This Case Analysis is written by Aditya sharma & this article disscuss the concepts of Jurisdiction of High Courts.
YAHOO! INC. V. AKASH ARORA AND ANR.
Name of the Court- Delhi High Court
Name of the Parties- Yahoo! Inc. (Plaintiff)
Akash Arora and Anr. (Defendants)
Coram: Dr. M.K. Sharma, J.
Date of the Judgment- February 19, 1999
FACTS-
Yahoo INC., the plaintiff, owned the trademark “Yahoo” and the domain name “yahoo.com,”
both of which are well-known marks with a worldwide reputation. Yahoo obtained legal
recognition in 1995 and secured trademark registrations in 69 countries, with the exception of
India. The Yahoo corporate offices are located in Sunnyvale, California. Akash Arora, the
defendant, legally acquired a domain name for his company and chose to name it “Yahoo
India” with the intention of offering similar internet services as Yahoo Inc. Yahoo Inc. filed a
request for a temporary court order to stop the defendant from using the domain name
‘yahooindia.com’ or any other name that resembles its brand. Yahoo Inc. filed a lawsuit
against Akash Arora for utilizing a trademark that closely resembled its own and falsely
represented his services as those of Yahoo Inc. It initiated a lawsuit against Akash Arora.
ISSUES-
whether the passing off action could be maintained against the services, within
the provisions of Section 2(5), 27, 29, 30 and 106 of the Trade and Merchandise
Marks Act,1958 ?
CONTENTIONS-
Plaintiff:
Advocate Kapil Sibbal contended that the plaintiff has the trademark ‘Yahoo!’ and the domain
name ‘Yahoo.Com’, both of which have a unique reputation and goodwill. The defendants
have been engaging in the act of passing off their services and products under the name
‘Yahooindia’ as if they were the plaintiff’s trademark. The plaintiff contended that the domain
name/trademark they selected should have equivalent protection against passing off, similar
to that afforded to a trademark. The Counsel presented arguments by citing the legal
principles established in the case of Marks & Spencer v. One-in-a-Million, 1998 FSR 265.
The defendants replicated the structure, substance, arrangement, colour scheme, and
underlying code of the plaintiff’s regional section on India at Yahoo.Com.sg, using the
confusingly similar trademark ‘Yahooindia’, in an attempt to mislead consumers into
believing that their services were provided by the plaintiff. He contended that internet users
often use domain names including corporate names, trademarks, or product/service names to
locate a firm’s website, even in the absence of knowledge of the Internet address. As to his
statement, if one were to look for an official ‘Yahoo!’ website with material particular to India
by inputting ‘Yahooindia.com’, they would be sent to the defendants’ website instead of the
plaintiff’s. The lawsuit states that Yahoo! Asia and Yahoo.com provide substantial content on
India in the category “Regional:Countries:India”. It was said that the defendants, who operate
in the same business as the plaintiff, engaged in cyber-squatting and acted dishonestly by
adopting a trademark that closely resembled the plaintiff’s distinctive name, ‘Yahoo.coms’,
which had a unique reputation and goodwill.
Defendant:
Mr. Harish Malhotra, the lawyer representing the defendants, countered the aforementioned
accusations and argued that the trademark laws in India specifically pertain to goods.
Therefore, the provisions of the Indian Trade Marks Act do not apply to the specific details
and situation of the current case, which solely concerns goods. Furthermore, it was argued
that the plaintiff’s trademark/domain name ‘Yahoo!’ is not registered in India. As a result,
there cannot be a legal action for infringement of a registered mark, nor can there be any
consequences.
The act of misrepresenting oneself as the provider of services, performed by both the plaintiff
and the defendants, cannot be considered as goods under the Indian Trade Marks Act. This
Act specifically deals with goods and not services. Therefore, the decisions referred to by the
plaintiff’s counsel are not applicable in determining the outcome of the current case. He
argued that the term “Yahoo!” is a common word found in the dictionary and not a unique
invention. Therefore, it lacks distinctiveness and since the defendants have been using a
disclaimer, there is no possibility of causing confusion or deception. Consequently, no legal
action for passing off can be pursued against the defendants. Furthermore, he argued that all
individuals who use the Internet and attempt to access the website are technically proficient
and well-educated. As a result, there is no chance that any customer would mistakenly access
the defendants’ website with the intention of reaching the plaintiff’s website. Therefore, this is
not a situation involving an unsuspecting customer, which is relevant in cases of trademark
infringement and passing off
.
JUDGMENT
Akash Arora was found liable for trademark infringement of “Yahoo” by the court, which
also issued a restraining order against him. The decision was made because it was alleged that
he participated in cybersquatting by utilizing a domain name that was very similar to Yahoo
Inc.’s and by providing services that were almost identical to those offered by Yahoo Inc.
This decision was made due to the fact that the reputation of a company is strongly dependent
on its name and trademark, and this is especially true in the case of Yahoo Inc. As a
consequence of this, it was concluded that the word “Yahoo” had, in fact, established its
reputation. As a consequence of this, the defendant was required to cease using the domain
name “yahooindia.com” indefinitely. It was further held that passing off action could be
maintained against the service which is being rendered by the defendant, also the issue in
hand cannot be eliminated on the account of showing a disclaimer to mitigate the confusion.
Since the action of defendant could cause confusion and deception the plaintiff was provided
with an injunction under Order 39 Rule 1 and rule 2.
REFERENCES
Yahoo! Inc v Akash Arora and Anr. (MANU/DE/0120/1999)
THE CODE OF CIVIL PROCEDURE, 1908, Civil law No ACT NO. 5 OF 1908, 21 March 1908 (India)
