No trademark rights in town names, rules panel
The market association filed a complaint with DIFO following the registration of 'hjallerup.dk' by an individual named Leo Vinther. It claimed that by registering the name of the town as a domain name, Vinther had infringed its rights under the Danish Marketing Practices Act.
In response, Vinther argued that no trademark rights in the name Hjallerup exist since the name is descriptive. He also stated that the website was actively being used to promote the town. Vinther pointed out that the town's residents, including the complainant, could advertise through the site but that the complainant had refused to do so.
The DIFO panel ruled in favour of Vinther and refused to order the transfer of the disputed domain name. It reasoned that Hjallerup is the name of a town and is therefore a geographical indication of origin. No rights, including trademark rights, exist in such indications of origin. The fact that the complaint was filed by a market association based in Hjallerup did not mean that the complainant had any prior right to the name.
The panel emphasized that even though the name Hjallerup can be freely used in commerce, the use must be in accordance with "good marketing practices" as required by the Marketing Practices Act. It noted that Vinther had actively used the disputed domain name since 1998, and that he had invited interested organizations and businesses to use his site. The complainant had not produced evidence of any unlawful conduct on the part of Vinther towards it.
Accordingly, the panel concluded that he had used 'hjallerup.dk' in line with good marketing practices.
Lasse A Søndergaard Christensen and Claus Jespersen, Gorrissen Federspiel Kierkegaard, Aarhus
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