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Trade in domain names: OK tank stations do not get domain name.

Trade in domain names: OK tank stations do not get domain name.

A good domain name can have great commercial value. There are many companies that register domain names and subsequently sell it for great profits. In order to force a transfer of the domain name there are two options. One can choose to start a procedure with WIPO (a simple procedure to act against domain name hijacking, especially when the domain names are obviously based on a company’s trademark). The second option is to start a court procedure. In the past few years courts have, more and more, given an opinion on whether or not it is allowed to register a domain name of someone else’s trademark. That's the main qustion in the courtcase started by Fuelplaza, to obtain the registered domain name OK.NL

A domain name is a unique address on the internet and can therefore only be registered once. There have been companies trading in domain names since the market opened up in 1999. They registered many domain names hoping that one day in the future they may be able to sell them for a large amount of money. For new companies this is sometimes frustrating. They finally came with a new and original name and then find out it has already been registered as a domain name. Often one that is not in use. The price is usually a few thousand euros, much more than the few euros it took to have the domain name registered. Should this be allowed.


The past few years the legitimacy of this practice has been a focal point in several cases. Gaos is an investment company that concentrates on the internet. In 1999 it registered many generic names as a domain name, including the domain name ok.nl.


Fuelplaza exploits gas stations under the name OK. The company registered the logo OK in 1983 in the Benelux. On the internet the company is found at ok-olie.nl. Because ok.nl is a much better name the company approached Goas in 2007, 2013 and 2014 to buy the domain name. This was unsuccessful, and eventually a resolution was sought in court.


Fuelplaza invokes its trademark rights. Because there is not an active website, consumers would assume that the company is not active. This may affect the reputation of the company. The court, however, does not agree. The fact that a company is being disadvantaged because it cannot obtain the correspondending domain name does not affect its reputation. Trademark rights are meant to protect the reputation of a trademark, but they do not grant unlimited rights.


Fuelplaza had another argument, though. It claims to have a better right on the domain name. Gaos is not using it after all. This would be, according to Fuelplaza, illegitimate use of the domain name. The court, however, does not agree with this. Registering a domain name that is similar to a trademark is not illegitimate on and of itself. Gaos’ refusal to sell the domain name for the price offered by Fuelplaze, being a reasonable price, is not a reason. There are many companies that use the name OK, so why would Gaos be obliged to sell the name to Fuelplaza? Furthermore, Fuelplaza can also be found online at ok-olie.nl. The fact that Gaos does not wish to sell is not an abuse of power. There is no obligation to have an actual active website.


For small businesses this is an important judgment. A trademark allows a company to act against third parties who use the same name. However, there are obvious limits to what a trademark registration can do. Not everything may be claimed or

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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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