Claim for deletion of domain with protected name

It can be a severe commercial disadvantage if you are unable to have a prominent online presence under your own (company) name. Following a current decision by the OLG [higher regional court] Frankfurt, it could become easier to enforce the right resulting from your own name against a company with a domain of the same name.

Background

Use of a domain can violate trademark and labelling laws. On the other hand, the registration of a domain does not by itself establish any claims under labelling law. While it is also not possible to demand the deletion of a domain with reference to trademark law, a claim for deletion could arise from the right to your own (company) name.

The judgement by the OLG Frankfurt of 29.09.2016 – 6 U 187/15

The plaintiff demanded the deletion of a German domain. The name contained in the domain was part of its company registered in the companies register in 2010. But the domain was registered for the defendant, a former shareholder in the plaintiff, already in 2008. In addition, the defendant registered a trademark with the same name as the domain in 2011.

The domain holder was not entitled to his own protected right in the name with regard to the domain. The trademark registration could have established a legitimate interest of the defendant in the domain. Because the defendant did not use the domain for the services which the trademark was intended to protect, however, he could not invoke this. For this reason, the defendant was ordered to consent to the deletion of the domain.

Remarks

The right to a domain is generally held by the party which has the right to the protected name, such as the owner of a company with the same name. If several companies possess the right to a name, the priority principle applies.

In this regard, however, the OLG Frankfurt created a significant limitation. Of the parties with the same name, only those who also use the domain congruously with their labelling right can invoke this right. It remains to be seen whether this also leads to an obligation of use for domains with the top-level domain “.de” or whether the explanations only apply to the circumstances of the individual case. The former would be welcome because blocking domains will be made easier and it would prevent speculation with domain names.