Oil company OK does not have rights to < OK.nl > domain name
Friday, December 21, 2018
For years, Gaos B.V. has owned the domain name < ok.nl >: a beautifully pithy domain name which it hopes to put to good use in the future. For example, a positive website full of descriptions of beautiful things: there is already so much negativity in the world. It’s just that Gaos’ director hasn’t had the time to actually make good on this intention. FuelPlaza, which runs ‘OK’ filling stations, is claiming a better right to the domain name. It alleges that holding the registration < ok.nl > should be regarded as ‘other use’ of its Benelux trade mark, and threatens to dilute its trade mark, meaning that Gaos would gain an unfair advantage. Gaos is therefore alleged to be acting unlawfully by not transferring the domain name, constituting an abuse of power.
The dispute led to a legal battle on principle all the way to the Dutch Supreme Court: is the holder of a domain name actually obliged to use it? The rules and regulations of SIDN (the body that deals with .nl domain names) do not include any such usage obligation. In the first instance the District Court of the Central Netherlands rejected FuelPlaza’s claim, and the Court of Appeal in Arnhem-Leeuwarden confirmed this decision on appeal: the domain name < ok.nl > does not have to be transferred. Since Gaos has plans to use the domain name for a social purpose, the Court of Appeal took ‘other use’ of the trade mark as its starting point. In a case like this the trade mark holder can take action against dilution or taking unfair advantage, unless the respondent has a valid reason for its use. The Court of Appeal did not address the plea that ‘OK’ in fact is descriptive of any goods or services, and that there are also dozens of other companies with ‘OK’ in their trade mark or trade name. The trade mark has actually acquired a level of distinctiveness through use, and the public may, therefore, when seeing < ok.nl >, make a link with the trade mark. The deciding factors for the Court of Appeal were that Gaos does not wish to sell the domain name at all (to anyone) and that it registered it back in 1999, before FuelPlaza even acquired the rights to its trade mark. Gaos’ own rights constitute a valid reason for its use of the trade mark, so trade mark infringement is not at issue. The Dutch Supreme Court now put an end to this domain name dispute: the appeal of FuelPlaza was rejected. Gaos may keep the domain name. This actually worked out OK.
Maarten Haak acted on behalf of the holder of < ok.nl > together with Thijs van Aerde (Houthoff) in the appeal in cassation of this case.
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