The first civil senate of the Federal Court of Justice (BGH), which is responsible for the law on names and trademarks, ruled in its decision of 9 February 2007, file number I ZR 59/04, that under certain circumstances it may be permissible to register another person's domain name for oneself. This is stated in a press release issued by the press office of the Federal Court of Justice on 9 February 2007. The judgement has not yet been published.
In the case in dispute, the plaintiff bore the surname Grundke. The defendant himself was not called Grundke, but was commissioned by Grundke Optik GmbH to register the domain name http://www.grundke.de for Grundke Optik GmbH and to create a corresponding homepage for this company under this URL. The defendant was registered with DENIC e.G. as the holder of the domain and not the company Grundke Optik GmbH. On the homepage http://www.grundke.de, however, the internet presence of Grundke Optik GmbH always appeared, except for a short interruption.
The plaintiff objected to the fact that the domain name http://www.grundke.de was registered for the defendant without the latter having a right to the name Grundke and therefore demanded that the defendant release the domain name.
The Regional Court of Hanover dismissed the action in its judgement of 18 November 2003, file number 18 O 300/02, on the grounds that the domain name http://www.grundke.de was ultimately used by Grundke Optik GmbH and thus by the holder of the name and that this was permissible and sufficient.
The Higher Regional Court of Celle, on the other hand, upheld the action in its judgement of 8 April 2004, file number 13 U 213/03, on the grounds that the defendant was not permitted to register the domain name in his own name, even with the consent of a name holder. The OLG Celle thus came to the conclusion that there was an infringement of the right to a name. The defendant appealed against this ruling of the OLG Celle.
According to the press release of the Federal Supreme Court, the BGH now confirmed in its ruling,
"that, in principle, the registration of another's name as a domain name is already an unauthorised use of a name, against which every name holder can take action under the aspect of usurpation of the name.However, this does not apply if the domain name has been reserved on behalf of a name holder. Because of the principle of priority that applies in domain law among those with the same name, according to which a domain is entitled only to the person who initially registered it for himself, the other name holders must be able to reliably and easily check whether such a reservation was made on behalf of a third party. This is particularly the case if the homepage of a name holder appears under the domain name with that name holder's consent".
However, the BGH pointed out that other possibilities were also conceivable which could document the order registration vis-à-vis other name holders in a priority-establishing manner.
In the case at hand, the domain name was registered on behalf of Grundke Optik GmbH for the creation of a homepage. This homepage was also activated before the plaintiff asserted his claims. In the opinion of the Federal Court of Justice, Grundke Optik GmbH thus has priority over the plaintiff for the domain name grundke.de, which the defendant can also invoke on the basis of the order placed with him.
In the opinion of the Federal Supreme Court, it is therefore not decisive whether it was expressly agreed between Grundke Optik GmbH and the defendant that the registration would be made in the name of the defendant. According to the Federal Supreme Court, the details of the contractual relationship are irrelevant for the priority of the registration of the domain name if it actually exists and can be documented externally, for example, by activating a homepage of the name bearer.
Source: Press release of the Press Office of the Federal Court of Justice No.21/07 of 09.02.2007
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Communicated by Michael Ullrich, LL.M., Attorney at Law (Information Law)
© Goldberg Attorneys Wuppertal - Solingen 2007