Arham Jain
Introduction
The modern era with increasing globalization has also witnessed a significant increase in crime. One of the most emerging one is in the field of Intellectual Property. Hence this commercial world has introduced many IPR, for example, Trademark, Patent, Copyright, etc. These rights protect the integrity and dignity of the individual in the market.
This case of Yahoo! v. Akash Arora 1999 IIAD (Delhi) 229 was the first ever case related to “cybersquatting” in India. Cybersquatting means registering means registering a well-known trademark as an Internet domain name and then trying to make money off it by someone other than the trademark’s owner.
Key Provisions
Section 27, 29 & 30 of Trade and Merchandise Marks Act, 1958.
Facts of the Case
Yahoo Inc., a provider of digital services, registered Yahoo.com in 1995. With the exception of India, Yahoo has legal protection as a trademark in 65 countries.
Under the alias Yahoo India, the defendant, Akash Arora, began offering services that were exact replicas of Yahoo.com. Yahoo Inc. filed a lawsuit against the defendant for using a trademark that was exactly the same as its own and passing off the plaintiff’s service as its own.
Yahoo Inc. claimed that the defendant had attempted to profit off Yahoo’s established brand and had purchased the company’s domain name (a domain name is a type of IP address that is used to discover websites on the internet) in order to provide services that were identical to those of Yahoo Inc.
Issues Raised
The issue in this case revolved around the question that whether the defendant has violated the Yahoo!’s brand and if that’s the case then is it violating the Intellectual Property Rights and what remedy are available to the victim.
Contentions of the Parties
Petitioner
By using the name “Yahooindia” for similar services, the defendants have been passing off the defendants’ goods and services as the plaintiff’s trademark “Yahoo!,” which is identical to or deceptively similar to the plaintiff’s trademark. The plaintiff argued that the defendants are the owners of the well-known trademark “Yahoo!” and the domain name “Yahoo.Com.” It was argued that the plaintiff’s chosen domain name should have the same protection against passing off as a trademark.
Respondent
The Respondents denied all the allegations on the ground of trademark laws that are governed in India and hence quoting the provisions of Trade and Merchandise Marks Act, 1958 that as per the facts presented in the case, the said legislation won’t take effect.
In addition, it was argued that the plaintiff’s domain name “Yahoo!” is not registered in India. As a result, neither a passing-off action nor a trademark infringement action could be brought because the plaintiff’s and the defendants’ services cannot be considered goods under the Trade and Merchandise Marks Act, 1958, which only deals with goods and not services. As a result, the rulings cited by the plaintiff’s attorney are irrelevant to the current case.
Because Yahoo!, the plaintiff’s domain name, was not registered in India, they are not just suing for infringement of the registered mark. “Yahoo!” has no specific meaning and is a frequent dictionary term. The defendant used a disclaimer.
Observation of Court
According to the court’s decision, customers may use a brand name that is confusingly similar to another company’s name, which might be detrimental to the plaintiffs.
An ad interim injunction granted by the court in favor of the plaintiff against the defendants prohibits them from engaging in any business activity, selling, advertising, or dealing in goods or services on the internet or under the domain name “Yahooindia.com” or any other trademark/domain name that is similar to the plaintiff’s trademark until the suit is resolved.
Because the respondent was participating in cybersquatting by employing confusingly identical services and domain names to Yahoo, the court found him guilty of breaching the “Yahoo” trademark and placed him under administrative suspension. This decision was rendered because a company’s name and trademark play a significant role in determining its reputation, as was the case with Yahoo INC.
Consequently, because “Yahoo” had established its reputation, it was determined that the defendant’s use of the domain name “yahooindia.com” should be permanently halted. The passing-off remedy was allowed to be used by Yahoo Inc.
Conclusion
The preservation of the domain name on the Internet is at the root of this conflict here. Since the defendant’s name is unquestionably the same as the plaintiff’s domain name (‘Yahoo!’), there is a good chance that it will lead to consumer confusion and deceit. A domain name is entitled to the same protection as a trademark since it is more than just an Internet address.
Case Name- Yahoo!, Inc v. Akash Arora & Anr.
Petitioner- Yahoo! Inc.
Respondent- Akash Arora & Anr
Citation- 1999 IIAD Delhi 229, 78 (1999) DLT 285
Bench- Justice M Sharma
Decided Of Judgement- 19 February 1999
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