The right to the domain name advokat.dk

Date 20 dec. 2011
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Introduction

On 12 September 2011, the Maritime and Commercial Court gave judgment in a case concerning the use of the following domain names; advokat.dk, advokater.dk and advokaterne.dk. The case concerned whether the plaintiff, Netdenmark A/S (hereinafter “Netdenmark”), or the defendant, Advokatsamfundet, had the right to register and use the domain names.


The Maritime and Commercial Court, finding in favour of the defendant, rendered that the plaintiff did not have a sufficiently creditable interest in the registration of the domain names.


Background

A dispute arose between Netdenmark and Advokatsamfundet regarding the right and application of the three domain names.


On 8 May 2003, the Complaint Board for Domain Names (in Danish “Klagenævnet for domænenavne” and hereinafter “Complaint Board”) assigned the domain names advokat.dk, advokaten.dk and advokater.dk to Advokatsamfundet.


As a result of the Complaint Board’s decision, Netdenmark filed for a restraining injunction on suspension of the use of the domain names. The following confirmatory action was brought before the Maritime and Commercial Court against the Complaint Board and DK Hostmaster A/S. Netdenmark claimed that the Complaint Board had not had sufficient competence to render a decision in the present case. On 17 July 2006, the Maritime and Commercial Court reaffirmed the Complaint Board’s decision and lifted the restraining injunction.


Netdenmark appealed the decision to the Danish Supreme Court claiming that the Complaint Board lacked competence to decide on the subject matter. The Supreme Court ruled that the Complaint Board had had sufficient competence to decide on the dispute between Netdenmark and Advokatsamfundet. Hereafter, DK Hostmaster A/S transferred the domain names to Advokatsamfundet.


Subsequently, Netdenmark filed a declaratory action at the Maritime and Commercial Court claiming that Advokatsamfundet should acknowledge that the Complaint Board’s decision was substantially incorrect. Furthermore, Advokatsamfundet was to acknowledge its unauthorized use and registration of the domain names, and, consequently, it should transfer (the rights to) the domain names to Netdenmark.


The facts of the case

In 1999, Netdenmark bought the domain names advokat.dk, advokater.dk and advokaterne.dk in order to run a search engine and database of Danish lawyers. Netdenmark was aware of Advokatsamfundet’s use of the domain name advokatnoglen.dk., which listed all Danish lawyers connected with Advokatsamfundet.


In 2000, Netdenmark introduced the internet portal advokater.dk to all Danish lawyers in a letter in which the portal was described as containing information and uniform email addresses for Danish lawyers.


In addition, Netdenmark sent a letter to Advokatsamfundet proposing future cooperation on the database. It was stated in the letter that since the foundation of the database, Netdenmark had wished to cooperate with Advokatsamfundet as to the content and running of the database. Furthermore, it was stated that Netdenmark knew about Advokatsamfundet’s use of advokatnoeglen.dk.


As a result of the received letter, Advokatsamfundet sent a letter to all Danish lawyers informing them that they were not the founders of the website advokat.dk, and Advokatsamfundet had not exchanged information with or provided Netdenmark A/S with any information.


The legal

The case was solved according to article 12 of the Danish Act on Internet Domains.


According to article 12, registrants must act in compliance with good practice in the field of domain names, when registering and applying a domain name. The Danish Act on Internet Domains entered into force on 1 July 2005. However, the Act is applicable on domain names registered before the Act came into force.


The Maritime and Commercial Court’s ruling

The Maritime and Commercial Court ruled in favour of the defendant, Advokatsamfundet.


The Maritime and Commercial Court emphasized that the title “Advokat” is reserved for persons fulfilling certain specified requirements according to The Danish Administration of Justice Act, Article 120. Advokatsamfundet has been granted the authority to administer and control the enforcement of this provision.


Based on the given statements, the Court assumed that Netdenmark had wished to reserve all the logical domain names related to lawyers in order to ensure the economic foundation and viability of the database, and that Netdenmark had wished to cooperate with Advokatsamfundet. Moreover, the Court assumed Netdenmark knew of Advokatsamfundet’s use of the domain name advokatnoeglen.dk, and that Netdenmark, compared to Advokatsamfundet, was less capable of keeping the search key updated.


Similar to the Complaint Board’s decision, the Court decided that Netdenmark had attempted to profit from Advokatsamfundet and its business. The used domain names and Advokatsamfundet’s domain name, advokatnoeglen.dk, were hardly distinguishable, and, thus, there was a risk that uncertainty would arise as to who belonged to the circle of lawyers holding a permission to practise law, their entitlement to appear before a certain court etc. The Court decided that Netdenmark’s conduct and intended use of the domain names violated the interests of the public, the legal profession and Advokatsamfundet.


Netdenmark was not considered to have a sufficiently creditable interest in the domain names compared to the interests of the public, the legal profession and Advokatsamfundet.


Conclusion

The Maritime and Commercial Court’s decision indicates that professional associations have the right to domain names which contain their name. This applies even though the domain name previously has been registered by others.


 

If you have any questions or require additional information on the right to domain names, please contact Attorney Christoffer Galbo (cga@mwblaw.dk), Attorney Henrik Syskind Pedersen (hsp@mwblaw.dk) or junior associate Maria Thomsen (mth@mwblaw.dk).


The above does not constitute legal counselling and Moalem Weitemeyer Bendtsen does not warrant the accuracy of the information. With the above text, Moalem Weitemeyer Bendtsen has not assumed responsibility of any kind as a consequence of a reader’s use of the above as a basis of decisions or considerations.