Case Study

Case study- Yahoo! Inc. vs.
Akash Arora & Anr
INTRODUCTION
The Yahoo! Inc., the plaintiff in this case is a well-known American web service provider known
in the world for providing web-based services. Akash Arora, the defendant in this case began to
provide his web-based services by using a trademark which was phonetically similar to that of
the plaintiffs. This case is a landmark case on cyber squatting in India. It was for the
primary time that the High Court of Delhi held a registered website name similar to the
trademark giving it the entitled, equal protection
FACTS OF THE CASE
Yahoo Incorporation (hereinafter referred to as “Plaintiffs”) is that the owner of the documented
trademark, Yahoo, and of the name Yahoo.com; both the trademark and therefore the name
acquired a particular name, goodwill, and reputation. Yahoo.com had been registered by Yahoo
Inc with Network Solution Inc since 1995 and offers an entire range of web-based services. The
trademark Yahoo had been registered or was on the brink of being registered in 69 countries but
the plaintiff's Yahoo Inc had not registered its name in India.
Akash Arora (hereinafter referred to as (“Defendants”) began to offer web-based services almost
like those offered by the Plaintiffs under the name of Yahoo India. The defendant also applied
for the registration of an equivalent, which in due course of time got approved. The plaintiffs had
sued the defendant seeking a permanent injunction against them under Order 39 Rules 1 & 2
CPC for employing a trademark deceptively almost like its own and passing off its services like
those offered by the plaintiffs.
CASE STUDY – IRAC (ISSUE, RULE, ANALYSIS, CONCLUSION) METHOD
Issue
Whether a website name is protected under the Intellectual Property Right or not?

Whether the act of the defendant in registering the name Yahoo India, to pass off
services almost like those offered by Yahoo Inc, is an infringement of the trademark of
the plaintiffs and amounts to passing-off under the relevant sections of the Trade and
Merchandise Marks Act?
Rule
The court mentioned the case of Monetary Overseas v. Montari Industries Ltd.; 1996

PTC 42 where it was held that "When a defendant does business under a
reputation which is sufficiently on the brink of the name under which the plaintiff is
trading which the name has acquired a reputation and therefore the public at large is
probably going to be misled that the defendant’s business is that the business of the
plaintiff, or maybe a branch or department of the plaintiff, the defendant is responsible
for an action in passing off.”
The principle underlying the action for passing off is that no man is entitled to hold on his
business in such how on cause the assumption that he's carrying on the business of another
man or to steer to believe that he's carrying on or has any reference to the business carried on
by another man.
Analysis
The judgement in this case is considered to be a torch-bearing judgement in the cases involving
cyber squatting and passing off. Looking it from a criminal law perspective, IPC has an extra-
territorial jurisdiction wherein an Indian citizen using a trademark that is deceptively similar to a
foreign company’s trademark will still be held liable. Even though the Yahoo Inc. was quite
famous worldwide but the court observed that the ‘Yahoo India’ of the defendant is deceptively
similar to that of the plaintiff except that it uses a suffix ‘India’. The argument which were put
forward by the defendant in this case were tense and logical enough for a non-professional but
the High Court of Delhi Court dugged its deeper knowledge with due application of mind. Yahoo
Inc contended that Akash Arora adopted the name of Yahoo to supply services almost like those
of Yahoo Inc and had attempted to take advantage on the goodwill generated by Yahoo Inc.
because there was every possibility of an online 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 responsible for passing off.
As the two trademarks/domain names ‘Yahoo!’ and ‘Yahoo India!’ were almost similar and
therefore the latter offered services almost like those offered by the previous and because the
latter passed them off as being offered by Yahoo Inc., the court held Akash responsible for
passing off and restrained him from using the deceptively similar name.
The decision of the court during this case is predicated on the rationale that where the worth of a
reputation lies solely in its resemblance to the name or trademark of another organization, the
general public is probably going to be deceived by the utilization of such name and such act
would amount to passing off. Accordingly, the Hon'ble Court held that the said word "Yahoo"
had acquired distinctiveness and is related to the business of the Plaintiff. the utilization of the
name "yahooindia.com" by the Defendant results in passing off of the business of the Plaintiff as
his own and hence an equivalent shall be permanently discontinued. Therefore, an injunction
restraining the Defendant from using the impugned mark was granted.
Conclusion
Domain Names are, intrinsically, not registered as a Trade Mark as they need to be examined for
the evidence of distinctiveness. Domain names are neither automatically eligible nor ineligible
for registration as trademarks. The test for a website name to be registered as a trademark is
whether or not the name has the power to function, not simply as a website name, but also as a
trademark for goods or services of the type specified by the applicant. Thus, the court can
restrain the execution of such businesses that have trademark deceptively similar to another
making possibility to confuse the general public and thereby damaging the reputation of another.
As we know that every judge has his own opinion and pronounces the judgement accordingly,
the above case also dealt with a opinion based on his perspective.
REFERENCES
1. Brands and Fakes,’Case Analysis: Akash Arora & Anr’, May 19, 2020,
https://brandsandfakes.com/case-analysis-yahoo-inc-vs-akash-arora-anr/136/
2. Banana IP, ‘Yahoo! Inc. v. Akash Arora and another, 1999 Arb. L. R. 620’, May 19, 2020,
https://www.bananaip.com/ip-news-center/yahoo-inc-akash-arora/
3. Lawnn,’Yahoo! Inc. v. Akash Arora & Anor [1999 (19) PTC 201 (DEL)]’. May 20, 2020
https://www.lawnn.com/delhi-high-court-judgment/
4. IT Law, ‘Yahoo! Inc. vs Akash Arora (1999), May 20, 2020
https://www.itlaw.in/yahoo-inc-vs-akash-arora-1999/
5. Karan Dave ‘Yahoo! Inc. v Akash Arora & Anr, May 20, 2020
https://www.legalwiz.in/blog/5-famous-trademark-cases-for-businesses-to-learn-from

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Case study- Yahoo! Inc. vs.

Akash Arora & Anr

FACTS OF THE CASE

CASE STUDY – IRAC (ISSUE, RULE, ANALYSIS, CONCLUSION) METHOD

Whether a website name is protected under the Intellectual Property Right or not?

The court mentioned the case of Monetary Overseas v. Montari Industries Ltd.; 1996

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