Report Trade and Domain Names Versie 18-02

Trade and domain names
(A study into the intellectual property rights of trade and domain names)
Trade and domain names (a study into the intellectual property rights of trade and domain names)
2
Cover: www.getentrepreneurial.com/home-based-business/ and www.legaldocs101.com/Trademark.htm
Introduction..............................................................................................4
1. Trade names.........................................................................................5
1.1 Trade name definition.........................................................................5
1.1.1 What does a trade name do?..........................................................5
1.2 National and international registration of a trade name...........................5
2. Domain names .....................................................................................6
2.1 Domain name definition......................................................................6
2.1.1 How do domain names work?.........................................................6
2.2 National and international registration of domain names..........................7
3. The juridical framework around domain names...........................................7
3.1 The juridical working of domain names.................................................8
3.1.1 Legal procedure............................................................................8
3.1.2 Litigation.....................................................................................8
3.1.3 Is the use of a domain name an absolute right?................................9
3.1.4 My opinion.................................................................................10
3.1.5 Is the use of a domain name a relative right?.................................10
3.1.6 Is the use of a domain name a right "sui generis"?..........................11
3.1.7 My opinion.................................................................................12
4. Case Law "Zegers"................................................................................12
4.1 Zegers Beveiligingssystemen vs. Zegers B.V........................................12
4.1.1 Description of this lawsuit............................................................13
4.2 Judgement in this lawsuit..................................................................14
4.2.1 "Linked through".........................................................................14
4.2.2 "Coloured" or not?.......................................................................14
4.2.3 "Integrated Security Systems"......................................................15
4.2.4 The 1994 lawsuit........................................................................15
5. Case law "IDNL"...................................................................................15
5.1 Stichting Innovatiecentrum voor uitvindingen ID-NL vs. ID Nederland
Multimedia............................................................................................15
5.1.1 Description of the summary judgment...........................................15
5.2 Judgement in this summary judgment.................................................16
5.2.1 “Benelux Merkenwet” applicable?..................................................16
5.2.2 Domain and trade name not exactly the same.................................17
5.2.3 The economic environment...........................................................17
6 Domain name legislation in America.........................................................17
6.1 Highlights of the U.S. Code................................................................17
6.2 The same or not?.............................................................................18
Conclusion...............................................................................................19
Legal sense...........................................................................................19
Domain and trade name protection..........................................................19
Inextricably bound up?...........................................................................19
The central question...............................................................................19
Title Module : International Business Law

Teacher : Marylse in ‘t Veld
Student : Ewo Bosch
Studentnumber : 500156015
Mobilel tel.nr. : 06 – 526 355 89
E-mail: : ewo.bosch@planet.nl
3
Introduction
During my work as a Credit Manager for AKD, formerly known as AKD Prinsen
Van Wijmen a lawyers and notaries firm based in Rotterdam, I frequently come
across matters concerning trade names and domain names. Customers of AKD
come to us with juridical problems or infringements of their trade name or
subsequently their domain name. Of course it could also be the other way around
and our client is e.g. suspected of an infringement on a trademark and seeks
juridical help.
To thoroughly understand the essence of this study I first give a brief explanation
of trade names and domain names in general, what are they? How do trade and
domain names work in a legal sense? In particular this subject drew my attention
because it is increasingly common. In the world today almost everybody uses the
Internet, communication via e-mail is normal and even more intensive than
communication by letter or phone. In the last decade companies around the
world registered many domain names. Due to the scarcity in domain names
conflicts arise which sometimes, as we shall see in this paper, lead to legal
procedures.
As a Credit Manager at AKD I am responsible for the financial settlement of

dossiers, I'm not juridical involved with matters concerning trade and domain
names. The more reason to write a paper about this interesting and topical
subject.
Once I had made up my mind about the topic in International Business Law I
wanted to write about I turned to Mr. H.G.M. Berendschot. He is a lawyer at AKD
with a specialty in Intellectual Property & Technology at AKD. Together we spoke
about "trade and domain names". I learned from him that many proprietors of
domain names face objection to the use of that domain name by companies that
use an older trade name that is identical or similar to the domain name.
Keeping that problem in mind the central question of this paper will be:
"When will the use of a domain name be qualified as use of a trade name and
when not?"
How did domain and trade name protection develop in The Netherlands? When
there is an infringement of a trade name does that automatically mean that the
domain name can’t be used anymore by one of the parties involved? Should the
domain name in that case automatically be handed over to other stakeholder(s)?
In other words is a trade name inextricable bound up with a domain name?
Examples of questions and subjects that I want to discuss in this paper.
Especially the matter “Zegers B.V. vs. A.M. Zegers Beveiligingssystemen” is
interesting in connection with trade names and domain names.
Finally I want to write a chapter about the international juridical approach of

trade and domain names and mention briefly the differences between The
Netherlands and American system.
Ewo Bosch, February 18th, 2010
4
1. Trade names
First of all I have to clarify the use of trade name and trade mark. Sometimes
they are the same, e.g. Coca Cola is the trade name but also one of the products
they sell is called Coca Cola and that is a trade mark.
Before we dig deeper into the juridical working and legal consequences of the
use of a trade name or domain name we first have to understand the definition
of both names. Also important is what they do.
1.1 Trade name definition
When you Google on "trade name" you get approximately 3,870,000 hits. This
number of hits says not only something about the amount of articles being
written about this subject, but more about the increasing importance of this
subject. Below I mention the most important definitions I found:
• a name given to a product or service1;

• a trade name, also known as a trading name or a business name, is the
name which a business trades under for commercial purposes2;
• a name used to identify a commercial product or service; may or may not
be registered as a trademark; The name under which a business or firm
operates3;
• The name under which an organization does business4
We can draw the conclusion that a trade name is a distinctive sign/name which
identifies certain services or goods or a company as a whole for that matter.
Those services or goods are produced or provided by a specific person or
organization. The origin of a trade names dates back a long time ago. Craftsmen
put their signature or mark on the products they produced and sold. These
"signatures" evolved into the trade names or marks we know today.
1.1.1 What does a trade name do?
A trade name protects the owner and gives the owner the exclusive right to use
that mark or name to identify the company, goods or services. It also gives the
owner the right to authorize another party to use the name or mark, the owner
could charge the other party a fee for this use in return. Also trade names make
it easier for consumers to quickly identify a company or the source of any given
good.
1.2 National and international registration of a trade name
To register a trade name you first have to file an application to your national or
regional trade name office. This application must contain a clear specification of
the sign, including colour, form, and if relevant three-dimensional features. You
must also indicate which goods or services the sign applies to. The sign must be
1
wordnetweb.princeton.edu/perl/webwn
2
en.wikipedia.org/wiki/Trade_name
3
en.wiktionary.org/wiki/trade_name
4
https://www.fntic.com/wordsphrases.asp
5
distinctive so customers can identify it as a sign for a specific product or service.
Furthermore it must not mislead, deceive or confuse customers or violate public
order or morality. Most important is that the granted right cannot be equal to the
right already given to another trade name owner. Ones the trade name is
registered by the national or regional office as a trade name owner you are
protected. The office maintains a Register of Trademarks. Under two treaties,
"The Madrid Agreement Concerning the International Registration of Marks" and
the "Madrid Protocol" the World Intellectual Property Organization (WIPO)
administers a register of international registration of marks. Based on nationality,
domicile or establishment you can obtain, under the treaties as I mentioned
before, protection in all or part of the countries of the Madrid Union5.
2. Domain names
The chapter above doesn't include the Internet. It only explains the definition,
use and registration of trade names in the social and business/economic
environment. The definition, use and registration of domain names that is where
the internet comes in.
2.1 Domain name definition
For domain name I found the following definitions:
• a internet website address6;

• a domain name is an identification label to define realms of administrative
autonomy, authority, or control in the Internet7;
• an internet website address8.
2.1.1 How do domain names work?
Domain names have an important role in the internet traffic. By using a domain
name you can easily make contact with computers and websites of public bodies,
companies or private persons. You can access for example the website of a
company to gather information about this company or its products.
The origin of domain names can be found in the unique number of every
computer on the internet. That number is the IP-address (Internet Protocol), this
is a combination of numbers. Because words are easier to remember the
numbers of the IP-address are translated into names. These names are
translated on a Domain Name System (DNS)9 into IP-addresses. Each domain
name consists of two parts. The last component is called the "top level domain",
the country code top level domain name (ccTLD) refers to countries. For example
.nl for The Netherlands, .be for Belgium or .de for Germany. There are 252
countries with such a ccTLD. Besides this ccTLD's for countries there are also
5
http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf
6
www.longtail.co.za/index.php/news/whatis/online-advertising-jargon-for-dummies
7
en.wikipedia.org/wiki/Domain_name
8
www.longtail.co.za/index.php/news/whatis/online-advertising-jargon-for-dummies
9
This DNS-server is a kind of phonebook of the .nl names because it establishes a connection between domain
name, computer and the internet.
6
generic top level domain names, such as .com, .org and .net. Meanwhile there
are a lot of new gTLD's, e.g. .biz, .aero, .cat, .museum, .travel........
2.2 National and international registration of domain names
Domain names can be registered for almost twenty years now. But only since
1998 they are registered on a large scale10. Then it became clear that there were
some parties whom registered large amounts of domain names containing trade
names and marks of others for financial gain. This is a form of cybersquatting or
domain grabbing, registering a domain name that is the same as, or confusingly
similar to the trade name of another and then offer to sell the domain name back
to the trade name owner11. The World Intellectual Property Organization (WIPO)
released on 30 April 1999 a report to cope with cybersquatting, they suggested a
simple and quick online administrative procedure that could make it possible in
case of a persistent infringement of a trade mark the infringing domain name
could be handed over to the owner of the trademark/name12.
In 1998 the Internet Corporation for Assigned Names and Numbers (ICANN) was
founded. The ICANN is responsible for the link between a domain name with an
IP-address. They also administer the ccTLD's and gTLD's. In other words they
are dedicated to coordinating the Internet's addressing system on a global
scale13. The ICANN delegates this task to national internet organizations. For the
Netherlands the "Stichting Internet Domeinregistratie Nederland" (SIDN)
administers the .nl zone. The word or words that precede the .nl is the part that
the SIDN administers. For this process they use "Het regelement voor registratie
van domeinnamen"14. In The Netherlands in the register of the SIDN contains up
till February 6th 2010, approximately 3,741,000 domain names. In principle
everybody in The Netherlands can send a request to the SIDN to connect a
particular name ending with .nl to his or her IP-address. The SIDN then signs an
agreement with this party. According to this agreement the SIDN is obligated
under certain terms to establish and maintain that connection.
3. The juridical framework around domain names
I deliberately choose to write about the juridical framework of domain names and
not of trade names. That is the angle from which I want to approach this juridical
problem. The juridical implications of the use of trade marks and names are for
example laid down in the Dutch "Handelsnaamwet". The rules included in this
Law are very clear and do not entirely clarify the legal position of the domain
name.
One of the derived questions I asked in the introduction of this paper was: " How
do trade and domain names work in a legal sense?" In relation to the central
question of this paper it is essential to answer this question. When I started
10
http://www.sidn.nl/ace.php/p,728,5574,1806791425,Website_stats_2010-01_EN_pdf
11
Module guide "International Business Law" page 38, "Anti cybersquatting Legislation" copyright Marylse in 't
Veld November 2009.
12
"The Management of Internet Names and Addresses: Intellectual Property Issues, Report of the WIPO
Internet Domain Name Process, see http://www.wipo.int/portal/index.html.en
13
http://www.icann.org/en/topics/new-gtld-program.htm
14
http://www.sidn.nl/ace.php/c,727,32,,,,_nl-domeinnamen.html
7
reading about the legal working of domain names one of the first things that
caught my eyes was the fact that there is no formal legislation. Almost all of the
legislation on this subject comes from case law, which can be found on the
internet15. I also found several discussions on the internet between Dutch
lawyers on this subject.
3.1 The juridical working of domain names
Up till now the intellectual property rights and legal working of a domain names
have not yet fully been determined. Almost every day there are new lawsuits and
arbitration/litigation cases. The fact that domain names could represent a
considerable value makes the juridical qualification relevant in an economic
sense. Let me give an example, in 1999 the domain name www.altavista.com
was bought for €3.3 million by Compaq. Given the fact that a domain name is an
intellectual creation maybe we have to make the decision to protect domain
names through Intellectual Property Law and join the rules of trademarks and
trade names. However, the problem is that there are many domain names that
do not fit in the description trade mark, e.g. www.leukendingendoen.nl.
Therefore there are no rules in the existing Intellectual Property Law that could
protect a domain name in general. However, parties dealing with an infringement
of their domain name could follow two different procedures.
3.1.1 Legal procedure
In a legal procedure if there is an infringement of a domain name, the following

outcomes could be possible:
• a prohibition to use a domain name whether or not in combination with a

non-compliance penalty;
• to be sentenced to hand over a domain name to an accuser or to remove
the name from the register of the SIDN;
• to be sentenced to pay (in advance) for damages (not common in
summary judgment);
• To be sentenced to fully pay the costs of the procedure.
3.1.2 Litigation
In a litigation procedure if there is an infringement of a domain name, the

following outcomes could be possible:
• to be sentenced to hand over a domain name to an accuser or to remove

the name from the register of the SIDN;
• in contrast with arbitration the litigation knows no verdict in which parties
are sentenced to pay for the costs of the procedure. Obviously parties are
free after a verdict in a litigation to summon the other party for the
damages that were suffered;
• a prohibition to register comparable domain names in the future,
reinforced with a non-compliance penalty.
15
see websites as: www.domjur.nl for case law and www.sidn.nl where the SIDN-regulations can be found.
8
In The Netherlands the discussion focuses on three different points of view, is the
use of a domain name an absolute, relative or "sui generis" right? This legal
qualification is important because it has practical consequences for the domain
name. For example could the ownership of a domain name be transferred from
one party to another? Could a domain name be used as collateral, in other words
could it be used as a security for a loan? Could parties seize a domain name with
the obligation to deliver?
3.1.3 Is the use of a domain name an absolute right?
To answer this question we first have to know what an absolute right is. In Dutch
Civil Law ownership is the most absolute right.
The Dutch Civil Code, Book 5 "Property Rights", Title 1, "Property in general",
Article 1 subsections 1,2 and 316:
1. Eigendom is het meest omvattende recht dat een persoon op een zaak kan
hebben.
2. Het staat de eigenaar met uitsluiting van een ieder vrij van de zaak
gebruik te maken, mits dit gebruik niet strijdt met rechten van anderen en
de op wettelijke voorschriften en regels van ongeschreven recht gegronde
beperkingen daarbij in acht worden genomen.
3. De eigenaar van de zaak wordt, behoudens rechten van anderen, eigenaar

van de afgescheiden vruchten.
Gilhuis, Falkena and Wefers Bettink advisors of the SIDN argue that the right to
a domain name is an absolute right17. Their most important argument is that the
owner of a domain name has an exclusive right to the use of that domain name.
However, an "exclusive right to use" does not imply an absolute right. According
to Mr. drs. F.P. van Koppen this point of view is due to the monopolistic position
of the SIDN, which has no legal ground18. He also signals other practical
problems, the Dutch Civil Code, Book 3:83 subsection 3:
3. Alle andere rechten zijn slechts overdraagbaar, wanneer de wet dit

bepaalt19.
This could implicate that right to use a domain name cannot be transferred to
another party. However, in practise many domain names are sold or transferred
between parties. Also measures of conservation are not possible because
delivery and execution are only possible if the "right" is heritable. According to
Gilhuis, Falkena and Wefers Bettink the right to use a domain name as a security
is also not possible because of the DCC, Book 3, Title 9 Article 228, right of
pledge is only possible on goods that are susceptible for transfer.
16
http://wetten.overheid.nl/zoeken_op/BWBR0005288/Boek5/Titel1/Artikel1/geldigheidsdatum_13-02-2010
17
F.B. Falkena, K. Gilhuis en H.W. Wefers Bettink, De domeinnaam in het civiele recht, NJB 2001, p. 841-48
18
The regulations of the SIDN is no legislation. "Onterecht anders: Rechtbank Zutphen, 27 January 2003
(DomJur 2003, no. 166 Milos - Berndsen)
19
http://wetten.overheid.nl/zoeken_op/BWBR0005291/Boek3/Titel4/Afdeling2/Artikel83/geldigheidsdatum_13-
02-2010
9
Op alle goederen die voor overdracht vatbaar zijn, kan een recht van pand
hetzij van hypotheek worden gevestigd20.
3.1.4 My opinion
In my opinion the above mentioned arguments are not true. On a regular basis
parties are sentenced to hand over domain names to prosecuting parties.
Curators regularly sell domain names and do actually hand them over. On a
regular basis measures of conservation are taken or the judges are asked to
terminate these measures21.
3.1.5 Is the use of a domain name a relative right?
To determine if a domain name is a relative right we first have to determine what

a relative right is. A relative right is a right that can be uphold against one party
only. For example when you sell something you have the right to receive the
selling price, that right can only be uphold against the buyer.
The majority of authors who wrote articles about this subject see the use of a
domain name as a relative right. In their vision the right to use a domain name is
an obligatory right which is the result of a contract between the SIDN and the
requestor. This contract gives the requestor the right that the SIDN, under
certain conditions, connects domain name to the IP-address and maintains this
connection (that is the obligation).
When we look at the Dutch Civil Code Book 3 "Property rights in general" Title 4
"Accession and lose of goods" Article 83 subsection 2 "Transfer of goods and
abandoning of limited rights" the domain name could then be seen as a "right to
claim":
1. Eigendom, beperkte rechten en vorderingsrechten zijn overdraagbaar,
tenzij de wet of de aard van het recht zich tegen een overdracht verzet22.
Based on DCC Book 3:94 this right can be transferred by means of a private or
notarial deed and the announcement of abandonment to the SIDN. Article 15 of
the SIDN regulations contains a regulation what the domain name holder should
do in case he wants to hand over the domain name to another party23. Article15
of the regulation does not speak of “transfer”, but speaks of “mutation”, or “to
put the domain name in the name of another”.
When a domain name is considered as a relative right, a public right of pledge is
also possible again. In that case two things have to be done, instate the right of
pledge by means of a notarial or private deed (1) and the announcement to the
debtor of the pledged domain name (2). If the announcement is done in the
correct way, the SIDN will cooperate to hand over the domain name if she also
has the approval of the pledge holder.
20
http://wetten.overheid.nl/zoeken_op/BWBR0005291/Boek3/Titel9/Afdeling1/Artikel228/geldigheidsdatum_1
3-02-2010
21
Some examples: Rechtbank Amsterdam 2 March 2005, DomJur 2005, no. 222; Rechtbank Utrecht 23 June
2005 DomJur 2005, no. 226; Rechtbank Alkmaar 9 March 2006. DomJur 2006, no. 252, to be found on
http://www.domjur.nl/ace.php/c,5,10
22
02-2010
23
http://www.sidn.nl/ace.php/c,728,5729,,,,Changing_holder.html
10
Then there is also the possibility to seize a domain name with the obligation to
deliver. The legal title against the SIDN comes down to the obligation of the
SIDN to maintain the connection between the IP-address and the domain name.
The seize and further execution should find their legal basis in the Dutch
"Wetboek van Burgerlijke Rechtsvordering (Rv)" Article 474bb24. This Article
allows adjustments to the nature of the right that is seized, in that way it is
possible to. Due to this adjustment the seize can be instated under the domain
name holder and according to subsection 3 of this Article also under the SIDN.
But with a court order the seizing party is not assured that the domain name is
handed over and subsequently the registration is altered in the register of the
SIDN. The prosecuted domain name holder still has to cooperate to the transfer.
Real execution can only take place on grounds of the Dutch Civil Code Article
3:300 subsection 225, in this Article the defendant is obliged to make a deed
together with the prosecuting party. The judge can determine that his ruling
comes in place of this deed. Then the SIDN, according to her regulations, has to
transfer the domain name to the seizing party.
All the above mentioned indications and articles could lead to the assumption
that the right on a domain name is a relative right. In any case I think it is
practical and by using the Articles I mentioned easy to fit in the legal system.
3.1.6 Is the use of a domain name a right "sui generis"?
In the Intellectual Property Law some rights are referred to as right "sui generis".
For example in ship hull designs or databases26. In British Law this term means
"unique". Could this also be applicable for domain names? Prof. W. Snijders
associated with the University of Amsterdam wrote an article on this subject in
200527. He determines that between the SIDN and every single domain name
holder there is a unique set of conditions, claim rights, consensus and
obligations. The essence of this contract, according to W. Snijders,is:
• the claim on the protection and registration of the domain name;
• continuation of that registration;
• the obligation of the SIDN not to consider registration of identical domain
names;
• cooperation in case of a transfer/delivery with the consequence that the
domain name represents a certain value;
• therefore in society functions as a independent and transferable right.
This implies a property right under Dutch Civil Code Book 3 "Property Rights in
general", Article 628:
Rechten die, hetzij afzonderlijk hetzij tezamen met een ander recht,
overdraagbaar zijn, of er toe strekken de rechthebbende stoffelijk voordeel
24
http://wetten.overheid.nl/BWBR0001827/TweedeBoek/Tweedetitel/EersteafdelingA/Artikel474bb/geldigheids
datum_11-02-2010
25
http://wetten.overheid.nl/zoeken_op/BWBR0005291/Boek3/Titel11/Artikel300/geldigheidsdatum_13-02-
2010
26
http://en.wikipedia.org/wiki/Sui_generis#Intellectual_property_law
27
W. Snijders, Ongeregeldheden in het vermogensrecht (I) en (II), WPNR 6607 and 6608 (2005)
28
02-2010
11
te verschaffen, ofwel verkregen zijn in ruil voor verstrekt of in het
vooruitzicht gesteld stoffelijk voordeel, zijn vermogensrechten.
This property right looks like a claim right, but W. Snijders sees it as much more.
According to him it gives protection towards third parties, because of the
obligation of the SIDN not to take into consideration identical domain names. The
property right comes into existence as a result of the agreement with the SIDN
at the time of registration of the domain name. According to Snijders the right
implies an exclusive right to the of a domain name right with special/unique (sui
generis) characteristics.
Is this "right to protection" of which W. Snijders speaks enough not to see the
use of a domain name as a claim right but as a right sui generis? How should
e.g. a seize on a domain name be established? In Book 3 of the Dutch Civil Code
"Property Rights in general" Title 9 "Rights of pledge and mortgage" the following
articles 3:236 and 3:23729 deal with the establishment of a seize on:
• Movables;
• Claims by name;
• Claims by bearer;
• The usufruct.
However, there is no specific article on the establishment of a seize on a not

specified property right. This implies that for the establishment of a seize the “sui
generis” approach doesn't work and that we have to look for a solution as
mentioned under the above section "relative right".
3.1.7 My opinion
When I look at the three possibilities I see that the relative-right-approach is the
approach that prefers above the other two. Although the rights on domain names
could easily be fit in to the existing system through the "relative-right-approach"
I agree with Van Koppen that the legislator in due course should make a special
Domain Name Law, which regulates the most important issues as: transfer,
pledge and seize, according to the "relative-right approach".
4. Case Law "Zegers"
How do domain name conflicts work in practise? Since no domain name law
exists in Dutch Law almost all legislation comes from case law. For this paper I
selected two examples.
4.1 Zegers Beveiligingssystemen vs. Zegers B.V.30
In this case, a company called Zegers Beveilingssystemen demanded that

another company called Zegers BV ceased to use the domain name
29
http://wetten.overheid.nl/zoeken_op/BWBR0005291/Boek3/Titel9/Afdeling2/Artikel236+BWBR0005291/Boe
k3/Titel9/Afdeling2/Artikel237/geldigheidsdatum_13-02-2010
30
This case can be found on www.rechtspraak.nl LJN: BC5696 URL:
http://zoeken.rechtspraak.nl/resultpage.aspx?snelzoeken=true&searchtype=ljn&ljn=BC5696
12
www.zegersbeveiliging.nl as it infringed Zegers Beveiligingssystemen’s trade
name rights.
Date of verdict and publication: 4 March 2008
4.1.1 Description of this lawsuit
Zegers Beveiligingssystemen is operating since 22 October 1990 under the trade

name "A.M. Zegers Beveiligingssystemen". A predecessor of Zegers B.V. bought
in the beginning of 1994 the assets of the liquidated company "Elektrotechnische
Handels- en Installatiebureau A.M. Zegers B.V.", Zegers B.V. wanted to continue
the activities of this company under the name "Zegers Beveiligings- en
Parkeersystemen B.V. (i.o.)".
Due to the use by Zegers B.V. of the trade name "Zegers Beveiligings- en
Parkeersystemen B.V. (i.o.)" Zegers Beveiligingssystemen laid a matter before
court based on Article 5 of the Dutch "Handelsnaamwet". This procedure led to a
verdict of the President of the Rotterdam Court on the 14th of April 1994. In this
verdict the President sentenced that Zegers B.V. had to cease the use of the
trade name "Zegers Beveiligings- en Parkeersystemen B.V. (i.o.)". Furthermore
the President ruled that it was forbidden for Zegers B.V. to use any other trade
name in which the words "Zegers" and "Beveiligingssystemen" are used in
combination. Since the 6th of June 1994 Zegers B.V. uses her company name
instead of "Zegers Beveiligings- en Parkeersystemen B.V. (i.o.)".
Both parties operate in the same segment (the security branch) and the same
region.
Zegers Beveiligingssystemen installs and maintains security and access systems

in The Netherlands and is situated in Rotterdam. This company uses the domain
name www.zegers-rotterdam.nl/en/com/net.
Zegers B.V. installs and maintains security and access systems. Although this
company is statutory based in Rotterdam their operations are situated in
Dordrecht. Besides the trade name Zegers B.V. they use as a trade style the
name "Zegers (BV) Integrated Security Systems". This company uses the domain
name www.zegers.iss.nl. Since the 20th of July 2007 they also use the domain
name www.zegersbeveiliging.nl.
Zegers Beveiligingssystemen claims, in short, among other things as far as

possible direct enforceable:
1. Zegers B.V. ceases and no longer uses the domain name

www.zegers.beveiliging.nl;
2. The transfer of the registration of this domain name free of charge to
Zegers Beveiligingssystemen;
3. The prohibition for Zegers B.V. to use any domain name containing the
words "Zegers" and "Beveiliging";
4. An advance to cover the legal fees, disbursements and other expenses.
13
Zegers B.V. concludes in rejection of these claims and claims in turn the
sentencing of Zegers Beveiligingssystemen in the expenses of this lawsuit31.
Content indication of this lawsuit: Article 5 of the Dutch "Handelsnaamwet"
Het is verboden een handelsnaam te voeren, die, vóórdat de onderneming

onder die naam werd gedreven, reeds door een ander rechtmatig gevoerd
werd, of die van diens handelsnaam slechts in geringe mate afwijkt, een en
ander voor zover dientengevolge, in verband met de aard der beide
ondernemingen en de plaats, waar zij gevestigd zijn, bij het publiek
verwarring tussen die ondernemingen te duchten is.32
Before judging the question if there is in this case an infringement of the trade
name Zegers Beveiligingssystemen, first the question if the use of the domain
name www.zegersbeveiliging.nl can be qualified as the use of a trade name has
to be answered. And that is exactly the central question of this paper.
4.2 Judgement in this lawsuit
The judge in this case sees a domain name in principle as nothing more than an
(internet) address of a domain name holder and that the registration of domain
names works according to the principle "first come, first served". The registration
of a domain name on itself is in principle not the same as the use of a trade
name. The circumstances that determine a domain name is used as a trade
name, on the one hand are, if the domain name resembles the trade name and is
used as a denomination for the activities of a company and, on the other hand,
what the content of the concerning website is. Depending on the information
given on the website the domain name can be "coloured" to a trade name or not.
4.2.1 "Linked through"
At the hearing it became clear that when www.zegersbeveiliging" is typed into

the address input field of an internet browser, visitors are automatically linked
through to the website of Zegers B.V. with the domain name www.zegers-iss.nl.
Zegers Beveiligingssystemen stated that they could not agree with this - in her
opinion - indirect use of her trade name.
4.2.2 "Coloured" or not?
After been linked through via www.zegersbeveiliging to www.zegers-iss.nl the

website shows the name Zegers B.V. only in combination with the words
"Integrated Security Systems". Furthermore Zegers B.V. presents itself on her
business cards, the company's stationary, the phonebook and the yellow pages
only under the name "Zegers" or "Zegers B.V." whether or not in combination
with the words "Integrated Security Systems" or the abbreviation "ISS". Also the
company mentions explicitly her address in Dordrecht, different than the address
of Zegers Beveiligingssystemen in Rotterdam. This leads evidently to the
conclusion that Zegers B.V. uses "Zegers B.V. Integrated Security Systems" as
31
http://wetten.overheid.nl/BWBR0001827/DerdeBoek/Titel15/Artikel1019h/tekst_bevat_1019h/geldigheidsdat
um_13-02-2010#_tekst_zoekterm_0
32
http://wetten.overheid.nl/zoeken_op/BWBR0001906/Artikel5/geldigheidsdatum_13-02-2010
14
her trade name, after all this is the name the company uses in her external
communications, and not, as Zegers Beveiligingssystemen brings forward,
"Zegers Beveiliging".
4.2.3 "Integrated Security Systems"
Zegers Beveiligingssystemen also stated that the indirect use of the domain
name www.zegersbeveiliging.nl (linked through to www. zegers-iss.nl) by using
the words "Integrated Security Systems", which are a translation of her trade
name, is coloured to a trade name, because Zegers recommends her activities
within the security branch on the website www.zegers-iss.nl. According to the
judge this assertion has no legal ground, although the words "Integrated
Security Systems" are a translation of "beveiligingssystemen" into English, in this
trade name dispute it is irrelevant. Protection of a trade name does not extend,
certainly not necessarily, to the translation of that name in another language.
4.2.4 The 1994 lawsuit
As mentioned above both parties were involved in a lawsuit in 1994. This

lawsuit33 is not comparable with the domain name lawsuit. On the one hand this
case not literally dealt with the name "Zegers Beveiliging" but on the other hand
dealt with the use of a specific trade name as statutory name, this lawsuit did
not involve the use of this name as a domain name.
5. Case law "IDNL"
Looking for a similar case on the internet I came across this case on the website
of Domjur. Elements in this case are also the connection between the domain
name and the trade name. As we can see this case had a different outcome as
the “Zegers” lawsuit.
5.1 Stichting Innovatiecentrum voor uitvindingen ID-NL vs. ID Nederland

Multimedia34
The Stichting Innovatiecentrum voor uitvindingen, hereafter ID-NL started this

summary judgment against ID Nederland Multimedia over the use of the domain
name www.idnl.net.
Date of verdict and publication: 3 May 2000
5.1.1 Description of the summary judgment
ID-NL is a foundation and is already 20 years active in advising and

accompanying of both persons and companies to the development and
commercialising of new products and technologies. ID-NL is worldwide active.
ID-NL is since 1987 the owner of the trade mark and word mark "ID-NL".
33
Case number 21400 / rol number 473/94
34
http://zoeken.rechtspraak.nl/resultpage.aspx?snelzoeken=true&searchtype=ljn&ljn=AA5859
15
ID Nederland Multi Media uses since several months before the date of verdict
the domain name IDNL.NET.
ID-NL objects based on the Benelux Merkenwet35 (article 13A, lid 1 subc and/or
article 13A, lid 1 sub d) and the Dutch "Handelsnaamwet" (I mentioned before in
paragraph 4.1.1) Article 5a, and also based on the Dutch Civil Code, Book 6,
Article 162 "Tort"36 against the use of the domain name IDNL.NET.
In this summary judgment ID-NL claims in short and among other things that:
1. The defendant immediately ceases and no longer uses the domain name;
2. The defendant has to ask Network Solutions to remove the registration of
the domain name and hand over the domain name to ID-NL;
3. To forbid ID Nederland Multimedia registering any domain name containing
the characters IDNL or a combination or part of this characters or any
characters or signs that are slightly different to the trade mark ID-NL or
the sign IDNL;
4. To forfeit non-compliance penalties.
In the conception of the defendant the domain name IDNL.NET is an American

generic Top Level Domain Name (gTLD) as I mentioned in paragraph 2.1.1 and
that the Benelux Merkenrecht is not applicable. According to the defendant a
domain name is not a trade name. And that is exactly the essence of the Zegers
case. This point of view of the defendant fits almost perfectly the verdict in the
Zegers case. So it is in particular interesting to see what the argumentation and
verdict is in the case.
5.2 Judgement in this summary judgment
The president states that ID-NL correctly chooses the Dutch judge to be
competent under the Benelux Merkenwet. Article 13 of that law37 prescribes that
a stakeholder can resist against any use of her mark or similar signs in the
economic environment. Article 37A of that same law prescribes that the address
of the defendant is place where the procedure should take place. That the
defendant registered her domain name in the United States of America is of no
relevance.
5.2.1 “Benelux Merkenwet” applicable?
That the Benelux Merkenwet is not applicable in case of a domain name conflict
is a wrong assumption of the defendant. The judge believes that by using a
domain name it is very much possible to infringe a mark or trade name,
especially when this domain name is used in the economic environment.
Correctly the ID-NL points to a series of cases in which domain names are
protected under the Benelux Merkenwet. According to the judge ID-NL correctly
appealed to the Benelux Merkenwet, since there is no specific (international)
legislation on internet conflicts.
35
http://www.ivir.nl/wetten/nl/bmw.html
36
http://wetten.overheid.nl/zoeken_op/BWBR0005289/Boek6/Titel3/Afdeling1/Artikel162/geldigheidsdatum_1
4-02-2010
37
http://www.ivir.nl/wetten/nl/bmw.html
16
5.2.2 Domain and trade name not exactly the same
To infringe the trademark ID-NL it is not required that the used trade name, or
domain name are exactly alike the trademark ID-NL. In this case the judge has
the opinion that with IDNL.NET auditory and visually such similarities exist that
the possibility could arise that the public confuses the ID-NL with IDNL.NET or
that they could assume that there is a connection between those two. That this
confusion is clarified on the moment the website is opened does not detract the
fact that till that moment confusion based on the trade name alone is possible.
5.2.3 The economic environment
The defendant uses her domain name IDNL.NET as the name of a sole
proprietorship under which she offers commercial services on the internet, this
meets the requirement that the domain name is used in the economic
environment. Moreover is has not proved that such a necessity exists for the
defendant to use especially this domain name. Furthermore by using the domain
name IDNL.NET the defendant improperly uses the reputation of the ID-NL. This
leads, or could lead to unfair advantage or harming the reputation of the ID-NL.
That the ID-NL has herself to blame for it, because she did not register the
domain name ID-NL.NET goes to far according to the judge. That an organization
does not use her rights does not mean that those rights automatically and
silently pass to a random third party.
6 Domain name legislation in America
As said before at least in The Netherlands there is no formal law on the

intellectual property of domain names. The legislation around domain names
consists in The Netherlands of case law.
In America for that matter there are several Articles in the U.S. Code that deal
with domain names.
6.1 Highlights of the U.S. Code
In the U.S. Code I found several articles containing legislation on domain

names38.
In the U.S. Code Title 15, Chapter 22, subchapter III, §111439, this Title contains
"Remedies; infringement; innocent infringement by printers and publishers". In
this Title and article you will find an extensive description of violations of a trade
mark/name or domain names.
(b) reproduce, counterfeit, copy, or colourably imitate a registered mark

and apply such reproduction, counterfeit, copy, or colourable imitation to
labels, signs, prints, packages, wrappers, receptacles or advertisements
intended to be used in commerce upon or in connection with the sale,
offering for sale, distribution, or advertising of goods or services on or in
38
http://www.law.cornell.edu/uscode/search/index.html?query=domain name&DB=uscode-all
39
http://www.law.cornell.edu/uscode/search/display.html?terms=domain
name&url=/uscode/html/uscode15/usc_sec_15_00001114----000-.html
17
connection with which such use is likely to cause confusion, or to cause
mistake, or to deceive,
They have for example also an article on "Cyberpiracy prevention" for

individuals40 as well as companies41
(d) Cyberpiracy prevention

(1)
(A) A person shall be liable in a civil action by the owner of a
mark, including a personal name which is protected as a mark
under this section, if, without regard to the goods or services of
the parties, that person—
(i) has a bad faith intent to profit from that mark, including a
personal name which is protected as a mark under this section;
and
(ii) registers, traffics in, or uses a domain name that—
(I) in the case of a mark that is distinctive at the time of
registration of the domain name, is identical or confusingly
similar to that mark;
(II) in the case of a famous mark that is famous at the time
of registration of the domain name, is identical or
confusingly similar to or dilutive of that mark; or
(III) is a trademark, word, or name protected by reason of
section 706 of title 18 or section 220506 of title 36.
For the .nl-zone this is a task for the SIDN. This organization is responsible for
the administration of domain names in The Netherlands and they administer if a
domain name is identical or confusingly similar. Should conflict arise afterwards
then the judges also use criteria as identical or confusingly similar, as we saw in
the "IDNL" case.
Also the U.S. Code talks about cancellation or transfer of a domain name:
(C) In any civil action involving the registration, trafficking, or use

of a domain name under this paragraph, a court may order the
forfeiture or cancellation of the domain name or the transfer of the
domain name to the owner of the mark.
This description is similar to the demands of the prosecuting parties involved in

the "Zegers" and "IDNL" cases.
6.2 The same or not?
In my opinion the U.S. legislation is far more explicit than the legislation in
Europe or The Netherlands for that matter. In America the rules on domain name
are precisely described in the U.S. Code. Still I think that the basis of the whole
40
41
18
legislation is the same. Criteria as identical, confusingly similar, cancellation,
transfer and dilution are used in both systems. In that aspect we could see the
American legislation as being similar to the Dutch (case law) legislation.
Conclusion
To eventually answer the central question of this paper I asked in the

introduction of this paper some derived questions.
Legal sense
One of those questions was, “how do domain and trade names work in a legal
sense? In the Dutch “Handelsnaamwet” the legislator accurately describes the
rules around trade names. But when I tried to find legislation on domain names I
found out that there simply isn’t any. All legislation comes, as I said, from case
law, there is no formal legislation. To find out the legal status of a domain name
I looked at the articles of Mr. Meijboom and Mr. Koppen and I used these articles
as a basis to determine the legal status. Although there is a lively discussion on
whether a domain name is an absolute or relative right, domain names are
traded, transferred, pledged and seized. Apparently it is of no importance what
the legal status is. We could draw the conclusion that the practise overtook the
law theory. On the 16th of February 2010 on the website http://www.domjur.nl I
found as of the 3rd of June 1996 over 1,700 lawsuits and arbitration cases.
Domain and trade name protection
I also wanted to know how domain and trade name protection developed in The
Netherlands. This protection developed around the relevant case law in
combination with the regulations of the SIDN, the Dutch “Handelsnaamwet”, the
“Benelux Merkenwet” or the new “Benelux-Treaty concerning intellectual
property (BVIE)”. But also the so-called Domain Name Debates of 2001 and
2006, organized by the SIDN, contributed to the development of domain name
protection, registration and the solution of disputes.
Inextricably bound up?
Is a domain name inextricably bound up with a trade name? The case law I
found shows that there is no unambiguous answer to this question. The answer
depends on the case and circumstances around it. As we have seen in the two
case laws I described above the outcomes could be different in any case.
Also the other verdicts in the cases I found on Domjur do not support this thesis.
The central question
"When will the use of a domain name be qualified as use of a trade name and
when not?"
To answer this question I looked at the criteria both judges took into account.
Three words, I find, strike out, “coloured” and “confusingly” and “similarity”.
19
Does the party that uses the domain name “colours” it into a trade name? In
other words, does all circumstances around the domain name point to the trade
name. For example what information is given on the website? Does the website
explicit mention the trade name? Does the domain name resemble the trade
name? Is the domain name used as a denomination for the activities of a
company? How a company does present itself, what business cards or stationary
is used? Do these items contain the trade name? If all these questions can be
answered with “yes”, then in my opinion the domain name could be qualified as a
trade name. Of course there are numerous nuances and it is to the judge in
every single case to decide.
Furthermore the factor “confuse” plays an important role. In the case “ID-NL”
the judge decides that the public needs to be protected. Although “ID-NL” is not
exactly the same as “IDNL”, it is in such a way similar that there is a danger that
the public could be mislead by this similarity. We saw that Zegers B.V. solved
this problem by making an automated link from www.zegersbeveiliging.nl to
www.zeger-iss.nl I think a smart solution that was recorded in the verdict.
Finally, the similarity does not stretch out to only the visual aspects. Also the
auditory aspects were, especially, in the “IDNL” case taken into account. If a
domain name sounds like a trade name the conclusion could be that it can be
qualified as a trade name.
20

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Trade and domain names

Title Module : International Business Law

As a Credit Manager at AKD I am responsible for the financial settlement of

Finally I want to write a chapter about the international juridical approach of

Ewo Bosch, February 18th, 2010

1.1 Trade name definition

• a name given to a product or service1;

1.1.1 What does a trade name do?

1.2 National and international registration of a trade name

2.1 Domain name definition

For domain name I found the following definitions:

• a internet website address6;

2.1.1 How do domain names work?

2.2 National and international registration of domain names

3. The juridical framework around domain names

3.1 The juridical working of domain names

3.1.1 Legal procedure

In a legal procedure if there is an infringement of a domain name, the following

• a prohibition to use a domain name whether or not in combination with a

In a litigation procedure if there is an infringement of a domain name, the

• to be sentenced to hand over a domain name to an accuser or to remove

3.1.3 Is the use of a domain name an absolute right?

3. De eigenaar van de zaak wordt, behoudens rechten van anderen, eigenaar

3. Alle andere rechten zijn slechts overdraagbaar, wanneer de wet dit

3.1.5 Is the use of a domain name a relative right?

To determine if a domain name is a relative right we first have to determine what

3.1.6 Is the use of a domain name a right "sui generis"?

However, there is no specific article on the establishment of a seize on a not

4. Case Law "Zegers"

4.1 Zegers Beveiligingssystemen vs. Zegers B.V.30

In this case, a company called Zegers Beveilingssystemen demanded that

Date of verdict and publication: 4 March 2008

4.1.1 Description of this lawsuit

Zegers Beveiligingssystemen is operating since 22 October 1990 under the trade

Zegers Beveiligingssystemen installs and maintains security and access systems

Zegers Beveiligingssystemen claims, in short, among other things as far as

1. Zegers B.V. ceases and no longer uses the domain name

Content indication of this lawsuit: Article 5 of the Dutch "Handelsnaamwet"

Het is verboden een handelsnaam te voeren, die, vóórdat de onderneming

4.2 Judgement in this lawsuit

4.2.1 "Linked through"

At the hearing it became clear that when www.zegersbeveiliging" is typed into

4.2.2 "Coloured" or not?

After been linked through via www.zegersbeveiliging to www.zegers-iss.nl the

4.2.3 "Integrated Security Systems"

4.2.4 The 1994 lawsuit

As mentioned above both parties were involved in a lawsuit in 1994. This

5. Case law "IDNL"

5.1 Stichting Innovatiecentrum voor uitvindingen ID-NL vs. ID Nederland

The Stichting Innovatiecentrum voor uitvindingen, hereafter ID-NL started this

Date of verdict and publication: 3 May 2000

5.1.1 Description of the summary judgment

ID-NL is a foundation and is already 20 years active in advising and

In the conception of the defendant the domain name IDNL.NET is an American

5.2 Judgement in this summary judgment

5.2.1 “Benelux Merkenwet” applicable?

5.2.3 The economic environment

6 Domain name legislation in America

As said before at least in The Netherlands there is no formal law on the

6.1 Highlights of the U.S. Code

In the U.S. Code I found several articles containing legislation on domain

(b) reproduce, counterfeit, copy, or colourably imitate a registered mark

They have for example also an article on "Cyberpiracy prevention" for

(d) Cyberpiracy prevention