Yahoo!, Inc. v. Akash Arora & Anr.

Relevant Acts and provisions

Trade and Merchandise Marks Act, 1958

Section 27(2)

Provisions considered: Common law passing off, read with the saving for unregistered marks in Section 27(2) of the Trade and Merchandise Marks Act, 1958.

Brief facts

Yahoo!, Inc., owner of a well-known internet search and information service and its associated domain name, sued the defendants in the Delhi High Court after they began operating an internet portal under a nearly identical domain name incorporating the plaintiff's mark with a country suffix, offering similar services. Yahoo! had no registered trade mark in India at the time. It alleged that the defendants' domain name and website get-up were deceptively similar to its own, and sought an interim injunction.

Issues before the Court

1. Can a domain name function as a trade mark and business identifier attracting passing off protection?
2. Was the defendants' domain name deceptively similar so as to cause confusion?
3. Was the plaintiff entitled to an interim injunction despite having no registered trade mark in India?

Court's findings

The Court held that a domain name serves not merely as an internet address but also as a business and source identifier, performing functions substantially similar to a trade mark, and is therefore entitled to protection against passing off notwithstanding the absence of domain-name-specific legislation in India.

The Court found that the defendants' domain name was almost identical to and phonetically the same as the plaintiff's mark and domain name, and that internet users of average intelligence and imperfect recollection were likely to be confused into believing that the defendants' services originated from or were associated with the plaintiff, particularly since the defendants also replicated the format and colour scheme of the plaintiff's services.

The Court rejected the defence that a disclaimer on the defendants' website was sufficient to prevent confusion, holding that a disclaimer could not cure the initial confusion caused by the deceptively similar domain name itself.

Decision

Interim injunction granted restraining the defendants from using the plaintiff's mark or any deceptively similar mark as part of their domain name.

Keywords

Cybersquatting Deceptive Similarity Domain Names Online Infringement Passing Off