Courts clarify relationship between trademarks and domain names

Carlsberg Case
Sony Case
Kværner Case

The relationship between trademark protection and domain names under the country code top-level domain '.no' has to some extent been clarified by a number of recent court decisions. These cases largely deal with the unauthorized use of a trademark as part of a domain name.

Carlsberg Case

The first case concerned Carlsberg Breweries' request for a preliminary injunction. Carlsberg claimed that the use of the domain names 'carlsberg.no' and 'tuborg.no' in connection with the sale of historical beer items was an infringement that could cause irreparable injury to its trademarks CARLSBERG and TUBORG. The appellate court upheld the lower court's findings in a decision of August 9 2001, stating that a preliminary injunction was not necessary to prevent irreparable damage.

Both courts reasoned that:

• the risk of damage was too small to call for a preliminary injunction, comparing the small market 'carlsberg.no' was likely to cover with the large market Carlsberg's 'carlsberg.com' and 'tuborg.com' already covers;
  
  
• the type of business being conducted by 'carlsberg.no' was not likely to cause damage to Carlsberg's business; and
  
  
• the infringer's business was very small in comparison with Carlsberg's, and unlikely to cause sufficient harm.

The courts' reasoning implies that a large business cannot get a preliminary injunction against a small business which has only a small turnover, despite the fact that the small business has clearly infringed the large business's trademark.

Sony Case

In another case decided recently, Sony Computer Entertainment claimed that the use of the domain name 'playstation2.no' by a small firm importing Playstations from Japan was an infringement of Sony's rights to the registered trademark PLAYSTATION.

The court held that use of the domain name was a violation of the Norwegian Trademark Act and the Norwegian Marketing Act. The fact that the website contained a disclaimer stating that there was no connection between the company and Sony was not enough. The infringer was required to stop using the domain name and pay damages to Sony.

The decision raises the controversial issue of whether the principle of global or regional consumption applies under Norwegian law. The court held that according to the EU Trademark Directive, the regional consumption theory applies also within the European Economic Area. That means that when a person imports products from countries other than those within the area, he may only use the trademark in a descriptive way, and not as a trademark.

Kværner Case

A request to the Arbitration and Mediation Centre of the World Intellectual Property Organization (WIPO) from the Norwegian engineering company Kværner for the transfer of a domain name was recently denied. Another company had registered 'kvearner.com', with the Scandinavian letter 'æ' transposed to 'ea'. WIPO found that although the domain name is confusingly similar to Kværner's trademark, Kværner failed to prove that all conditions of ICANN's Uniform Dispute Resolution Policy were fulfilled.

However, the National Authority for the Investigation and Prosecution of Economic and Environmental Crime in Norway initiated proceedings against the proprietor of 'kvearner.com' for breach of two provisions of the penal code: (i) for illegally accessing confidential information by opening an attachment to an email containing sensitive information meant for Kværner, and (ii) for blackmail.

The owner of 'kvearner.com' was sentenced to seven months' imprisonment, but he has appealed.

Arne Ringnes, Thommessen Krefting Greve Lund AS Advokatfirma, Oslo