjected to fall under Act. Also, it was submitted that the name Yahoo was not registered in India. Thus the defendant was neither subjected to infringement nor the passing of. Defendants appealed that the word Yahoo was a dictionary word and there are so many companies that use the word like that as their Trademark. Also, it was stated that there is sufficient add on word India to differentiate the domain name of the plaintiff. It is also stated that there is no prima facie regarding the plaintiff’s allegation.

REFERRED CASES IN THE ARGUMENTS

Marks & Spencers v One-in-a-million[5]

This case was referred by the plaintiff where it was submitted in the case there is no requirement to use the trademark, the mere sale of a domain name that is confusingly similar to that of the trademark is considered an infringement.

Monetary overseas v Monetari Industries Ltd[6]

In this case, the court held that when the defendant uses a name that is close enough to that of the plaintiff and is of high reputation in public, it is highly likely to mislead the customers and such defendant is liable for the act of passing off.

Ellora Industries v Banarasi Dass & Ors.[7]

In this case, they defined the passing off as a tort which is to protect the goodwill of a business as goodwill is the asset of a business. It is to protect a business from getting its reputation exploited. It was stated that the asset protected is the reputation the plaintiff holds in his relevant mark.

CardService International Inc v McGee[8]

It was held in the case that the domain name serves the same as a trademark as it is not a mere address on the internet but it is like a person’s name which stands as identification to them, therefore it should be protected as a trademark.

N.R. Dongre v Whirlpool Corp[9]

In this case, it was held that the registration of a trademark would be irrelevant in the case of passing off. Also held that it had found the distinctiveness and uniqueness in the word whirlpool even though it is a dictionary word and not registered in India the reputation is considerably bigger.

JUDGEMENT

In the present case after referring to many cases and the party’s arguments. It was submitted that the defendants being in the same field of services as the plaintiff tried to be “cyber-squatter” by adopting a similar name, particularly which is in distinctive nature and had goodwill and reputation. Also, the plaintiff is rendering services globally under the domain name “Yahoo!”. It was submitted that it is well established that passing off is a common law remedy and the principle of common law governs the passing off, it was recognized under section 27(2)[10] and section 106[11] of the Trademark and Merchandise Act. Similarly, many cases are provided to show that services come under the action of passing off. “It is stated that when we consider the domain names it is deceptive enough which is likely to make the internet users confused regarding the domain they are approaching.”[12] Also, the plaintiff himself appeared to be using the regional names after the domain name of the region he provides services to, the internet users may think that it is one of the series of those domains like Yahoo.FR for France, and Yahoo.CA for Canada. It was submitted that even though it is a dictionary word it had acquired distinctiveness and uniqueness and had incorporated with the company and acquired goodwill and reputation hence it is subject to be protected by the courts. It was submitted that the court had passed an ad interim injunction in the favour of the plaintiff against restricting the defendant and their agents, employees, and servants from rendering services or advertising or selling, or offering goods under the name of YahooIndia.com. Or even under the name which is deceptively similar to that of the trademark of the plaintiff “Yahoo!” which may likely confuse even in the future.

CONCLUSION

This case provided ample examples to understand the mechanism of Passing off and protecting Yahoo! This judgment stands as a landmark in the scope of Trademark and has referred to many such instances, providing many insights regarding the protection of trademarks and domain names. This case marked its uniqueness by referring to many cases for proving the uniqueness and the reputation which was held by the service provider changes the whole purview of the case. The instant case marked itself as a landmark case for cybersquatting. It was the first case involved in internet domain name disputes. And also, provided an insightful discussion on the act of passing off.

Author(s) Name: Vinya Sai Suguna Karedla (JC College of Law)

References:

[1] Yahoo Inc v Akash Arora & Anr. (1999) IIAD Delhi 229

[2] Trademarks and Merchandise Act 1958, s 27

[3] Trademarks and Merchandise Act 1958, s 29

[4] Trademarks and Merchandise Act 1958, s 30

[5] Marks & Spencer v One-in-a-million (1998) FSR 265

[6] Monetary overseas v Monetari Industries Ltd. (1996) PTC 142

[7] Ellora Industries v Banarasi Dass & Ors. (1981) PTC 46

[8] Card Service International Inc v McGee (1850)42 USPQ 2d

[9] N.R. Dongre v Whirlpool Corp. (1996) PTC (16)

[10] Trademarks and Merchandise Act 1958, s 27(2)

[11] Trademarks and Merchandise Act 1958, s 106

[12]Yahoo Inc.  (n 1)

error: Content is protected !!