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Unlawful use of a domain name can constitute passing off, as with the domain name the competitor or his goods can be identified

The plaintiff is registered owner of the domain name “uzleticegtudakozo.hu” (business inquiry). Three years later the defendant started to use the domain name “uzleticegtudakozo.com”.

The plaintiff sued the defendant for unfair competition.

 The defendant alleged that the extension of domain name with the element “com” grants a sufficient distinction relating to plaintiff’s domain name.

The court of first instance condemned the defendant for violation of Sec. 6 of the Act on Unfair Competition, namely for passing off. The court prohibited the defendant from the use of its domain name, moreover it obliged the latter to publish the operative part of the judgement on the homepages of three registrators (www.index.hu, www.origo.hu, www.hvg.hu). The court held that as the infringement had been commited on the internet, it was justified that amends should be made on the internet as well. The court held that the domain name used by the defendant resembled to that of the plaintiff so much that there was a real danger that the public would recognise the plaintiff by it.

The appeal of the defendant was rejected by the Metropolitan Court of Appeal. The latter held that passing off could be realised also by a domain name, as this could be suitable to recognise the competitor or his goods. The court of first instance was right on establishing likelihood of confusion: extension of the domain name with the element “com” does not exclude the danger of confusion. Relating to likelihood of confusion, the average consumer should be considered, namely the global assessment of the two domain names. The dominant element of the domain name is not the “hu” indication or its “com” extension, as a result the change of the latter does not exclude likelihood of confusion.  (BDT 2012/No. 69)

Observations

The activity of the defendant was identical with that of the plaintiff. As a result, the usual problem with conflicts of domain names, i.e. different fields of activity of the adverse parties was obsolete.

Concerning conflicts between domain names, the local Tribunals have jurisdiction. However, if there is a conflict between a domain name and a trademark, the Metropolitan Tribunal is exclusively competent. (BDT 2012 Nr.69)

                                                                                                                Dr. A. Vida

 

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