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= Case Analysis: Yahoo Inc v Akash Arora =

Introduction
Yahoo Inc v Akash Arora is a case decided on 19th February,1999. This was the first case for passing off action in India.

Facts
The plaintiff was the owner of the TM ‘Yahoo!’ and the domain name www.yahoo.com and the defendant registered the domain www.yahooindia.com which was providing similar services. The layout, format, contents, color scheme were all copied. Yahoo contended that Akash Arora had adopted their domain name to offer similar services and was attempting to cash in on their good will because an Internet user would get confused! Hence, he should be liable for passing off. The defendant contended that the word ‘yahoo’ is a word in the dictionary and cannot be used as a domain name/TM. The court shot this contention down because despite being a dictionary word, it had acquired uniqueness! Thus the court held him liable of the same and restrained him from using the similar domain name.

Issue
Whether the defendant's actions qualify as a passing off action?

Defendant's Arguments
Trademark ‘Yahoo!’ is not registered in India. Domain Name "Yahoo" of the plaintiff is not used in relation to goods, but, in relation to services - since services are not included within the ambit of the Trade and Merchandise Marks Act, the plaintiff cannot plead for action of passing off in relation to such services. Yahoo! Is  a general dictionary term and not invented. He also submitted that the persons using Internet and seeking to reach the Internet site are all technically educated and literate persons and, therefore, there is no possibility of any customer reaching the Internet site of the defendants with the intention of reaching the Internet site of the plaintiff and thus, it is not a case of unwary customer which is applicable in a case of infringement and passing off of the trademark.

Judgement
In the context of the various decisions and developments in the concept of law of passing off it is too late to submit that passing off action cannot be maintained against services. Services of the plaintiff under the trademark/DN ‘Yahoo!’ have been widely publicised and written about globally. Therefore, it is obvious that where the parties are engaged in common or overlapping fields of activity, the competition would take place. If the two contesting parties are involved in the same line or similar line of business, there is grave and immense possibility for confusion and deception and, therefore, there is probability of sufferance of damage. The two marks/ DN 'Yahoo!' and 'Yahooindia' are almost similar except for use of the suffix 'India' in the latter.The degree of the similarity of the marks usually is vitally important and significant in an action for passing off as there is every possibility and likelihood of confusion and deception being caused.