Do domain name serve same function as the trademark ?
Here in this article, we discuss case law titled Yahoo! Inc. vs. Akash Arora & Anr (Delhi High Court), wherein it is been discussed that whether only goods are protected from infringement under the Trade Mark Merchandise Act or it protects infringement of services as well.
Facts of the case:
Plaintiff is owner of trademark ‘Yahoo’ and of domain name ‘Yahoo.com’.
The domain name ‘Yahoo.com’ is registered in the plaintiff’s favour with Network Solution Inc since 18th January, 1995. The trademark ‘Yahoo!’ and its variance are registered or pending registration in 69 countries of the world and also the application for registration of the trademark of the plaintiff ‘Yahoo!’ is also pending in India.
The plaintiff is a global Internet media rendering services under the domain name/trade name ‘Yahoo!’.
Plaintiff has averted that defendants have adopted the name ‘Yahoo India’ for providing goods and services to its customers, which is deceptively similar to plaintiff’s mark.
Plaintiff has therefore filed a petition for restraining the defendant from using deceptively similar mark along with rendition of accounts and damages.
Issues: Whether only goods are protected from infringement under the Trade Mark Merchandise Act or it protects infringement of services as well?
Whether a dictionary word can be operated as domain name or trademark or not?
Conclusion: Delhi High Court observed that although services are not found under Section 27 and 29 of Trade and Merchandise Marks Act, it has to be recognized under an action of passing off.
It further observed that no man is entitled to carry on his business in such a way as to lead to the belief that he is carrying on the business of another man or to lead to believe that he is carrying on or has any connection with the business carried on by another man.
Court further relied on the judgment in the case of Card service International Inc. Vs. McGee, wherein it was held that the domain name serve same function as the trademark and is not a mere address or like finding number on the Internet and, therefore, it is entitled to equal protection as trademark.
Court therefore, granted interim injunction to Yahoo and restrained defendants from selling or advertising in any manner under the mark “YahooIndia”.