Date of Judgment –19th February, 1999
Court – Delhi High Court
- Bench – Justice Dr MK Sharma
- Case Number – I.A. No. 10115/1998 and Suit No. 2469/1998
Parties:
Owner of “Yahoo! Inc.”– Plaintiff
Akash Arora owner of ”Yahooindia.com”– Respondent
Subject: Domain name ‘Cyber Squatting’ in India.
- A decree of permanent injunction made against the defendants (Akash Arora), their partners, servants, agent from operating any businessor selling, offering for sale, advertising and providing identical services with same domain name.
- Plaintiff company has also told that defendant have deceptively taken the similar trademark “Yahoo India” by copying the format, contents, layouts, fonts, sound, graphics, color.
- The trademark acts in India relates only to goods and thus the provision of the Indian Trademark Act, 1999 are not applicable to the services. In the present case the case is related to the services and not applicable on Trademark.
- As a Global pioneer Yahoo! Inc. has registered it self in many countries but in 69 countries its registration was pending including India.
- Akash Arora smelled the opportunity and started a web-based service providing company under the name Yahoo Indiaand started providing identical services.
- Yahoo Inc sued upon Akash Arora for passing off in the name of Yahoo Inc, using a deceptive and a very closely identical name to misappropriate undue profits from the famous name of Yahoo!.
- Defendant said the name Yahoo neither created nor Invented, it is a general exclamation in the Dictionary.
- Defendant said the person who is using the services are technically educated and literate. Thus there are no chances of them reaching the Yahoo India rather than Yahoo! Inc.
The court observed the 4 essentials which enshrined likewise,
The Defendant pointed out “passing off” services
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.
Therefore, if the two competing parties are involved in the similar business, confusion and deception arise.
As in this case both Plaintiff and Defendant are running their business which are identical.
The plaintiff is the owner of trademark under domain name Yahoo.com
The plaintiff had already registered in 1995. However, in 69 countries the registration is pending including India, that does not mean that someone can use the Same Domain which has already been registered.
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 4 essentials enshrined in the case of Monetary Overseas Vs. Montari Industries Ltd.,1996 PTC 42 were fulfilled in the present case.
Conclusion:
The judgment was counted amongst one of the torch-bearing judgments in the cases involving passing off. Due application of mind and reason has been exhibited in the case.
The principle underlying the action for passing off 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.
The Principle of ‘No pain no gain’ applied and the judgment was rightly passed in the favor of the plaintiff ‘Yahoo Inc.’
The defendants are also restrained from copying the contents of the programs of the plaintiff under the domain name ‘Yahoo.com’.
