Generating Internet Traffic with Domain Name Not Used As Trade Name
A discussion of the judgment of the Court of Appeal of The
Hague of 9 March 2010, case no. 200.017.357/01, Taartenwinkel.nl
B.V. versus GefeliciTAART B.V.
Taartenwinkel.nl and GefeliciTAART both engage in the supply and
delivery of cakes. Both companies are based in Haarlem.
Taartenwinkel.nl is holder of the domain name taartenwinkel.nl, and
offers its services on the website
www.taartenwinkel.nl. GefeliciTAART supplies
cakes via the website www.gefelicitaart.nl. It is also the holder of
the domain name taartwinkel.nl. Via this domain name consumers are
directed to the website www.gefelicitaart.nl (the so-called
'rerouting'). Taartenwinkel.nl is of the view that
GefeliciTAART thus infringes its trade name right and commits an
unlawful act.
No Trade Name Infringement
The Court of Appeal ruled that the domain name taartwinkel.nl
cannot be regarded as a trade name (within the meaning of Section 1
of the Dutch Trade Names Act), because GefeliciTAART only goes
public under the name GefeliciTAART. The domain name taartwinkel.nl
is not used as an indication of the company. The Court of Appeal
therefore ruled that there is no question of a trade name
infringement.
Unlawful Act
GefeliciTAART has argued that it is not acting unlawfully,
because taartenwinkel.nl is a descriptive trade name and a commonly
used term, which is not eligible for protection. The Court of
Appeal did not follow this argument and stated that the domain name
taartwinkel.nl is similar to the domain name taartenwinkel.nl to
such an extent that the consumer may easily be mistaken. The
consumer may think that the two companies are associated with each
other. According to the Court of Appeal, the likelihood of
confusion is also increased because this concerns the same products
and both businesses are based in Haarlem.
The Court of Appeal deemed it furthermore important that
GefeliciTAART has recognized that the purpose of taartwinkel.nl is
(also) to generate as much internet traffic as possible to its own
website, while using the reputation of Taartenwinkel.nl. The Court
of Appeal is of the view that this behavior goes beyond the
boundaries of fair competition and is therefore unlawful.
GefeliciTAART must therefore cease and desist the use of the domain
name taartwinkel.nl.
Conclusion
Despite the descriptive character of the designations
taartwinkel and taartenwinkel, the Court of Appeal ruled that the
use of the domain name taartwinkel.nl is unlawful, in view of the
likelihood of confusion on the part of the public (due to the
reputation of taartenwinkel.nl). Since the use of the domain name
taartwinkel.nl is no trade name use, the Court of Appeal ruled on
the lawfulness thereof via the safety net of the unlawful act
(Section 6:162 of the Dutch Civil Code). From the judgment it
follows that GefeliciTAART has profited from the ─ apparently
well-known ─ company Taartenwinkel.nl. In principle the profiting
from a well-known person or a well-known institution is not
unlawful. However, additional circumstances may change this. It
seems that the Court of Appeal regards the fact that GefeliciTAART
only uses the domain name to generate internet traffic to its own
website as such a circumstance.
In older case law the starting point was formulated that generic
terms may not be monopolized by means of the Trade Names Act.
Lately, this starting point seems to have lost some of its meaning.
In recent legal actions there seems to be a trend that descriptive
designations actually do enjoy protection under the Trade Names
Act. In my view, in a number of cases this trend goes too far. The
question is whether in this case the Court of Appeal would have
followed this trend. The Court of Appeal, however, did not get
round to this question, because GefeliciTAART does not use the
designation taartwinkel.nl as a trade name. Subsequently, this
judgment did offer ─ disguised ─ legal protection to trade names
via the "back door" of the unlawful act. From my point of
view this should be handled with great reticence.