Competitor registers domain name

The one who first applies for a domain name, gets that domain name. Even if it contains a trademark of another company. Through a UDRP procedure, a trademark holder can fairly easily try to repossess such a domain. With Dutch domain names, you have to prove that the domain name is (virtually) identical, that the defendant has no right of its own pertaining to that name and that the domain name was registered or used in bad faith.

 

The ruling on domain name <rbcz.nl> is a good example. The plaintiff has been operating under the name ‘Stichting HBO Register Complementaire Zorg’ since 2007. In 2012 a trademark application was filed for RBCZ. However, the domain name was registered two years earlier by Civas, a competitor. The domain name was not in use.

Had the trademark been registered directly in 2007, the plaintiff would have had an easier time proving the defendant's bad faith. Now it has to do so through a detour. In 2021, the domain name was transferred to the defendant. The defendant was the director and sole shareholder at Civas until 2020. The defendant did not explain why he chose exactly these four letters. It is plausible that the domain name was registered by the defendant in bad faith and should be transferred to the claimant.

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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?