Domain Name Infringement

Managing a domain name portfolio requires some understanding not only of IT issues, but also of the particularities of registration that differ from country to country. While the choice often depends on marketing considerations, there are some legal aspects to be considered when selecting an appropriate domain.

By the use of one’s own name as a domain name as opposed to the use of a tradsemark or title, the domain name owner can rely on the so-called law of same names. According to a decision by the German Federal Supreme Court, ‘a domain name owner can rely on the first come, first served principle against a claim alleging infringement of the right in a third party’s name corresponds to the owner’s name or other designation if the domain name corresponds to the owner’s name, even if the owner’s name is junior to the third party’s name unless the senior name is famous’. However, it should be considered that deriving a domain name from a new trademark or title or creating new domain names requires availability searches, which can be quite expensive.

To ensure that internet users can find the relevant website, typical typos of the domain name can be registered which will direct to the correct website, but also avoid typosquatting by third parties seeking to redirect user traffic to their own. Under German law, typosquatting is considered an act of unfair competition and can be challenged by legal means.
In addition to domain name, derived from company names, trademarks or titles, it may be useful to register generic or descriptive words as domain names. According to Federal Supreme Court, the use of generic terms as domain names is generally not regarded as an act of unfair competition under German law, even though the use of a generic term in such a way can offer a competitive advantage as the relevant domain name can funnel traffic to the registrant’s main website.
If possible, a top level domain name or country code referring to the country or territory in which the owner of the domain name is doing business, may be registered. However, in such cases, the funneling of traffic might be viewed as an act of unfair competition.
Domain names should, as a general rule, be registered not in the name of an internet service provider, but rather in the name of the beneficial owner or its patent company. This allows the use of the law of same names defence of appropriate should a third party bring a claim of infringement of a name or trademark right. In a recent decision, Federal Supreme Court established that an internet service provider that has registered a domain name in its own name can invoke the name rights of the other party if it is obvious that the mark has been registered on behalf of another party name. However, if the owner of a domain name is a foreign company or person, the administrative contact has to be located in Germany.

It is often possible to stop the use of a domain name more quickly than would be the case of alternative dispute resolutions were available

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Domain Name Infringement - Germany