Hewlett-Packard wins first round in 'hpshop.no' dispute
In Hewlett-Packard Company v Haralds Printershop AS (Case LB 2002-02410), the High Court for Borgarting has upheld a lower court decision ordering the defendant to cancel its registration of 'hpshop.no'. The court held that the domain name was confusingly similar to the plaintiff's HP mark.
Hewlett-Packard Company, a multinational involved in various aspects of the information technology industry, owns a number of international registrations for the trademark HP. Haralds Printershop AS is part of another Norwegian company called Kontorkunnskap 88 AS, which sells branded computer hardware and software online. Kontorkunnskap registered various domain names, including 'hpshop.no', 'ibmshop.no' and 'lexmarkshop.no', relating to specific computer hardware or software manufacturers, and established a number of companies to hold the domain names. Haralds Printershop was formed to hold the 'hpshop.no' registration and was using it to sell Hewlett-Packard products. Hewlett-Packard filed a complaint against Haralds Printershop for its use of the domain name, arguing that it infringed the HP trademark.
The High Court for Borgarting agreed with Hewlett-Packard and ordered the cancellation of the domain name. It noted that, as a matter of principle, the Norwegian Trademark Act applies to domain name registrations that are confusingly similar to trademarks. With this in mind, it reasoned that 'hpshop.no' was confusingly similar to Hewlett-Packard's mark and infringed its rights. The court dismissed as irrelevant, the fact that Norid, the registrar for the '.no' domain space, had given its consent to the registration.
The decision has been appealed to the Supreme Court and the final outcome is eagerly anticipated. It should be noted that even if the domain name is cancelled, there is nothing in Norwegian law to prevent Haralds Printershop or a third party from re-registering it. Trademark owners are therefore advised to request the transfer, as opposed to cancellation, of a disputed domain name in their statements of claim.
Felix Reimers, Advokatfirmaet Grette DA, Oslo
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