Yahoo! Inc. v. Akash Arora & Anr.
1999 PTC (19) 201 (Delhi)
• Plaintiff was the owner of the trademark ‘Yahoo!’ and domain name ‘Yahoo.Com’.
• The Defendants adopted the name ‘Yahooindia’ for similar services which as per the Plaintiff was identical to or deceptively similar to Plaintiff’s trademark ‘Yahoo!’.
• Plaintiff instituted a suit against the Defendants seeking a permanent injunction for passing off . Plaintiff also sought an ad interim temporary injunction restraining the Defendants from operating any business on internet or otherwise under the domain name ‘Yahooindia.Com’ or any name which is identical or similar to the Plaintiff’s trademark.
• Domain name adopted by the Plaintiff is entitled to equal protection against passing off as in the case of a trademark.
• By adopting a deceptively similar trademark ‘Yahooindia’, Defendants are passing off their services as that of the Plaintiff.
• It would not be unusual for someone looking for an authorized ‘Yahoo!’ site with India-specific content to type in ‘Yahooindia.com’ and thereby the said person would reach the Internet site of the Defendants.
• The Defendants are in the same line of activity as the Plaintiff and have tried to be ‘cyber-squatters’ by dishonestly adopting a trademark similar to that of the Plaintiff.
• The trademark laws in India relate to goods and, therefore, the provisions of Indian Trade Marks Act are not applicable to the facts and circumstances of the present case which deals only with goods.
• Trademark/domain name ‘Yahoo!’ of the Plaintiff is not registered in India and, therefore, there cannot be an action for infringement of the registered mark nor could there be any action of passing off as the services rendered both by the Plaintiff and the Defendants cannot be said to be goods within the meaning of the Indian Trade Marks Act.
• The word “Yahoo!” is a general dictionary word, therefore, it could not have acquired any distinctiveness and the Defendants have been using disclaimer, so as to avoid any chances of deception.
• The persons using Internet and seeking to reach the Internet site are all technically educated and literate persons and therefore there is no possibility of any customer reaching the Internet site of the Defendants with the intention of reaching the Internet site of the Plaintiff.
• The principle underlying the action for passing off is that no man is entitled to carry on his business in such a way as to lead to the belief that he is carrying on the business of another man or to lead to believe that he is carrying on or has any connection with the business carried on by another man.
• The court referred to the case of Monetary Over seas v. Montari Industries Ltd.; 1996 PTC 42 where it was said that, “When a defendant does business under a name which is sufficiently close to the name under which the plaintiff is trading and that name has acquired a reputation and the public at large is likely to be misled that the defendant’s business is the business of the plaintiff, or is a branch or department of the plaintiff, the defendant is liable for an action in passing off.”
• If the two contesting parties are involved in the same line or similar line of business, there is grave and immense possibility for confusion and deception and, therefore, there is probability of damage. In this case both the Plaintiff and the Defendants have common field of activity.
• The services of the Plaintiff under the domain name ‘Yahoo!’ have been widely publicized and written about globally. There can be no two opinions that the two marks/domain names ‘Yahoo!’ of the Plaintiff and ‘Yahooindia’ of the Defendants are almost similar except for use of the suffix ‘India’ in the latter. There is every possibility and likelihood of confusion and deception being caused and an Internet user can be confused and deceived in believing that both the domain names belong to one common source and connection, although they aren’t.
Injunction was granted in favour of the Plaintiff.
Author: Anjali Bisht, Law College, Dehradun