Domain name decision improves online protection of IP rights

Greece
Bacardi, the owner of the MARTINI marks, has scored another victory in Greece by obtaining three rulings in its favour with regard to the domain names 'mrtmartini.gr', 'martinicasual.gr' and 'martini.com.gr' (Decision 582/028, October 26 2010, formally served on December 1 2010).
 
The victory was twofold for Bacardi: on the one hand, the decision further confirms the reputation of Bacardi’s MARTINI marks; on the other, it ascertained the legitimacy of Bacardi’s actions, notwithstanding the existence of a settlement agreement with the Greek registrant of the domain names. Although the latter was originally allowed to register the domain name 'mrtmartini.gr', the National Telecommunications and Post Committee found that the Greek registrant should not be allowed to register any domain names containing the word 'Martini', as it had breached, and thus effectively rescinded, the settlement agreement. 
 
The committee ruled in favour of Bacardi with regard to the domain names 'martini.com.gr' and 'martinicasual.gr' (which were not mentioned in the settlement agreement) on the grounds that they had been registered and were being used in bad faith. With regard to the domain name 'mrtmartini.gr', a more in-depth analysis was required and the committee applied a well-rounded and sophisticated approach.
         
In an elaborate decision, the committee examined the parties’ intentions in settling the matter, as well as the good faith and fair business ethics required in such matters. After reviewing the parties’ submissions, the committee found that Bacardi had allowed the registration of the domain name 'mrtmartini.gr' as a compromise, with the implied caveat that the Greek registrant would:
  • comply with the entirety of the settlement agreement; and
  • register and use the domain name in good faith.
However, as Bacardi was able to prove that the Greek registrant had not respected the settlement agreement and infringed Bacardi’s rights by using various conflicting marks and domain names, the committee found that, notwithstanding the existence of the settlement agreement, use of 'mrtmartini.gr' by the Greek registrant had become unfair to Bacardi.
 
This decision is good news for the entire alternative dispute resolution process in Greece. It goes beyond the 'plain vanilla' domain name decisions that have already become the norm in Greece, and indicates the importance of treating domain name with the importance that they deserve, by examining and applying the relevant principles in a sophisticated manner. Therefore, the mere comparison of the domain name and the mark at issue is not, in itself, sufficient. The decision thus seems to improve the protection of IP rights on the internet in Greece.
 
Eleni Lappa, Drakopoulos Law Firm, Athens

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