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Yahoo!, Inc.vs Akash Arora & Anr.

I. BACKGROUND

The advancement of internet trend has caused a shift in the business sector. Many business organisations have migrated to the internet realm of marketing and commerce, increasing the visibility of their firms. This has resulted in an unhealthy competition in which people attempt to benefit from other people's existing trade names in order to capitalise on the goodwill associated with a trade name meticulously established by the proprietor. All credible trade mark owners may not have or do not have their own domain, which a competitor could use. It's first come, first served when it comes to registering a domain name. Cybersquatting occurs when someone obtains a name that is similar to a trademark and attempts to sell or lease it. In recent years, the legal challenge has been to find a means to foster the development of intellectual property on the internet while preventing its illegitimate use.

The practise of cybersquatting was born with the introduction of domain names. Because not all merchants are informed about the internet or technology, their trade name may be used by another merchant, who may then try to sell it to the rightful owner of the trademark, such as a domain name. Trademarks are used to identify and symbolise a company's goodwill. There has been a lot of talk in recent years regarding trademark infringement through various methods, one of which being cybersquatting. The registration of a domain name that contains a reference to a well-known trademark in order to give the false impression that the domain name belongs to the trademark owner is known as cybersquatting. Misrepresentation of this nature can endanger a company's future potential. However, there is no cybersquatting regulation in India, and efforts to attain this goal have been primarily piecemeal.

Cyber squatting is the process of registering another entity's trademark, business name, or service mark as one's own domain name. It is for the goal of keeping it and then selling it to the other person for a high premium and consideration. Cyber squatters register domain names for well-known brands in the hopes of making easy bucks. Cyber-squatting happens when someone register domain names that seem similar to well-known trademarks in the hopes of selling the registration to the corresponding trademark holder..

Hence, A trademark in today's business world serves to identify a product, assure its quality, and market the product. Trademark rights promote competitiveness and product quality preservation. They allow customers to pick between two competing products by distinguishing one from the other. Yahoo! Inc v. Akash Arora (1999 IIAD Delhi 229, 78 (1999) DLT 285) was India's first cybersquatting case. In this case, the Delhi High Court declared for the first time that the company's domain name should be treated as a trademark and given equal protection.

II. FACTS OF THE CASE

Yahoo Incorporation owns the widely-known trademark Yahoo as well as the domain name Yahoo.com; both the trademark and the domain name have developed their own distinct character, goodwill, and reputation. Yahoo.com has been registered with Network Solution Inc by Yahoo Inc since 1995 and offers a wide range of web-based services. Yahoo Inc. registered the Yahoo trademark in 69 countries but did not register the domain name in India.


The defendant, Akash Arora, established a firm called Net Link Internet Solutions with the domain name 'Yahoo India,' with the same goal of offering internet services as Yahoo INC. As a result, Yahoo INC. sought an injunction to prevent the defendant from using the domain name 'yahooindia.com' or any other name that has its image. It sued Akash Arora for using a deceptively similar trademark to its own and passing off his services as those of Yahoo INC.


The Plaintiff found this and sued the corporation for trademark infringement as well as passing off. The Plaintiff sought an interim injunction under Order 39 Rule 1 & 2 of the CPC restraining the Defendant, as well as a permanent injunction for passing off under the Trademark and Merchandise Act.

III. ISSUES IDENTIFIED


A. The three key issues with which I will deal and describe here are critical to the evolution of relevant legislation. The most crucial question is whether domain names may be registered and protected like trademarks.


B. Which law should govern cybersquatting if domain names cannot be registered as trademarks?


C. Does the defendant's registration of the name 'Yahoo India' constitute to passing-off of Yahoo INC, and is this a violation of the plaintiff's trademark under the applicable provisions of the Trade and Merchandise Marks Act?


IV. CONTENTIONS ON BEHALF OF THE PETITIONERS

The main contentions on behalf of the petitioners (Yahoo ! Inc) were as follows:

A. In the case of trademark infringement, the plaintiff's domain name and trademark were protected since domain names have the same equitable rights as trademarks and should be afforded the same advantages for infringement and passing off.

B. The Defendants are cybersquatters since they operate in the same industry as the Plaintiff. Their only goal is to benefit from their illicit actions. The defendants used the same brand, 'Yahoo India,' and replicated the plaintiff's format, contents, layout, and colour scheme.

C. YahooIndia and Yahoo! are same and similar, and can easily deceive internet users who think the websites are the same, particularly when users insert the phrase into online search queries.

D. According to the Plaintiff's counsel, Mr. Kapil Sibbal, the domain is registered under the company's name and trademark, and its registration in India is now pending.


V. CONTENTIONS ON BEHALF OF THE RESPONDENT

The main contentions on behalf of the respondents (Akash Arora & Anr ) were as follows:


A. The Indian Trademark Act protects only commodities, not services. Mr. Harish Malhotra, counsel for the Defendant, relied on provisions 27(2) and 29 of the Trademark Merchandise Act. These sections describe a trademark as solely a good, not a good and a service.

B. The plaintiff's 'Yahoo!' trademark/domain name was not registered in India. As a result, the corporation is not permitted to conduct business in India. As a result, the defendants are cleared of the infringement and passing off claims.

C. "Yahoo!" is a generic dictionary term with no distinguishing features. This indicates that it is a pretty generic term that cannot be applied to a specific person or corporation. People are free to use it because it is in the dictionary.

D. The defendants claimed that they included a disclaimer on the website to notify consumers that YahooIndia is not the same as Yahoo. As a result, even if they appear identical, both brands should not be treated the same


VI. ROLE OF JUDICIARY

1) In Tata Sons Limited and Anr Vs fashion ID Limited (2005) 140 PLR 12;

The Hon'ble High Court of Delhi held that "the usage of the same or similar domain name may result in a diversion of users who may access one domain name instead of another."This may occur in e-commerce with its rapid progress and instant (and the erotically limitless) accessibility to users and potential customers, particularly in areas of specific overlap. Ordinary consumers/users looking for features offered under one domain name may be perplexed if they mistakenly get on a different but similar web site that does not provide such services. Such users may decide that the first domain name owner misrepresented its goods or services through promotional activities, and the first domain owner may lose their customer as a result. As a result, it is obvious that a domain name may possess all of the features of a trademark and may give rise to a passing-off action."


2) In Aqua Minerals Limited Vs Mr Pramod Borse & Anr AIR2001Delhi;

The Hon'ble High Court of Delhi held that unless and until a person has a credible explanation as to why he chose a particular name for registration as a domain name or for that purpose as a trade name that was already in long and prior existence and had established its goodwill and reputation, there can be no other conclusion than that the stated person desired to trade in the name of the trade name he had chosen for registration or as a domain name since it was an established name with widespread reputation and goodwill gained at great cost and expense in the advertisement.



3) Dr. Reddy's Laboratories Ltd. v Manu Kosuri and Anr 2001 (58) DRJ241,

The defendants were prohibited from using the domain name drreddyslab.com, which was identical to the plaintiff's trade name, because it gave customers the impression that the defendant's products were linked to the plaintiff's, allowing the defendant to profit by passing off its products as the plaintiff's. The plaintiff was granted a permanent injunction, and the defendant was barred from using the trademark in the future.


4) In Satyam Infoway Ltd. v Sifynet Solutions 2004 (6) SCC 145, brought this High Court decision to a conclusion and potentially a step forward. In this case, the Respondent registered two domain names, www.siffynet.com and www.siffynet.net, which are confusingly similar to the Plaintiff's domain name, www.sifynet.com. The plaintiff originally used the term "Sify" as an abbreviation for the name of its company, Satyam Infoway. This brand exerted significant market power. In an oft-quoted comment, the Supreme Court stated, "Domain names are corporate identifiers, serving to identify and distinguish the firm itself or its goods and services, as well as to establish its associated internet address." The court recognised that the domain possessed all of the characteristics of a trademark and upheld the Plaintiff's claim based on the passing off concept.


- Laws involved:-

'Passing off' under Section 27(2); Section 106 of the Trade and Merchandise Act, 1958.


- Rule of Law:-

If the defendant conducts business under a name that is sufficiently similar to the name under which the plaintiff is trading, and that name has gained a reputation, and the general public is likely to be misled by the fact that the defendant's business is a plaintiff's business or a group or department of the plaintiff, the defendant is liable for such actions.


VII. JUDGEMENT ANALYSIS

On February 19th, 1999, a one-judge bench comprised Justice M.Sharma issued a decision.

A. DECISION:

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.


B. DIRECTIONS:

The court considered both sides' arguments and cited the following:

- The Delhi High Court concluded that the definition of trademark, which includes goods but excludes services, applies to business, which is a general umbrella that includes both goods and services. The court also relied on Section 32 of the Lanham Act and the decision of Card Service International Inc v. McGee to determine that the defendants had committed trademark infringement.

- On the issue of trademark and domain name equal protection, the court analysed the case of Marks and Spencer v. One-in-a-Million, 1998 FSR 285 and held that both have equal protection because both are recognised as a means of identifying a company's brand both online and offline.


- The court reviewed the question of disclaimer and determined that it is insufficient because it does not repair the passing off of a trademark. It is only used when the owner wishes to alert the public to a different circumstance. Furthermore, with the introduction of the internet, it cannot be assumed that every user has a concept or understands the distinction between two different names that show the same thing.

- The court also looked at the matter of Renton & Hornby Ltd v. Zamindara Engineering Co. 1970 SC 1649, in which the key words were 'Renton' and 'Renton India.' The court ruled that because both names are deceptively close and identical, the two marks were the same.The court ruled that the defendants committed an error by infringing on the Plaintiff's trademark. It granted judgement in favour of the plaintiff and issued an interim injunction prohibiting the defendants from conducting any business under the trademark or name "Yahoo India.


C. ANALYSIS:

- The judgement is one of the torch-bearing judgments in matters concerning passing off. In this example, proper application of intellect and reason was demonstrated. The case was not only handled successfully by the Hon'ble Delhi High Court, but it was also passed efficiently and without delay. Though the defendant's arguments were edgy and logical enough for a layperson, the deeper logic could only be deduced by the Hon'ble court after appropriate application of mind. The 'no pain, no gain' approach was used, and the verdict was correctly rendered in favour of the plaintiff, Yahoo Inc.

- The essential concept of the passing off action is that no man is entitled to carry on his business in such a way as to give the impression that he is carrying on the business of another man or that he is carrying on or has any connection with the business carried on by another man.

- The court cited the case of Monetary Overseas v. Montari Industries Ltd.; 1996 PTC 42, which stated that "where a defendant does business under a name that is sufficiently similar to the name under which the plaintiff is trading, and that name has gained a reputation, and the public at large is likely to be misled that the defendant's business is the plaintiff's business, or is a branch or department of the plaintiff, the defendant is responsible for a passing off action."


- If the two disputing parties are in the same or a similar line of business, there is a serious and tremendous risk of confusion and deception, and therefore of damage. In this case, the Plaintiff and Defendants have a common field of activity.

- The Plaintiff's services under the domain name 'Yahoo! ' have been widely publicised and written about around the world. There are no two ways about it: the two marks/domain names 'Yahoo! ' of the Plaintiff and 'Yahooindia' of the Defendants are nearly identical, with the exception of the latter's usage of the suffix 'India.' There is every risk of misunderstanding and deceit occurring, and an Internet user may be confused and deceived into assuming that both domain names belong to the same source and connection, whereas they do not.


- When it comes to the three issues which are identified:

A. By definition, a domain name is an address comparable to any home address, such as '9 Akbar Road, New Delhi.' A domain name, on the other hand, is one-of-a-kind, and no two people may own the same domain name. Furthermore, a domain name may incorporate a person's name or any descriptive term as the SLD, which violates the key foundations of trademark law. As a result, domain names and trademarks do not appear to be interchangeable. In the world of ecommerce, domain names, on the other hand, act as identifiers for a specific brand of goods or a specific level of service.This may have prompted Indian courts to apply trademark law concepts to domain name disputes, ensuring that cybersquatting does not violate offline brand rights.


In Satyam Infoway Ltd. v Sifynet Solutions, the Supreme Court of India brought this High Court decision to a close and potentially took a step forward. In this case, the Respondent registered two domain names, www.siffynet.com and www.siffynet.net, which are confusingly similar to the Plaintiff's domain name, www.sifynet.com. The plaintiff first used the term "Sify" as an acronym for its company name, Satyam Infoway. This brand wielded considerable market power. "Domain names are company identifiers that serve to identify and distinguish the firm itself or its goods and services, as well as to establish its associated web address," the Supreme Court said in response to the Plaintiff's request in an oft-quoted comment. This case is notable because the court recognised that the domain possesses all of the features of a trademark and upheld the Plaintiff's claim based on the passing off concept.


B. Under India's current legal system, cybersquatting can be challenged in court, through arbitration before ICANN-approved panels, or by physically issuing cease-and-desist letters to the alleged cybersquatter. A dispute can also be registered with the.in registration, which is run by the National Internet Exchange of India (NIXI). The.in register offers a rapid dispute resolution mechanism, with matters being forwarded to arbitration within 30 days of complaint lodged. However, as indicated previously, these solutions are insufficient in a variety of ways. The primary object of cybercrime legislation, the Information Technology Act of 200072, is silent on the matter of cybersquatting. There is no law in India that prohibits cybersquatting. In the absence of effective laws, the legislature appears to have placed the ball in the court of the judiciary, as it is the judiciary that has moved forward to prohibit cybersquatting. As a result, in the case of domain names, courts apply the passing off concept.In Dr. Reddy's Laboratories Ltd. v Manu Kosuri, for example, the defendants were prohibited from using the domain name drreddyslab.com, which was identical to the plaintiff's trade name, because it gave customers the impression that the defendant's products were linked to the plaintiff's, allowing the defendant to profit by passing off its products as the plaintiff's. The plaintiff was granted a permanent injunction, and the defendant was barred from using the trademark in the future.


C. Yahoo Inc contended that Akash Arora used the domain name Yahoo to offer services similar to those of Yahoo Inc. and had attempted to capitalise on the goodwill generated by Yahoo Inc. because there was a high risk of an Internet user becoming confused and deceived, believing that both the domain names, Yahoo and Yahoo India, belonged to Yahoo Inc. As a result, Yahoo Inc. claimed that Akash is accountable for passing off. The court held Akash liable for passing off and barred him from using the deceptively similar domain name because the two trade marks/domain names 'Yahoo!' and 'Yahoo India!' were almost identical and the latter offered services similar to those offered by the former and the latter passed them off as being offered by Yahoo Inc. The court's decision in this case is based on the premise that where the value of a name is exclusively based on its likeness to the name or trade mark of another organisation, the public is likely to be misled by the use of such name, and such act would constitute passing off.


VIII. LATEST CYBERQUATTING INCIDENTS ARE:

· Amul It is one of India's largest dairy enterprises, with a sales turnover of around 38,550 crore Indian rupees in fiscal year 2019-2020. It became a victim of cybersquatting when someone purchased domain names such as Amuldistributor.com, Amulboard.com, Amufran.com, and so on. The conmen opened bogus bank accounts in Amul's name and emailed false forms. They even wanted money as a subscription fee to become an Amul distributor and franchisee, as well as running recruiting scams and charging people fees to submit job applications. The scam ran from 2018 to 2020, when Amul published a public warning about it and began legal steps to remedy it.

· Fox News Fox News sued the owner of the domain names xofnews.com and foxnews-entertainment.com for utilising the identical logo and design as the original Fox News site. Furthermore, visitors to these websites were welcomed with an article marketing a magical weight loss supplement. Near the end of the piece, a link to a payment page for purchasing the supplement was included. The issue here is that people will believe the statements because they are published on the website of what appears to be a legitimate media outlet.

· TikTok FotiosTsiouklas and Alan Gokugolu, two American friends, believed that the app TikTok would become a big brand and paid $2,000 for the domain tiktoks.com shortly after it began. TikTok's parent company, Bytedance, offered them $145,000 in exchange for the domain. The couple, on the other hand, chose to keep the domain and create a 'follower growth' company that offers a "follow-for-follow" service. They also charged a fee to assist people in increasing their following. After an unsuccessful negotiation for the tiktoks.com domain, Bytedance filed a cybersquatting case against the two friends in August 2020. According to the WIPO administrative panel judgement report, the corporation revised their case in September to include three additional domain names: tktokcharts.com, tiktokplant.com, and Tiktokexposure.com. The Panel ordered the couple to transfer all domains in dispute to the plaintiff by January 2021.

· Mistubishi Another trend in creating complaint sites is cybersquatters purchasing domain names they despise and then appending the phrase "sucks" at the end. Mitsubishisucks.com is a well-known complaint website. This website was built by a Mitsubishi hater, who provided data and graphs demonstrating Mitsubishi's sales decline, customer complaints, worker discrimination difficulties, safety concerns, and so on.


IX. CONCLUSION

'Yahoo INC v. Akash Arora' is a seminal case on 'cybersquatting' in India. The Delhi High Court has for the first time determined that a domain name has the same level of protection as a trademark. This is significant because it highlights a key issue in intellectual property law involving passing-off under Indian trademark law. The application of Sections 29 and 27 of the Trade and Merchandise Marks Act was also discussed in the case. Prior to this decision, domain names could not be registered as a trademark because they had to pass the uniqueness test. Domain names were a legal murky area when it came to trademark registration.

The test for a website name qualifying for trademark registration is whether it is capable of functioning as a trademark for the business's goods and services, rather than only as a website name. As a result, the court has the authority to halt the operation of firms that employ deceptively identical marks. According to the Trade and Merchandise Marks Act, the passingoff principle was construed as follows: If a particular defendant conducted his business under a name that was similar to the plaintiff's 'renowned' and 'distinctive' domain name, and the two firms were in the marketplace, the public could be deceived into mistaking one business' goods or services for the other.

As a result, the Internet is a peculiar place. For some, it is a location to look for resources, for others, it is a source of pleasure, and for still others, it is a place to do business. Often, a person is unaware of how his or her activities unintentionally affect another person's business. This is a famous example of how an internet user may not plan to visit another website, but their lack of awareness about persons with identical domain names finds them in hot water. This could result in massive losses for the legitimate proprietors of the websites. One recent example is fraudulent shopping websites. In such cases, the court of law is obligated with the obligation of delivering justice to the injured person and spreading information, thereby providing assurance to those who may encounter similar situations.


- REFRENCES


BOOKS:

· Cyber Crimes & Law: By Taxmann : Sushma & Raman Arora

· Cyber Crimes & Law: By Dr. Amit Verma

· An Introduction To Cyber Law: By Dr. J.P. Mishra

ARTICLES:

- https://www.lexology.com/library/detail.aspx?g=a6e45951-ce50-4272-89ed-b0c5a9d3f6b8

- https://www.researchgate.net/publication/333862487_Cyber-squatting_a_cyber_crime_more_than_an_unethical_act

- https://www.goodreads.com/genres/cyber-crime



By Tavleen Kaur, IX & B.A. Llb Criminal law (Hons.)

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