• Oishika Banerji

Getting introduced to cybersquatting in light to Yahoo!, Inc. vs Akash Arora & Anr


A brief background

The plaintiffs knocked on the doors of Delhi High Court praying for a decree of permanent injunction in order to prohibit the defendants and their related agents, servants, and their partners from dealing in any goods and services by means of the internet underneath the trademark name 'Yahooindia.Com' that appeared to be deceptively similar to the plaintiff's trademark, 'Yahoo!'. Recognized as the first case of cybersquatting to appear before the court, Yahoo!, Inc. vs Akash Arora & Anr. has remained relevant because of the decision made by the Delhi High Court while accepting the claims made by the plaintiff.


Cybersquatting and the associated governing laws

The introduction of tech and associated counterparts have brought in a plethora of challenges for the intellectual property domain. Cybersquatting is one of such challenges that involve registration of an internet domain name which is an integral part of the Uniform Resource Locator (URL) of a web page and accessing the same with an unregistered name with an intent to commit fraud with any person accessing the page, thereby gaining profit from the same. For a layman to understand cybersquatting it is necessary to break the term. While the literal meaning of the term "squat" is an unauthorized or unlawful occupation of anything, cyber symbolizes anything associated with computers and the internet.


Unfortunately, India has not been successful enough to come up with stringent data protection laws, and therefore, cybersquatting cases are covered in the ambit of the Trademarks Act, 1999. It is noteworthy to mention that internet access is unlimited in terms of geographical address because of which there remains an indispensable need for worldwide exclusivity for the domain name. The 1999 Act provides two kinds of relief for any kind of illegal activities taking place and is governed by the Act. They are;

  • Remedy available for infringement (available only when the trademark is registered);

  • The passing off remedy (registration of trademark not mandatory).

Things to know about the Yahoo case

  • The plaintiff's trademark/domain name 'Yahoo!' was not registered in India. Therefore, the remedy available for infringement was not maintainable before the Indian courts. Instead, passing off remedy was to be considered. The vital pre-requisite has been the degree of similarity for the action of passing off to sustain.

  • While considering both the domain names namely 'Yahooindia.Com' and 'Yahoo!', the court opined that the degree of similarity between these two domain names was high enough to cause confusion and deceive the general public.

  • It was also observed that considering the vastness of the Internet and its relatively recent availability to the general public, many Internet users are not sophisticated enough to distinguish between the subtle difference in the domain names of the parties.

  • The defendant's contention that the plaintiff cannot use the domain name 'Yahoo!' on grounds of it being a dictionary word was rejected by the court with the reason that the word although taken from the dictionary had acquired distinctiveness because of the business it had been associated with.

  • Ad interim injunction in the favour of the plaintiff was granted by the court thereby prohibiting the defendants from being associated with any kind of business activities under the domain name 'Yahooindia.com' or any other name that appears to be deceptively similar to the plaintiff's domain name, 'Yahoo!'.

References

  1. https://indiankanoon.org/doc/1741869/

  2. https://www.mondaq.com/india/trademark/208840/cyber-squatting-laws-in-india

 



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