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7.1.33. In Marks & Spencer v. One-in-a-Million, 1998 FSR 265, it was held that any person who deliberately registers a domain name on account of its similarity to the name, brand name or trade mark of an unconnected commercial organisation must expect to find himself on the receiving end of an injunction to restrain the threat of passing off, and the injunction will be in terms which will make the name commercially useless to the dealer. It was held that the name „marks and spencer‟ could not have been chosen for any other reason than that it was associated with the well-known retailing group. Where the value of a name consists solely on its resemblance to the name or trade mark of another enterprise, the Court will normally assume that the public is likely to be deceived, for why else would the defendants choose it? It was also said that someone seeking or coming upon a website called http://marks and spencer.co.uk would naturally assume that it was that of the plaintiffs. It is seen that although the word „services‟ may not find place in the expression used in Sections 27 and 29 of the Trade and Merchandise Marks Act, services rendered have come to be recognised for an action of passing off. The law of passing off is an action under the common law which also is given a statutory recognition in the Trade Marks Act. In the context and light of the development in the concept of the law of passing off, it is too late in the day to submit that passing off action cannot be maintained as against services as it could be maintained for goods. 7.1.34. In Yahoo!, Inc. v. Akash Arora, 78 (1999) DLT 285, this Court held that the law relating to passing off is fairly well settled. The principle underlying the action is 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. It is also well established that passing off action is a common law remedy. There are a plethora of cases wherein it has been held that the principles of common law govern actions of passing off and have been recognised by Section 27(2) and Section 106 of the Trade and Merchandise Marks Act, 1958. The services of the plaintiff under the trade mark/domain name „Yahoo!‟ have been widely publicised and written about globally. In an internet service, a particular internet site could be reached by anyone anywhere in the world who proposes to visit the said internet site. With the advancement and progress in technology, services rendered in the internet has also come to be recognised and accepted and are being given protection so as to protect such provider of service from passing off the services rendered by others as that of the plaintiff. In a matter where services are rendered through the domain name in the internet, a very alert vigil is necessary and a strict view is to be taken for its easy access and reach by anyone from any corner of the globe. There can be no two opinions that the two marks/domain names „Yahoo!‟ of the plaintiff and „Yahooindia‟ of the defendant 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 for in such a case there is every possibility and likelihood of confusion and deception being caused. When both the domain names are considered, it is crystal clear that the two names being almost identical or similar in nature, there is every possibility of an internet user being confused and deceived in believing that both the domain names belong to one common source and connection, although the two belong to two different concerns.

8.41. Common field of activity is not conclusive for deciding whether there could be passing off action. With the passage of time, the law of requirement of common field activity in a passing off action has undergone a radical change because the real question in such cases is whether there is, as a result of misrepresentation, a real likelihood of confusion or deception of the public and consequent damage is likely to be caused and if that be the test then focus is shifted from the external objective test of making comparison of activities of the parties to the state of mind of public in deciding whether the public would be confused. 8.42. In an internet service, a particular internet site could be reached by anyone anywhere in the world who proposes to visit the said internet site. With the advancement and progress in technology, services rendered in the internet has also come to be recognised and accepted and are being given protection so as to protect such provider of service from passing off the services rendered by others as that of the plaintiff. In a matter where services rendered through the domain name in the internet, a very alert vigil is necessary and a strict view is to be taken for its easy access and reach by anyone from any corner of the world. There can be no two opinions that the two marks/domain names „Timken‟ of the plaintiff and „Timken Services‟ of the defendant are almost similar except for use of the suffix „Services‟ in the latter. The degree of the similarity of the marks usually is vitally important and significant in an action for passing off for in such a case there is every possibility and likelihood of confusion and deception being caused. When both the domain names are considered, it is crystal clear that the two names being almost identical or similar in nature, there is every possibility of an internet user being confused and deceived in believing that both the domain names belong to one common source and connection, although the two belong to two different concerns.