|Case Name||Yahoo!, Inc. v/s Akash Arora and Another|
|Case Number||I.A. No. 10115/1998 and Suit No. 2469/1998|
|Court||Delhi High Court|
|Bench||Justice Dr MK Sharma|
|Decided On||February 19, 1999|
|Relevant Act/Sections||1) Civil Procedure Code, 1908- Order 39, Rules 1 & 2
2) Trade and Merchandise Marks Act, 1958- Section 27(2), Section 106, Section 29
|Author of the CaseBrief||Aditya Gor|
Brief Facts and Procedural History-
In the present case, a decree of permanent injunction is sought against the defendants (Akash Arora), their partners, servants, 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 or domain name “Yahooindia.com” or any other mark/domain name which is identical with or deceptively similar to the plaintiffs trademark “Yahoo!” and also for rendition of account and damages. An application for an ad-interim temporary injunction under Order 39, Rules 1 & 2 of CPC has also been filed for the same effect.
Arguments on behalf of the plaintiff-
- The plaintiff is the owner of the trademark ‘Yahoo!” and domain name ‘Yahoo.Com’ which are well-known and have acquired distinctive reputation and goodwill. The defendants by adopting a similar name for their similar services have been passing off the services and the goods as that of the plaintiff. Accordingly, a domain name/trademark adopted by the plaintiff is entitled to equal protection against passing off as in the case of the trademark.
- The defendants have deceptively adopted the similar trademark ‘Yahooindia’ by verbatim copying the format, contents, layouts, color scheme, the source code of the regional section. Thus, the defendants are trying to pass of their services as that of the plaintiffs.
- With such deceptive techniques adopted by the defendants, all the person trying to reach the website of the plaintiff now have high chances of reaching the defendant’s platform.
Arguments on behalf of the respondents-
- The trademark acts in India relates only to goods and thus the provisions of the Indian Trade Marks Act, 1999, are not applicable to the services. In the present facts and circumstances, where the matter is related to services, the Trademarks Act will thus not be applicable.
- The Plaintiff’s Trademark/domain name ‘Yahoo!’ is not registered in India and, therefore, there cannot be any action for infringement or passing off.
- The word “Yahoo” is a general dictionary word and is not vented. Thus it could not have acquired any distinctiveness.
- Since the defendants have been using the disclaimer there could be no chance of any deception and, thus, no action of passing off is maintainable against the defendants.
- The persons using internet services are technically educated and are literate. Thus there are no chances of them reaching the defendant’s site instead of reaching the plaintiff’s site.
The ratio of the Court-
The ratio of the court can be divided into the following four limbs-
The plaintiffs are the owner of the trademark/domain name “Yahoo.com”
The domain name ‘Yahoo.com’ is registered in the plaintiff’s favor since the year 1995. However, the variance of ‘Yahoo!’ has been pending registration in 69 countries of the world. As per the record, such registration of variance is also pending in India.
The plaintiff is a global Internet media rendering services under the domain name/trade name ‘Yahoo!’. The plaintiff was amongst the first in the field to have a domain name ‘Yahoo’ and also to start a Web directory and provide search services. The plaintiff is admittedly providing various services including services on the regional section also. In view of growing popularity of ‘Yahoo!’ of the plaintiff, it was submitted that many third parties started imitations by using sound-alike names in order to appropriate the reputation and goodwill acquired by the plaintiff in respect of the trademark/name ‘Yahoo!’ in India and that the defendants is one of such parties.
The defendants have attempted for “passing off” services
The law relating to ‘passing off’ is fairly well-settled. The principle underlying the action is that 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. It is also well-established that passing off action is a common law remedy. There are a plethora of cases wherein it has been held that the principles of common law govern actions of passing off and have been recognized by Section 27(2) and Section 106 of the Trade and Merchandise Marks Act, 1958.
Therefore, it is obvious that if the two contesting parties are involved in the same line or similar line of business, there is grave and immense possibility for confusion and deception and, therefore, there is a probability of sufferance of damage. In this case, also both the plaintiff and the defendants have a common field of activity. They are operating on the Website and providing information almost similar in nature.
Services are covered by the Indian Trademarks Act, 1999
Additionally, it is seen that although the word ‘services’ may not find a place in the expression used in Sections 27 and 29 of the Trade and Merchandise Marks Act, services rendered have come to be recognized for an action of passing off. There can be no two opinions that the two marks/domain names ‘Yahoo!’ of the plaintiff and ‘Yahooindia’ of the defendant are almost similar except for use of the suffix ‘India’ in the latter. The degree of the similarity of the marks usually is vitally important and significant in an action for passing off for in such a case there is every possibility and likelihood of confusion and deception being caused.
Thus, there is every possibility of an Internet user being confused and deceived in believing that both the domain names belong to one common source and connection, although the two belong to two different concerns.
Considering the vastness of the Internet, the Users may not be sophisticated enough to distinguish the subtle difference between the domain names
Even if an individual is a sophisticated user of the Internet, he may be an unsophisticated consumer of information and such a person may find his/her way to the defendant Internet site which provides almost similar type of information as that of the plaintiff and thereby confusion could be created in the mind of the said person who intends to visit the Internet site of the plaintiff, but, in fact reaches the Internet site of the defendant.
Additionally, the use of a disclaimer by the defendants cannot eliminate the problem as due to the nature of Internet use, defendant’s appropriation of plaintiff’s mark as a domain name and home page address cannot adequately be remedied by a disclaimer. It was also observed that considering the vastness of the Internet and its relatively recent availability to the general public, many Internet users are not sophisticated enough to distinguish between the subtle difference in the domain names of the parties.
The defense of the defendants is found to be of without any merit and therefore an ad interim injunction is passed in the favor of the plaintiff restraining 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 defendants are also further restrained from copying the contents of the programs of the plaintiff under the domain name ‘Yahoo.com’.