Amadé calls the tune in domain name dispute
The Supreme Court of Austria has ruled in favour of the owner of the service mark AMADÉ in its case against the registrant of 'amadé.net' (Case 4 Ob 51/02g). The court ruled that although the mark has become synonymous with a specific region in Austria, it has not become generic and is therefore protected.
The complainant created the word 'Amadé' and registered various marks including AMADÉ, SPORTWELT AMADÉ and SALZBURGER SPORTWELT AMADÉ in relation to the provision of sports and leisure services in an area south of Salzburg. The mark SALZBURGER SPORTWELT AMADÉ is particularly well known and has become synonymous with recreational activities in the region.
The registrant used the domain name 'amadé.net' to promote similar recreational activities in the same region. His website also included references to a number of the complainant's marks. When the complainant brought its claim for the transfer of the domain name, the registrant responded by arguing that although the word 'Amadé' is fictitious, it had become a common description of a geographic location and therefore could not be protected as a service mark.
The court disagreed with the registrant. It held that while it was possible for a fictitious word to lose its distinctiveness and become generic, this was not the situation in the case at hand. The predominant public perception of the word 'Amadé' is in relation to the complainant, not to the region in which the complainant offers services. Therefore, the registrant's continued use of the disputed domain name was likely to cause confusion. As a result, the court ordered its transfer.
Harald Schmidt, Schmidt Kornfeld Wukoschitz Windhager, Vienna
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