On 30 March 2016, the President of the Commercial Court of
Antwerp (the "President") gave its ruling in a dispute
relating to the use of protected trademarks as a domain name by a
Vaillant GmbH is a producer of heating devices and holds the
rights to the EU trademark Vaillant as well as the Benelux
Eco-Star, an authorized distributor of Vaillant, had registered
the domain names vaillantshop.be, vaillant-shop.be, bulexshop.be
and bulex-shop.be in order to direct potential customers to its own
website and create a bigger market reach. Vaillant filed a claim
against Eco-Star for infringement of its trademarks.
Article XII.22 of the Code of Economic Law (Wetboek
Economisch Recht/ Code de Droit Economique) prohibits the
registration of any domain name to which the registrar has no right
or legitimate claim when this domain name is identical to a third
party's trademark so that it creates confusion and when the
purpose of such registration is to harm a third party or to take
unfair advantage of this trademark.
In its decision, the President first ruled that being part of
Vaillant's distribution network did not bestow upon Eco-Star
any right or legitimate interest to use Vaillant's trademarks
as domain names. The President then clarified that the exhaustion
of the trademark resulting from the appliances being brought on the
EU market with Vaillant's consent did not entail the exhaustion
of the trademark holder's right to register said trademark as a
domain name. As a consequence, the President held that Vaillant
never granted Eco-Star the right to use its trademarks as domain
Second, the President held that the explicit mention on
Eco-Star's website that Eco-Star is not affiliated with
Vaillant was irrelevant in the assessment of Article XII.22 of the
Code of Economic Law. According to the President, this provision
only relates to the registration of a domain name and not the use
thereof. Therefore, it did not matter much whether the use of the
trademark was in good faith. In addition, the President held that
the explicit mention on Eco-Star's website did not reduce the
risks of confusion, i.e. the risk that the public would
wrongly believe that the products came from the same or
economically linked undertakings.
Third, the President decided that it had been sufficiently
proven that Eco-Star had purposely chosen and registered these
domain names to increase the search results for its company on
search engines like Google. According to the President, Eco-Star
attracted more clients by using the repute of Vaillant's
trademarks. The President therefore stated that Eco-Star had
received an unjustified advantage from the registration of these
As a consequence, the President held that Eco-Star had infringed
Article XII.22 of the Code of Economic Law and ordered Eco-Star to
hand over the disputed domain names to Vaillant on the basis of
Article XVII.23, paragraph 3, of the Code of Economic Law.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A judgment of Ms Justice Baker delivered on 29 July 2016 will be of interest to purchasers of loan portfolios, insolvency practitioners and conveyancers alike.
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