CASE SUMMARY: Yahoo! Inc. v. Akash Arora & Anr

Citation: 1999 IIAD Delhi 229, 78 (1999) DLT 285 

Judicial Forum: Delhi High Court 

Bench: Justice M.K. Sharma 

Date of Judgement: 19th February, 1999 

FACTS 

The plaintiff is a global internet search engine having a trademark for ‘Yahoo!’ and domain name ‘yahoo.com’ registered in 69 countries excluding India. 

The defendant started a similar search engine provider service in India under the domain name ‘YahooIndia’. 

The plaintiff brought a suit seeking for a decree of permanent injunction restraining the defendants, their partners, servants and agents 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 the plaintiff’s trademark ‘Yahoo!’ and also for rendition of accounts and damages. 

The plaintiff brought in action for ‘passing off’ against the defendant accused the party for committing cybersquatting by misrepresenting and deceiving people through the domain name and gaining profits through such misrepresentation/deception. 

LAWS INVOLVED 

The following sections of the Trade and Merchandise Marks Act have been referred to in this case: 

• Section 27: (1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.

             (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof. 

• Section 29: (1) A registered trademark is infringed by a person who, not being the registered proprietor of the trademark or a registered a mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being use as a trade mark.

             (2) In an action for infringement of a trade mark registered in Part B of the register an injunction or other relief shall not be granted to the plaintiff if the defendant establishes to the satisfaction of the court that the sue of the mark of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trademark is registered and some person having the right, either as registered proprietor or as registered user, to use the trade mark. 

• Section 30: Where the goods bearing a registered trademark are lawfully acquired by a person, the sale of or other dealings in those goods by that person or by a person claiming under or through him is not an infringement or the trade make by reason only of the trade mark having been assigned by the registered proprietor to some other person after the acquisition of those goods.
• Section 106: The relief which a court may grant in any suit for infringement or for passing off referred to in section 105 includes an injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery up of the infringing labels and marks for destruction or erasure.

LEGAL ISSUES 

• Is a domain name protected under The Trade and Merchandise Marks Act, 1958? ● Does the use of ‘Yahooindia’ as domain name by the defendant deceive people into believing it to be ‘Yahoo!’
• Does the act of registering the name ‘Yahooindia’ 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?

ARGUMENTS BY PLAINTIFF 

• The plaintiff contended the defendant by choosing a similar trademark and domain name as ‘Yahoo!’ and ‘Yahoo.com’ respectively are passing off their goods and services as that of the plaintiff. The plaintiff enjoys goodwill and reputation globally which the defendant wants to take advantage of by deceiving people into thinking that their ‘Yahooindia’ is a part of ‘Yahoo!’. Also, the defendants have as it is copied the format, contents, layout, colour scheme, source code of the plaintiff’s previously created regional section on India at Yahoo.Com.sg and thus passing off the services of the defendants as that of the plaintiff.
• The plaintiff further contended that the infringement of domain name shall be entitled to a similar protection as that in case of a trademark. It further relied on Marks & Spencers v. One-in-a-Million1 wherein it was held that, “any person who deliberately registers a domain name on account of its similarity to the name, brand name or trademark of an unconnected commercial organisation must expect to find himself on the receiving end of an injunction to restrain the threat of passing off, and the injunction will be in terms which will make the name commercially useless to the dealer.”
• The plaintiff argues that by choosing a similar trademark and entering in the same line of activity as that of the plaintiff, the defendants have tried to be ‘cyber squatters’. It is usual for consumers to reach a particular site by typing ‘www.companyname.com’ since companies usually select their domain names in such a manner. Thus, it would also be usual for a consumer to type ‘yahooindia.com’ for the purpose of reaching the India specific Yahoo search engine. This clearly indicates that the defendant by choosing a similar trademark as that of plaintiff has tried to be a cyber squatter

ARGUMENTS BY DEFENDANT 

• The defendant argued that there cannot be an action for passing off since Section 27(2) and Section 29 of The Trade and Merchandise Marks Act, 1958 deals only with goods and not services. The case here is related to a service and not any good thus, no action for passing off can be brought.
• The defendant further argued that there can be no suit for infringement of trademark since the plaintiff does not have a registered trademark in India. Thus, there is no infringement of trademark in India.
• The defendant argued that the word ‘Yahoo’ is a mere dictionary word and does not hold any distinctiveness or uniqueness that it could be used to deceive consumers. Also, they have been using disclaimer which shows that they had no intention to deceive people or misrepresent themselves.
• The defendant also argued that those using the internet are all literate and aware people who know what they are doing on the internet. They would not land on the defendant’s site assuming it to be that of plaintiff thus, there has been no infringement of trademark and commitment of passing off.

JUDGEMENT 

The court passed an ad interim injunction in favour of the plaintiff and restrained the defendants, their partners, servants and agents from operating any business or selling, offering for sale, advertising and/or in any manner dealing in service or goods on the Internet or otherwise under the trademark/domain name ‘Yahooindia.com’ or any other trademark/domain name which is identical with or deceptively similar to the plaintiff trademark ‘Yahoo!’ till the disposal of the suit. 

The court further restrained the defendants and all others acting on their behalf from using and/or copying the contents of the programmes of the plaintiff under the domain name ‘Yahoo.com’. The court gave the following opinion regarding the contentions raised by both the parties: 

• Regarding the contention raised by the defence that the Indian Trade and Merchandise Marks Act, 1958 includes provisions for goods only and thus the plaintiff cannot plead for passing off is vague since the law relating to passing off is very clear which defines it as: 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 further took into reference the decision made by the court in the case of Ellora Industries2 where it said that it is not always necessary that there must be in existence goods of that other man with which the defendant seeks to confuse his own 
• Regarding the contention that ‘Yahoo’ is a mere dictionary word, the court said that although the term is a dictionary word but it does hold a great sense of distinctiveness and uniqueness due to its association with a particular business and it thus becomes very important for courts to safeguard and provide the maximum degree of protection to such words. The court also took reference from N.R. Dongre v. Whirlpool Corp.3 wherein the Supreme Court upheld the distinctiveness and uniqueness of the word ‘WHIRLPOOL’ which was although not registered as a trademark in India. 
• Regarding the contention raised that the consumers of the internet are sophisticated and literate, the court said that although the consumers are sophisticated users of the internet but they may/ may not be a sophisticated consumer of information. Thus, it is very likely for an unaware individual to reach the defendant’s site due to confusion believing it to be the plaintiff’s site. The court also said that a disclaimer is not sufficient to eliminate the problem in hand and took reference of the Jews for Jesus v. Brodsky4 case wherein the court observed that a mere disclaimer is not sufficient remedy for appropriating the plaintiff’s mark for domain name and home page address.
• The court also opined that merely adding a suffix ‘India’ by the defendant does not help establish distinctiveness between the sites of both the parties but rather gives an idea that Yahooindia i.e the site of the defendant is the regional version of Yahoo i.e the plaintiff’s site.

Reference(s):

1 Marks & Spencer plc v. One in a Million Ltd., [1998] F.S.R. 265 (Eng. C.A.)

2 Ellora Indus. v. Banarsi Das Goela, 1979 SCC OnLine Del 229

3 N.R. Dongre v. Whirlpool Corp., (1996) 5 SCC 714 

4 Jews for Jesus v. Brodsky, 46 USPQ 2d 1652