Denmark gets tough with squatters

Rolex
Powerware

Two recent instances of cybersquatting have been dealt with by Denmark's Complaints Board and the Copenhagen Maritime and Commercial Court.

Rolex

A distributor of second-hand Rolex watches in Esbjerg registered the domain name 'rolex.dk'. The owner of the ROLEX trademark, Montres Rolex SA, protested against this use.

In its decision, the Copenhagen Maritime and Commercial Court found that the distributor's use of the trademark in his domain name was a violation of the Danish Trademarks Act. In addition, the court found that the distributor tried to exploit Rolex's reputation, even though his web site stated that he was not affiliated with Montres Rolex SA. His actions were therefore also an infringement of the Danish Marketing Practices Act.

Powerware

The Danish DIFO Complaints Board, the forum that hears disputes related to the country top-level domain '.dk', was created in Autumn 2000. In a recent case the plaintiff, Invensys plc, produced and sold UPS (uninterruptible power supply) using the name Powerware. Invensys owns the trademark POWERWARE in Denmark and is the registered owner of three web sites: www.powerware-online.dk, www.powerwareonline.dk and www.powerware.com.

The defendant, Web Design & Graphics, used to be the distributor of the plaintiff's products and had since March 1999 operated a business under the name of Powerware Online. In January 1999 it registered the domain name 'powerware.dk'. Its distributorship agreement with Invensys was subsequently terminated in February 2000.

When the plaintiff requested that the Complaints Board order the defendant to relinquish its domain name, the defendant claimed that it was not in violation of the plaintiff's trademark rights because the plaintiff had implicitly consented to the defendant's registration and use of the domain name.

The board found that the trademark POWERWARE and domain name 'powerware.dk' coincided, and that the products sold by both the plaintiff and defendant were very similar. It also found that the defendant knew, or ought to have known, of the plaintiff's trademark rights in connection with the domain name 'powerware.dk'. Thus, the board concluded that the defendant's use of the domain name was in violation of Denmark's Trademarks Act and Marketing Practices Act, and ordered the registration be transferred to Invensys.

The Complaints Board's decision is available (in Danish) at www.difo.dk/klageafg.html.

Peter Lind Nielsen, Bender.dk, Skanderborg