Food supplier loses 'englishfood.dk' fight

In English Food Supplies v Abigail's, a Danish Internet Forum (DIFO) panel has refused to order the transfer of 'englishfood.dk' to the complainant - the owner of the domain names 'englishfoodsupplies.dk' and 'englishfoods.dk'. The panel held that the term 'English food' is descriptive and the complainant had failed to prove that it had trademark rights in that term.

English Food Supplies, a Danish company, was founded on December 6 2000 with the purpose of marketing and supplying Danish consumers with speciality English foodstuffs. It registered the domain names 'englishfoodsupplies.dk' and 'englishfoods.dk' on November 7 2000 and November 13 2000 respectively. It brought a complaint against Abigail's, which also supplies English food specialities to Danish customers, following its registration of 'englishfood.dk' on November 21 2000. Abigail's was founded in 1997 and also owns domain name registrations for 'englishshop.dk', 'britishfood.dk', 'britishshop.dk' and 'englishfood.dk'. It was using the disputed domain name to redirect traffic to its website located under the domain name 'abigails.dk'.

English Food Supplies claimed that the disputed domain name infringed its rights in the unregistered mark ENGLISH FOOD, and had been registered and used in contravention of the Danish Marketing Practices Act. It argued that:

• it had registered its 'englishfoodsupplies.dk' and 'englishfoods.dk' domain names first;
  
  
• Abigail's registration would mislead consumers;
  
  
• Abigail's had registered the disputed domain name in bad faith; and
  
  
• Abigail's could, instead, market itself under the company name Abigail's.

Abigail's replied that it was using 'englishfood.dk' legitimately in the course of its business and had not registered it in bad faith. It further argued that the term 'English food' is purely descriptive and cannot be used as a trademark.

The panel dismissed English Food Supplies' complaint and refused to order the transfer of the domain name. It agreed with Abigail's that the term 'English food' is devoid of distinctive character in relation to the sale and marketing of food from England. English Food Supplies, said the panel, needed to prove therefore that it had established trademark rights through use. However, the panel held that English Food Supplies had failed to show the existence of such rights. It also found that English Food Supplies had failed to demonstrate that Abigail's had infringed the Marketing Practices Act.

Lasse A Søndergaard Christensen and Claus Jespersen, Gorrissen Federspiel Kierkegaard, Aarhus