'co.dk' domain name survives DIFO challenge

In Digital Marketing Support ApS v Danish Internet Forum (DIFO), the Maritime and Commercial Court has overturned a DIFO ruling that had ordered the cancellation of the domain name 'co.dk'.

Digital Marketing Support ApS (DMS) registered 'co.dk' shortly after the Danish domain name rules were liberalized in January 1997. It sold third-level domain names under '.co.dk' using relatively aggressive marketing techniques. It stated, for example, that businesses should register their company name or trademark under its '.co.dk' domain (eg, 'trademark.co.dk') to avoid missing emails sent from abroad. DMS maintained that this was likely because a number of countries use second-level domains (2LDs), including, among others, Japan ('.co.jp'), Korea ('.co.kr'), New Zealand ('.co.nz'), South Africa ('.co.za') and the United Kingdom ('.co.uk'), which has created an international commercial standard for 2LDs. However, DMS failed to inform its customers that unlike those countries, which have mandatory 2LD registration, Denmark has always allowed parties to register their domain names directly under the '.dk' country-code top-level domain (ccTLD) (eg, 'trademark.dk').

The defendant, DIFO, is a non-profit organization and is authorized by the Internet Corporation for Assigned Names and Numbers to manage the '.dk' ccTLD. DIFO makes the rules applicable to all domain names. In February 2000, DIFO introduced a new rule allowing it to cancel registered names where this is "in the public interest". Several months later, when DMS allegedly had over 400 customers, DIFO sent a letter to DMS informing it of the possibility of removal of its 'co.dk' domain name. DIFO offered to repurchase the domain name at a substantial profit. DMS rejected the offer and brought a suit to enjoin DIFO's removal of the domain name.

DMS claimed that DIFO had no authority to change the rules that apply to existing registrations. The Maritime and Commercial Court found that the domain name registration contract was a renewable, standard contract that applied to all registrants. DMS could have no reasonable expectation that such contract would not be changed over time. DIFO was thus justified in making new rules and the new rules applied to all registrations, including DMS's. However, according to the court, DIFO had failed to establish that there was an important public interest in cancelling the domain name at the time it issued its threat to cancel it. Thus, the court allowed DMS to continue using 'co.dk'.

The decision puts an end to the debate as to whether the new rules implemented by DIFO formally apply to the 200,000 or so domain names registered prior to February 2000. However, the court's refusal to cancel the 'co.dk' domain name may pose problems. DMS's use of the domain name to promote the myth that commercial enterprises in Denmark need to register domain names under '.co.dk' might perhaps be considered to be a contravention of Danish unfair competition legislation. As it stands, one can only hope that trademark owners will not feel obliged to register names and trademarks under '.co.dk'.

Following this decision, the chairman of DIFO has stated that he feels that further legislation on the registration of Danish domain names is necessary.

Peter Gustav Olson, Plesner Svane Grønborg, Copenhagen