YAHOO INC Vs. AKASH ARORA

JUDGEMENT

(1.) The present suit has been instituted by the plaintiff against the defendants seeking for a decree of permanent injunction restraining the defendants, (heir partners, servants and agents from operating any business and/ or selling, offering for sale, advertising and in any manner dealing in any services or goods on the Internet or otherwise under the trademark/domain name 'Yahooindia.Com' or any other mark/domain name which is identical with or deceptively similar to the plaintiff's trademark 'Yahoo' and also for rendition of accounts and damages. The plaintiff has also filed an application under Order 39, Rules 1 & 2, Civil Procedure Code praying for an ad interim temporary injunction restraining the defendants from operating any business and / or selling, offering for sale, advertising and in any manner dealing in any services or goods on the Internet or otherwise under the trademark/domain name 'Yahooindia.Com' or any other mark/domain name which is identical with or deceptively similar to the plaintiff's trademark 'Yahoo'.

(2.) Mr. Kapil Sibbal, Counsel appearing for the plaintiff submitted that the plaintiff is the owner of the trademark 'Yahoo' and domain name 'Yahoo.Com', which are very well-known and have acquired distinctive reputation and goodwill and the defendants by adopting the name 'Yahooindia' for similar services have been passing off the services and goods of the defendants as that of the plaintiff's trademark 'Yahool' which is identical to or deceptively similar to the plaintiff's trademark. It was submitted that a domain name/trademark adopted by the plaintiff is entitled to equal protection against passing off as in the case of a trademark. In support of his submission, the learned Counsel heavily relied upon the ratio of the decisions in Marks & Spencer v. One-in-a-Million, reported in 1998 FSR 265. It was submitted that the trademarks and domain names are not mutually exclusive and there is an overlap between the trademarks and services rendered under domain names and thus by adopting a deceptively similar trademark 'Yahooindia', the defendants have verbatim copied the format, contents, lay out, colour scheme, source code of the plaintiff's prior created regional section on India at Yahoo. Com and thus passing off the services of the defendants as that of the plaintiff. He submitted that Internet users are familiar with the practice of companies to select domain names that incorporate their company name, well-known trademark, and/or product/service name and generally attempt to locate a particular company's web site by simply typing in www.(company name).com or www.(productname).com when they are unsure of the Internet address of the Company. According to him, thus, it would not be unusual for someone looking for an authorised 'Yahoo' site with India-specific content to type in 'Yahooindia.Com', i.e., the defendants' donain name and thereby instead of reaching the Internet site of the plaintiff, the said person would reach the Internet site of the defendants'. He further submitted that the plaintiff in fact provides extensive content on India, both on its Yahoo! Asia site and at its main Yahoo.com site, under the categories "Regional:Counti-ies:lndia". It was submitted that the defendants being in the same line of activity as that of the plaintiff, the defendants have tried to be 'cyber-squatters' and, thus, dishonesty is writ large as the defendants have adopted a trademark similar to that of the plaintiff which is 'Yahoo.com' which has acquired a distinctive name, goodwill and reputation.

(3.) Mr. Harish Malhotra, Counsel appearing for the defendants, however, refuted the aforesaid allegations and submitted that the trademark laws in India relate to goods and, therefore, the provisions of Indian Trade Marks Act are not applicable to the facts and circumstances of the present case which deals only with goods. It was also submitted that the trademark/domain name 'Yahoo of the plaintiff is not registered in India and, therefore, there cannot be an action for infringement of the registered mark nor could there be any action of passing off as the services rendered both by the plaintiff and the defendants cannot be said to be goods within the meaning of the Indian Trade Marks Act which is concerned only with goods and not services and thus the decisions relied upon by the Counsel appearing for the plaintiff are not relevant for the purpose of deciding the present case. He further submitted that the word "Yahoo!" is a general dictionary word and is not invented and, therefore, it could not have acquired any distinctiveness and since the defendants have been using disclaimer, there could be no chance of any deception and thus, no action of passing of is maintainable against the defendants. He also submitted that the persons using Internet and seeking to reach the Internet site are all technically educated and literate persons and, therefore, there is no possibility of any customer reaching the Internet site of the defendants with the intention of reaching the Internet site of the plaintiff and thus, it is not a case of unwary customer which is applicable in a case of infringement and passing off of the trademark. In the light of the aforesaid submissions, let me now consider as to whether the plaintiff has been able to make out a prima facie case for grant of temporary injunction as sought for in the application.