German Federal Supreme Court on title protection on the basis of the use of a domain name

Following the first German domain name decisions in 1997, more and more cases reach the Federal Supreme Court who mainly confirms the established practice of the instance courts and provides certain legal guideline in German domain name law. In the present case published in January 2010, the Federal Supreme Court has confirmed that the use of a domain name, eifel-zeitung.de (eifel-newspaper.de) whereas Eifel is a region in the western part of Germany, can create a designation right. The facts, in particular the procedural roles of the parties are somewhat complicated, but important to understand the case:

Facts:

The dispute was decided amongst two regional newspapers. One newspaper had obtained a decision against the other newspaper in 1998 based on a part of their newspaper called “Eifel-Zeitung” against the newspaper “Eifelzeitung” of the other newspaper publisher. After this decision, the former plaintiff changed the name of his newspaper whereas the former defendant changed its name to Eifel-Zeitung and occupied the domain names “eifel-Zeitung.de” and “eifelzeitung.de”. The former plaintiff and later defendant changed, to complete the story, back to “Eifel-Zeitung” at the end of 2004. Now the former defendant sued the former plaintiff based on the argumentation that it has now better and prior rights since the former plaintiff lost his title right due to the lack of use. In March 2005, the (current) plaintiff obtained a decision against the defendant to stop the enforcement of the decision of 1998.

Decision:

The Federal Supreme Court used this possibility to comment on the general line of trademark and domain name law indicating that the internet use for a newspaper work can create a title right, here for the plaintiff. However, the priority of such rights was still with the defendant, at least for his restart with the title in 2004 since the plaintiff was until 2005 prohibited to legally use the title due to the former decision for which the enforcement was only abandoned in 2005. Necessary is in accordance with this decision not only the start of a serious use in the course of business. The use must also be allowed. Since the plaintiff was – due to the first decision against him – hindered to legally use the title until 2005, and the defendant re-started his use again in 2004, the former plaintiff and later defendant succeeded again in this remarkable regional newspaper battle.

Although the decisive details of the decision might not be often at stake, the clarification of the Federal Supreme Court with regard to the requirements to create a title right will be welcomed by German practitioners.