SIB - Società Italiana Brevetti

EUROPEAN COMMUNITY COURTS - CASE LAW

Advocate General Trstenjak of the Court of Justice of the European Union takes the view that all relevant factors and circumstances must be taken into account in order to assess whether or not a .eu domain name has been applied for in bad faith: actions which are legitimate considered in isolation may indicate bad faith if they are part of a process aiming to derive an unfair advantage.

In the reifen.eu case the Court of Justice of the European Union has been asked for the first time to interpret European Regulation No 874/2004 laying down principles of registration and public policy rules concerning the .eu Top Level Domain.

Internetportal und Marketing GmbH (Internetportal) obtained a Swedish trademark registration for the word mark &R&E&I&F&E&N& for safety belts, and used it to apply for a .eu domain name during the “sunrise period” reserved for the owners of prior rights. The .eu registry applied the Regulation’s Article 11 on special characters, which provides that special characters (such as the ampersand “&”) are eliminated from corresponding domain names, replaced with hyphens or, if possible, rewritten. Internetportal thus obtained a registration for the domain name reifen.eu. In German, “Reifen” means “tyres”.

The owner of a Benelux trademark registration for the word “reifen” contested the registration of reifen.eu. The dispute reached the Austrian Oberster Gerichtshof, which referred several questions to the Court of Justice for a preliminary ruling concerning the interpretation of the Regulation.

The questions pivoted on three central issues:

1. whether the Swedish registration obtained by Internetportal can be considered a legitimate prior right for the purposes of the European Regulation No 874/2004;
2. whether by deleting the ampersands from the &R&E&I&F&E&N& trademark the .eu registry had correctly interpreted the Regulation’s rules on special characters;
3. whether, according to the Regulation, Internetportal had applied for the .eu domain name in bad faith.

On 10 February 2010 Advocate General Trstenjak (the AG) issued her opinion in Case C-569/08.

Legitimate prior right
According to the owner of the Benelux registration, Internetportal, by applying in Sweden for certain ‘pseudo trade marks’ - which were descriptive in the German language and were not intended for use in commercial transactions - unreasonably and in bad faith had circumvented the intention underlying Regulation No 874/2004, which is to prevent the systematic mass registration of domains and to permit the registration of generic terms only in the general registration phase.
The AG found that the proprietor of a national trade mark has an intellectual property right on trade mark so long as that trade mark has not been cancelled, on grounds of bad faith or on other grounds, by the competent authorities or courts in accordance with the procedures laid down in national law.

Special characters
The AG stated that the deletion or replacement of special characters is a matter of fact, to be judged by national courts. However, she found that by granting the reifen.eu domain name to the owner of a trademark registration for the &R&E&I&F&E&N& word mark, the registry had acted in accordance with the Regulation’s article 11 because a special character is not to be replaced when it does not invest a semantic content.

Bad faith
The AG took the view that for the purpose of determining bad faith within the meaning of the Regulation, national courts must take into account all relevant factors. The AG proceeded to point out that Internetportal had

• registered a trade mark which it did not intend to use, merely to avoid the wait for the phase of general registration of .eu domain names, to the detriment of the other parties interested in the same domain name, and thus contrary to the spirit of Regulation No 874/2004 which intended that the ‘first come, first served’ rule should apply during that period as well
• possibly used the ‘&’ character abusively in order to influence the application of the transcription rules under Article 11 of Regulation No 874/2004
• registered 32 other trademarks (all descriptive in the German language) in the Swedish register, all by the same process, using the ‘&’ character.

While all those steps considered in isolation are formally valid, the process as a whole points to an intention to evade the provisions of Regulation No 874/2004 by means of a trademark which is necessary for the sole purpose of being able to take advantage of the first phase of domain name registration.

Internetportal, according to the AG, obtained an advantage over the other parties interested in the same domain name – which, moreover, is a generic word in German – an advantage which it would not have had if it had acted fairly. It prevented other interested parties from participating in the grant of the domain name in accordance with the ‘first come, first served’ rule.

The AG pointed out that to accept that such conduct is a ‘stroke of genius’ would mean that the race would no longer go to the fastest but to the craftiest – whoever finds the best shortcut – which would be contrary to the very spirit of Regulation No 874/2004.

5 March 2010