Generic domain name registration is legal

Denmark

The Danish Internet Forum's (DIFO) Complaints Panel has concluded that the registration of the generic top-level domain name 'jura.dk' ('jura' meaning 'law') is legal. The panel ruled that unless a domain name is also legally a trademark, the Danish Trademark Act's requirement that a mark be distinctive does not apply.

As reported in the March 27 2003 issue of World Trademark Law Report (Outcome awaited in groundbreaking domain name case), the online legal services provider Retssal.dk ('retssal' meaning 'courtroom') objected to the registration by Danish company E-Dimension ApS of the domain name 'jura.dk'. Retssal.dk argued that the registration was contrary to the Danish Trademark Act because 'jura' is a generic word, and generic words cannot be registered as trademarks. Retssal.dk contended that the same rule applies to domain names. Meanwhile, E-Dimension maintained that the domain name had been legally registered on the first-come, first-served basis established by DIFO.

The Complaints Panel found that its rules limit its jurisdiction to determining whether a domain name registration is contrary to those rules or Danish law. On this basis, it ruled in favour of E-Dimension on the following two grounds. Firstly, a domain name is a registered internet protocol address and is therefore not subject to the Danish Trademark Act unless the name is also legally a trademark. Thus, a domain name may be devoid of distinctiveness. Secondly, Retssal.dk had not provided any evidence that it has rights in the word 'jura' or that E-Dimension's use of the word is in any way unlawful. (The panel did not rule on whether the disputed domain name infringes the rights of any third party.)

Addressing Retssal.dk's alternative request that E-Dimension be restricted to using the domain name as an email root, the panel stated that its jurisdiction regarding remedies is limited to suspending, cancelling or transferring domain name registrations. Therefore, Retssal.dk's request was denied.

This decision has brought sighs of relief from the 7,000 registered owners of generic domain names in Denmark.

Lasse A Søndergaard Christensen and Christian Halskov Sauer, Gorrissen Federspiel Kierkegaard, Aarhus

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