Anyone who has a known trade name or brand name will of course register it as a domain name, but a less scrupulous business owner may also register someone else’s trade name or brand name, which can then be referred to his own site. In this way he will attract potential customers of the competitor, which of course is good for turnover. What can be done about this? And where do the boundaries lie?
Brand names and trade names are legally protected. Competitors are not allowed to use them just as they wish. However, several companies may hold a trademark right for the same name. In the Netherlands for example, there are three companies that use the word Ajax: the football club, a fire prevention company and Proctor & Gamble for a cleaning product. This is possible because the products in question have nothing to do with each other.
It is just as possible for three companies to have the same trade name, even if they operate in the same sector. The only requirement is that no two companies in the same geographic region may have the same name. So three bakers in Amsterdam, Utrecht and Eindhoven can all call themselves Jansen Bakers with impunity.
A trade name is automatically protected when a company presents itself under that name. The protection applies to all the names that are actually used. A company can have several trade names and they do not all need to be registered at the Chamber of Commerce. Registration is however obligatory for trademarks: a product name or logo is only protected if it has been registered at the Benelux or European Trademarks Office. This is because research has to be done into whether a trademark is “distinctive”, that is creative. A descriptive term may not be used as a trademark.
Domain names are unique. Only one of the above three companies can use the domain name ajax.nl or bakkerjansen.nl. The rule that applies is first come, first served. In the case of ajax.nl the football club came first and so the other two have had to register an alternative name. They may miss out on customers as a result, but there is nothing that can be done about that. It is however possible to take action against a domain name if there is a chance of confusion through the way in which it is used. If the football club were to sell fire extinguishers on its website, then the fire prevention company could take legal action against it. The same applies if the football club were to sell the fire extinguishers in a shop.
Legally it is not relevant that infringement is being committed through a domain name: infringement is infringement, whether it happens over the Internet or otherwise. There is however an important difference between trademarks and trade names. Infringement of a trade name is only possible if the website itself bears the trade name or a name that resembles it. A website that has “BakkerJansen.nl” as a title and opens with “Welcome to the site of Bakker Jansen” violates the trade name right of the other Bakker Jansen. In the case of a trademark any use of the protected name, even for example as a name of a service, may give rise to trademark infringement.
It is not however the case that a proprietor of a trademark can automatically claim every domain name in which its trademark is incorporated. A party that sells only official branded products for example has a valid reason. Case law shows that using someone else’s trademark to publicise that you sell, use or repair branded products is permitted, as long as there is no false suggestion that you are an official dealer.
Selling second-hand branded products or stating that you are a repairer or specialist in the branded products (or services) is also permitted. What is important in such a case is that there is nothing on the website that falsely suggests recognition by or ties with the proprietor. A site calling itself “dealer” suggests such a tie, for example. A dealer in sanitary fittings that only puts “Welcome to Grohe sanitary fittings” on its site is committing trademark infringement, as it appears to be an official site of the Grohe brand. In the case of trade names, a different company with the same name may have a valid reason if it does not offer the same products or services or is targeting an audience in a different region. After all, then there is no question of confusion.
The Internet is not therefore a place where you can simply use someone’s brand name or trade name as you like, especially not for commercial use. So be careful when registering or using domain names. Have a search performed to check if they might too closely resemble someone else’s brand name or trade name, and if you catch a competitor using your brand name or trade name, do not hesitate to take legal steps.
There is a quick way for a company to obtain redress especially for domain names. Every holder of a brand name or trade name can submit the conflict to a dispute adjudicator, who then decides within three months whether a case of infringement actually exists.
The dispute adjudicator looks at three factors:
If the dispute adjudicator allows the claim, the domain name will be transferred to the complainant.
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