Unfair competition sees 'google.dk' transferred to Google
In Google Inc v Nielsen, a Danish Internet Forum (DIFO) panel has ordered the transfer of 'google.dk' to Google. The panel held that it was unnecessary to consider Google's trademark infringement claim because Nielsen's use of the domain name to host a website featuring a number of banner ads constituted unfair competition under the Marketing Practices Act.
Google, the US internet search engine company, filed a complaint with DIFO claiming that the registration and use of 'google.dk' infringed its (i) rights in various GOOGLE trademark registrations, including a pending Community trademark application, and (ii) unregistered rights in the word 'google' through use of the term in Denmark. Nielsen, a Danish student, registered 'google.dk' in January 1999 and was using it to host a website linking to Internet Bookshop, a division of UK company WHSmith. He argued that, when he registered the disputed domain name, he was unaware of Google or its 'google.com' website. Nielsen further contended that he had chosen the word 'google' because it was a combination of the English words 'go' and 'ogle', which had connotations with the phrase 'go and look'. He also submitted evidence that purported to show that he had turned down an offer of Dkr75,000 for the domain name.
The panel rejected Nielsen's arguments and ordered the transfer of 'google.dk'. The panel stated that Nielsen's reasons for choosing the domain name were not credible and that it was highly unlikely that he had no knowledge of Google or its search engine website at the time he registered 'google.dk'. The panel held that, as the main purpose of Nielsen's website appeared to be the administration of banner ads, which were viewed by as many as 3,500 to 4,000 internet users every day, the registration and use of 'google.dk' took advantage of Google's reputation and constituted unfair competition under the Marketing Practices Act. The unfair competition finding alone, said the panel, was sufficient to transfer the domain name and it was therefore unnecessary to decide the trademark infringement issue.
It was perhaps convenient for the panel that the trademark infringement issue was not crucial to the outcome of the case, as it does not appear to have been as straightforward as it seems. Google was relying on a pending Community trademark application and unregistered trademark-use rights, yet it had provided little evidence of the exact date that these rights were established in Denmark. The fact that the goods and services the two parties offered differed substantially might also have posed the panel some problems.
Lisbet Andersen, Bech-Bruun Dragsted, Copenhagen
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