Hole-in-one for Danish company in 'danskegolfbaner.dk' dispute
In Art-Work Administration A/S v HackItJack, a Danish Internet Forum (DIFO) panel has ordered the transfer of 'danskegolfbaner.dk' to the complainant. The panel held that although the complainant had failed to establish rights in the mark DANSKE GOLFBANER (meaning 'Danish golf courses'), it was entitled to the domain name because the respondent had breached the Danish Marketing Practices Act.
Danish company Art-Work Administration A/S filed a complaint with DIFO following the registration of the domain name 'danskegolfbaner.dk' by HackItJack on July 1 2003. It claimed that the registration infringed its rights (i) in the Danish registered mark BOGEN OM ALLE DANSKE GOLFBANER (meaning 'the book on all Danish golf courses'), and (ii) under the Marketing Practices Act. It also claimed rights in the mark DANSKE GOLFBANER through use in trade as the title of a guide book for Danish golf courses. In response, HackItJack argued that the term 'Danske golfbaner' lacked distinctiveness and therefore could not be protected by the Danish Trademarks Act.
The panel upheld HackItJack's argument that Art-Work's marks were devoid of distinctive character. It also stated that Art-Work had failed to prove that DANSKE GOLFBANER had acquired distinctiveness through use. However, the panel supported Art-Work's claim that HackItJack had infringed the Marketing Practices Act. It noted that it was improbable that HackItJack had not known of Art-Work's activities, including its use of DANSKE GOLFBANER, at the time it registered the disputed domain name. Furthermore, HackItJack had failed to establish any legitimate interest in 'danskegolfbaner.dk'.
Accordingly, the panel ordered the transfer of the domain name to Art-Work.
Lasse A Søndergaard Christensen and Claus Jespersen, Gorrissen Federspiel Kierkegaard, Aarhus
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