Liability of Admin C for infringements of rights during domain registration

The First Civil Senate of the Federal Court of Justice, which is responsible, among other things, for trademark law, has decided whether the administrative contact, who must always be named when a domain name is registered if the applicant does not reside in Germany, can be held liable in cases where the registered domain name infringes the rights of third parties.

The plaintiff operates a mail order business for hair cosmetics and hairdressing supplies on the internet under the name "Basler Haar-Kosmetik". It feels that its right to a name has been infringed by an internet site registered under the domain name http://www.baslerhaarkosmetik.de/. The domain name was registered by a company based in Great Britain. The domain name has been registered by a company based in Great Britain with DENIC, the cooperative which allocates domain names with the top-level domain ".de". The defendant was registered as the administrative contact (so-called Admin-C) for the domain name.

The plaintiff contacted the defendant with a letter from her lawyer and requested the defendant to delete the domain name. The domain name was subsequently deleted. In the present legal dispute, the plaintiff is demanding reimbursement from the defendant for the legal fees it incurred as a result of the warning.

The Regional Court of Stuttgart ordered the defendant to pay as requested, the Higher Regional Court of Stuttgart amended the Regional Court's judgment on the defendant's appeal and dismissed the action.

A claim for reimbursement of the warning costs depends on whether, at the time of the warning, the plaintiff had a claim for deletion of the domain name not only against the domain holder, but also against the defendant as admin-c. The Higher Regional Court had answered this question in the negative. The Federal Court of Justice overturned this decision and referred the case back to the Court of Appeal for a new hearing and decision.

A claim against the Admin-C can arise from the aspect of "Stoererhaftung" (Breach of Duty of Care). The breach of reasonable duties of verification required for this does not, however, result from the defendant's position as Admin-C per se. This is because the scope of his functions and duties is determined solely by the domain contract concluded between DENIC and the domain holder, according to which the scope of the admin-c's duties is limited to facilitating the administrative implementation of the domain contract. Under certain circumstances, however - according to the Federal Court of Justice - the Admin-C may be subject to a special duty of examination with regard to the domain name whose registration he facilitates by his willingness to act as Admin-C. In the case in dispute, the defendant had generally agreed vis-à-vis the domain name holder based in the UK to be available as admin-c for all domain names registered by her. Furthermore, the plaintiff had submitted that the British company identifies domain names that become available in an automated procedure and registers them automatically, so that no examination takes place at the level of the applicant and holder of the domain name as to whether the domain names applied for could infringe the rights of third parties. In view of the fact that DENIC does not carry out such a check, there is an increased risk of domain names being registered which infringe the domain holder's rights. Under these conditions, the Federal Court of Justice has affirmed that the Admin-C has a duty to check on its own initiative whether the automatically registered domain names infringe the rights of third parties.

The Federal Supreme Court referred the case back to the Higher Regional Court, which must now clarify whether the special circumstances presented by the plaintiff existed and whether the defendant had or should have had knowledge of them.

 

Judgment of the Federal Supreme Court of 9 November 2011 - I ZR 150/09 - Basler Haarkosmetik

Lower courts:

Stuttgart Regional Court - Judgment of 27 January 2009 - 41 O 127/08

OLG Stuttgart - Judgment of 24 September 2009 - 2 U 16/09, GRUR-RR 2010, 12 = K&R 2010, 197

 

Source: Press release of the BGH

 

Goldberg Attorneys at Law

Michael Ullrich, LL.M. (Information Law)

Specialist lawyer for information technology law

E-mail: info@goldberg.de

 

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