Registrant's threat tips the scales in favour of trademark holder
In January 2004 DK Hostmaster opened a round of bidding for 'danvægt.dk'. There were several applicants for the domain name, and all were asked to pay a deposit to DK Hostmaster. However, Danvægt A/S - a Danish company that produces, develops, sells and installs scales and scaling systems - considered that it had an absolute right to the domain name and found it unfair that it should have to pay to participate in an auction where the outcome was random. As it turned out there were only two interested parties: Danvægt and a company called Dan-Brokers ApS, which won the domain name because Danvægt refused to participate in the bidding.
Danvægt contacted Dan-Brokers and asked it to transfer the domain name to Danvægt. Dan-Brokers refused to do so, claiming that it intended to use the name to promote a new series of bathroom scales. However, it also informed Danvægt that if it changed its mind and did not use the domain name to promote such scales, it would auction the name online to the highest bidder.
As a result of this Danvægt offered Dan-Brokers Dkr1,000 for the domain name, but this offer was turned down as Dan-Brokers found it far too low. Danvægt complained to DIFO.
The panel noted the following:
- Dan-Brokers was listed as the owner of approximately 50 different domain names that had nothing to do with its business. In contrast, Danvægt had existed since 1976, registering the name Danvægt in 1983 and the trademark DANVÆGT in 1985.
- Dan-Brokers' plan to use the domain name 'danvægt.dk' in connection with the promotion of bathroom scales might conflict with the Danish Marketing Practices Act, confusing consumers as to who was the distributor of the scales. Prior to the registration of the domain name Dan-Brokers was aware that Danvægt claimed all rights to the name 'Danvægt', and chose to register the domain name regardless.
- Dan-Brokers did not prove that it had any interest in using the name. By registering it as a domain name, it cut off Danvægt's possibility of using the name of which it was the only rightful owner.
- Dan-Brokers' intention to put the name up for auction could only be considered as a way of pressuring Danvægt into buying the name.
Thus, the panel found that Dan-Brokers had acted in bad faith towards Danvægt and contravened the Marketing Practices Act. It ordered that 'danvægt.dk' be transferred to Danvægt.
Casper Moltke-Leth, Moltke-Leth Advokater, Copenhagen
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