Danish Supreme Court issues first domain name decision

In Top-Toy A/S v Icom Data ApS, the Danish Supreme Court has issued its first ruling relating to a domain name registration. It affirmed a lower court ruling that held that the passive registration of the domain name 'br.dk' by the defendant was a commercial use that infringed the Danish Marketing Practices Act as it blocked the plaintiff - the owner of a BR mark - from using the domain name.

Top-Toy A/S is a leading toy distributor in Scandinavia and its BR Toys retail stores are very well known in Denmark. It is the registered owner of a BR mark. Icom Data ApS, a website development company, registered the domain name 'br.dk' in 1998 but has never used it. It maintained that it had registered the domain name for a third party and that it was holding it for use in relation to another project. Top-Toy brought a complaint before the Maritime and Commercial Court of Copenhagen, claiming that the domain name registration infringed its rights. It pointed out that Icom Data had also registered 'xerox.dk' at about the same time and it had been forced to relinquish this domain name by court order.

The court held that Icom Data had not infringed Top-Toy's rights in the BR trademark because it had not used the domain name for any purpose. However, in the court's view, Icom Data had violated the Marketing Practices Act. The fame of the BR Toys stores had inspired Icom Data to register the domain name, much in the same way as it had registered 'xerox.dk'. The court found that a material segment of the population would search for Top-Toy at 'br.dk' and discover that the site was not in use, which would cause damage to Top-Toy. It stated that passive registration (ie, registration without use) is a commercial use that can contravene the unfair competition provisions of the Marketing Practices Act. Accordingly, it ordered Icom Data to surrender the domain name. Icom Data appealed.

The Danish Supreme Court dismissed the appeal and affirmed the lower court's decision. It noted that the fact that Icom Data had registered and had been forced to surrender 'xerox.dk' was relevant evidence. It also reasoned that Icom Data had registered 'br.dk' with the purpose of selling it to Top-Toy in contravention of Section 1 of the Marketing Practices Act.

Peter Gustav Olson, Plesner Svane Grønborg, Copenhagen