by Sebastian Meis LL.M. (Canterbury)*
The commercial use of domain names is a controversial issue under German law. According to a recent German court decision, see Hamburg Court of Appeals, December 18, 2003, docket number 3 U 117/03 - "awd-aussteiger.de", the mere offer for sale of a domain name, even if it is not used for a website, is qualified as "commercial use", geschäftliche Nutzung.
On June 1, 2005, the Landgericht Düsseldorf, the German equivalent to a District Court in the United States, specified in its decision, docket number 2a O 9/05, the requirements for considering the use of a domain name as "commercial use".
Plaintiff in this case is owner of the domain "computer-partner.de" which he had registered in fall 2003. He did not start using the domain name until December 2004 when he opened an online forum under this name. On his website, he asked users to report on their experiences with online dating engines. In December 2004, defendant approached the plaintiff and offered to buy the domain name. The negotiations, however, ended without any result.
The defendant is publisher of the weekly magazine "ComputerPartner" with 35,000 printed copies. The magazine covers various topics referring to computer-based trading. The defendant also owns the domain name "computerpartner.de" and the trademark of the same name.
With regard to its trademark rights, the defendant sent plaintiff a cease-and-desist order, see also Christiane Krüger, "Private cease-and-desist orders", demanding plaintiff to transfer the domain name to defendant. The plaintiff brought suit against defendant, however, seeking a declarative judgment that 1) defendant would not be entitled to the release and transfer of the domain name; and 2) defendant had no right to prevent plaintiff from using the name "ComputerPartner" for his domain. The plaintiff asserted that he had registered the domain name only for installing a private web forum and not for its commercial use.
In his response, defendant argued that plaintiff did not commence using the domain until he received defendant's cease-and-desist order in December 2004. The defendant also pointed out that plaintiff owns several other domains which are in commercial use. Therefore, the defendant stated that the commercial use of the other domains could be regarded as a strong indication for plaintiff's intention to use defendant's trademark for commercial reasons.
The court granted the declaratory judgment. In accordance with the "Shell.de-decision" of the German Supreme Court, November 22, 2001 (Bundesgerichtshof, AZ I ZR 138/99), see also Christian Schröder, "Notorious Names Override Common Names In German Domain Law", it held that German law does not provide for a right to the transfer of a domain name, but only for its cancellation. Therefore, it rejected defendant's first claim.
The court also denied defendant's claims under §15(2), (4), §5(1), (3) of the German Trademark Act, Markengesetz (MarkenG), injunctive relief and release of the domain name. Pursuant to these provisions, a third party is prevented from using a commercial description, geschäftliche Bezeichnung, which comprises the title of a work, Werktitel, under §5(1) MarkenG, or a similar sign in the course of commerce without owner's consent if the use is likely to cause confusion over the protected mark, see also Thorsten Dardat, "Recent Cases on Generic Terms used as Domain Names". According to §5(3) MarkenG, the term Werktitel refers to names or special descriptions of printed documents, cinematographic works, acoustic works, dramatic works and other comparable works.
While the court held that the title of defendant's magazine "ComputerPartner" falls within the scope of §5(1), (3) MarkenG and is, thus, protected as Werktitel, it did not find an infringement upon defendant's mark by the plaintiff.
The court's decision was based on the lack of the legal requirements for a claim under §15 MarkenG. This section requires the infringer to act in the course of commerce. As defendant concedes, plaintiff installed the website for his privately used online forum. Hence, he did not infringe upon defendant's trademark by operating his website.
Furthermore, the court supported plaintiff's assertion that he does not intend to use the domain name for commercial purposes in the future. Defendant was not able to prove plaintiff's intention of commercial use. This is an essential prerequisite, however, for a claim based on the criterion of threat of first trademark infringement, Erstbegehungsgefahr.
The court did not find sufficient evidence for defendant's allegations with regard to plaintiff's intention of commercial use. It stated that plaintiff's conduct of not using the domain before he received defendant's cease-and-desist order and that he had registered the domain almost one year before installing his web forum does not suggest that the plaintiff intends to use it for commercial purposes. Moreover, the fact that the plaintiff is using other domains commercially was held to be insufficient to prove that he also intends to use the domain at issue in the same manner.
Finally, the court announced that the negotiations as to the sale of the domain do not constitute commercial use. Only offering a domain name for sale is regarded as commercial use. In this case, however, it was the defendant as potential buyer who had approached the other party in order to enter into negotiations - and not the plaintiff.
In conclusion, the court ruled that the defendant did not have a claim of protection of work title, Werktitelschutz, under German trademark law because plaintiff's private use of the domain name did not constitute an infringement upon defendant's Werktitel under §15(2), (4) MarkenG.
The court also denied defendant's claim as to injunctive relief and relinquishment of the domain name under §14(2) No. 2, (5) MarkenG. A claim for infringement under this section requires 1) commercial use of the infringer; and 2) likelihood of confusion. As stated above, plaintiff did not use the domain name for commercial purposes. In addition to that, there was no likelihood of confusion because defendant's and plaintiff's products or services were not similar.
Further, the court negated a claim under §12 of the German Civil Code, Bürgerliches Gesetzbuch (BGB). This section assures the holder of a name of its name, see also Olaf Herrmann, "Employerlike Domain Name Triggers Termination". The statute protecting names, Namensrecht, of the defendant was not infringed since the defendant did not possess any rights in the company name "Computerpartner".
Moreover, the court did not find any violation of unfair competition law under §3 of the Unfair Competition Act, Gesetz gegen den unlauteren Wettbewerb (UWG) or tort law pursuant to §826 BGB. With respect to §3 UWG, defendant did not qualify for protection under this provision because plaintiff is not a competitor of the defendant. Referring to §826 BGB, the court held that there was no infraction of the law as plaintiff did not act with malicious intent to cause damage on another person in order to free-ride on defendant's reputation.
* Sebastian Meis obtained his law degree from the Westphalian Wilhelms-University, Münster, Germany. He also holds an LL.M. degree from the University of Canterbury, Christchurch, New Zealand. During his LL.M. studies, he focused on intellectual property in common law and civil law regimes, in particular trademarks and copyright. Currently he is an intern with Berliner, Corcoran & Rowe, L.L.P. in Washington, D.C. Sebastian Meis anticipates his German bar admission in March, 2006. The author thanks Clemens Kochinke for his valuable suggestions and Heidi Förster for her feedback in writing this note.
Cite as: Sebastian Meis, Commercial Use of Domain Names Under German Law, 15 German American Law Journal, http://www.amlaw.us/meisdomainnames.shtml (January 26, 2006).
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