Major US film company obtains cancellation of '.gr' domain name
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The Greek Telecommunications and Post Commission (EETT) has upheld Twentieth Century Fox Film Corporation's action for the cancellation of the domain name 'fox.gr' (Case 565/081, May 20 2010).
Under the '.gr' Domain Names Regulation, a domain name may be cancelled if, among other things, it was applied for or is being used in bad faith by the registrant. The cancellation action may be filed by any third party with a legitimate interest (in particular, owners of prior IP rights). No statutory deadlines apply to cancellation actions based on bad faith. If the cancellation action is upheld, the EETT cannot order the transfer of the contested domain name, but only its deletion. The applicant may subsequently apply to register the released domain name in its own name.
The domain name 'fox.gr' was registered in 2000. The registrant used the domain name to host a news and entertainment portal under the name Fox. In addition, the website included various commercial advertisements, banners and sponsored links directing to the websites of third parties. Twentieth Century Fox requested the cancellation of the domain name on the grounds that it had been applied for and was being used in bad faith by the registrant.
In particular, Twentieth Century Fox argued that:
- the domain name was identical to its registered trademark FOX, which has been used in Greece for more than 60 years;
- the FOX mark has acquired a reputation in Greece and has been closely associated with Twentieth Century Fox's media and entertainment services in the mind of the average Greek consumer;
- the registrant must have been aware of Twentieth Century Fox's famous mark when it applied to register the domain name;
- the registrant used the domain name in association with services that were very similar to those of Twentieth Century Fox;
- the registration and use of the domain name by the registrant misled internet users into believing that the registrant’s business was economically linked to Twentieth Century Fox; and
- the registrant took unfair advantage of Twentieth Century Fox's reputation.
The EETT accepted Twentieth Century Fox's arguments. It acknowledged the reputation of the FOX mark in Greece and concluded that the registrant had applied to register and used the domain name in bad faith - namely, "in a manner contrary to the dignity and fairness required in the course of trade". Accordingly, the EETT ordered that the domain name be deleted.
The decision is good news for owners of reputable trademarks: it demonstrates that, even if a considerable amount of time has elapsed since the registration of an infringing domain name, the trademark owner may still obtain its cancellation.
Manos K Markakis, Dontas Law Offices, Athens
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