Domain Names in Germany

I. Introduction


The problem of domain names was raised before the German Courts first in 1996, when the District Court Mannheim prohibited the use of the domain-name "heidelberg.de " by a computer company, for it was held that the use constituted an infringement of the city's right to use a name pursuant to § 12 BGB. Meanwhile, simultaneously to the rapid development of the Internet, the German Courts have developed the law concerning domain-names, and it has become one of the most important issues in German IT law.
Domains under the Top-Level-Domain ".de" are assigned by the DE-NIC (German Network Information Center) pursuant to the principle of priority. The assignment office examines, whether the address applied is already assigned. If an address applied for is already registered, the assignment office rejects the following assignments. The applicant assures DE-NIC, that he has checked compliance with trademark law standards and that no indication of a violation of third party rights exists.
Thus, most cases concerned claims of forbearance against the use of a domain by its holder. This can violate the right to use a name, existing trademarks or consist a distortion of competition. More recently, though, also actions against the domain-assigning authority have been sought. Furthermore, the Courts were to deal with the blocking of internet domains and trading of domain names. Finally, the Question arises, in which cases German Courts have jurisdiction in cross the border conflicts.


II. Protection of the Name against the use as a domain-name

1. Name Infringements


As the first exemption from the principle of priority, the “heidelberg.de” judgement established the rule, that the use of a domain-name fell within the area of application of § 12 BGB, since a domain name represented an individual name which is subject to the protection of § 12 BGB. Thus, there can be claims of clearing, forbearance and also compensation when the right to use a name is violated by the registration of a domain by a another, if the other person has neither a better right nor any right of the expression concerned. Vgl. LG Düsseldorf v. 22.9.1998 (4 O 473/98)
This is also applicable on a company designation, as was decided in the judgment “Krupp.de” (LG Bochum, MMR 1998, 214) because of the function of identification of the internet-address in competition.
With identical names the application of the principle of priority is presumed.
However, in “shell.de” the OLG München (3-25-99; CR 1999,382) decided, that even if the domain is named after the owner of the domain and he therefore has the right to use the name pursuant to sect. 12 BGB, the interest of the owner of the outstandingly recognised company designation “shell.de” superseded the interest of the domain owner, since it was easier for the person with the same name to distinguish himself from the company and most users of the internet who contacted the domain were looking for the internet address of the company.

2. Trademark Infringements


(a) Also, trademarks are protected against the use as a domain-name by sect. 14 II, 15 II MarkenG, presumed there is a use in business transactions and the domain-owner acts in the same service area or there is a danger of confusion. A use in business transactions therefore does not exist, if a private person registers a domain name and uses it for a web site serving exclusively private purposes. However, there is a strong tendency (e.g. OLG Dresden; 10-20-98;14 U 3613/97) that already the registration of a domain name represented a use in business transactions, since it had a blocking effect on competitors in the internet.
(b) Trademarks with outstanding recognition are protected even outside the protected service areas or without the danger of confusion (LG Düss CR 1998, 165; OLG München CR 1998, 556) under the provision that the distinctiveness or the value of the trademark is being exploited or affected (esp. Through dilution). The mere mentioning of the name e.g. in a press publication is not enough, though.

3. Unfair Trading


Generally, there is no objection against the registration of merely descriptive domain-names or generic terms. In the case “Mitwohnzentrale.de” (OLG Hamburg; 7-13-1999; 3 U 58/98) it was decided, that the registration of the domain was unfair trading, because it would lead to a catching of customers of competitors who use the same expression in their company name. Unfair trading is also assumed, if there is the danger of confusion (e.g. OLG München, 9-23-1999 (29 U4357/99).

4. Blocking of internet domains


The dealing of domains can also be considered as void pursuant to § 138 I BGB, if not the seller expressly gives notice of the conflicting law concerning the use of names (LG Frankfurt; 2/14 O 412/97; MMR 1998,422). ). Also an illegal use in business transactions was assumed when the registration served only the purpose to achieve payments for the release of the domain (“Paulaner.de” LG München; 7 HKO 2682/97). Occasionally, the blocking of domains was considered as unfair trading (e.g. OLG Dresden 10-20-98 (14 U 3613/97)
5. Claims against the domain-assigning authority
According to a judgement of the LG Frankfurt 14.10.1998 (2/6 O 283/98), the DE-NIC holds a dominant position pursuant to sect. 22 I Nr. 1 a.F. (19 II Nr.1 n.F.) GWB. The relevant market was restricted to the Federal Territory and the Top-Level-Domain “.de” and was therefore the domain assigning office was obliged to abolish the registration of a domain-name which was blocked by its holder, but not used.
Also the OLG Frankfurt “ambiente.de” (9-14-1999; 11 U Kart. 59/98) decided, that generally the DE-NIC is liable pursuant to §§ 14, 15 MarkG, if it indirectly causes a trademark infringement by registering a domain name obviously identical with a famous trade-mark. Also, it assumed a general responsibility of the DE-NIC under Antitrust Law.


III. Protection of the Domain against Trademarks and Names


Following the principle of priority, a domain name which is assigned before the trademark is registered, can be persistent pursuant to sect. 12 BGB ("emergency.de" OLG Hamburg 11-5-98 (3 U 130/98)). A domain name can be protected as a trademark itself pursuant to § 3 MarkenG if it is used in business transactions and has general acceptance in the trade (§ 4 MarkenG). Also the domain name can be protected against § 14 II claims pursuant to sect. 5 II, 15 MarkenG. ("warez.de" LG Frankfurt 8-26-1998 ( 2 / 6 O 438/98)) as a companies distinguishing mark. If recognised as a trademark or mark, the domain name can be protected by forbearance claims, damage claims and claims for information.


IV. Cross boarder conflicts of trade-marks / Applicability of German Law


A tortious action providing grounds for the jurisdiction of German courts within the meaning of § 32 ZPO is only presumed in the case that the domain name appears in the territory of the Federal Republic of Germany according to its commercial purpose and not only for technical reasons and the company itself has advertising and would like to have turnover with this domain name in Germany. Criteria can be for example, whether the German language is used or if special offerings to customers of this countries are given.


© 2000 Jens Barkemeyer