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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 Knowledge Quiz Designs

The plaintiff specializes in online sales of children's bicycles. In safeguarding its rights, the company has registered the design of these bicycles under Community Design. Through a multiple design registration, the company secures the rights for 10 new versions of its children's bicycles simultaneously under Community Design. Subsequently, when the defendant introduces a similar bicycle, legal proceedings ensue. Among the various claims, the plaintiff alleges infringement of its design rights, which in turn is contested by the defendant. A design must possess novelty and individual character. The defendant states that the design lacks novelty, as elements of this design are already present in various existing bicycles. Essentially, the defendant's bicycles reproduce these elements, resulting in a lack of individual character. According to the defendant, the community designs are thus invalid. Even If the plaintiff's designs should be valid, the defendant argues that its bicycle deviates sufficiently. The defendant argues that the plaintiff has sought protection for more or less similar designs in the multiple design registration. Apparently, the plaintiff believes that these designs differ enough to create a different overall impression. The defendant's bicycles deviate just as much, thus creating a different overall impression (the so-called doctrine of equivalents argument). The question arises: are the plaintiff's bicycles valid designs despite comprising known aspects from various bicycles, or does the defendant's design exhibit sufficient deviation, thereby enabling the invocation of the doctrine of equivalents concerning the multiple design registration? The court determines that designers of children's bicycles enjoy considerable freedom in their designs. Consequently, if another bicycle lacks significant distinctions, it will quickly evoke a similar overall impression for the informed user, thereby lacking individual character. The comparison is drawn between the new design (the AMIGO bicycles from T.O.M.) and an older existing design (bicycle). To prove that a design is not new, you cannot, as Prijskiller (the defendant) asserts, mosaic together various elements. Therefore, as a defendant, you cannot argue that a design is not new because its characteristics are present in various different products (see also the judgment Karen Millen). If, as a designer, you combine different aspects from multiple designs for the first time into a new product, then this is simply a new and valid design. This is the case with the AMIGO bicycle. The design is upheld as valid. The AMIGO Magic bicycle features a unique tubular frame, rendering it novel. The bicycle is further distinguished by the name MAGIC, the chain guard design, and accessories such as a basket, handlebar streamers, and doll seat. Prijskiller contends that its frame shape differs (being thicker) and that the drawings are positioned differently. Additionally, Prijskiller highlights the distinct color scheme; however, TOM has registered the designs in line drawings, thus disregarding this element in the evaluation. Nevertheless, several similarities are apparent. Both bicycles exhibit an almost identical pattern of butterflies and flowers, positioned nearly identically on the frame. Furthermore, the name MAGIC is depicted in the same font and placement on the chain guard. Consequently, this bicycle fails to evoke a different overall impression for the informed user. The designer's extensive creative freedom in designing children's bicycles means that the differences highlighted by Prijskiller are minor and inconspicuous. Prijskiller's invocation of the doctrine of equivalents is likewise dismissed. The court opines that this case pertains to models concurrently deposited by T.O.M. This circumstance precludes the invocation of the "doctrine of equivalents" because, in compliance with the regulations regarding novelty, individual character, and the grace period, the various models cannot diminish each other's novelty or individual character, nor their scope of protection. In essence, in simultaneous (multiple) deposits, the "doctrine of equivalents" holds little significance. Consequently, these 2Cycle Magic bicycles fail to impart a different overall impression for the informed user. The designer's extensive freedom in designing children's bicycles and the minor differences highlighted by Prijskiller render the infringement claim upheld.
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