Google obtains cancellation of domain name containing its trademark
The Athens Administrative Court of Appeal has reversed a decision of the Hellenic Telecommunications and Post Commission (EETT) in which the latter had rejected a petition filed by Google Inc for the cancellation of the domain name 'googlein.gr'.
In the decision under appeal, the EETT had found that Google had substantiated the claims put forward in the petition for cancellation with regard to:
- its rights in the company name Google;
- its various GOOGLE trademarks; and
- the reputation of its trademarks and products worldwide.
However, the EETT stated that the requirements set forth by the applicable Greek law for the cancellation of domain names were not met in this case, concluding that:
- “the use, as a domain name, of words comprising a term that is well-known or a famous trademark cannot be precluded”; and
- it had not been shown how the use of the domain name in question created a risk of confusion among internet users.
The EETT reached this conclusion notwithstanding the fact that Google submitted former decisions in similar cases which recognised the fame of the GOOGLE marks and confirmed that a risk of confusion would inevitably be caused by the registration of similar domain names.
Moreover, the EETT stated that, although 'googlein.gr' contained the word 'google' in its entirety, the owner of 'googlein.gr' had not acted in bad faith by:
- applying for the registration of the domain name, as 'googlein' is not identical to 'google'; or
- using the domain name, as there was no evidence suggesting that internet users were unlawfully enticed to visit the webpages of the owner of 'googlein.gr'.
Further, the EETT stated that the insertion of a single digit or number, for example, into a registered trademark could be sufficient to render the domain name registration lawful.
On appeal by Google, the Athens Administrative Court of Appeal held that the EETT had erred in its assessment, finding that the use of the contested domain name was, in fact, contrary to the principle of good faith. The court pointed out that 'googlein.gr' consisted - in its largest part - of the well-known GOOGLE mark.
Although the court's decision left little room for doubt as to the bench’s views on this particular case, it remains to be seen whether it will act as a precedent for other cases concerning the registration of domain names that contain famous trademarks in their entirety.
Dimitra Nassimpian, Dr Helen Papaconstantinou & Associates, Athens
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