On 30 March 2016, the President of the Commercial Court of Antwerp (the "President") gave its ruling in a dispute relating to the use of protected trademarks as a domain name by a third party.

Vaillant GmbH is a producer of heating devices and holds the rights to the EU trademark Vaillant as well as the Benelux trademark Bulex.

Eco-Star, an authorized distributor of Vaillant, had registered the domain names vaillantshop.be, vaillant-shop.be, bulexshop.be and bulex-shop.be in order to direct potential customers to its own website and create a bigger market reach. Vaillant filed a claim against Eco-Star for infringement of its trademarks.

Article XII.22 of the Code of Economic Law (Wetboek Economisch Recht/ Code de Droit Economique) prohibits the registration of any domain name to which the registrar has no right or legitimate claim when this domain name is identical to a third party's trademark so that it creates confusion and when the purpose of such registration is to harm a third party or to take unfair advantage of this trademark.

In its decision, the President first ruled that being part of Vaillant's distribution network did not bestow upon Eco-Star any right or legitimate interest to use Vaillant's trademarks as domain names. The President then clarified that the exhaustion of the trademark resulting from the appliances being brought on the EU market with Vaillant's consent did not entail the exhaustion of the trademark holder's right to register said trademark as a domain name. As a consequence, the President held that Vaillant never granted Eco-Star the right to use its trademarks as domain names.

Second, the President held that the explicit mention on Eco-Star's website that Eco-Star is not affiliated with Vaillant was irrelevant in the assessment of Article XII.22 of the Code of Economic Law. According to the President, this provision only relates to the registration of a domain name and not the use thereof. Therefore, it did not matter much whether the use of the trademark was in good faith. In addition, the President held that the explicit mention on Eco-Star's website did not reduce the risks of confusion, i.e. the risk that the public would wrongly believe that the products came from the same or economically linked undertakings.

Third, the President decided that it had been sufficiently proven that Eco-Star had purposely chosen and registered these domain names to increase the search results for its company on search engines like Google. According to the President, Eco-Star attracted more clients by using the repute of Vaillant's trademarks. The President therefore stated that Eco-Star had received an unjustified advantage from the registration of these domain names.

As a consequence, the President held that Eco-Star had infringed Article XII.22 of the Code of Economic Law and ordered Eco-Star to hand over the disputed domain names to Vaillant on the basis of Article XVII.23, paragraph 3, of the Code of Economic Law.

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