Yahoo! Inc. vs. Akash Arora & Anr

INTRODUCTION

The Yahoo! Inc., the plaintiff in this case is a well-known American web service provider known in the world for providing web-based services. Akash Arora, the defendant in this case began to provide his web-based services by using a trademark that was phonetically similar to that of the plaintiffs. This case is a landmark case on cybersquatting in India. It was for the primary time that the High Court of Delhi held that a registered website name similar to the trademark giving it the entitled, equal protection.

FACTS OF THE CASE

  • Yahoo Incorporation (hereinafter referred to as “Plaintiffs”) is that the owner of the documented trademark, Yahoo, and of the name Yahoo.com; both the trademark and therefore the name acquired a particular name, goodwill, and reputation.
  • Yahoo.com had been registered by Yahoo Inc with Network Solution Inc since 1995 and offers an entire range of web-based services.
  •  The trademark Yahoo had been registered or was on the brink of being registered in 69 countries but the plaintiff’s Yahoo Inc had not registered its name in India.
  • Akash Arora (hereinafter referred to as (“Defendants”) began to offer web-based services almost like those offered by the Plaintiffs under the name of Yahoo India.
  •  The defendant also applied for the registration of an equivalent, which in due course of time got approved.
  • The plaintiffs had sued the defendant seeking a permanent injunction against them under Order 39 Rules 1 & 2 CPC  for employing a trademark deceptively almost like its own and passing off its services like those offered by the plaintiffs.

CASE STUDY – IRAC (ISSUE, RULE, ANALYSIS, CONCLUSION) METHOD

Issue

  • Whether a website name is protected under the Intellectual Property Right or not?
  • Whether the act of the defendant in registering the name Yahoo India, to pass off services almost like those offered by Yahoo Inc, is an infringement of the trademark of the plaintiffs and amounts to passing-off under the relevant sections of the Trade and Merchandise Marks Act?

Rule

  • The court mentioned the case of Monetary Overseas v. Montari Industries Ltd.; 1996 PTC 42 where it was held that “When a defendant does business under a reputation which is sufficiently on the brink of the name under which the plaintiff is trading which the name has acquired a reputation and therefore the public at large is probably going to be misled that the defendant’s business is that the business of the plaintiff, or maybe a branch or department of the plaintiff, the defendant is responsible for an action in passing off.”
  • The principle underlying the action for passing off under Section 27(2) and Section 106 of the Trade and Merchandise Act, 1958 is that no man is entitled to hold on his business in such how on cause the assumption that he’s carrying on the business of another man or to steer to believe that he’s carrying on or has any reference to the business carried on by another man.

Analysis

The judgement, in this case, is considered to be a torch-bearing judgement in the cases involving cyber-squatting and passing off. Looking at it from a criminal law perspective, IPC has an extra-territorial jurisdiction wherein an Indian citizen using a trademark that is deceptively similar to a foreign company’s trademark will still be held liable. Even though the Yahoo Inc. was quite famous worldwide but the court observed that the ‘Yahoo India’ of the defendant is deceptively similar to that of the plaintiff except that it uses a suffix ‘India’. The arguments which were put forward by the defendant, in this case, were tense and logical enough for a non-professional but the High Court of Delhi Court dug its deeper knowledge with due application of mind. Yahoo Inc contended that Akash Arora adopted the name of Yahoo to supply services almost like those of Yahoo Inc and had attempted to take advantage on the goodwill generated by Yahoo Inc. because there was every possibility of an online user getting confused and deceived, believing that both the domain names, Yahoo and Yahoo India belong to Yahoo Inc. Therefore, Yahoo Inc. argued that Akash is responsible for passing off.

As the two trademarks/domain names ‘Yahoo!’ and ‘Yahoo India!’ were almost similar and therefore the latter offered services almost like those offered by the previous and because the latter passed them off as being offered by Yahoo Inc., the court held Akash responsible for passing off and restrained him from using the deceptively similar name.

The decision of the court during this case is predicated on the rationale that where the worth of a reputation lies solely in its resemblance to the name or trademark of another organization, the general public is probably going to be deceived by the utilization of such name and such act would amount to passing off. Accordingly, the Hon’ble Court held that the said word “Yahoo” had acquired distinctiveness and is related to the business of the Plaintiff. the utilization of the name “yahooindia.com” by the Defendant results in passing off of the business of the Plaintiff as his own and hence an equivalent shall be permanently discontinued. Therefore, an injunction restraining the Defendant from using the impugned mark was granted.

Conclusion

Domain Names are, intrinsically, not registered as a Trade Mark as they need to be examined for the evidence of distinctiveness. Domain names are neither automatically eligible nor ineligible for registration as trademarks. The test for a website name to be registered as a trademark is whether or not the name has the power to function, not simply as a website name, but also as a trademark for goods or services of the type specified by the applicant. Thus, the court can restrain the execution of such businesses that have trademark deceptively similar to another making possibility to confuse the general public and thereby damaging the reputation of another. As we know that every judge has his own opinion and pronounces the judgement accordingly, the above case also dealt with an opinion based on his perspective.

REFERENCES

  1. Brands and Fakes,’Case Analysis: Akash Arora & Anr’, May 19, 2020, https://brandsandfakes.com/case-analysis-yahoo-inc-vs-akash-arora-anr/136/
  2. Banana IP, ‘Yahoo! Inc. v. Akash Arora and another, 1999 Arb. L. R. 620’, May 19, 2020,

Yahoo! Inc. v. Akash Arora and another, 1999 Arb. L. R. 620

  • Lawnn,’YahooIncvAkash Arora & Anor [1999 (19) PTC 201 (DEL)]’. May 20, 2020

IPR Delhi High Court Judgment- Yahoo! Inc. v. Akash Arora & Anor

  • IT Law, ‘Yahoo! Inc. vs Akash Arora (1999), May 20, 2020
  • Karan Dave ‘Yahoo! Inc. v Akash Arora & Anr, May 20, 2020

https://www.legalwiz.in/blog/5-famous-trademark-cases-for-businesses-to-learn-from

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