The Danish international toy chain, Top-Toy A/S "BR" (the parent company of the Danish BR-Legetøj A/S), recently won a case in the Danish Commercial and Maritime Court against the IT company, Icom Data ApS, regarding the domain name, www.br.dk. Though the domain name was only registered and had never been used, BR was found to have an exclusive right to the domain name www.br.dk, and Icom was ordered to transfer the domain name to BR.
The Defendant, Icom, is an IT consultancy company established in 1997. In 1998, Icom registered the domain name www.br.dk. The company provides assistance in designing websites. The domain name www.br.dk was registered but never used.
The Plaintiff, BR, is an international toy chain and the holder of the well-known, registered trademark, BR, mainly known for toys and playthings. Presently, a total of 19 domain names have been registered for BR toys, including www.brleg.com, www.brleg.dk, www.brtoys.com, etc. During the court proceedings, market analyses showed that the brand, BR, is a very well-known trademark.
Before commencing proceedings, BR tried to purchase the domain name from Icom Data and offered a price of DKK 15,000.00, which was refused. During the proceedings witnesses claimed that Icom offered the domain name at a purchase price of DKK 300,000.00.
During the proceedings, Icom argued that the Internet is not divided into trademark classes and that more trademark owners could in principle be entitled to the same domain name. Alone in Denmark more than 50 companies are using BR in their company name.
The Court found BR to be a well-known trademark according to the Danish Trade Marks Act. The Court also found that users of the Internet would very often use the domain name www.br.dk in searching for BR-toys and a non-existing home page could have a damaging effect on the marketing of BR.
The Court found that the Danish Trade Marks Act did not apply, as the domain name was not used for any goods or services.
However, the Court held the mere registration and payment of holding fees to be "commercial use" of the BR trademark. A commercial use of another company’s trademark is prohibited by the articles of the Danish Marketing Practises Act on "good marketing practises". The Court found that pursuant to the Danish Marketing Practices Act, Icom was not entitled to register, maintain or use the domain name. Even more interesting, the Court found that although no goods or services were offered by Icom, the fact that any potential use would be infringing meant that BR had an exclusive right to www.br.dk. Icom was thus ordered to transfer the domain name to BR.
The reasons stated by the Court may be disputed. Icom has announced that the case will be appealed.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.