‘valiant.dk’ Case shows limits of free speech

Denmark

A Danish Internet Forum (DIFO) panel has held in Vaillant A/S v Frederiksen that ‘valiant.dk’ infringed the complainant's VAILLANT trademark and trade name, even though the domain name was being used for a non-commercial criticism website. The decision highlights the limits of free speech in relation to criticism websites.

Vaillant A/S, a Danish manufacturer of heating systems, filed a complaint with DIFO upon discovering that Thomas Frederiksen, an individual, had registered the domain name ‘valiant.dk’. Under the domain name, Frederiksen hosted a website critical of Vaillant following an unhappy experience with a Vaillant gas furnace. Vaillant requested that the domain name be transferred to it.

Practice has shown that it is difficult to prevent registration and use of domain names for non-commercial purposes as long as the use is well within the limits of free speech. So far, domain names containing elements such as ‘sucks’ have been accepted by DIFO panels in non-commercial cases and even - much to the regret of some IP professionals - in at least one borderline case where the use of the domain name involved certain commercial aspects (advertising).

Here, the DIFO panel ordered the cancellation of the domain name. The panel reasoned that the domain name was confusingly similar to the VAILLANT mark and trade name, even though the domain name was used for non-commercial purposes and, as such, did not fall within the scope of the infringement provisions of the Trademarks Act. The panel stated that a trademark is protected against third-party use where such use is likely to cause confusion with the mark owner and its business. Strictly private use by a third party of a trademark as a domain name will not normally be contrary to law, provided that (i) the purpose of such use is to provide information about the trademark holder or its products, and (ii) the use is within the limits of free speech.

The panel ruled that the fact that a website contains derogatory content must be indicated in the domain name (ie, through the addition of the term ‘sucks’). Frederiksen, said the panel, had adopted a domain name that was very similar to the VAILLANT mark, which showed that his intention was to create confusion among Vaillant’s customers “in a disloyal and spiteful way”. Accordingly, the panel ordered the cancellation of the domain name. However, it refused to order the transfer of ‘valiant.dk’ on the grounds that Vaillant had failed to prove that it had any rights in the name Valiant.

Lisbet Andersen, Bech-Bruun Dragsted, Copenhagen

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