The First Civil Senate of the Federal Court of Justice (BGH), which is responsible for competition and trade mark law, once again had to rule on the extent to which companies can take action against their business name being registered and used as a domain name by third parties.
The plaintiff, which offers its customers hardware and software equipment, has been using the abbreviation "ahd" to designate its company since October 2001. The defendant (a GmbH) has had several thousand domain names registered in its name in order to offer them for sale or for use against payment, including the domain name "ahd.de" since May 1997. Before the summer of 2002, the corresponding Internet page contained only a "construction site" sign stating that "the Internet presence of the domain ahd.de" was being created here. Thereafter, various contents could be accessed, at least in February 2004 also services of the defendant such as the provision of email addresses or the creation of homepages. The plaintiff demanded that the defendant refrain from using the name "ahd" to offer these services and that it agree to the deletion of the domain name. The Regional Court and the Higher Regional Court upheld the action.
The Federal Court of Justice upheld the appeal judgment insofar as the defendant was ordered to refrain from using the name "ahd" for the services mentioned. With regard to the order to consent to the deletion of the domain name "ahd.de", it set aside the appeal judgment and dismissed the action.
The Federal Court of Justice ruled that the plaintiff could prohibit the defendant from using the letter combination "ahd" as a sign for the goods and services within the scope of protection of the plaintiff's business name on the basis of its right to the business name which arose after the registration of the domain name. The registration of the domain name only meant that the holder of a right to a name or a distinctive sign which only came into existence after the registration could not normally demand the deletion of the domain name from the domain holder or prohibit him from using the domain name in any way (BGH, judgment of 24 April 2008 - I ZR 159/05, GRUR 2008, 1009 - afilias.de). As such, however, it did not entitle the domain holder to carry out acts under the domain name that infringed the third party's trade mark right. The domain name had also not been used by the defendant before October 2001 in such a way that the defendant's trade mark right in the designation "ahd" took precedence over the plaintiff's business designation.
However, the Federal Court of Justice denied the plaintiff's claim for cancellation of the domain name. The request for cancellation could not be based on a trademark infringement because the holding of the domain name did not in itself constitute an infringement of the plaintiff's business name. A claim for cancellation was also not given from the point of view of anti-competitive hindrance of competitors. The fact that the plaintiff could not use its business name "ahd" in connection with the top-level domain "de" as a domain name had to be accepted by it in principle, because it had only started using the abbreviation "ahd" after the domain name had been registered in the name of the defendant. In the opinion of the Federal Court of Justice, the defendant in the case in dispute did not act in abuse of rights when it invoked its rights from the registration of the domain name.
Judgment of the Federal Court of Justice of 19 February 2009 - I ZR 135/06 - ahd.de
Lower courts:
Hamburg Regional Court - Judgment of 26 May 2005 - 315 O 136/04
Hamburg Higher Regional Court - Judgment of 5 July 2006 - 5 U 87/05
See also: MMR 2006, page 608
Source: Press release of the Federal Supreme Court No. 39/2009 of 20.02.2009
Goldberg Attorneys at Law
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law (IT law)
E-mail: info@goldberg.de
