First Supreme Court decision on domain name registration

In a landmark decision by the Supreme Court (Case 270/2005), United Parcel Service of America Inc has succeeded in claiming the domain name 'ups.dk'. United Parcel Service based its claim on its brand UPS, which has been registered as a trademark in Denmark since 1976. This is the first time that the Supreme Court has examined issues surrounding domain name registration.

At first instance, the Copenhagen Maritime and Commercial Court refused to accept the defendant's arguments in relation to the proposed use of the domain name, and to order a transfer of the domain name. United Parcel Service appealed to the Supreme Court. In the meantime, the Domain Names Act came into force, providing the Supreme Court with a new legal framework for deciding the appeal.

The defendant explained that it had registered the domain name 'ups.dk' because it intended to produce UPS (uninterruptible power supply) devices with a view to selling them through an internet shop. However, it had taken no other steps towards realizing the plans. A main issue in the case was whether the term 'UPS' is descriptive of uninterruptible power supply devices, and accordingly, whether United Parcel Service should exclude such devices from its trademark protection in Class 9 of the Nice Classification.

According to an expert opinion, the term 'UPS device' is used by experts for a certain electrical apparatus for ensuring uninterrupted power supply. However, the defendant's argument that 'UPS' was a descriptive term and that UPS devices should be excluded from United Parcel Service's trademark protection was unsuccessful. Had the expert concluded that the term 'UPS' was commonly used (and not only among experts), the outcome might have been different.

Pleas entered by the defendant to exclude UPS devices from the protection of the UPS trademark were thus dismissed due to lack of legal interest on the part of the defendant.

United Parcel Service argued before the Supreme Court that maintaining the registration of the domain name 'ups.dk' - after it had been decided by the Maritime and Commercial Court that the domain name could not be used for the purposes stated by the defendant - constituted a violation of the Domain Names Act.

The court found that the defendant had no legitimate interest in maintaining its registration of the inactive domain name 'ups.dk', whereas United Parcel Service had an obvious need to put it to use. Against this background, the court found that the defendant had acted contrary to good domain name practice under the Domain Names Act and to good marketing practice under the Marketing Practices Act.

The court attached importance to the fact that the defendant had registered approximately 200 domain names under the top-level domain '.dk' and that some of these domain names included names and trademarks belonging to third parties. One of the domain names registered by the defendant was 'domainsalg.dk' (meaning 'domain sale') and the defendant had actually sold some domain names.

Stressing that the domain name at issue had been used to display banner advertisements, United Parcel Service argued that there was infringement of its registered trademark rights in UPS for advertising services. In response, the defendant claimed that it had nothing to do with the banner advertisements on the website for which the domain name was used. The court did not, however, find it necessary to take a position on this issue.

Janne Glæsel and Lisbet Andersen, Bech-Bruun, Copenhagen