IPR Delhi High Court Judgment- Yahoo! Inc. v. Akash Arora & Anor [1999 (19) PTC 201 (DEL)]

 

Introduction

Trademark came into existence long before the world envisaged domain names. The decision of the court in the Yahoo! Case is a stare decisis and forms the basis upon which subsequent Indian cases rely on.

Trademark is any symbol, letter, emblem, mark, figure, device, etc. that represents a company and its mode of business. Trademark is applied to both goods and services, although the Indian Trademarks Act made provision for only goods, the court interpreted it to also mean services.

Domain name is a unique easy-to-remember character string devised to replace IP addresses. Domain names are used to identify businesses and websites online and it can be assigned varying name extensions.

Cybersquatting is the registering popular or well-known internet names in anticipation that such names will be sold at a profit. There are tons of cybersquatters online. These individuals coin names that either similar or almost identical to a popular brand and use such registered names to confuse internet users and rake in profits.

The definition of Trademark, Domain names and Cybersquatting all play a role in the above case. While the Plaintiff sued for infringement of its intellectual property rights, the defendant opposed the plaintiff’s view with varying options such as generic name, disclaimer and trademark’s protection of goods only.

 

The Facts of the Case-

The Plaintiff is a global internet company with a domain name registered as Yahoo on 18th January 1995 under the Network Solution Inc. The company filed for registration of the trademark in several countries.

On the whole, there were approximately at the time of the case, registrations and pending registrations in 69 different countries. At the time of the lawsuit, the Indian registration was still pending. The Plaintiff displays targeted content to different regions under the regional content tab on its homepage or under the dedicated pages created for various regions of the world.

The defendant, on the other hand, was a company registered as Net Link Internet Solutions. The company got the domain name yahoo India and began to use it including replicating the content, form, and pattern of the Yahoo page.

The Plaintiff found out and sued the company for infringement of their trademark and also for passing off. The Plaintiff filed for an interim injunction under Order 39 Rule 1 & 2 of the CPC restraining the Defendant and a permanent injunction under the Trademark and Merchandise Act for passing off.

 

Issues for Determination

The Plaintiff raised the following issues

• Domain names have the same equitable rights as Trademarks and should be accorded the same benefits for an infringement and passing off.
• The Defendants are cybersquatters as they are in the same line of business as the Plaintiff. Their sole aim is to make a profit from their illegal activities.
• YahooIndia and Yahoo! Are identical and similar and can easily mislead the internet users who would think the websites are the same, especially when the users type in the word into the internet search queries.
• The Plaintiff through its counsel, Mr. Kapil Sibbal argued that the domain is registered under the company’s name and trademark and its registration in India is currently pending.

The defendants contended on the following issues.

• The Indian Trademark Act only protects goods and not services. The counsel for the Defendant, Mr. Harish Malhotra, relied on sections 27(2) and 29 of the Trademark Merchandise Act. These sections define a trademark to include only goods and not goods and services.
• The defendants argued that Yahoo is not a registered trademark in India. Thus, the company is not permitted to carry on business in India. The defendants are therefore exonerated from the lawsuit of infringement and passing off.
• Yahoo is a word in the dictionary. This means that it is a rather generic word and cannot be confined to one person or company. Since it is in the dictionary, people are allowed to use it freely.
• The defendants argued that they put a disclaimer on the website to inform its users that YahooIndia is different from Yahoo. Thus, both brands should not be treated the same even if they look similar.

It is from these issues that the court made its own deduction and passed a decision on the case.

 

The judgment of the Delhi High Court

The court analyzed the arguments on both sides and adduced to the following-

• On the definition of Trademark which includes goods and excludes services, the Delhi High Court held that the definition of trademark pertains to business which is a general umbrella that covers both goods and services.
  The court also relied on section 32 of the Lanham Act and the case of Card Service International Inc v. McGee to decide that there was an infringement of trademark by the defendants.
• On the issue of the equal protection of trademark and domain name, the court considered the case of Marks and Spencer v. One-in-a-Million, 1998 FSR 285 and held that both have equal protection as both are viewed as a means of identifying a company’s brand both online and offline.
• The court considered the issue of disclaimer and held that it does not suffice because the disclaimer does not correct the passing off of a trademark. It is only applicable when the owner wants to warn the people about a different situation.
  Also, since the advent of the internet, it cannot be presumed that every user has an idea or knows the difference between two varying names that show the same thing.
• The court also considered the case of Renton & Hornby Ltd v. Zamindara Engineering Co. 1970 SC 1649 where the bone of contention was ‘Renton’ and ‘Renton India’. The court held that both names are deceptively similar and identical and as such, the two marks were the same.

The court decided that the defendants erred by infringing on the trademark of the Plaintiff. It awarded judgment in favor of the plaintiff and held for an interim injunction restraining the defendants from carrying out any business in any manner whatsoever under the trademark or name “Yahoo India”.