The case that we are to see today is literally a lawmaker, and those types of the case only come by very rarely. Yahoo who was in the best web-service company in the ’90s were shocked to see a company called Yahoo India already active in the Indian web-market. The problem was that Yahoo Inc doesn’t have a trademark in India. A tricky knot that was written as a law later.
CASE FACTS
Yahoo Incorporation owns the well-known trademark, Yahoo with the domain name Yahoo.com; both the trademark and the domain name acquired a distinctive name, goodwill, and reputation. Yahoo.com was registered by Yahoo Inc in the Network Solution Inc at the year 1995 and was performing a whole range of web-based services. The trademark Yahoo was close to getting registered in 69 different countries and jurisdictions. But the problem was that Yahoo Inc had not registered its domain name in India.
Akash Arora had started to offer web-based services like Yahoo.com and with the name of Yahoo India. Yahoo Inc sued Akash Arora for using a trademark that is deceptively like its own and providing similar services provided by Yahoo Inc. The main issue was whether the act of Akash Arora on registering the domain name Yahoo India and offering services which are similar to Yahoo Inc, is an infringement of the trademark laws of Yahoo Inc. but then was whether this issue amounts to passing-off under the relevant sections of the Trade and Merchandise Marks Act?
RULE OF LAW
When the defendant was performing business under a name which is sufficiently close to the name under which the plaintiff is performing trading and that name has already acquired a significant reputation and the public at large are likely to be misguided that the defendant’s business is the business of the plaintiff or is a subsequent branch or department of the plaintiff, therefore the defendant should be liable for such an action in passing off.
ANALYSIS:
Yahoo Inc contended that Akash Arora adopted the domain name of Yahoo to offer services similar to those of Yahoo Inc and had attempted to cash in on the goodwill generated by Yahoo Inc.
because there was every possibility of an Internet user getting confused and deceived, believing that both the domain names, Yahoo and Yahoo India belong to Yahoo Inc… Therefore, Yahoo Inc. argued that Akash is liable for passing off.
As the two trademarks/domain names ‘Yahoo!’ and ‘Yahoo India!’ were almost similar and the latter offered services similar to those offered by the former and as the latter passed them off as being offered by Yahoo Inc.,
the court held Akash liable for passing off and restrained him from using the deceptively similar domain name. The decision of the court, in this case, is based on the rationale that where the value of a name lies solely in its resemblance to the name or trademark of another organization, the public is likely to be deceived by the use of such name and such act would amount to passing off.
