Cybersquatting is “the practice of registering names, especially well-known company or brand names, as Internet domains, in the hope of reselling them at a profit.”
Yahoo! Inc v. Akash Arora (1999 IIAD Delhi 229, 78 (1999) DLT 285) was the first case regarding cybersquatting in India. In this case, the Delhi High Court for the first time held that the domain name of the company should be regarded as the trademark and equal protection should be provided to it.
FACT:
Yahoo Incorporation is the owner of the well-known trademark Yahoo and the domain name Yahoo.com ; both the trademark and the domain name have acquired a unique identity, goodwill and reputation. Since 1995 Yahoo.com has been registered with Network Solution Inc by Yahoo Inc and provides a whole array of web-based services. The Yahoo trademark was registered in sixty-nine countries but the domain name was not registered in India by Yahoo Inc.
Akash Arora started providing Web-based services similar to those provided by Yahoo.com under the Yahoo India brand. Yahoo Inc. had sued Akash Arora for using a trademark that was approximately parallel to its own and for dismissing its services as offered by Yahoo Inc.
ISSUE: -
Whether Akash Arora’s act of enrolling the domain name Yahoo India, offering comparable services to those offered by Yahoo Inc, was an encroachment of Yahoo Inc’s trademark and amounts to passing-off under the respective provisions of the Trade Marks Act?
Rule of Law: -
If the defendant does business under a name that is sufficiently close to the name under which the plaintiff is trading, and that name has acquired a reputation, and the general public is likely to be deceived by the fact that the defendant’s business is a plaintiff’s business or a group or department of the plaintiff, the defendant is liable for such actions.
Analysis:
Yahoo Inc argued that Akash Arora had adopted Yahoo’s domain name to provide services similar to Yahoo Inc’s and had sought to cash in on the brand value of Yahoo Inc. as there were high chances that the users might get confused and mislead, assuming that Yahoo and Yahoo India belong to Yahoo Inc. Since both the trademarks were more or less similar and also provide almost similar services and the defendant put it as if it’s being offered by the plaintiff’s domain, the court held Akash Arora liable for infringing the right of the plaintiff. The court constrained him from using the identical or almost similar domain name.
In this case, the court’s judgement was focused on the reasoning that when the meaning of a name rests entirely in its similarity to some organization’s name or trademark, the general public is supposed to be misled by the use of that name and such an act will lead to passing off.