Domain Name Piracy: Is the Proprietor Powerless?
The domain name Heineken.nl has been pirated. Will brewer Heineken be able to claim back the pirated domain name? Which legal actions will Shell be able to take if a third party (domain name pirate) has registered Shell's trade mark or trade name as a domain name?
The above gives rise to a brief explanation of how an NL-level domain name is acquired in The Netherlands, and on which legal grounds action may be taken against a domain name pirate.
The Netherlands Internet Domain Name Registration Foundation
In The Netherlands it is quite easy for a company to acquire a domain name. The Netherlands Internet Domain Name Registration Foundation issues NL-level domain names. This Foundation will only grant the application if the domain name is still available, if it will not cause confusion, if the applicant is a company registered with a Dutch Chamber of Commerce, if an extract from the Register of the Chamber of Commerce has been submitted, and, in case the applicant is a private person, if he will use the domain name to carry on a business or a profession (www.domain-registratie.nl).
For the registration and issuance of domain names, the Foundation applies the "first come, first served" principle. The Foundation is also authorized to reject a domain name if the name contains a general indication and is misleading, for instance because the name suggests an activity that is completely different from the actual activity behind the name (e.g. a soccer club with the domain name "firebrigade.nl") or because the domain name suggests that an entire branch of the economy is represented, whereas the name in reality only represents a part of that branch (e.g. a kiosk with the domain name "bookshop.nl"). A general domain name (such as "hotel.nl") may be granted, however, if it has been demonstrated to the satisfaction of the Foundation that the applicant may reasonably be deemed to represent the specific branch (in this example the hotel branch).
Domain Name - Regulations
In The Netherlands there are no specific laws addressing the illegal registration of domain names. Case law shows that the Dutch Trade Name Act and the Benelux Trademark Act offer sufficient basis to order a company to transfer an "infringing" domain name to the proprietor of the trade name or trade mark.
In principle the Dutch courts will use the Dutch Trade Name Act and the Benelux Trademark Act to assess whether the use of a domain name infringes the rights of third parties. Use of a domain name may also be qualified as a tort.
Article 1 of the Benelux Trademark Act (BMW) provides that a trademark is an indication which serves to distinguish the goods (or services) of a company. Although a domain name in principle is nothing more than a number which the user has given an alphanumeric designation, practice has shown that domain names have become distinguishing signs. Companies have obviously contributed to this by registering their own trade mark or trade name as a domain name...
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