Yahoo INC v. Akash Arora
Citation: 1999 IIAD Delhi 229, 78 (1999) DLT 285
Court: Delhi High Court
Bench: Justice M. Sharma
The plaintiff Yahoo INC. was the owner of the trademark 'Yahoo' and the domain name 'yahoo.com', and both of these were famous marks that had a distinct identity and reputation in the eyes of the global public. Additionally, Yahoo was also a registered company since 1995 and possessed a registered trademark in 69 countries except for India.
The defendant, Akash Arora, started a company with the domain name 'Yahoo India', with a similar purpose of providing internet services as Yahoo INC. As a result, Yahoo INC. applied for an interim injunction to prevent the defendant from using the domain name 'yahooindia.com' or any other name bearing its likeness. It sued Akash Arora for using a deceptively similar trademark as itself and for passing-off of his services as those under Yahoo INC.
Is a domain name protected under intellectual property rights?
Does the act of registering the name 'Yahoo India' by the defendant amount to passing-off of services offered by Yahoo INC., and is this an infringement of the plaintiff's trademark under the relevant provisions of the Trade and Merchandise Marks Act?
'Passing off' under Section 27(2); Section 106 of the Trade and Merchandise Act, 1958.
The Plaintiff claimed that the Defendant took up the Yahoo domain name to offer services similar to that of Yahoo INC. to cash in the goodwill generated by the same name. This was based on the argument that there was a high possibility of confusion and deception thus leading consumers to believe that both 'Yahoo' and Yahoo India' belonged to the Plaintiff. Therefore, Yahoo INC. argued that Akash Arora was liable for infringement of the trademark “Yahoo”.
The court decided that Akash Arora was liable for infringement of the “Yahoo” trademark and restrained him under the premise that he was using a deceptively similar domain name while offering services similar to Yahoo INC., which constituted cybersquatting. This decision was based upon the rationale that the goodwill of a business's reputation lies majorly in its name and its trademark, especially so in Yahoo INC.'s case. Thus, it was held that the word 'Yahoo' had acquired its reputation and that the defendant's use of the domain name 'yahooindia.com' ought to be permanently discontinued. The remedy of passing off was granted to Yahoo Inc.
'Yahoo INC v. Akash Arora' is a landmark Indian case on 'cybersquatting'. This case marks the first time the Delhi High Court declared that a domain name has the same level of protection as a trademark. This is important because it depicts a central issue of IP law concerning passing-off under Indian trademark law. The case also discussed the application of Sections 29 and 27 of the Trade and Merchandise Marks Act.
Prior to this judgment, domain names were not registered as a trademark since they were required to pass the distinctiveness test. Domain names were a legal grey area concerning the registration of a trademark. The test for a website name to qualify for trademark registration is to check if the name is capable enough to function as a trademark for the business's goods and services, not just as a website name. Thus, the court has the power to prevent the functioning of businesses that use deceptively similar marks. The principle of passing-off according to the Trade and Merchandise Marks Act 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, with the condition that the two businesses were in the marketplace, this similarity could lead to the public being misled into mistaking one business' goods or services for the other.