Author:- Abhishek Yadav,a LLM(IP) Student of , Amity Law School, Noida, Amity University
Introduction
The case at hand is considered one of the most important instances of cybersquatting in India. During the inception period of the Internet, many businesses and individuals lacked a comprehensive awareness of the commercial opportunities available online which would then be exploited by cybercriminals by registering domains in the name of already established companies and profiting immensely from this. This was the beginning of cybersquatting.
Cybersquatting is a type of cybercrime in which the offender purchases or registers a domain name that is similar to or identical to an already-existing domain to make money off of a well-known brand, business name, or individual name.
In this case, an action of “Passing off” was taken by the Plaintiff against the actions of the Defendants as the trademark was not registered otherwise, the defendant, in this case, conducts his business under a name similar to a “famous” and “distinct” domain name of the plaintiff.
Facts of the case
The plaintiff, Yahoo INC., holds the ownership of both the trademark “Yahoo” and the domain name “yahoo.com,” both of which are well-known marks with a unique identity and reputation in the eyes of consumers worldwide. Yahoo additionally became a legally recognized firm beginning in 1995, with trademark registrations in 69 countries around the world, except India.
The defendant, Akash Arora, registered a domain name for his company and named it “Yahoo India” to provide internet services similar to Yahoo Inc. As a result, Yahoo Inc. filed for an interim injunction restraining the defendant from using the domain name ‘yahooindia.com’ or any other name that is similar to its trademark in any way. It filed a lawsuit against Akash Arora for allegedly attempting to pass off his services as those offered by Yahoo Inc. and for using a trademark that was strikingly similar to its own. It accomplished this by launching a lawsuit against Akash Arora.
Brief History
The plaintiff filed the lawsuit to obtain a permanent injunction barring the defendants, their associates, employees, and representatives from running any kind of business, or from marketing, selling, or otherwise dealing in any kind of goods or services on the Internet or elsewhere, under the trademark/domain name “Yahooindia.Com” or any other mark/domain name that is confusingly/deceptively similar to the plaintiff’s trademark “Yahoo!”.
In addition to this, the plaintiff has also prayed for an ad interim temporary injunction by applying Order 39 Rules 1 & 2 of the Code of Civil Procedure.
As a result, the plaintiff prayed not only for a permanent injunction but also for an ad interim injunction to prevent the defendant from continuing their operations and profiting from their reputation.
Issues
- Can protection be given to a domain name as an intellectual property right?
- Does the defendant’s act of registering the name ‘Yahoo India’ amount to the passing-off of services given by Yahoo INC. and can it be construed as an infringement of the plaintiff’s trademark under the relevant provisions of the Trade and Merchandise Marks Act?
Analysis
The petitioner’s counsel contended that the plaintiff holds the rightful ownership of the well-known trademark “Yahoo!” and the domain name “Yahoo.Com,” which have gained a distinctive and unique reputation and goodwill. The defendants, on the other hand, have been passing off their goods and services as the plaintiff’s trademark “Yahoo!” by utilizing the name “Yahoo India” for comparable services, which is confusingly or deceptively similar to the trademark of the plaintiff..
The plaintiff claimed that their domain name, which serves as a trademark, should have the same degree of protection from passing off as a trademark. He further argued that there is overlap between services provided under domain names and trademarks and that they are not mutually exclusive. Thus the defendants have passed off their services as the plaintiff’s by adopting a deceptively similar trademark ‘Yahoo India’,
The defendant’s counsel disputed the aforementioned claims, claiming that Yahoo!, the plaintiff’s trademark and domain name, is not registered in India. Consequently, neither a passing-off nor an infringement action may be brought against the registered mark. This is because the Indian Trade Marks Act, which solely addresses goods and not services, does not permit the services rendered by the plaintiff or the defendants to be regarded as goods.
Counsel further contended that since the defendants have been using a disclaimer, there is no possibility of deceit and, therefore, no passing off action can be brought against the defendants. Furthermore, since “Yahoo!” is a commonly used dictionary word and has not been vented, it lacks originality and distinction. Additionally, he contended that since all internet users and website visitors are technologically literate and educated, there is no possibility that a buyer would navigate from the defendants’ website to the plaintiff’s website. Therefore, he contended, this is not an instance of a careless consumer, which is necessary for a claim of passing off and trademark infringement to be accepted.
Judgement
The Delhi High Court decided in favor of Yahoo! Inc., concluding that the defendants’ creation of a website that was primarily similar to Yahoo!’s website constituted infringement of Yahoo!’s brand.
The court referred to the case of Monetary Over seas v. Montari Industries Ltd.; 1996 PTC 42 where it was said that the defendant is liable for an action in passing off when the defendant does business under a name sufficiently similar to the plaintiff’s trading name, that name has gained the reputation, and the general public is likely to be misled that the defendant’s business is the plaintiff’s business..
The Court in the present case, addressing the issue of the trademark not being registered in India, stated that, even though the plaintiff’s trademark ‘Yahoo!’ was pending in India, the plaintiff is a renowned global Internet media company that provides services under the domain name. The Court cited the case of N.R. Dongre Vs. Whirlpool Corp. 1996 PTC 583 in response to the contention that the term “Yahoo!” is a common dictionary word that does not have any uniqueness or distinctiveness and cannot be used as a domain name or trademark. of, wherein the court acknowledged the trade name’s uniqueness and distinctiveness and held that the reputation of the trademark “WHIRLPOOL” crossed international borders. Even though the respondents are not the registered owners of the WHIRLPOOL in India about washing machines, the appellants may still be sued for passing off for using the name.
The Court also observed that using a disclaimer by the defendant cannot solve the problem. The court took reference from the case of Jews for Jesus Vs. Brodsky 46 USPQ 2d 1652 in which It was held that because of the nature of Internet use, a disclaimer is insufficient to undo the defendant’s use of the plaintiff’s mark as a domain name and home page address.
A restraining order was issued against Akash Arora by the court, who was found to be guilty of violating the “Yahoo” trademark. The theory behind this was that Arora was engaging in cybersquatting by using a domain name that was confusingly similar to Yahoo INC.’s and providing services that were similar to those offered by Yahoo INC.
This ruling was based on the theory that a company’s name and trademark have a significant impact on its reputational value, which is especially true in the case of Yahoo Inc. Therefore, it was decided that the defendant had to permanently cease using the domain name “yahooindia.com” since the word “Yahoo” had established its reputation. This was because it was established how the word acquired its reputation. Yahoo Inc. was granted the authority to stop third parties from misrepresenting their products as its.
Comment
Protecting the domain name online is the main point of contention in this instance. Given that the defendant’s name is exactly the same as the plaintiff’s domain name, Yahoo!, there is little doubt that this could lead to consumer confusion and deception. A domain name is entitled to the same level of protection as a trademark, making it more than just an Internet address.
Domain names had to pass the distinctiveness test to be registered as trademarks before this ruling. When it came to trademark registration, domain names were a muddy legal matter. A domain name must pass a test, meaning it must be strong enough to serve as both a trademark and a name for the products and services offered by the company to be eligible for trademark registration. This is an important case in India’s history of “cybersquatting”. The Delhi High Court has created history by ruling in this case that a domain name has the same legal protection as a trademark for the first time. This is noteworthy because it highlights a basic issue with intellectual property law concerning passing off in compliance with Indian trademark law.
The Trade and Merchandise Marks Act’s passing-off principle was interpreted as follows: if a specific defendant operated under a name that was similar to a plaintiff’s “famous” and “distinct” domain name, and both businesses were operating in the same market, this similarity could cause the public to mistakenly believe that one company’s products or services are those of the other.
