Germany: Fight for your (domain name) rights

Domain names are integral to how companies communicate with existing and potential customers. Customers in turn expect that all relevant information about a company, product or service will not only be available on the Internet, but also be easy to find.

However, numerous legal problems can arise for companies intending to register a domain name, as well as for companies that already own one. It is thus essential that companies know their legal rights in this area. This article provides a brief overview of potential conflicts in light of relevant German legislation and case law, along with practical advice for resolving such disputes.

Trademarks and work titles

The registration and use of a domain name can constitute infringement under the Trademark Act if a trademark and a (distinctive) domain name are identical or similar, and the goods or services protected by the mark are identical or similar to those advertised on the website. When it comes to assessing whether a trademark and domain name are in fact confusingly similar, the normal rules for a trademark infringement assessment apply.

With regard to the country-code top-level domain (ccTLD) ‘.de’, the Supreme Court has held that this is not a dominant element of a domain name – rather, it is understood by the addressed audience to be merely functional (Supreme Court, GRUR 2009, 1055 [margin no: 66], airdsl). Instead, the court found that the second-level domain only (ie, the part between ‘www.’ and the TLD ‘.de’) is relevant for trademark infringement assessment. However, this may change in the future as more individual and distinctive TLDs become available.

A trademark and a domain name will not be found to be confusingly similar if the addressed audience understands the domain name to function exclusively as a description of the goods and services offered on the website. In this case, the domain name is understood by the addressed audience as a generic term and not a trademark.

For example, the Dusseldorf Appeal Court recently decided that the owner of the trademark MEISSEN ZWIEBELMUSTER could not successfully assert claims against the owner of the domain ‘zwiebel-muster.de’ (GRUR-RS 2016, 06485, zwiebel-muster.de). The common component ‘zwiebelmuster’ would be understood by the addressed audience as a generic term for a specific porcelain decoration and did not indicate a specific origin.

It is also possible that the registration and use of a domain name can infringe a work title (Sections 5(1) and (3) of the Trademark Act) owned by a third party under the same conditions set out above.

For example, the Berlin District Court held that the domain ‘casual-cocerts.de’ infringed the work title Casual Concerts (GRUR-RR 2016, 505, Casual Concerts).

Trade names and name rights

The registration of a domain name might also infringe a third party’s trade name (Sections 5(1) and (2) of the Trademark Act) or name right (Section 12 of the Civil Code). The assessment of such a possible infringement is similar to the assessment for trademark infringement.

First, the trade name or name right is compared to the domain name. Second, the proximity of the sectors in which the company name and the domain name are used is considered (Frankfurt Court of Appeal, GRUR-RS 2015, 18529, Fairvesta-schaden.de; Frankfurt Court of Appeal, WRP 2000, 772 (773), alcon.de; Munich Court of Appeal, GRUR 2000, 518 – buecherde.com). This is done by analysing the content of the website which appears under the domain name in question in order to determine the sector in which the domain name is being used.

Recent decisions on this issue include the Cologne District Court’s holding that the domain ‘fc.de’ infringed the name right of the football club 1 FC Köln (LG Köln, GRUR-RS 2016, 14565, fc.de).

A trade name or name right and a domain name will not be found similar where the addressed audience understands that the domain name functions exclusively as a description of the goods and services offered on the website (eg, because the domain name is understood as a generic term for specific products).

The Frankfurt Appeal Court, for example, had to decide on a case regarding the domain name ‘ki.de’. The plaintiff argued that ‘ki’ was its trade name, which it used in the course of business and thus had established a name right under Section 12 of the Civil Code. It thus held that the domain name in question infringed its rights.

The defendant countered that ‘ki’ was understood by the addressed audience to be a generic term for all goods and services involving künstliche intelligenz (artificial intelligence).

The appeal court rejected the defendant’s arguments and found that the domain name was infringing. It explained that the addressed audience would not exclusively understand ‘ki’ as a generic term for artificial intelligence – internet searches demonstrate that the term is also used in other contexts.

Misleading domain names

A domain name not only has an address function, but also serves to differentiate the owner of the domain name and the goods and services offered under it from others. In other words, a domain name has an advertising function. Consequently, it may qualify as a misleading advertisement.

The Dusseldorf Appeal Court (Docket no: I-2 U 30/14) had to decide on the use of the domain ‘resort-B.eu’, under which the defendant offered a single holiday home for rent.

The applicant argued that the use of the term ‘resort’ for a single holiday home violated Section 5(1) of the Unfair Competition Act. An average consumer would expect a resort to consist of more than one holiday home; typically, a resort also comprises restaurants and leisure facilities.

Given that there were no restaurants or other leisure facilities surrounding the holiday home, the court found the domain name to be misleading.

Cybersquatting

Another relevant issue in connection with domain names is domain grabbing or cybersquatting. This is the practice of registering designations – especially well-known company names, trade names or trademarks – as domain names in the hope of reselling them at a profit to the company in question.

Section 4(4) of the Unfair Competition Act prohibits such registrations when this is a “deliberate obstruction of a competitor”. The act defines an ‘obstruction’ in this sense as when the owner of a distinctive designation is prevented from registering the corresponding domain name due to the first come, first served principle (Supreme Court, GRUR 2008, 1090 [marg no: 25], affilias.de).

Whether the obstruction is also deliberate must be assessed by considering whether the domain’s registration constitutes an abuse of the law (eg, if it is obvious that the domain name’s owner has no intention of using it, but rather intends to sell it to the owner of a corresponding trademark or trade name (Supreme Court, GRUR 2008, 1099 [margin no: 33], afilias.de; Supreme Court, GRUR 2009, 685 [margin no: 43, 46], ahd.de)).

Typosquatting

Typosquatting is a particular form of cybersquatting. Instead of registering a domain name corresponding to a specific (well-known) designation, domain names are registered which reflect common misspellings of an existing domain name.

For example, in a cybersquatting case, a third party might register the domain name ‘google.de’ with the intention of selling it to Google; whereas in a typosquatting case, it might register domain names such as ‘googel.de’ or ‘gogle.de’ in order to generate traffic for its own websites.

Owing to the nearly identical nature of the typosquatter domain name and the original domain name, such matters are usually handled as trademark, work title or trade name cases – or violations of Section 4(4) of the Unfair Competition Act (Supreme Court, GRUR 2014, 393, wetteronline.de). However, these seldom result in a court finding that the name right has been violated (Section 12 of the Civil Code), as the rights holder can still register the domain (ie, its correctly spelled company or trade name).

Generic domain names

The Supreme Court has held that the registration of a domain name consisting of a generic term is generally admissible (BGH GRUR 2001, 1061 (1062), Mitwohnzentrale.de). It held that the addressed audience is aware that the offers available under the generic domain name are not the only offers available, and that further offers may be found by using a search engine.

Legal literature discusses whether situations might arise where the addressed audience is of the opinion that the website offers all available goods or services relating to the general term, when in fact it does not. Such a situation might occur if one owner has registered all variants of a domain name covering a generic term. However, as yet there is no relevant case law in this area.

Checklist when registering a domain name

If your desired domain name corresponds to a company name or a specific product or service, first register the domain and then introduce the company name, product or service name. This will make it more difficult for a cybersquatter to register the domain before you do.

Before registering a domain:

• check whether third parties have trademarks or company names which might conflict with your domain name; and
• assess whether the domain name might be considered a misleading advertisement.

Register all relevant domain names in all relevant territories as soon as possible. If you do not need a domain name in a certain country straight away, forward visitors from the local ccTLD to your main website. If the registration and maintenance costs for the domain names are too high, prioritise and register the most important domain names in the (future) core territories of your business. However, monitor the domain names in countries where you have not registered, to check that third parties are not trying to grab your domain names.

Protect your domain names by filing corresponding trademarks or by establishing a corresponding company name or trade name if possible. Should a dispute arise at some point, it is helpful to have as many protected designations as possible.

Andreas Kabisch
Lawyer
[email protected]

Andreas Kabisch advises on all legal aspects of IP rights. He specialises in patents, unfair competition and trademark matters, out of court and in court. Mr Kabisch is a certified IP lawyer and has an LLM in European law. He is also a business mediator at the Munich Centre for Dispute Resolution.