The First Civil Senate of the Federal Court of Justice (BGH), which is responsible for competition and trademark law, among other areas, was once again tasked with determining the extent to which companies can take action against third parties registering and using their business names as domain names.
The plaintiff, a provider of hardware and software solutions, has used the abbreviation "ahd" as its company designation since October 2001. The defendant (a GmbH) registered several thousand domain names for sale or commercial use, including "ahd.de" since May 1997. Prior to summer 2002, the website for "ahd.de" displayed a "construction site" notice, indicating that "the internet presence of the domain ahd.de" was under development. Subsequently, various content became accessible; by February 2004, this included services offered by the defendant, such as email address provision and homepage creation. The plaintiff sought an injunction against the defendant's use of "ahd" for these services and demanded consent to the deletion of the domain name. Both the District Court and the Higher Regional Court ruled in favor of the plaintiff.
The Federal Court of Justice affirmed the appellate judgment concerning the injunction against the defendant's use of the designation "ahd" for the specified services. Conversely, it reversed the appellate judgment regarding the order to consent to the deletion of the domain name "ahd.de" and dismissed that part of the claim.
The Federal Court of Justice determined that the plaintiff, based on its company name rights established after the domain name registration, could prohibit the defendant from using the letter combination "ahd" as a distinctive sign for goods and services within the protective scope of the plaintiff's trade name. The Court clarified that domain name registration merely means that the holder of a name or trademark right established *after* registration cannot typically demand the deletion of the domain name from the domain holder or prohibit all use of the domain name (BGH, judgment of 24.4.2008 – I ZR 159/05, GRUR 2008, 1009 – afilias.de). However, such registration does not, in itself, authorize the domain holder to engage in activities under the domain name that infringe a third party's trademark rights. Moreover, the defendant had not used the domain name "ahd" prior to October 2001 in a manner that would establish a trademark right superior to the plaintiff's trade name.
Conversely, the Federal Court of Justice rejected the plaintiff's claim for deletion of the domain name. The Court reasoned that the deletion request could not be predicated on trademark infringement, as the mere ownership of the domain name does not, in isolation, constitute an infringement of the plaintiff's trade name. Furthermore, a claim for deletion was not justified under the premise of anti-competitive obstruction of a competitor. The plaintiff must, in principle, accept its inability to use its trade name "ahd" with the ".de" top-level domain, given that it commenced using the abbreviation "ahd" only after the defendant's registration of the domain name. In the Federal Court of Justice's view, the defendant's reliance on its rights derived from the domain name registration in this dispute does not constitute an abuse of rights.
Judgment of the BGH of February 19, 2009 – I ZR 135/06 – ahd.de
Lower Courts:
District Court Hamburg – Judgment of May 26, 2005 – 315 O 136/04
Higher Regional Court Hamburg – Judgment of July 5, 2006 – 5 U 87/05
See also: MMR 2006, page 608
Source: Press Release of the BGH No. 39/2009 of February 20, 2009
Goldberg Rechtsanwälte
Attorney Michael Ullrich, LL.M. (Information Law)
Specialist Lawyer for Information Technology Law (IT Law)
Email: info@goldberg.de
