Germany: More detail around claims against “typo-squatting”?

According to its press release, the German Federal High Court (“BGH”) decided on 22 January (I ZR 164/12) that – in the particular case- the registration of a domain name which was a misspelled version of an already registered domain name (“typo-squatting domain”) did not infringe the plaintiff’s name rights. Furthermore, the court specified the legal conditions of an unfair interception of customers as stipulated in the Act against Unfair Competition (“UWG”).

The facts of the case were as follows:

The plaintiff was an entity owning the registered domain name “wetteronline.de”. The defendant registered the typo-squatting domain “wetteronlin.de”. All users who entered this domain name were forwarded to the website which contained advertising content from a health insurance company. For every user who visited this site the defendant received a payment.

The plaintiff claimed for cease and desist as well as for information and a ruling that the defendant was obliged to pay damages. It argued that the registration and the use of the domain name “wetteronlin.de” infringed its name rights and constituted an infringement of the UWG as its customers were intercepted in an unfair manner. The district court as well as the court of appeal granted the claim. The BGH has now overruled the judgment and dismissed the claim as far as it is based on an infringement of the plaintiff’s name right. Pursuant to the BGH, the name “wetteronline” is merely descriptive and thus misses the required distinctiveness of a name.

With respect to the UWG claim the BGH held that an UWG infringement could be prevented if the user was notified directly and conspicuously that he/she is not at the website wetteronline.de when entering the defendant’s site. However, in any event, the defendant was not obliged to delete its registration of the domain name “wetteronlin.de”, since a legal use of the domain is still possible and the mere registration of the domain does not impede the plaintiff in an unfair way.

In its decision the BGH clarifies the conditions under which domain owners are able to fight typo-squatting domains under German law. For such purposes it is of advantage if the original registered domain is distinctive. Moreover, the exact content of the website offered under the typo-squatting domain should be assessed. Finally, domain owners may also base claims on (registered) trademarks. In the present case there were no trademarks involved. If the domain registration contains or is similar to a registered trademark, trademark law can be an effective defence against typo squatting. 

We await the publishing of the full detail of the decisions – these might reveal further information on the court’s assessment of typo-squatting domains and if they do we’ll let you know.