FAQ

Domain name hijacking AJAX.FOOTBALL

Since 2013 many new domain name extensions have been launched. One of them is .FOOTBALL (especially for Football teams). From June 2015, the domain name became available to the public, for 19 Euros per year. Last autumn the domain name AJAX.FOOTBALL is registered by a third party (not Ajax or its fan club). This person sends an email to Ajax offering to transfer the domain name for the amount of 6.500 Euros.

Luckily there is no need to start an expensive procedure at the court, in order to fight domain name hijacking. A good alternative is a simple and relatively cheap procedure before the WIPO. The demand has to fulfill three conditions.

Firstly, the domain name has to be identical (or very similar) to the trademark of the demanding party. AJAX is a registered trademark, so the first condition is met.

Secondly, the registrant has no legal rights or interests in relation to the domain name. This is the case, because the registrant trades under another name on the market and he was not granted permission to use the name, Ajax.

At last, the registration has to be in bad faith. In this case, bad faith was proven by the email of the registrant, offering the domain name for a price which is a lot higher than the registration costs (6.500 Euros versus 19 Euros). Therefore, the domain name has to be transferred to Ajax.

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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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