Google loses first round in fight over 'google.no'

In Google Inc v SMS Fun AS (Case 02-1767 D), the Oslo Namsrett (court of execution and enforcement) has refused Google's petition for an interim injunction preventing SMS Fun from using the domain name 'google.no'. Unless the interim decision is successfully appealed, SMS Fun may continue to use the domain name until the case is heard before a full court in about a year's time.

Google, the US internet search engine company, registered GOOGLE as a Norwegian trademark in December 2001. It filed a complaint against the Norwegian company SMS Fun on the grounds that the latter's use of the domain name 'google.no' infringed its trademark and was in breach of the 'good business practice' provision of the Marketing Control Act. Google petitioned the court requesting an interim injunction prohibiting SMS Fun from using the domain name pending the outcome of the full trial.

SMS Fun argued that:

• it was entitled to use 'google.no' because it had registered the domain name in February 2001 - well before Google registered its mark in Norway;
  
  
• the Google search engine was not well known in Norway when it registered the domain name; and
  
  
• it had confused the words 'goggle' and 'google' when it registered the domain name as its intention was to use the website to market sunglasses.

The court refused Google's petition for an interim injunction. The court held that Google had not produced sufficient evidence of a risk of substantial damage or inconvenience as a result of the registration and use. The court also noted that since Google places advertisements and links on pornographic websites, arguments suggesting that SMS Fun was damaging its reputation in the market were unconvincing.

Anders Lenborg, Simonsen Føyen Advokatfirma DA, Oslo