Ex-distributor ordered to give back domain names
In Mercuria Beheer BV v Dan-Sun Europe ApS, a Danish Internet Forum panel has ordered the transfer of 'alisun.dk', 'allura.dk', 'ambiance.dk' and 'sunvision.dk' to the complainant from its former distribution agent.
Mercuria Beheer BV, a Dutch company, produces sunbed equipment and related products under the marks ALISUN, ALLURA, AMBIANCE and SUNVISION. However, only SUNVISION has been registered as a trademark in Denmark. Dan-Sun Europe ApS was Mercuria's general distributor in Denmark for 16 years, and had registered the domain names 'alisun.dk', 'allura.dk', 'ambiance.dk' and 'sunvision.dk'. Most of the domain names were used to redirect internet users to Dan-Sun's own website.
Mercuria later terminated the distribution agreement with Dan-Sun and set up its own Danish subsidiary. It requested the transfer of the domain names. Dan-Sun refused the request, citing, among other things, its need to use them for continuing to service Mercuria's tanning equipment that had been sold under the distribution agreement. Mercuria filed a complaint with DIFO.
The DIFO panel first found that Mercuria held common law rights in the three unregistered trademarks as a result of its use of the marks. It then cited the European Court of Justice's decision in BMW v Deenik and held that Dan-Sun could not use the domain names in a manner that gave the impression that there was a commercial connection with the trademark owner. Dan-Sun's use, said the panel, gave consumers the misleading impression that it was a use authorized by Mercuria, which, following the termination of the distribution agreement, was no longer the case.
Accordingly, the panel ordered the transfer of all the disputed domain names to Mercuria.
Peter Gustav Olson, Plesner Svane Grønborg, Copenhagen
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