Kelkoo wins domain name clash before arbitration court in Poland

Recently, the Arbitration Court at the Polish Chamber of Information Technology and Telecommunications in Warsaw examined a case concerning the registration and use of two domain names: kelkoo.pl and kelkoo.com.pl.

The domain names kelkoo.pl and kelkoo.com.pl were registered by a Polish subscriber on April 6, 2004 and February 23, 2005, respectively.

The designation ‘kelkoo’, used by the subscriber in the subject domain name registrations, is Kelkoo SAS’s trademark. The company Kelkoo SAS has enjoyed protection for its community trademarks since 2000, and on May 1, 2004, the protection was extended to the territory of Poland, following Poland’s accession to the EU.

The two domains in question were registered by a physical person. The content of the relevant websites was obviously similar to trade activities performed by Kelkoo SAS, which renders Internet services that consist of comparing product prices in different online shops.

Initially, the subscriber characterised its kelkoo.pl website with the following phrase: “Kelkoo.pl is shopping, promotion, clearance sales, market, Internet shop, supermarket, sex shop, music, computers, books, military articles, arms, movies, watches, toys, multimedia, liquors, office articles, mobile phones, audio, video, DVD, vinyl records, vodka, wine, beer, memories, games, processors, scanners, digital cameras, rock, pop, hip-hop, soundtracks. You are welcome to visit us.”

Later, the look of the kelkoo.pl website was changed and the above phrase was substituted with an inscription in orange: “Shopping destined for you. Soon.” This referred to the activity of Kelkoo SAS (Internet shopping) and its dominant colour (orange).

The Arbitration Court, in its judgment of June 25, 2010, ruled that the registration and use of the kelkoo.pl and kelkoo.com.pl domains was contrary to good practice, according to Article 3 of the Polish Act on Combating Unfair Competition.

The judgment of the Arbitration Court highlighted a few important points.

First, it stated that the defendant’s activity constituted infringement of plaintiff’s rights as an entrepreneur authorised to CTMs. According to the court, the registration and use of the ‘kelkoo’ domain names cannot be regarded as use for private (personal) purposes, as claimed by the defendant.

Despite the fact that the defendant was not formally registered as an entrepreneur, he had in fact been actively acting as an entrepreneur since 2004. The court highlighted that the defendant was professionally engaged in using the Internet for e-commerce.

Second, the contents of the kelkoo.pl and kelkoo.com.pl websites were directly related to the trade activities of the plaintiff—selling various types of goods over the Internet. This misled potential customers by suggesting legal, organisational and commercial/economic relations between the defendant and the plaintiff.

Third, the defendant’s activity was in bad faith. The defendant did not react to cease and desist letters sent by the plaintiff, and refused to collect from the Post Office the arbitration clause necessary to start the arbitration proceedings.

Finally, the court did not find any importance in the fact that the kelkoo.pl domain was registered shortly before Polish accession to the EU. On the other hand, it did note that the second domain, kelkoo.com.pl, was registered in February 2005, after the Kelkoo CTMs entered into force in Poland.

The court decided that the defendant’s activity was intentional and rejected an explanation that it was unaware of Kelkoo’s CTMs. Interestingly, the Arbitration court did not find that the Kelkoo CTMs were infringed.

According to the court, a trademark placed within an Internet domain name is used in Poland if it identifies a website, the contents of which refer—in particular through advertising—to goods or services offered to customers and sold in Poland, or if the website directs customers to other websites through which those goods are sold.

A trademark is used by a potential infringer only if the goods or services under the mark are offered or advertised through the infringer’s website, and are destined and available to customers in the territory of Poland. The court decided that the defendant had taken preparatory steps to start an Internet search engine analogous to the plaintiff’s. The defendant used his website for promoting and advertising of his services, but has not made any transactions using the disputable domain names.

Because the website has not been put to commercial use, the defendant’s activity cannot be regarded as using the trademark in the course of trade.

The court also rejected the plaintiff’s standpoint that the registration and use by the defendant of the kelkoo domain names obstructs the plaintiff’s access to the market.

Although the decision is generally in favour of the Kelkoo trademark owner, it seems controversial in the parts where the court has not found trademark infringement or obstruction of plaintiff’s access to the market.

Nonetheless, the case has precedent value, as the court has for the first time gone further than Regulations of Arbitration. So far, the Arbitration Court would only decide that the defendant’s registration of a domain name violated the plaintiff’s rights.

As the defendant did not file an appeal with a common court, the Arbitration Court’s decision is final.

Maria Jurek is a lawyer at Patpol in Warsaw. She can be contacted at: maria.jurek@patpol.com.pl