The Yahoo! Inc. is considered as a landmark case on cybersquatting in India
as it was for the primary time that the High Court of Delhi held that a
registered website name similar to the trademark giving it the entitled, equal
protection. It presents an important issue of law pertaining to the passing off
under Trademark law in India. The case discusses Sections 27 and 29 of the Trade
and Merchandise Marks Act and its applicability to the case.
Facts of the Case
- Yahoo Incorporation, the plaintiff was the owner of a documented
trademark, “Yahoo” and of the name “Yahoo.com” both domain name and
trademark acquired a distinctive name, good will and reputation
- Since 1995, Yahoo.com was registered by Yahoo Inc with Network Solution
known to offer a wide range of web-based services.
- In almost 69 countries, the trademark was registered in or was on the
brink of being registered countries.
- The plaintiff’s Yahoo Inc did not register its name in India.
- The defendant, Akash Arora started a company with the domain name “Yahoo
India” which offered internet services similar to that of the plaintiff,
- The plaintiff aggrieved by this filed a suit seeking permanent
injunction in order to restrain the defendant from continuing their business
under the impugned domain name of ‘Yahooindia.com’ or any identical name.
- The plaintiff subsequently filed an application for an ad interim
temporary injunction under Order 39 Rules 1 and 2 of CPC in order to
restrain the defendants from using the plaintiff’s domain name
- Whether a domain name is protected under the Intellectual Property
- Whether the defendant’s act of registering the name “Yahoo India” to
offer identical services as that of the plaintiff’s Yahoo Inc be considered
as an infringement of the plaintiff’s trademark and amount to passing-off
under the relevant sections of the Trade and Merchandise Marks Act?
The plaintiff’s counsel contented that the plaintiff’s trademark and domain were
not only well-known marks but also had a ‘distinctive reputation’ and ‘goodwill’
and the defendants by using the domain name of ‘Yahoo india’ were passing off
their goods and services as that of the plaintiff owing to the fact that ‘Yahoo
India’ was strikingly ‘identical and deceptively similar’ to the trademark of
The counsel submitted that that the plaintiff’s domain name and trademark were
protected against a passing off action as that would be in the case of an
infringement of trademark. The counsel added that the defendants by taking a
deceptively identical trademark and copying the general overlay of the
plaintiff’s domain name, attempted to pass off their services as that of the
The counsel submitted that:
the plaintiff’s trademark/ domain name is entitled to protection against passing
off as it would be in the case of a trademark. The counsel added that domain
names and trademarks are not mutually exclusive and that there is an overlap
between trademarks and services rendered under domain names.
Hence, the defendants who adopted a deceptively identical trademark 'Yahoo
India', have verbatim copied the plaintiff’s prior created regional section
including its format, contents, lay out, colour scheme, source code of the
plaintiff's prior created regional section on India at Yahoo.com.sg and claimed
that it can be considered as passing off the services of the defendants’ as that
of the plaintiff.
The counsel submitted that internet users who are familiar with the practice of
companies to select domain names which usually incorporate their name,
trademark, product/service name would attempt to locate a company's web site by
typing either www.(company name).com or www.(product name).com when they are not
completely sure about the company’s internet address of the Company and that it
cannot be considered unusual for users looking for an authorised 'Yahoo!' site
with India-specific content to type in 'Yahooindia.com', which would take them
to the defendants site.
It was further stated that the plaintiff provided extensive content in India,
both on its Yahoo Asia site and at the main Yahoo.com site, under the categories
"Regional: Countries: India”.
Following this, it was submitted that the defendants who were in the plaintiff’s
line of activity made an attempt to be 'cyber-squatters' and added that
dishonesty is writ large because the defendants adopted a trademark identical to
that of the plaintiff which had already acquired a distinctive name, goodwill
and reputation by then.
The Defendants’ Contentions:
The counsel for the defendants, strongly refuted the allegations made by the
plaintiff’s counsel and submitted that the trademark laws in India only relate
to goods and making the provisions of the Indian Trade Marks Act inapplicable in
the present case.
The counsel added that the plaintiff’s trademark/domain name 'Yahoo!' was not
registered in India and therefore not only an action for infringement of the
registered mark but possibility of any action of passing off must be over ruled.
The counsel stated that the services rendered both by the plaintiff and the
defendants cannot be said to be goods within the purview of the Indian Trade
Marks Act as the provisions are not concerned with services and that the
decisions the plaintiff’s counsel relied upon are irrelevant for to decide the
It was further submitted that "Yahoo!" is a general dictionary word and not
vented, and that cannot be said to acquire any distinctiveness. Since the
defendants used a disclaimer, the counsel said there is not even slightest scope
for deception and no action of passing of would be maintainable against the
The counsel added that the internet users seeking to reach the Internet site are
all technically educated and literate making it highly unlikely that for a
customer reaching the defendant’s internet site with an intention of reaching
the plaintiff’s site and thus, this cannot be a case of unwary customer that is
applicable in the case of infringement and passing off of the trademark.
The Court in the present case addressing the issue of trademark not being
registered in India stated that though the trademark of the plaintiff 'Yahoo!'
was pending in India, plaintiff is a popular global Internet media rendering
services under the domain name/trade name 'Yahoo!'.
The court was of the opinion that the present case does not concern itself with
an action for infringement of a registered trademark, but addresses the issue of
an action for passing off and stated that the law relating to passing off is
well-settled and is a common law remedy.
In this regard, the court added that “the principle underlying the action for
passing off is that no man is entitled to carry on his business in a way that
leads 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 court quoted the case of Monetary Overseas vs Montari Industries Ltd
where the defendant adopted a trade name identical as that of plaintiff’s trade
name and the court held that the defendant is liable for an action in passing
Adding on the issue of services rendered by a person being included within the
scope of passing off, the court made reference to the decision in Ellora
Industries Vs. Banarsi Dass & Ors
2 wherein the court held that since
plaintiff and the defendant were direct competitors and Ellora
business name suggests association with the plaintiffs' registered trade mark,
it is suggestive that the source of the goods is the same making it a
misrepresentation in relation to origin of goods which the defendants
manufacture in the course of their business.
The court quoted Lord Halsbury’s definition of tort of passing off which was
stated in Reddaway Vs. Banham
3 and added the observation of Lord Greene
M.R which is as follows:
"Passing off may occur in cases where the plaintiffs do not in fact deal with
the offending goods".
The court was of the opinion that since the plaintiff and the defendants had
common field of activity and were operating on the Web site providing
information identical in nature, competition and rivalry is an obvious outcome.
The court addressing the issue of the possibility of users reaching one site
intending to reach another cited that case of Card service International Inc.
4, the Court granted the injunction as per, Section 32 of the
Lanham Act as it held that customers would instead reach a different web page
assuming it would be the same they intended to reach.
The court referred the case mentioned by the plaintiff’s counsel, Marks &
Spencer Vs. One-in-a-Million
5; wherein it was held that:
any person who deliberately registers a domain name on account of its similarity
to the name, brand name or trademark of an unconnected commercial organisation
must expect to find himself on the receiving end of an injunction to restrain
the threat of passing off, and the injunction will be in terms which will make
the name commercially useless to the dealer.
It was held that though the word 'services' may not be expressly used in
Sections 27 and 29 of the Trade and Merchandise Marks Act, the services rendered
may be recognised for the action of passing off making the law of passing off an
action under the common law which is very well given a statutory recognition in
the Trade Mark Act.
Talking about the issue raised by the defendant’s counsel that Internet users
are technically educated and literate people who may appropriately approach the
actual Internet site they intend to visit, the court stated that it does not
appear to have force. The reason being that even if an individual is a
sophisticated, he/she could be an unsophisticated consumer of information and in
such cases he/she may find their way to the defendant site that provides
identical information as that of the plaintiff.
Addressing the issue raised by the defendant’s counsel in relation to using a
disclaimer, the court stated that a disclaimer by the defendants cannot
eliminate the problem.
In support to this statement the court made a reference to the case of Jews
for Jesus Vs. Brodsky
6; wherein it was held that owing to the nature of
Internet use, defendant's appropriation of plaintiff's mark as a domain name and
home page address cannot adequately be remedied by a disclaimer.
Pertaining to the defendant’s contention regarding the word 'Yahoo!' being a
dictionary word and hence cannot be appropriated as a domain name/trademark, the
court was of the opinion that it is highly misplaced because though the said
words are mere dictionary words they have acquired uniqueness and
distinctiveness after being associated with the business of the concerned
company and that such words have come to receive maximum degree of protection by
In support to this statement, the court referred to the case of N.R. Dongre
Vs. Whirlpool Corp
7, ,wherein the court recognising the uniqueness and
distinctiveness of the trade name, held that the reputation of the trademark
'WHIRLPOOL' travelled across the borders and though the respondents are not the
registered proprietors of the 'WHIRLPOOL' in India in respect of washing
machines, an action of passing off against the appellants in respect of the use
of the same can be maintained.
The court held that since the plaintiff was successful in making a prima facie
case for the grant of ad interim injunction in their favour, an ad interim
injunction will be passed in favour of the plaintiff as against the defendants
thereby refraining the defendants and their partners/servants/agents 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 deceptively similar to the plaintiff’s trademark
till the disposal of the suit.
The case is rightly considered as a landmark judgment as it was the first time a
domain name was equated to a trademark thereby providing equal protection from
passing off in India. The case paved a breakthrough by addressing the issue of
making the common law principle of passing off applicable in cases of domain
names as well and made the judgment a significant precedent for other
internet-based trademark related cases in India.
The judgment can be considered significant in the impact it caused by stating
that law of passing off for infringing trademarks and domain names in cases of
services as well given the situation of uncertainty and confusion with respect
to infringement of domain names.
The case was one of the very few cases that highlighted the concept of cyber
-squatting which needed immediate attention. Laying down remedies to plaintiffs
in such cases can be considered as a great relief to people who have not only
been victims of such cases but also to people who intend to venture into new
businesses of a nature which is vulnerable towards infringement of domain names.
The court by referring to both Indian and foreign judgements made its stance
clear and strong.
Internet is a strange place. For one it is a place to search for resources, for
one it is a source of entertainment and for one it is a place of carrying out
business. Often a person does not realise how his/her actions make a huge
difference in an another person’ business unintentionally. This case is a
classic example that shows that an internet user might not intend to go to
another site but their lack of knowledge about people using identical domain
names lands them in soup.
This could result in huge loss to the rightful owners of the internet sites.
Fake shopping websites are one of the contemporary examples. In such situations,
the accurate interpretation of provisions and correct identification of remedies
in the court of law is obliged with the responsibility of delivering justice to
the aggrieved party and spreading awareness thereby giving assurance to the
people who may face similar situations.
Equivalent citations: 1999 IIAD Delhi 229, 78 (1999) DLT 285
Author: M Sharma
Bench: M Sharma
- (Montari Overseas Limited vs Montari Industries Limited, 1995
- (Ellora Industries vs Banarsi Das Goela And Ors, 1979)
-  A.C. 199
- 950 F. Supp. 737 (E.D. Va. 1997) January 16, 1997
-  F.S.R. 265, The Times, December 2, 1997.
- 98 Civ. 274 (AJL)
- 6 (N.R. Dongre And Ors vs Whirlpool Corporation And Anr,1996)
Award Winning Article Is Written By: Ms.K.Vennela
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