Domain name and trade name violation on the internet in the Netherlands
In the present era of the internet as an entrepreneurial platform, we receive many questions about the violation of domain names or trade names and related trademark rights. In most cases, it concerns descriptive indications for goods or services offered. In this blog, Intellectual Property Rights Lawyer Manita Hamberg discusses a recent ruling that shows how this is handled in the Netherlands.
Dutch domain name and trade name violation Webcamsex
In this matter, the owner of the Dutch domain name www.webcamsex.nl initiated preliminary relief proceedings against the owner of the (later) domain name www.webcam-sex.nl. The first party used the trade names Webcamsex and Webcamsex.nl in addition to the domain name www.webcamsex.nl and had registered a logo containing the word ‘webcamsex.’
Has the logo been violated?
As a first step, the provisional relief judge assessed whether the logo of Webcamsex.nl had been violated. Violation within the meaning of subsection 1(b) of section 2.20 of the BCIP is deemed to exist if the mark and trademark are similar to such an extent that they may (directly or indirectly) confuse the relevant public for the goods or services in question. The logo of Webcamsex.nl and the mark of the other party are entirely different and make different overall impressions so that, according to the provisional relief judge, there is no likelihood of confusion.
Legal standard for domain name violation
A party entitled to a domain name is protected against its subsequent use by another party of the same or a corresponding domain name if that use is unlawful towards him by virtue of Section 162 of Book 6 of the Dutch Civil Code or if there is a contractual ground for such protection. Unlawfulness can exist if that use creates confusion. In principle, it should be possible for everyone to use descriptive indications for the services or goods offered, also in domain names. This is also referred to with the German term “Freihaltebedürfnis” (Requirement of Availability): The use of a descriptive indication, even if it causes confusion, is only unlawful if there are additional circumstances.
Great similarity of domain names
The provisional relief judge determined that the indication ‘webcam-sex’ in the domain name of the other party was highly confusing in view of the great similarity with the indication ‘webcamsex.’ However, as webcamsex is a purely descriptive indication for the services offered by the parties, the likelihood of confusion alone is insufficient, and it must be considered whether there are additional circumstances that make its use by the other party unlawful.
Is it a trade name or a descriptive term?
It was argued that the other party deliberately profited from the millions invested by Webcamsex.nl over the years. However, in the opinion of the provisional relief judge, this circumstance cannot be regarded as an additional circumstance: Simply taking advantage of and possibly damaging another party’s market position is not sufficient. The other party also argued that it had only opted for the term webcam-sex because it is a descriptive indication that is suited to the search behaviour of internet users who search with descriptive terms.
No trade name violation
The provisional relief judge also considered that descriptive trade names, as in this case, are also protected by Article 5 of the Trade Names Act. As well as the risk of confusion, descriptive trade names also require additional circumstances to justify a prohibition under this provision. The provisional relief judge similarly considered that the trade name webcam-sex was confusing, but that insufficient facts had been furnished to assume the presence of additional circumstances.
So, what is covered by these additional circumstances?
In the present case, all claims were rejected. It will have to be shown in actual practice what “additional circumstances” are sufficient for descriptive indications in domain names or trade names to be able to implement a ban. In any event, it will follow from previous rulings that actual confusion between two companies alone is not sufficient. It could be sufficient if, in addition to online stores, there are also physical shops located in close proximity to each other. Otherwise, it would be possible to consider the demonstrable ill will of the other party or the severe reputational damage caused by the use.