Danish toy company secures transfer of domain name
The Danish international toy chain Top-Toy A/S BR has won a case in the Danish Commercial and Maritime Court against IT company Icom Data ApS regarding the domain name 'br.dk'. Although the domain name had never been used, BR was found to have an exclusive right to it, so its transfer was ordered.
Icom is an IT consultancy company, which in 1998 registered the domain name '.br.dk', but did not use it. The plaintiff is an international toy chain and the registered holder of the well-known trademark BR. Currently, a total of 19 domain names have been registered for BR toys, including '.brleg.dk' and '.brtoys.com'. BR tried to purchase the domain name before proceedings began, offering Dkr15,000, which Icom refused. During proceedings, Icom was alleged to have offered to sell at a price of Dkr300,000.
Icom argued that the Internet is not divided into trademark classes and that more trademark owners could in principle be entitled to the same domain name. In Denmark alone, more than 50 companies use BR in their company name.
The court held that:
- BR is a well-known trademark by definition, even though the Danish Trademarks Act did not apply because the domain name was not used for goods or services;
- many internet users would use 'br.dk' when searching online for BR toys; and
- the mere registration and payment of holding fees constituted commercial use of the BR trademark, prohibited under the Danish Marketing Practices Act.
Thus, Icom was ordered to transfer the domain name to BR. Icom has announced it will appeal the decision.
Jeppe Brogaard Clausen, Qvist Stanbrook, Copenhagen
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