RESEARCH NOTE

Cyber-Squatting and the First Domino: Global Lessons from Yahoo!

Sejal Dhiraj Gajbhiye

Institution:

Natwarlal Balwant Thakur Law College, Nashik

Email:

[email protected]

Word Count:

Approximately 1500 words

With the advent of the internet during the 90s, individuals began shopping, reading, and even
conducting business on the internet. This new world of the internet introduced thrilling
changes, but equally fresh legal issues—such as when an individual attempts to use a well-
known brand's name for fraudulent purposes to deceive individuals on the internet. One of the
earliest such cases in India is Yahoo! Inc. v. Akash Arora (1999). Here, an individual attempted
to utilize an almost identical web address to the well-known site Yahoo!—and the court had to
act. Lastly, this case was a game-changer. It was one of the first in India to deal with “cyber-
squatting”—when someone grabs a website name to mislead or make money off someone
else’s brand. In this research note, we use the FILAC method (Facts, Issue, Law, Analysis,
Conclusion) to break down the case in simple terms and show how it helped shape the way
Indian law protects brand names online. We also look at what both sides argued, what the court
said, and how this case became a model for future internet trademark fights in India and beyond.

Introduction

The rapid growth of the internet in the late 1990s changed traditional business practices. It
allowed brands to expand their presence online. However, this shift also brought new problems
for protecting intellectual property rights, especially trademarks, on the internet. The Yahoo!
Inc. v. Akash Arora (1999) case was significant in Indian law as it addressed the issue of cyber-
squatting. This occurs when someone buys domain names that are similar to existing
trademarks to make money or mislead customers. The controversy started when Akash Arora
purchased the domain name "yahooindia.com," which was extremely similar to Yahoo! Inc.'s
well-known trademark "Yahoo!" held by the leading internet services provider (Delhi High
Court, 1999).1

This case is important for Indian intellectual property law because it explored new ground in
domain name disputes. It also set clear legal principles for applying trademark protections in
cyberspace. The main legal questions were whether using “yahooindia.com” counted as

1
Times of India (Tech Desk), JioHotstar.com Ownership Dispute Explained: How JioHotstar Domain Went From
Delhi Techie to Dubai Siblings, TIMES OF INDIA (Oct. 28, 2024, 2:14 PM IST),
https://timesofindia.indiatimes.com/technology/tech-news/jiohotstar-com-ownership-dispute-explained-how-
jiohotstar-domain-went-from-delhi-techie-to-dubai-siblings/articleshow/114686323.cms
trademark infringement and passing off, and if this registration constituted cyber-squatting
under Indian law. The Delhi High Court ruled in favor of Yahoo! Inc. and created a strong
framework that has impacted later decisions on digital trademark rights.

Facts

The plaintiff, Yahoo! Inc., was a California based multinational internet services company with
a web portal and search engine services. The trademark “Yahoo!” was well known and had
international goodwill. The defendant, Akash Arora, an Indian resident, registered the domain
name “yahooindia.com” to run an internet portal under that name. Yahoo! Inc. objected to the
registration and use of this domain name saying it was deceptively similar to their registered
trademark and Arora was passing off and cyber squatting (Delhi High Court, 1999).

In 1999, Yahoo! Inc. sued the Delhi High Court, requesting an injunction to prevent the
defendant from using the domain name "yahooindia.com." Yahoo! claimed that the defendant's
domain name was confusing internet users by leading them to believe that the defendant's
website was connected to or approved by Yahoo! Inc., citing their trademark registrations in
India and across the world.2

Akash Arora said the addition of “India” to the domain name was a geographic descriptor and
he was entitled to use the name for an Indian portal. He said domain names were just technical
addresses on the internet and not trademarks or source of origin.

Issue

The primary question of law before the Delhi High Court was whether or not the defendant's
adoption and registration of the domain name "yahooindia.com" was a passing off and
trademark infringement under Indian law. The court had to decide:

1. Whether domain names are protected under the law of trademark and whether they are
source identifiers.
2. Whether or not the defendant's registration of "yahooindia.com" was confusingly
similar to the plaintiff's mark "Yahoo!"

2
Shreya Sampathkumar, Yahoo Inc. v. Akash Arora, IP MATTERS (Aug. 25, 2021),
https://www.theipmatters.com/post/yahoo-inc-v-akash-arora.S
 3. Whether the defendant's use constituted passing off, deceiving the public and injuring
Yahoo! Inc.
4. Whether defendant's registration was an instance of cyber squatting, bad faith use of
the domain name for exploiting the goodwill of the plaintiff (Delhi High Court, 1999).

Law

The Delhi High Court talked about the rules pertaining to infringement and passing off as well
as the applicability of the Trademarks Act, 1999. Section 29 of the Act criminalizes the use of
a mark identical or deceptively similar to a registered trademark in association with goods or
services for which the trademark is registered and which causes likelihood of confusion with
the public (Trademarks Act, 1999). 3The court also depended on the common law rule of
passing off, which protects unregistered trademarks and business goodwill against
misrepresentation causing damage (Ruston and Hornby Ltd. v. Zamindara Engineering Co.,
1970).

The court considered the role of domain names in intellectual property law, referring to the
reading according to which domain names are not merely internet addresses but also distinctive
signs that indicate commercial origin, akin to trademarks. In Rediff Communication Ltd. v.
Cyberbooth (2000), the Bombay High Court acknowledged domain names as legally protected
corporate identities, and the interpretation aligned with that ruling.

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the Paris
Convention, to which India is a signatory, were also called upon for laying strong emphasis on
the protection of well-known trademarks against unfair competition and unauthorized use
(TRIPS Agreement, 1994; Paris Convention, 1883).4

The court also observed international case law. The U.S. Ninth Circuit case Panavision
International v. Toeppen (1998) condemned the bad-faith registration of domain names
identical to trademarks as cyber-squatting, affirming the applicability of the doctrine. Similarly,
the term was used in the UK case of Marks & Spencer plc v. One in a Million Ltd. (1998) to
describe the unapproved registration of popular marks as domain names by third parties as

3
The Trade Marks Act, 1999, § 29, No. 47, Acts of Parliament (India), available at
https://www.indiacode.nic.in/bitstream/123456789/15427/1/the_trade_marks_act%2C_1999.pdf (last visited
June 9, 2025).
4
Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement
Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299 [hereinafter TRIPS Agreement]; Paris
Convention for the Protection of Industrial Property, Mar. 20, 1883, as last revised at Stockholm, July 14, 1967,
828 U.N.T.S. 305.
"instruments of fraud" (Marks & Spencer plc v. One in a Million Ltd., 1998; Panavision
International, L.P. v. Toeppen, 1998).5

Analysis

The court analyzed the arguments of the parties in detail. Yahoo! Inc. argued that the domain
name "yahooindia.com" was inherently confusing and would cause confusion among the
internet users, taking advantage of the huge goodwill and popularity of the "Yahoo!" trademark.
Yahoo! emphasized that domain names are electronic identifiers of business origin and that
unauthorized use would be an infringement and passing off. Further, they argued that the
domain name was registered by Arora in bad faith, with the intention to gain advantage from
the established brand presence of Yahoo! in India (Delhi High Court, 1999).

Akash Arora made the case that domain names are technical names as opposed to trademarks.
According to him, the use of the word "India" in the domain name was enough to distinguish
it, and the public, in turn, would not be confused. He argued that there was no case of passing
off or impersonation of Yahoo! Inc. (Delhi High Court, 1999).6

The court rejected this technical characterization of domain names by the defendant. It stated
that domain names play the role very much alike trademarks, viz., aiding consumers to identify
the source of goods or services in the virtual marketplace. The court reviewed Rediff's case and
other precedents and came to the conclusion that domain names, when used as commercial
identifiers, should enjoy trademark protection (Rediff Communication Ltd. v. Cyberbooth,
2000).

Because both "yahooindia.com" and "Yahoo!" provided similarly comparable online services,
the test of similarity determined that they were misleadingly similar and would generate
confusion among internet users. Use of a mere generic geographical term, "India," thus did not
lessen the chances of confusion as established in Ruston and Hornby Ltd. v. Zamindara
Engineering Co. (1970), where it was held that appending "India" to a trademark does not avert
infringement.

5
Simmons & Simmons, English Contract Law Case Profile – February 2016: Marks & Spencer plc v. BNP Paribas
Sec. Servs. Tr. Co. (Jersey) Ltd. & Anor, SIMMONS & SIMMONS (Feb. 2016), https://www.simmons-
simmons.com/publications/ck0aoz1tvdmpc0b59szo2z8wm/04-english-contract-law-case-profile.
6
LeDroit India, Case Analysis: Yahoo! Inc. vs. Akash Arora (1999), LEDROIT INDIA (Oct. 30, 2024),
https://ledroitindia.in/case-analysis-yahoo-inc-vs-akash-arora-1999.
The court further found evidence of bad faith on the part of the defendant as the registration
came only after the mark of Yahoo! had become well known; the defendant proceeded with its
use against warnings to desist. Thus, the elements of cyber-squatt appeared to have been
satisfied.

Conclusion

The Delhi High Court issued an injunction to stop Akash Arora from using the domain name
yahooindia.com in the Yahoo! Inc. dispute.7 The judgment unequivocally established that
domain names are registered trademarks in India and that unauthorized registration and
utilization of deceptively identical domain names constitutes infringement and passing off. The
case also established cyber-squatting as an act in bad faith that would be liable under the law
of trademarks (Delhi High Court, 1999).

The judgment evoked far-reaching changes in Indian IP law, where the judiciary indicated a
willingness to reshape traditional legal principles while considering the modern digital age. It
provided for a strong framework regarding cyber trademark protection, motivating companies
to protect their digital assets and discouraging cybersquatters from capitalizing on well-known
brands. The case laid the groundwork for subsequent domain name dispute decisions, fortifying
the protection of digital trademarks and bringing Indian law into line with international
standards such as TRIPS (TRIPS Agreement, 1994).

In addition, the ruling highlighted the protection of consumers in e-commerce by indicating the
manner in which the abuse of domain names would confuse and damage the public. The ruling
also encouraged legislation and policymaking with respect to the process of domain name
registration and resolution, such as the issuance of the .IN Domain Dispute Resolution Policy
by the National Internet Exchange of India (NIXI) (Delhi High Court, 1999).
Lastly, Yahoo! Inc. v. Akash Arora is a pioneering case in Indian cyber-trademark law. It was
the first domino to fall in the battle against cyber-squatting, and it led the world by example of
how courts can safeguard intellectual property rights in the era of rapid technology
developments. It is still an Indian court's guiding principle to this day in balancing innovation
with safeguarding established commercial goodwill in the virtual economy.

7
Yahoo Inc. v. Akash Arora, IP Matters (Aug. 25, 2021), https://www.theipmatters.com/post/yahoo-inc-v-akash-
arora.
References

1. Yahoo! Inc. v. Akash Arora, CS(OS) No. 93/1999, (Del. High Ct. Feb. 19, 1999).
2. Rediff Commc’n Ltd. v. Cyberbooth & Anr., A.I.R. 2000 Bom. 27 (Bombay High Ct.).
3. Ruston & Hornby Ltd. v. Zamindara Eng’g Co., (1970) 2 S.C.R. 222 (India).
4. People Interactive (I) Pvt. Ltd. v. Vivek Pahwa & Ors., CS(OS) No. 2644/2009, (Del. High
Ct. 2009).
5. Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998).
6. Marks & Spencer plc v. One in a Million Ltd., [1998] EWCA Civ 1891, [1998] FSR 265
(Eng.).
7. The Trademarks Act, 1999, No. 47, Acts of Parliament, 1999 (India).
8. Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994,
Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S.
299.
9. Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, as last revised at
Stockholm, July 14, 1967, 828 U.N.T.S. 305.
10. Panavision Int’l, L.P. v. Toeppen,