Catching website users with broad net is OK, says High Court

Denmark

The Danish Western High Court has upheld (VL: B-1038-03) the Danish Enforcement Court's refusal to grant an injunction against a company that uses a program designed to maximize the number of users reaching its website. A competitor claimed that use of the program resulted in its trademark being infringed.

Large A/S(1), which among other things makes roofs for houses, registered the domain name 'roofs.dk'. It also programmed the domain name in such a way that regardless of what was typed in front of it (eg, 'www.roofs.dk', 'abc.roofs.dk' or 'www.xyz.roofs.dk'), the user would be directed to 'roofs.dk'.

Small Roofs ApS, a competitor of Large, registered and used the domain name 'small-roofs.dk' (ie, its company name - and trademark - separated by a hyphen). However, Small Roofs discovered that if a user typed 'small.roofs.dk' (ie, mistaking the hyphen for a dot - on Danish keyboards the two punctuation marks are next to one another), he/she would be directed to Large's website.

Small Roofs filed an injunction against Large referring to the fact that Large used its company name and trademark in connection with the sale of competitive products. Small Roofs also alleged that by combining the domain name ('roofs.dk') and sub-domain ('small.'), Large had misused Small Roof's company name and trademark.

However, both the Danish Enforcement Court and the Danish High Court found that Large was not misusing Small's company name and trademark. The courts ruled that (i) Large was entitled to use the generic domain name 'roofs.dk', and (ii) the program that directed users to its site regardless of what was typed before the domain name is commonly used. The courts also referred to the two companies' turnover and clientele, finding it significant that Large had a considerably higher turnover than Small Roofs.

It is worth noting that the case merely involved a prohibitory injunction, which in Denmark does not require the production of full evidence until subsequent confirmatory action. For this reason the precedential value of this ruling is limited.

Peter Lind Nielsen, Bender.dk, Skanderborg

Endnote

(1) For legal reasons the parties (and by extension their domain names) cannot be used. Therefore the author has used the company names 'Large A/S' and 'Small Roofs ApS', and the domain names 'roofs.dk' and 'small-roofs.dk' for illustrative purposes.

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