Case Brief: Yahoo!, Inc vs Akash Arora & Anr, Delhi High Court

Case Name: Yahoo!, Inc vs Akash Arora & Anr, Delhi High Court

Petitioner: Yahoo! Inc.

Respondent: Akash Arora and ANR

Date of Judgement: 19 February 1999

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

Bench: Justice M Sharma

Relevant Law Involved in Yahoo!, Inc vs Akash Arora & Anr

All kinds of incidents regarding cybersquatting and domain disputes are dealt with under the Trademark Act, 1999.

Sections 27 ( No action for infringement of the unregistered trademark.) and 29 (Infringement of trademarks.) of the Trade and Merchandise Marks Act.

Introduction

In today’s commercial world, a trademark serves to identify the product to ensure its quality and promote the product. Trademark rights encourage competitiveness and preservation of product quality. They give the customer’s right to choose between two competing products by allowing them to identify one from the other.

Akash Arora (defendant) was operating the web service ‘yahooindia.com’ which was identical to the trademark “Yahoo!” owned by the plaintiff. Moreover, the defendant was providing the same content and services to the users for which the plaintiff was globally well-known.

It was the first case regarding “cybersquatting” (when a person other than the owner of a well-known trademark registers that trademark as an Internet domain name and then attempts to profit from it) in India.

Brief Facts of Yahoo!, Inc vs Akash Arora & Anr

Yahoo.com was registered by Yahoo Inc in1995, which facilitates web services. The trademark Yahoo owns the legal status in 65 countries, excluding India.

The defendant, i.e. Akash Arora, started to facilitate services identical to  Yahoo.com under the name Yahoo India. Yahoo Inc had sued the accused of using a trademark identical to its own & passing off this service identical to the plaintiff.

Yahoo Inc argued that the defendant acquired the domain name (A domain name is a form of IP address that is used for finding websites on the internet) of Yahoo to render services identical to those of Yahoo Inc & had strived to cash in on the reputation earned by Yahoo.

Issues Involved in Yahoo!, Inc vs Akash Arora & Anr

Is a domain name protected under Intellectual Property Rights? Is facilitating identical services under a similar domain name an infringement of intellectual property rights?

Plaintiff’s Argument

1. The plaintiff’s domain name and trademark were protected in the case of an infringement of the trademark.
2. The defendants adopted an identical trademark ‘Yahoo India’, they copied the plaintiff’s format, contents, layout, and colour scheme.

Defendant’s Argument

1. The plaintiff’s trademark/domain name ‘Yahoo!’ was not registered in India and therefore not only action for infringement of the registered mark.
2. Yahoo!” is a general dictionary word that cannot be said to acquire any distinctiveness.
3. The defendants used a disclaimer

Judgement in Issues Involved in Yahoo!, Inc vs Akash Arora & Anr

The court judged that where the brand name is similar to another name of another company, people are likely to get confused by using that a brand name can lead to consequent damage to the Plaintiffs.

The court granted an ad interim injunction in favour of the plaintiff as against the defendants which refrains the defendants from operating any business, sale, advertising or dealing in service or goods on the internet or under the trademark/domain name ‘Yahooindia.com’ or any other trademark/domain name which is similar to the plaintiff’s trademark till the disposal of the suit.

Conclusion

The controversy, in this case, revolves around the protection of the domain name on the Internet. Undoubtedly the name used by Defendant is identical to Plaintiff’s domain name (‘Yahoo!’ )  there is every possibility that it could create deception and confusion among consumers. A domain name is more than an Internet address and is entitled to equal protection as a trademark.

This article has been contributed by Jyotiska Borah, a student at NERIM Institute, Guwahati, Assam