Google obtains transfer of ''


The Oslo District Court has ordered the transfer of the domain name '' from a Norwegian company to US search engine company Google Inc (Case TOSLO-2003-09203a, July 13 2004).

Google registered the trademark GOOGLE in Norway in 2001 for computer-related goods and services in Classes 9 and 42 of the Nice Classification, with a priority date of December 2000. In February 2001, Norwegian company SMSFun AS registered '' to host a website selling sunglasses. The site featured a disclaimer stating that it was not affiliated with Google. However, Google applied to the Oslo Court of Execution and Enforcement for an interlocutory injunction against SMSFun, claiming that the use of '' infringed its rights in the GOOGLE mark and breached the Marketing Control Act. The court held that Google had not substantiated its claim and, accordingly, refused to issue the injunction (see Google loses first round in fight over ''). Google subsequently filed a new action with the Oslo District Court, requesting the transfer of ''.

The court held that the mere registration of the domain name did not constitute trademark infringement. However, it found that there was a likelihood of confusion between the mark GOOGLE and the domain name '' pursuant to Section 6(1) of the Trademarks Act. That provision states that signs can be found to be confusing where they apply to (i) identical or similar goods or services, which was not the case here, or (ii) dissimilar goods or services if the earlier trademark is also the owner's company name. Even though the court expressed doubt as to whether that provision applies where one of the signs at issue is used in relation to an online store, it held that foreign company names are protected under Section 6(1). Accordingly, the court ordered the transfer of '' to Google. It did not decide whether SMSFun's registration and use of '' was in breach of the Marketing Control Act.

The decision has not been appealed and is therefore final.

Ørnulf Staalesen, Advokatfirmaet Grette DA, Oslo

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