Dated: 19th February, 1999
Bench: M. Sharma
Petitioner: Yahoo Inc.
Respondent: Akash Arora
Background: Any letter, logo, emblem, device, mark, or figure that depicts a firm and its method of business is referred to as a trademark. Although the Indian Trademarks Act only permitted for the registration of products, the court construed it to include services as well. Trademarks existed long before domains were ever conceived of. The judge’s verdict in the Yahoo! case serves as the foundation for later Indian proceedings. The current case raised a significant legitimate issue concerning the subject of passing off under Indian trademark law. The plaintiff in Yahoo Inc. vs. Akash Arora was the owner of the trademark Yahoo and the domain Yahoo.com, both of which are well-known brands with a unique reputation across the globe. The company had been a legitimate firm since 1995 and possessed trademarks in 69 countries, none of which included India.
Facts: In India, Akash Arora launched Yahooindia.com to provide digital technology equivalent to those delivered by Yahoo.com. Net Link Internet Solutions was the defendant’s sole proprietorship. The company adopted the moniker ‘Yahoo India’ and commenced using it, including duplicating the Yahoo page’s content, structure, and layout. Yahoo Inc. had accused Akash Arora for using a trademark that was deceptively similar to its own and made his services appear to be the same as Yahoo Inc.’s. In addition, the appellant filed a preliminary injunction prohibiting the accused under Order 39 Rule 1 & 2 of the Civil Procedure Code, as well as a perpetual injunction for passing off under the Trademark and Injunction Act.
- Whether Akash Arora’s enrollment of the domain name Yahoo India to offer services similar to those provided by Yahoo Inc. constitutes a violation of Yahoo Inc.’s trademark and equates to passing off under the Trade and Merchandise Marks Act?
- Whether the accused are cyber squatters since they are in the complainant’s business field.
- Plaintiff’s lawyer, Mr. Kapil Sibbal asserted that the trademark “Yahoo” and the domain “yahoo.com,” both acquired by plaintiff, were renowned brands with unique recognition and goodwill. As a result, the defendants were passing off their products and services as those of the plaintiff by adopting the domain name ‘YahooIndia,’ which was remarkably similar to the plaintiff’s trademark. The learned counsel extensively leaned on the ratio of the judgements in Marks & Spencer vs. One-in-a-Million to bolster his argument.
- The plaintiff stated that it is fairly unusual for someone hoping for an authorized ‘Yahoo!’ page with India-specific content to put in ‘Yahooindia.com,’ resulting in the said individual getting at the defendants’ Internet portal.
- The plaintiff further claimed that the defendants are following in the plaintiff’s footsteps and have sought to commit “cybersquatting” by fraudulently registering a trademark identical to the plaintiff’s.
- The defendant’s lawyer, Mr. Harish Malhotra, responded by arguing that Section 27 (2) and 29 of the Indian Merchandise Act distinguish between goods and, as a result, the clauses of the act are unrelated to the facts and circumstances of the case situation, which involves services. The learned counsel cited the clauses of Section 2, Sections 27, 29, and Section 30 of the Act in favor of his arguments, claiming that only products are acknowledged for the purposes of bringing an action for infringement or passing off.
- It was argued that the complainant’s trademark and domain name “Yahoo!” are not applicable in India, and that, as a result, there can’t be any breach of the trademark registration, nor can there be any passing off by both the complainant and the respondents under the Indian Trademarks Act.
- It was also claimed that because “Yahoo!” is a common reference term, it could not have acquired any uniqueness, and the defendants have been using disclaimer to avoid any possibility of fraud.
- The defendant’s counsel contended that individuals who use the online services and want to access a website are, on the whole, well-informed and educated individuals, and thus there is no likelihood that any service user will approach the defendants’ website with the objective of accessing the plaintiff’s website.
Judgement and Analysis:
After demonstrating that a company’s domain name was their manner of establishing their online presence, the Court stated that Yahoo.com was the petitioner’s domain, which was not licensed in India but was well-known in India for being one of the first to deliver web directory services. The Court then proceeded on to the respondents’ first argument, which focused on the notion that the petitioner’s domain name “Yahoo” is used in the perspective of a service rather than products, while Section 27(2) and 29 of the Trade and Merchandise Marks Act are used in the context of products. The Judge agreed with the accused that this was not an infringement issue, but disagreed with the counsel’s assertion that there was no passing off. The notion of passing off is likewise recognized in the Act’s Sections 27(2) and 106. Moreover, the cases Monetary Overseas vs. Montari Industries and Neev Investments and Trading Pvt. Ltd. vs. Sasia Express Couriers were cited by the Court. Services were included in scope of passing off in each of these cases, and so the Court determined the defendant’s allegation in this respect to be baseless. The Court stated that to establish passing off, the plaintiff required to establish the presence of their corporate image or goodwill, citing the case of Ellora Industries vs. Banarsi Dass & Ors. The Court also cited the Ellora Industries case and Lord Green M.R.’s remark that the availability of goods was not required to establish passing off. Damage might be caused if the contested trademarks/domain registrations were approximately equivalent if both parties were in the same business field. The Court additionally cited Card Service International Inc. vs. McGee, in which it was determined that a company’s domain name served the same objective as a trademark and hence was qualified to trademark protection. In the same decision, it was decided that a domain name is more than merely an internet address; it is also the company’s means of identifying its visitors. Despite the fact that the term “services” is not featured in the relevant parts of the Act, the Court determined that it falls within the legal principle of passing off. The Court also rejected the accused’s argument that the term “Yahoo” was a dictionary word that was widely used by other businesses. The Court stated that the term “Yahoo!” had achieved originality and individuality, which the bulk of individuals identified it with the plaintiff. In view of these precedents, the Court recognized plaintiff’s prima facie case and issued an ad interim injunction prohibiting respondents from functioning under the domain “Yahooindia.com” or any other misleadingly close relation to “yahoo!” The Court cited Jews for Jesus vs. Brodsky, in which it was ruled that a mere disclaimer was insufficient to redress trademark infringement by the defendant. The plaintiff was also utilizing regional domains like Yahoo.FR (France) and Yahoo.CA (Canada), according to the court (Canada). As a result, the defendant’s use of the term “yahooindia” was likely to cause misunderstanding.
The judgement is regarded as one of the most significant in the field of passing off proceedings. In this situation, successful implementation of intellect and reasoning has been demonstrated. The matter was not only reviewed effectively by the Delhi High Court, but it was also passed quickly and without hindrance.