Mr. Dhananjay Khanna, Advocates v. CREATIVE WAY WEB SOLUTIONS ORS

Through: Mr. Sanchit Soni, Proprietor of D-1 CORAM: HON'BLE MS. JUSTICE MINI PUSHKARNA O R D E R 03.02.2025 The present suit has been filed for permanent injunction restraining infringement of trademark, passing off, unfair competition, tarnishment, dilution, damages, rendition of accounts of profits, delivery up, etc.

2. It is submitted that ‘Yahoo!’ trademark is one of the most recognized brands in the world. The same has been used continuously since 1994 and has been recognised as a well-known mark by this Court and is also reflected at serial no. 54 of the Register of Trademarks, showing the mark ‘Yahoo!’ as well-known.

3. It is submitted that the ‘Yahoo’ trademark has been used in connection with a wide variety of goods and services, including, online advertising, web directory, search services, email, chat, retail, computer, software services, etc. The trademark ‘Yahoo!’ has international significance, and the plaintiff has acquired trans-border reputation in respect of the trademark. This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/02/2025 at 14:44:44

4. It is submitted that on account of long and continuous use, extensive advertising, sales promotion, and extensive goodwill and reputation associated with the ‘Yahoo’ trademark, the said mark has become easily identifiable by members of the public and trade, as originating exclusively from the plaintiff.

5. Further, the plaintiff’s well-known trade mark 'YAHOO!' has been ranked on many occasions among the 100 Best Global Brands by Interbrand, which is a leading brand marketing and consulting firm. Further, Brandz Top 100 Most Valuable Brands also ranked the plaintiff’s YAHOO! brand among the top global 100 brands.

6. It is submitted that the plaintiff has registered its trademark ‘Yahoo!’ in more than 140 jurisdictions across the world, including in India.

7. Details of some of the prominent and relevant trademark registrations of the plaintiff in India as given in the plaint, are reproduced as under: This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/02/2025 at 14:44:44

8. It is submitted that all these trademark registrations are valid and subsisting, till date.

9. It is also submitted that the plaintiff has also been using artistically created and distinctive logos to depict its ‘YAHOO!’ brand for decades. Some of the logos which the plaintiff has created and used, are as follows:

10. It is submitted that defendant no.1, i.e., Creative Way Web Solutions, owned by one Mr. Sanchit Soni, is proprietorship concern engaged in the business of web development services such as an E-Learning platform, Website Designing, Website Development, Search Engine Optimization, Mobile App Development.

11. It is submitted that defendant no.1 appears to be using the 'Yahoo' mark on various platforms such as their domain name, YouTube and X. The plaintiff’s primary grievance is against the defendant’s use of the 'Yahoo' mark in their mark ‘ ’ used for their E-Learning platform. The defendant the websites www.creativeway.in and www.yahoobaba.net.

12. It is submitted that plaintiff in December, 2024 came across the This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/02/2025 at 14:44:44 website www.yahoobaba.net providing web development and programming tutorials services using the mark ‘ ’. The website also mentioned the YouTube channel of the entity named ‘YAHOO BABA’ available at www.youtube.com/yahoobaba.

13. A comparison of defendant no.1’s mark with the plaintiff’s registered trademark is reproduced as under:

14. Thus, it is submitted that the uninterrupted use by the plaintiff of the well-known trademark ‘Yahoo’, as a trademark, in respect of the various goods and services offered by it, for approximately 30 years, has resulted in it obtaining a secondary meaning, whereby, it now connotes only the plaintiff. Thus, the use by the defendant no. 1 of a deceptively similar mark, i.e., ‘YAHOO BABA’/ ‘ ’ for a similar category of service is bound to cause confusion.

15. Issue summons. Summons is accepted by defendant no.1.

16. Defendant no.1, Mr. Sanchit Soni, has appeared before this Court through Video Conferencing (“VC”). He submits that he shall stop the user This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/02/2025 at 14:44:44 of the mark ‘YAHOO BABA’/ ‘ ’ and other use on different platforms. He further submits that he is ready to suffer decree against him.

17. Learned counsel for the plaintiff submits that in view of the statement made by defendant no.1, the plaintiff is satisfied, and that a decree can be passed in favour of the plaintiff. He further submits that in view of the statement made by defendant no.1, the plaintiff is ready to give up the prayer for costs and damages.

18. Considering the submissions made before this Court, the suit decreed in favour of the plaintiff and against the defendant in terms of Para 55 (i), (ii), (iii), (vii), (viii) of the plaint.

19. Let decree sheet be drawn up.

20. At this stage, learned counsel for the plaintiff submits that considering the fact that the present suit is being decreed on the first date itself, on the statement of defendant no.1, the court fees be refunded to the plaintiff.

21. Accordingly, the Registry of this Court is directed to issue a certificate of refund of full court fees in favour of the plaintiff.

22. The present suit, along with pending applications stands disposed of. FEBRUARY 3, 2025 MINI PUSHKARNA, J This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/02/2025 at 14:44:44

Through: Mr. Sanchit Soni, Proprietor of D-1 CORAM: HON'BLE MS. JUSTICE MINI PUSHKARNA O R D E R 03.02.2025 The present suit has been filed for permanent injunction restraining infringement of trademark, passing off, unfair competition, tarnishment, dilution, damages, rendition of accounts of profits, delivery up, etc.

2. It is submitted that ‘Yahoo!’ trademark is one of the most recognized brands in the world. The same has been used continuously since 1994 and has been recognised as a well-known mark by this Court and is also reflected at serial no. 54 of the Register of Trademarks, showing the mark ‘Yahoo!’ as well-known.

3. It is submitted that the ‘Yahoo’ trademark has been used in connection with a wide variety of goods and services, including, online advertising, web directory, search services, email, chat, retail, computer, software services, etc. The trademark ‘Yahoo!’ has international significance, and the plaintiff has acquired trans-border reputation in respect of the trademark. This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/02/2025 at 14:44:44

4. It is submitted that on account of long and continuous use, extensive advertising, sales promotion, and extensive goodwill and reputation associated with the ‘Yahoo’ trademark, the said mark has become easily identifiable by members of the public and trade, as originating exclusively from the plaintiff.

5. Further, the plaintiff’s well-known trade mark 'YAHOO!' has been ranked on many occasions among the 100 Best Global Brands by Interbrand, which is a leading brand marketing and consulting firm. Further, Brandz Top 100 Most Valuable Brands also ranked the plaintiff’s YAHOO! brand among the top global 100 brands.

6. It is submitted that the plaintiff has registered its trademark ‘Yahoo!’ in more than 140 jurisdictions across the world, including in India.

7. Details of some of the prominent and relevant trademark registrations of the plaintiff in India as given in the plaint, are reproduced as under: This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/02/2025 at 14:44:44

8. It is submitted that all these trademark registrations are valid and subsisting, till date.

9. It is also submitted that the plaintiff has also been using artistically created and distinctive logos to depict its ‘YAHOO!’ brand for decades. Some of the logos which the plaintiff has created and used, are as follows:

10. It is submitted that defendant no.1, i.e., Creative Way Web Solutions, owned by one Mr. Sanchit Soni, is proprietorship concern engaged in the business of web development services such as an E-Learning platform, Website Designing, Website Development, Search Engine Optimization, Mobile App Development.

11. It is submitted that defendant no.1 appears to be using the 'Yahoo' mark on various platforms such as their domain name, YouTube and X. The plaintiff’s primary grievance is against the defendant’s use of the 'Yahoo' mark in their mark ‘ ’ used for their E-Learning platform. The defendant the websites www.creativeway.in and www.yahoobaba.net.

12. It is submitted that plaintiff in December, 2024 came across the This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/02/2025 at 14:44:44 website www.yahoobaba.net providing web development and programming tutorials services using the mark ‘ ’. The website also mentioned the YouTube channel of the entity named ‘YAHOO BABA’ available at www.youtube.com/yahoobaba.

13. A comparison of defendant no.1’s mark with the plaintiff’s registered trademark is reproduced as under:

14. Thus, it is submitted that the uninterrupted use by the plaintiff of the well-known trademark ‘Yahoo’, as a trademark, in respect of the various goods and services offered by it, for approximately 30 years, has resulted in it obtaining a secondary meaning, whereby, it now connotes only the plaintiff. Thus, the use by the defendant no. 1 of a deceptively similar mark, i.e., ‘YAHOO BABA’/ ‘ ’ for a similar category of service is bound to cause confusion.

15. Issue summons. Summons is accepted by defendant no.1.

16. Defendant no.1, Mr. Sanchit Soni, has appeared before this Court through Video Conferencing (“VC”). He submits that he shall stop the user This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/02/2025 at 14:44:44 of the mark ‘YAHOO BABA’/ ‘ ’ and other use on different platforms. He further submits that he is ready to suffer decree against him.

17. Learned counsel for the plaintiff submits that in view of the statement made by defendant no.1, the plaintiff is satisfied, and that a decree can be passed in favour of the plaintiff. He further submits that in view of the statement made by defendant no.1, the plaintiff is ready to give up the prayer for costs and damages.

18. Considering the submissions made before this Court, the suit decreed in favour of the plaintiff and against the defendant in terms of Para 55 (i), (ii), (iii), (vii), (viii) of the plaint.

19. Let decree sheet be drawn up.

20. At this stage, learned counsel for the plaintiff submits that considering the fact that the present suit is being decreed on the first date itself, on the statement of defendant no.1, the court fees be refunded to the plaintiff.

21. Accordingly, the Registry of this Court is directed to issue a certificate of refund of full court fees in favour of the plaintiff.

22. The present suit, along with pending applications stands disposed of. FEBRUARY 3, 2025 MINI PUSHKARNA, J This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/02/2025 at 14:44:44