Burberry wins Danish domain name dispute

Denmark

In Burberry Limited v CH International I/S, a Danish Internet Forum panel has ordered the transfer of the domain name 'burberry.dk' to the UK fashion company Burberry Limited. The panel found that the domain name registrant, CH International, had registered and used the name in contravention of the Danish Trademark Act.

CH International had been importing Burberry goods into Denmark for over 40 years. In the autumn of 2000 CH International failed to pay for goods it had received, so Burberry ended its cooperation agreement with the Danish company. In June 2000 CH International had registered the domain name 'burberry.dk' in order to advertise its shop, The Burberry Shop Østrup Møller. However, Burberry did not learn of this registration until early 2001 (ie, after the business relationship had been terminated). Upon discovering the registration, Burberry brought proceedings for the domain name to be transferred.

The panel ruled in Burberry's favour on two grounds. First, it found that CH International's use of the domain name misled internet users into believing that it was still authorized by Burberry to use the trademarks BURBERRY and BURBERRYS, both of which had been registered in Denmark in relation to clothing. Second, it concluded that registration of the domain name and use thereof was in contravention of Section 4 of the Danish Trademark Act, which provides that:

"the proprietor of the trademark shall be entitled to prohibit the use of the trademark [...] in relation to goods or services [...] where the trademark is well known in this country and the use would take unfair advantage of, or be detrimental to, the distinctive character of the repute of the trademark."

Peter-Ulrik Plesner and Peter Gustav Olson, Plesner Svane Grønborg, Copenhagen

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