FAQ

UDRP Procedure - Ex-publisher loses rights to dirkjan.nl

Mark Retera (winner of the comic prize 2004) has been publishing the comic book Dirkjan since 1989. The main character Dirkjan has been registered as a trademark in the Benelux since 2013. The domain name DIRKJAN.NL has been registered in 1999 and acquired by defendant in 2011. In the period between 2004 and 2009 the defendant has published the comic. When the cooperation ceases, defendant refuses to transfer the domain name. The domain name redirects to defendant’s website, where he sells Dirkjan comics, but also other comics.

In a domain name conflict, a fast and relatively inexpensive procedure may be started with WIPO (the UDRP procedure). In case of a Dutch (.nl) domain name the plaintiff has to prove, 1) that the domain name is similar to a trademark 2) that the holder of the domain name does not have his own rights 3) that the domain name has been used or registered in bad faith.

Important in this matter is the fact that the domain name redirects to defendant’s website, where other products are also being sold. Defendant may just as easily sell the other comics as the actual Dirkjan ones. Therefore, the domain name dirkjan.nl is not essential.

Defendant furthermore does not have any right of his own on the domain name, and the use is in bad faith. The domain name therefore had to be transferred. We recommend that in order to prevent these type of conflicts that clear agreements are made on 1) whether domain names (and social media accounts) are to be registered by partners; 2) if yes, in whose name; 3) under the condition these must be transferred when parties split.

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IP Quiz

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?

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