DIFO refuses to transfer descriptive domain name
In ITbutikken A/S v Vinther, the Danish Internet Forum (DIFO) - the body responsible for registering and administering Denmark's country-code top-level domain names - has refused to transfer 'it-butikken.dk' to the claimant on the grounds that the domain name (which means 'IT shop') is descriptive.
An individual named Leo Vinther had registered the disputed domain name in November 1998. ITbutikken, the owner of the domain name 'itbutikken.dk' since December 1998, filed a complaint with DIFO in May 2002 requesting either the transfer of 'it-butikken.dk' or a link from Vinther's website to its own site. The Danish company argued that Vinther had violated the Danish Marketing Practices Act because 'it-butikken.dk' is almost identical to its company name and domain name. ITbutikken conceded that it had not registered its domain name first, but argued that it was the only user of the company name 'ITbutikken' in the world and, therefore, had prior rights in the name.
The DIFO panel ruled in favour of Vinther. First, it found that (i) 'IT-butik' is a generic phrase for a shop that sells IT equipment, and (ii) ITbutikken had not proved that its name had become distinctive through use so as to be protected as a trademark. As a result, Vinther had not violated the Danish Marketing Practices Act by registering the disputed domain name.
Second, the panel stated that it has no authority to order one party to provide a link to the website of another party. According to DIFO's rules, a panel can only decide on whether a domain registration is contrary to Danish Law or DIFO's rules, and whether that registration should be cancelled.
Lasse A Søndergaard Christensen and Christian Halskov Sauer, Gorrissen Federspiel Kierkegaard, Aarhus
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