When is a domain name a trade mark infringement?

A trade mark owner demands the surrender of a registered domain name: what now? You don’t have to follow this: there is no right to transfer a .’de” domain. In exceptional cases, however, the deletion or modification of the domain can be demanded.

In principle, anyone can register a domain name; one checks whether a desired domain is still free, i.e. not taken, and registers for it. This often only becomes a dispute years later: the owner of a trademark demands that the domain name with the same name be transferred to him. Rightly so?

German law in relation to domain name

In principle, domain names do not have a name function under German law, but represent an additional company identifier. Legally, they are to be equated with the so-called business signs (Ströbele/Hacker/Thiering, MarkenG, 13th edition, § 5, marginal no. 64). These are signs which are used in the course of trade as a name, a company name or a special designation of a business or an enterprise.

They may be protected as business signs if they have an identifying and distinguishing function (§ 5 (2) Trade Mark Law). However, signs without a name function are only protected as business signs if they have acquired a reputation.

So much for the theory. In practice – as can be seen from the court decisions – it looks like it follows.

When is a domain a trade mark infringement?

Let’s start from the beginning: the mere registration of a domain is not a trade mark infringement because it does not constitute trade mark use.

But, if a very well-known company name is registered as a domain name in the course of non-business transactions, the domain registration itself constitutes an unauthorised use of the name according to § 12 of the German Civil Code (BGB), according to the 2011 BGH decision shell.de. In such a case the company could claim that the domain holder renounce the domain name “shell.de” vis-à-vis DENIC.

Does this mean that before registering a domain name, one must first check whether any trademark rights exist for the domain name? No, that is not demanded.
In any case, the DENIC, the registry for top-level domains with a German country code, does not check this as a matter of principle. And DENIC does not have to, because the allocation and administration of domain names does not per se constitute the use of a trademark in the course of trade. Only if DENIC is made aware of an obvious infringement of the law can it be required to cancel the illegal registration.

Important is the content of the registered domain: According to the German Federal Supreme Court (Bundesgerichtshof, BGH), homepages with no content do not in principle constitute use that infringes trade mark rights, because the domain name is not yet associated with any specific goods or services; there can therefore also be no likelihood of confusion (BGH, 2008, I ZR 151/05).

And it also matters when the domain was registered: in a case where the domain was registered 4 years earlier than the sign had been used as a corporate identifier of a company, the BGH said, this was no unlawful domain registration, because it could not be a matter of a concrete obstruction of the company (- I ZR 82/14).

However, the BGH’s shell.de decision makes it clear that it is not permissible to register a very well-known brand name without authorisation.

Same name – authorisation for a domain?

A strong argument for the right to a domain is always one’s own name. Incidentally, this was also the case in the shell.de decision cited above: The domain holder was Dr Andreas Shell. And actually, in the case of several entitled name holders for a domain name, the principle of “First Come – First Serve” applies. Since there are equal interests, the person who first applied for registration for the domain is entitled to it.

However, this principle is overruled when it comes to very well-known names. Well-known names of a company have priority over ordinary citizens with the same name, was decided both by the BGH in the shell.de case (I ZR 138/99) and the OLG Hamm in the krupp.de case (4 U 135/97). Incidentally, the same also applies to famous place names / municipalities.

According to the Federal Court of Justice, the decisive factor for assessing whether someone is so famous that he has priority on the domain is the public awareness – and whether the public expects a homepage under this name, but at the same time the owner of the domain cannot prove any special interest in this domain in particular (see also in this context: Merck and Merck & Co dispute).

Domaingrabbing: the goal is lucrative resale

What is the legal position on domain grabbing, i.e. the registration of domains with the aim of being able to sell them on lucratively – for example to trademark owners? Is that legally permitted?

In most cases, yes, because trading in domains is considered a permissible business activity, and even a de facto blocking of domains does not justify a claim for injunctive relief, ruled the Federal Supreme Court in 2016 (I ZR 82/14) – as long as the owner does not use the domain name for other purposes.
In this BGH decision, the domain holder had actually used the domain, namely to redirect to a third website. The BGH ruled that this was a use of the domain name as a trade mark and could in principle constitute a commercial use of the domain name and referred to Bettinger in Bettinger loc.cit. para. DE 149. However, because the court of appeal had not dealt with this, the BGH overturned its decision and referred it back for a new hearing.

In principle, trading in domains is not permissible if there is unfairness in the sense of competition law – with the emphasis on “present”. This is because intention does not constitute an act of infringement within the meaning of Art. 9 (1) sentence 2 (b) CTMR and Art. 9 (2) (b) UMV. In concrete terms, this means that if a domain is blocked for a third party who, for example, has an identical or similar trade mark or company – then such blocking is not permissible. Also, no exaggeratedly high sums may be demanded when trading domains. In short: Domain grabbing is permitted – brandjacking is not.

Incidentally, the registration of the top-level domain “.com” does not justify a presumption of commercial use. This is because although it was originally introduced for commercial use, it is open for registration to anyone (see also Bettinger, Handbuch des Domainrechts). Many disputes about domain names are asserted and also settled through the international UDRP procedure (Internet Corporation for Assigned Names and Numbers (ICANN)) – but this does not apply to domains with the German country code “.de”.

Right to injunctive relief?

It can therefore be summarised that a possible trademark infringement can only be asserted once content has been published under the domain name – then there may also be a claim for injunctive relief. In such a case, however, only the infringing use of the name/trademark right must be ceased – but not the further use of the domain.

Specifically, in the case of a justified claim for injunctive relief, it must be ensured that the use of the domain name corresponding to a protected trade mark is no longer used in the course of trade to identify and advertise goods or services for which trade mark protection is claimed. In the event of infringement, there may even be a claim for damages.

However, there is no right to a domain transfer in German law and for domains with the German country code “.de”.

In its shell.de decision, the Federal Court of Justice ruled that the entitled party is not entitled to an overwriting claim against the non-entitled holder of a domain name, but – if at all – only to a claim for deletion of the domain. The right to register a domain name is neither comparable to patent law vindication according to § 8 sentence 2 PatG nor to the register correction claim according to § 894 BGB, the BGH had made clear.

Would you also like to claim or defend a domain?

Our lawyers have many years of expertise in trade mark law as well as in the entire field of intellectual property and are entitled to represent you before any court – in Germany and also internationally.