SOL ISP obtains transfer of sex-related domain names
In Eniro Danmark A/S v Tele Team Work, a Danish Internet Forum (DIFO) panel has ordered the transfer of the domain names 'solsex.dk', 'solsexshop.dk' and 'soldating.dk' to the complainant on the grounds that they infringed its SOL trademark.
Tele Team Work registered the domain names 'solsex.dk' and 'solsexshop.dk' to direct internet users to pornographic websites. It also registered 'soldating.dk' to host a dating website. Eniro Danmark, one of Denmark's largest providers of online information services, operates a website at 'sol.dk'. The website offers services under a variety of names, many of which include the word 'sol' (meaning 'sun'). Eniro filed complaints with DIFO on the basis of its word mark SOL, which is registered for, among other things, internet services, advertising and mail order services. Eniro claimed that (i) the disputed domain names infringed its trademark rights, and (ii) SOL is a well-known mark that has a substantial goodwill.
The panel ruled that the disputed domain names infringed Eniro's rights in the mark SOL under Section 4 of the Trademarks Act. It rejected Tele Team Work's argument that the combination of the word 'sol' with dating and sex services was an obvious choice. Instead, it found that the words 'sex', 'sexshop' and 'dating' were purely descriptive of the services rendered by Tele Team Work through its websites. The panel found that, consequently, the word 'sol' remained the dominant part of the domain names at issue. The panel considered the scope of protection of the SOL mark and whether the generic meaning of the word 'sol' was decisive in that respect. It concluded that the mark had developed sufficient goodwill in relation to internet services to warrant protection. Accordingly, it found that Tele Team Work's use of the word 'sol' in the disputed domain names created a likelihood of confusion, including the assumption of a connection with Eniro's trademark.
Further, the panel found that it was likely that the domain names had been chosen in order to trade on the reputation and goodwill of Eniro's trademark. This, ruled the panel, was contrary to Sections 1 and 5 of the Marketing Practices Act.
Accordingly, the panel ordered the transfer of all three domain names to Eniro.
Lisbet Andersen, Bech-Bruun Dragsted, Copenhagen
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