The use of a deceptively similar domain name and trademark is likely to cause confusion and deception among Internet users and is actionable as passing off, even if the services offered are not specifically mentioned in the Trade and Merchandise Marks Act.

( 1 ) THE present suit has been instituted by the plaintiff against the defendants seeking for a decree of permanent injunction restraining the defendants, (heir partners, servants and agents from operating any business and/ or selling, offering for sale, advertising and in any manner dealing in any services or goods on the Internet or otherwise under the trademark/domain name yahooindia. Com or any other mark/domain name which is identical with or deceptively similar to the plaintiff s trademark yahoo and also for rendition of accounts and damages. The plaintiff has also filed an application under Order 39, Rules 1 and 2, Civil Procedure Code praying for an ad interim temporary injunction restraining the defendants from operating any business and / or selling, offering for sale, advertising and in any manner dealing in any services or goods on the Internet or otherwise under the trademark/domain name yahooindia. Com or any other mark/domain name which is identical with or deceptively similar to the plaintiff s trademark yahoo .

( 2 ) MR. Kapil Sibbal, Counsel appearing for the plaintiff submitted that the plaintiff is the owner of the trademark yahoo and domain name yahoo. Com , which are very well-known and have acquired distinctive reputation and goodwill and the defendants by adopting the name yahooindia for similar services have been passing off the services and goods of the defendants as that of the plaintiff s trademark yahool which is identical to or deceptively similar to the plaintiff s trademark. It was submitted that a domain name/trademark adopted by the plaintiff is entitled to equal protection against passing off as in the case of a trademark. In support of his submission, the learned Counsel heavily relied upon the ratio of the decisions in Marks and Spencer v. One-in-a-Million, REFERRED TO 1998 FSR 265. It was submitted that the trademarks and domain names are not mutually exclusive and there is an overlap between the trademarks and services rendered under domain names and thus by adopting a deceptively similar trademark yahooindia , the defendants have verbatim copied the format, contents, lay out, colour scheme, source code of the plaintiff s prior created regional section on India at Yahoo. Com and thus passing off the services of the defendants as that of the plaintiff. He submitted that Internet users are familiar with the practice of companies to select domain names that incorporate their company name, well-known trademark, and/or product/service name and generally attempt to locate a particular company s web site by simply typing in www. (company name ). com or www. (productname ). com when they are unsure of the Internet address of the Company. According to him, thus, it would not be unusual for someone looking for an authorised yahoo site with India-specific content to type in yahooindia. Com , i. e. , the defendants donain name and thereby instead of reaching the Internet site of the plaintiff, the said person would reach the Internet site of the defendants . He further submitted that the plaintiff in fact provides extensive content on India, both on its Yahoo! Asia site and at its main Yahoo. com site, under the categories "regional:counti-ies:lndia". It was submitted that the defendants being in the same line of activity as that of the plaintiff, the defendants have tried to be cyber-squatters and, thus, dishonesty is writ large as the defendants have adopted a trademark similar to that of the plaintiff which is yahoo. com which has acquired a distinctive name, goodwill and reputation.

( 3 ) MR. Harish Malhotra, Counsel appearing for the defendants, however, refuted the aforesaid allegations and submitted that the trademark laws in India relate to goods and, therefore, the provisions of Indian Trade Marks Act are not applicable to the facts and circumstances of the present case which deals only with goods. It was also submitted that the trademark/domain name