Danish publisher wins war of words in hate site dispute
A split Danish Internet Forum (DIFO) panel has ordered the transfer of the domain names 'fuckseoghor.dk' and 'fuckseoghør.dk' to Aller Press A/S - the publisher of Se og Hør (Seen and Heard), a major Danish weekly celebrity magazine. The magazine has been published under this name since 1953. Aller also owns the Danish trademark SE OG HØR, which has been registered since 1993.
The disputed domain names were registered by Cub4.com on January 30 2003 and February 1 2004, respectively. Both domain names were linked to the same site. The site was a so-called 'hate site' where people could criticize Aller's business methods by way of a discussion forum. Visitors to the site could also purchase merchandise, such as caps, bearing the phrase 'Fuck Se & Hør'.
Aller filed a complaint with DIFO, requesting the transfer of the domain names. It claimed that its SE OG HØR trademark was well known in Denmark, and that the disputed domain names could cause confusion. Furthermore, it argued that (i) the site had a commercial aim, as it was used to sell merchandise, and (ii) the use of the domain names damaged the reputation of its trademark. Therefore, it submitted that the registration and use of the domain names infringed the Danish Trademarks Act as well as the Marketing Practices Act.
In response, Cub4.com stated that the site had no commercial aim as it was used exclusively as a means of exchanging consumer information. It argued that no economic benefit was derived from advertising on the site. Moreover, Cub4.com maintained that the shop on the website was owned by a third party.
The DIFO panel first held that Aller was the holder of the well-known SE OG HØR trademark. However, it also stated that purely private use of another person's trademark does not in general constitute infringement of any law provided that (i) the use serves a creditable purpose, and (ii) the general rules governing freedom of speech are respected. It next noted that the domain names included Aller's trademark SE OG HØR as a dominant element and they were intended to be associated with Aller's mark. The use of the word 'fuck' in connection with the trademark clearly indicated a negative attitude towards the Se og Hør magazine.
Referring to the sale of merchandise on the website hosted at the disputed domain names, four of the panel's five members found that to a certain extent the site had a commercial aim, and that it could harm the reputation connected to Aller's trademark. Therefore, the majority held that both the Trademarks Act and the Marketing Practices Act had been infringed, and the panel ordered the transfer of the domain names to Aller.
In a dissenting opinion, one member of the panel found the commercial aim of the site to be of minor importance. He reasoned that due to the broad framework of freedom of speech rights, Cub4.com should be allowed to maintain its rights in the domain names. Furthermore, he found that there was no risk of confusion.
Lasse A Søndergaard Christensen and Claus Jespersen, Gorrissen Federspiel Kierkegaard, Arhus
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