The provisions judge of the District Court of The Hague ruled that the domain name grohekranenshop.nl held by R&M Company (R&M) infringed Grohe AG's trade name and trademarks.
Grohe AG, the German producer of bathroom equipment, owns several international trademarks, including the word and picture trademark GROHE.
In the Netherlands, Grohe AG has been on the market via its Dutch subsidiary Grohe B.V. since 1972 under the trade name GROHE.
R&M Company exploits online retail websites. In June 2009, it registered the domain name grohekranenshop.nl. In the course of 2010, R&M started to sell on this website Grohe's products. Each page of the website was prominently headed "grohekranenshop.nl". At the bottom of each page it read in smaller typeface "grohekranenshop.nl is an R&M Company". The taps offered were supplied by an official distributor of Grohe B.V. who had once shown R&M's website to an account manager of Grohe. However, there has never been any direct contact between Grohe and R&M.
Grohe claimed for an injunction and court orders against R&M to transfer the domain name and to destroy advertising material.
In his preliminary assessment, the provisions judge said that the use of the domain name grohekranenshop.nl qualified as use as a (word) trademark by R&M since it distinguished its services - which was selling Grohe's taps and showers. This was not altered by the fact that the use of the domain name could also be regarded as use of Grohe's trade name. The domain name containing the element "grohekranen" [meaning "Grohe taps"] would be easily perceived by the public as an indication of origin, i.e. that the services for which the sign was used originated from the market leader Grohe.
Because of the identity of the goods and services and the large distinctiveness of Grohe's trademarks on the market, the judge found that the similarity of Grohe's trademarks and the domain name led to a likelihood of confusion on the part of the relevant public. The use of grohekranenshop.nl suggested that there was a commercial relationship between R&M and Grohe, e.g. that R&M was an official distributor of Grohe or that there was any other relation.
Furthermore, the judge found that R&M unlawfully profited from and deterred the distinctive character of the well-known trademarks of the market leader Grohe. Therefore, the use of grohekranenshop.nl risked the dilution of Grohe's trademarks. R&M could not provide a reason for any need of the use.
Even if the fact that Grohe's distributor had shown grohekranenshop.nl to an account manager of Grohe could be perceived as an (implicit) permission of Grohe (which was doubtful given the superficial circumstances and the lack of a specific request by R&M for permission of use), it could not be concluded that it related to unambiguous permission.
As a result, the court granted the claim for a preliminary injunction. It ordered R&M to get the domain name transferred to Grohe and to destroy all promotional material. It also imposed penalty payments in case of violation of the court orders.