YAHOO INC VS. AKASH ARORA AND ANR - Does Domain Name Constitute Trademark Infringement?

YAHOO INC VS. AKASH ARORA AND ANR - Does Domain Name Constitute Trademark Infringement?. In this case, Yahoo Inc., a well-known internet services provider, accused Akash Arora of infringing on its trademark by using a deceptively similar domain name, 'yahooindia.com', which could potentially lead to confusion among internet users. The core issue was whether the use of a similar domain name constituted trademark infringement and could mislead the public, causing damage to Yahoo's reputation and business.
 
This case set an important precedent in Indian jurisprudence for internet-related trademark disputes. The court's decision and the principles it established became significant for future cases involving domain names and trademark infringement in the digital era. This is a significant case in the context of internet law and intellectual property rights, particularly concerning domain names and trademark infringement. Read the full article by Compliance Calendar to know in detail.
1. INTRODUCTION: WHAT IS DOMAIN NAME?
It did not take long after the advent of internet for people to realise the enormity of it. Products driven through internet has the potent to reach billions in few seconds which acts as an impetus to further growth. With the motive of expansion, many businesses started their online portal and hence, started the onset of domain name registration, the oldest domain name registration being “The Symbolics.com” dating back to 1985. Thus, as evident, the domain name acts as an online web locator of the respective business. The Internet Domain Name System (DNA) serves the purpose of locating one's web page on the internet which is unique amongst all. Some prominent examples of domain names are “.com”, “.org”, “.gov” called Top Levels Domains (TLD). There are many country specefic domain names as well for example, “.in” for India, “.uk” for United Kingdom, “.aus” for Australia called the Country Code Top Levels Domains (ccTLD). India has a domain name registry of its own called “INRegsitry” under the authority of National Internet Exchange of India (NIXI) which regulates the provisions pertaining to “.in” and “.Bharat” domain names.
2. CHALLENGE POSED TO DOMAIN NAMES: AKA CYBERSQUATTING:
Cybersquatting is the unethical practice of registring a domain name which is identical or deceptively similar to the domain name or the trademark of someone else. The usual practice of cybersquatters involves registering domain name in a country where a potential famous brand has no presence in order to dupe customers and divert the profit of the brand or to later, sell the domain name to that brand itself at a premium. Unlike trademark law, cybersquatting unfortunately has no seperate law of it's own which results in its very misuse. As there is no set ground or conditions for registration of domain names or grounds of refusal as such, the domain name is registered easily on a ‘firtd come first serve’ basis which later adds onto the domain name disputes.
 
As India has no law exclusively addressing the domain name dispute or the issue of cybersquatting, the Trademarks Act, 1999 and the active interpretation of judiciary comes into picture and fills the existing gap. Yahoo Inc vs. Akash Arora and anr is the landmark judgement of Delhi High Court which is the first of its kind and paves pay for protection of domain names under the Trademarks Act, 1999.
3. YAHOO INC Vs. AKASH ARORA AND ANR (1999 IIAD Delhi 229)
3.1. BRIEF FACTS:
The case dates back to 1999 when the well known brand ‘Yahoo’ (plaintiff ) was not so well known in India and did not had it's trademark registered in India. However, it was well known in other parts of the world with trademark registration in over 65 countries. Akash Arora, the defendant in the present case started a business by the name of “Yahoo India” and registered the same as a domain name as well. The issue of infringement became more prominent as the defendant was using the trademark to provide services similar to Yahoo Inc. Owing to the striking similarity in services provided and the usage of word “Yahoo”, the plantiff filed a suit for permanent injunction to stop Akash Arora including his predecessors and representatives from using the said domain name in any manner which relates to the services of the Plaintiff or the usage of their trademark “Yahoo”.
3.2. ISSUES INVOLVED:

Are domain names protected under Intellectual Property Rights (IPR)?

Is the defendant’s act of using similar/ identical mark for providing similar/identical services an act of passing off the plantiff’s services as it's own?

3.3. PLANTIFF'S ARGUMENTS:
        
It was set forth that since “Yahoo” is a well known trademark and has considerable presence in 65 countries, is the rightful owner of the mark and the domain name “Yahoo.com” and that any person, including the defendant, using the same in the practice of trade, to sell, advertise and do business will do an act that will amount to ‘passing off’ of the plaintiff's services as it's own. It was raised as a contention that since domain name serves the exact purpose of trademark however, in an online world, it still deserves the same level of protection against infringement as a trademark does.
3.4. DEFENDANT’S ARGUMENTS:
The major contention raised by the defendant was that since the Indian Trade Marks Act dealt only with goods and not services, the plantiff's trademark cannot be protected under the same as they deal with providing service. Further, it was said that no case of passing off or infringement arises as the mark was not registered in India and moreover, the defendants were using the mark alongside a disclaimer.
3.5. JUDGEMENT
The court ruled in favour of “Yahoo Inc”, the plaintiff and set forth a restraining order against Akash Arora to stop the trademark infringement. The court further agreed that usage of deceptively similar domain name by the defendant amounts to cybersquatting. This was a landmark case as trans-border reputation was given priority even though the plantiff's trademark or domain name was not registered in India. It was held that “Yahoo” had considerable presence and reputation in other major parts of the world and merely because it is not registered in India, cannot stop them from gaining rights over their brand name.
CONCLUSION
This judgment started the practice of protecting domain names and giving them equal protection as that of trademark. At the practice goes on,  domain names still serve the purpose of identifying the brand name and linking the customers to their desired good/services. However, India should work on getting a separate law of it's own to provide a proper framework on grounds for registering domain name, resolving disputes among other major guidelines. You can read more articles on Trademarks here.

YAHOO INC VS. AKASH ARORA AND ANR - Does Domain Name Constitute Trademark Infringement?

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