H&M wins transfer of "family's black sheep" domain name

A Danish Internet Forum (DIFO) panel has ordered the transfer of 'hmfamily.dk' to H&M Denmark following the domain name's use in a smear campaign against the retailer.

Labels containing defamatory comments about H&M and a reference to the web address 'www.hmfamily.dk' were placed on clothes in over half the H&M shops in Denmark in January of this year. The website was a visual replica of H&M's own homepage, and used almost the same logo as that site.

Shortly after the labels were distributed H&M sent an email to the domain name owner demanding that he take the site down immediately. The domain name owner changed the page to show only text stating that the page was closed as it was "the family's black sheep". However, these words linked to another website displaying the original text.

H&M sent another email to the domain name owner, threatening to complain to DIFO if the domain name was not transferred to the company. Although the page was changed again, it still contained content offensive to H&M, and the company accordingly filed a complaint.

The DIFO panel held that it was beyond doubt that H&M had the trademark rights to their own name. However, a purely private use of another entity's trademark is not against the law if (i) the purpose of that use is to publish statements regarding the trademark owner or its products, and (ii) the law is respected.

The panel stated that the combination of 'hm' and 'family' provided a risk that consumers would believe the website was run by H&M, which was clearly the domain name owner's intention. As the registration of the domain name 'hmfamily.dk' was made as part of a campaign, the sole purpose of which was to smear and criticize H&M's business methods, it did not give the domain name owner the right to use the trademark.

The panel found that (i) the domain name owner had sought to create confusion and uncertainty among H&M's business associates and customers, and (ii) this had been done in a way that was disloyal and harassing. Therefore the panel ordered the transfer of the domain to H&M.

Casper Moltke-Leth, Moltke-Leth Advokater, Copenhagen