German Federal Court of Justice Decides on Deletion of Unused Domains and Typosquatting

by White & Case LLP
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German law on internet domains is not codified in a uniform statutory law, but spans over a variety of legal areas such as trademark law, unfair competition law and naming rights and is strongly built on court decisions. Since the German Federal Court of Justice (Bundesgerichtshof) ruled in a landmark decision in 2001 that already the registration of an internet domain and not only its active use may constitute a violation of a third party's naming right [1], a number of other decisions followed shaping today's law on internet domains in Germany.

The German Federal Court of Justice recently added two remarkable decisions to its case-law series. The first one was concerned with the question whether a third party can already claim deletion of an internet domain based on its naming right if the domain is not actively used, while the second one was on the lawfulness of typing error domains (so-called "typosquatting").

Decision on Deletion of Unused Domains
In its decision issued on November 6, 2013 [2], the German Federal Court of Justice held that the Saarländischer Rundfunk, the public broadcasting institution of the state of Saarland, can require the deletion of the internet domain "sr.de" from the (third party) domain owner. The domain was registered, but not actively used. The Saarländischer Rundfunk obtained a so-called dispute entry at the ".de" domain registry DENIC against the owner, which prevented transfer of the domain to another party (and upon which the domain would have automatically passed on to the Saarländischer Rundfunk if released by the owner). The owner then sued the Saarländischer Rundfunk for deletion of the dispute entry, and the Saarländischer Rundfunk sued vice versa the owner for deletion of the domain registration.

While the relevant court of first instance was of the opinion that the registration of the domain without its use in the specific case cannot breach applicable naming rights of the Saarländischer Rundfunk, the German Federal Court of Justice held – following previous case law – that already the registration of the domain constitutes a relevant use of the name "sr.de" which is in public's view associated with the Saarländischer Rundfunk, even though it consists of only two letters.

Decision on Typosquatting
In its decision issued of January 22, 2014 [3], the German Federal Court of Justice further decided on the lawfulness of typosquatting. In that case, a website had been created under "wetteronlin.de" which contained commercial advertising for private health care contracts. For each click on such advertising link, the owner of the website was paid. The website under "wetteronline.de" is a popular weather forecasting site.

The owner of the domain "wetteronline.de" claimed a violation of its naming right and unfair competition, and sued the owner of "wetteronlin.de" mainly for deletion of the domain and damages. Following decisions of lower courts, the German Federal Court of Justice held that the owner of "wetteronlin.de" had violated the law against unfair competition, but not the naming law of "wetteronline.de". It ruled that "wetteronline.de" had not the necessary quality of a name, as it is merely descriptive and lacks the distinctive character that is required for being a legally protected name. Thus, it denied the motion for deletion of the domain name. However, it found the redirecting of traffic to other commercial offers to be illegal as long as the users of the website are not unequivocally made aware of the fact that they did not land on the anticipated website.

Conclusion
Each business intending to register a ".de" domain should be well aware of the law on domain names. It has to be noticed that not only the use of a domain, but already its registration may interfere with other's naming rights. This is particularly relevant in case domains are registered "on stock". On the topic of typosquatting, businesses are assured that legal remedies are available if domains are used in a way that constitutes unfair competition, but should notice that general descriptions as domain names do not benefit from the same legal protection as do specific names.


1 - Decision of the German Federal Court of Justice of November 22, 2001 (I ZR 138/99) – “shell.de”.
2 - Decision of the German Federal Court of Justice of November 6, 2013 (I ZR 153/12) – “sr.de”.
3 - Decision of the German Federal Court of Justice of January 22, 2014 (I ZR 164/12) – “wetteronlin.de”.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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