City wins transfer of 'Helsinki.eu'
A panel appointed by the Czech Arbitration Court to decide '.eu' Alternative Dispute Resolution cases has upheld the city of Helsinki's complaint regarding the registration of the domain name 'Helsinki.eu' by Dutch company Traffic Web Holding BV.
Traffic Web Holding applied for the domain name 'Helsinki.eu' on December 7 2005. The application was based on its Benelux registration for HELSI & NKI (device). Traffic Web Holding also managed to secure registrations for various other European city names, including Barcelona, Frankfurt, Milan, Nice and Stockholm. In total, Traffic Web Holding applied for or registered over 800 domain names.
The complainant, the city of Helsinki, initiated proceedings against Traffic Web Holding, arguing that it did not have a legitimate right to the name Helsinki and that the registration was made in bad faith. Traffic Web Holding's response was that the city of Helsinki did not have exclusive rights in the name and that the domain name was rightly registered to Traffic Web Holding pursuant to the first come, first served principle.
By the time the panel gave its decision, similar other cases had already been decided. In the 'Barcelona.eu' Case, the panel ruled that Traffic Web Holding's Benelux trademark registration BARC & ELONA (device) did not give it sufficient rights in the name Barcelona. The panel concluded that if there is a special character in the trademark, it must be transliterated wherever possible. Similarly in the 'Frankfurt.eu' Case, the panel held that Traffic Web Holding did not have rights in the name Frankfurt based on its Benelux registration FRANKF & URT (device).
In the case at hand, the panel upheld the city of Helsinki's claims. It stated that the Benelux trademark registration did not give Traffic Web Holding sufficient prior rights. This finding was in line with previous decisions regarding the use of special characters, such as '&', in trademarks and related '.eu' domain names. Bad faith was evidenced by the fact that Traffic Web Holding's Benelux registration covered yarn in Class 23 of the Nice Classification. Yarns did not have any connection to Traffic Web Holding's business activities and it had not shown that it was offering goods for sale under its HELSI & NKI mark. It was evident that Traffic Web Holding's trademark was registered for the sole purpose of allowing it to apply for the domain name 'Helsinki.eu' in the first sunrise phase. In addition, the panel took into consideration the evidence that Traffic Web Holding had applied for or registered over 800 '.eu' domain names. The panel concluded that Traffic Web Holding had acted in bad faith and ordered the domain to be transferred to the city of Helsinki.
Erkki Holmila, Berggren Oy Ab, Finland
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10