In this article, the first case of ‘cybersquatting’ in India is discussed, wherein the Delhi High Court held that domain names serve the same function as trademarks and thus are equally protected under the trademark law.
By: Charu Bajaj, Final Year Student at Geeta Institute of Law (2015-2020)
Yahoo Incorporation is the proprietor of the notable trademark, ‘Yahoo!’ and of the area/domain name Yahoo.com, both the trademark and the area name procured a unique name, goodwill and reputability.
Yahoo.com has been enrolled by Yahoo Inc. with Network Solution Inc. since 1995 and offers an entire scope of online administrations. The trademark ‘Yahoo!’ was about to get registered in 69 nations. Yahoo Inc. had not registered its domain name in India. Akash Arora began to offer electronic similar services like those offered by Yahoo.com under the name of Yahooindia.com
Yahoo Inc. had sued Akash Arora for utilizing a trademark misleadingly like its own and making his administrations look like those offered by Yahoo Inc.
Plaintiff additionally seeked a temporary injunction limiting the defendants from doing any business on the web or in any case under the domain name ‘Yahooindia.Com’ or any name which is indistinguishable or is deceptively similar to the plaintiff’s trademark.
Whether the demonstration of Akash Arora in enrolling the domain name Yahoo India, to offer administrations like those offered by Yahoo Inc., is an infringement of the trademark of Yahoo Inc. and amounts to passing off under the provisions of the Trade and Merchandise Marks Act?
Arguments by the Plaintiff:
- Domain name embraced by the plaintiff is qualified for equivalent insurance against making look a like on account of a trademark.
- By embracing a deceptively similar trademark ‘Yahooindia’, defendants are passing off their administrations look like that of the plaintiff.
- It would not be uncommon for somebody looking for an approved ‘Yahoo!’ website with India-explicit substance to type in ‘Yahooindia.com’ and along these lines the said individual would arrive at the Internet webpage of the defendants.
- The defendants are in a similar line of movement as the plaintiff and have attempted to commit ‘cybersquatting’ by maliciously using a trademark like that of the plaintiff.
Arguments by the Respondents:
- The trademark laws in India identify goods and, along these lines, the arrangements of Indian Trade Marks Act are not relevant to the realities and conditions of the current case which manages products.
- Trademark/domain area name ‘Yahoo!’ of the plaintiff isn’t enrolled in India and, accordingly, there can’t be an activity for encroachment of the enlisted mark nor could there be any activity of passing off rendered both by the plaintiff and the defendants as per the Indian Trade Marks Act.
- “Yahoo!” is a general reference word, in this way, it couldn’t have gained any peculiarity and the defendants have been utilizing disclaimer, in order to evade any odds of trickery.
- The people using the internet and looking to arrive on the website are on the whole in fact instructed and educated people, and consequently there is no chance of any client arriving at the internet webpage of the defendants with the aim of arriving at the website of the plaintiff.
The fundamental rule for the activity of passing off is that no man is qualified to carry on his business so as to prompt the conviction that he is carrying on the business of another man or to persuade that he is continuing or has any association with the business carried on by another man.
- The fundamental rule for the activity of passing off is that no man is qualified to carry on his business so as to prompt the conviction that he is carrying on the business of another man or to persuade that he is continuing or has any association with the business carried on by another man.
- The court alluded to the instance of Monetary Over oceans v. Montari Industries Ltd.; 1996 PTC 42 where it was held that, “when a defendant works together under a name which is adequately near the name under which the plaintiff is trading and that name has gained a notoriety and the general population everywhere is probably going to be misdirected that the defendant’s business is the matter of the plaintiff, or is a branch or division of the plaintiff, the litigant is at risk for an activity in passing off.”
- If the two challenging parties are associated with a similar line or comparable line of business, there are grave and enormous opportunities for disarray and double dealing and, in this way, there is likelihood of harm. In such a situation, both the plaintiff and the defendants have a common field of movement.
- The administrations of the plaintiff under the domain name ‘Yahoo!’ have been broadly advertised and expounded across the world. There is no doubt that the two trademarks/domain names, ‘Yahoo!’ of the plaintiff and ‘Yahooindia’ of the defendants are practically comparable with the exception of utilization of the addition ‘India’ in the last mentioned. There is a high probability of disarray and misleading the public and an internet client can be befuddled and deluded in accepting that both the domain names have a single source and association, in spite of the fact that they aren’t.
- Therefore, the court order was allowed for the plaintiff.
Domain names are, fundamentally, not enrolled as trademarks as they must be analyzed for the proof of peculiarity. Domain names are neither qualified nor ineligible for enlistment as trademarks. The test for a domain name to be enrolled as a trademark is whether the domain name can work, not just as a domain name, yet in addition as a trademark for products or administrations.