Introduction

Established over 25 years ago as an experiment for the American Department of Defense, the Internet has become a world-wide communication system serving governments, schools and businesses. Although one step behind the US when it comes to E-Commerce, Germany is one of the biggest and most important markets on the Internet.

To send mail or visit a Web page, one has to know the address where they want to go. The Internet address consists of two components: an actual address consisting of numbers such as 192.200.298.148 and a domain name such as ITU.INT or HARVARD.EDU. The purpose of the domain name was and is simply to provide an easier method for remembering another’s electronic address. However, since these domain names are unique, three basic problems have arisen as a result of the domain name usage and process of registration in Germany.

Initially, "pirates", the so called "cyber squatters" or "domain name grabbers" as they are called in Germany, intentionally registered famous trademarks as domain names. This resulted in large corporations not being able to register their most valuable trademarks as their domain name. Most of these instances have resulted in little or modest financial gain or have been solved by the courts in favor of the trademark owner. A second problem has arisen wherein two parties want to use the same domain name but both parties may not have the appropriate trademarks. Finally, the third problem consists of situations wherein two parties have domain names very similar or for example a company and a natural person with the same name require the same domain name. Does for example a family called Ford have a chance to register the domain "ford.de" against the famous car manufacturer? This article is about the handling of the last two kinds of domain name disputes in Germany.

German Courts and domain name disputes

For the most part, the decisions granted by German courts are interlocutory injunctions, which means the verdicts are often rendered without testimony of the present domain holder. The number of cases in which the court did not grant an interlocutory injunction is not known. In most cases, not even the potential opponent of the injunction learns of the unsuccessful attempt to take his domain name. Often the request for an interlocutory injunction is withdrawn if the court realizes the petitioner lacks a reason for granting the injunction.

Should an interlocutory injunction actually be granted, it is merely a preliminary verdict. Many German courts seem to expect that the present domain holder – believing himself to be "innocent" – will make use of his right to appeal against the injunction, which is granted without an oral hearing. This, however, is not often the case, as the interlocutory injunction rarely financially damages the present domain holder because court fees are low. The loss of the domain is generally withstandable if compared to the costs of an entire lawsuit. The result of this approach is that the courts - without an oral hearing on the opponent’s behalf and without justification by the court - quickly grant interlocutory injunctions. Because the defendant, due to financial risks, chooses not to appeal – which is in the interest of the appellant and the judge -, the interlocutory injunction is not verified by legal proceeding.

Brand Names and Trademarks Stronger than Domain Names?

Previously, the courts in Germany tended to render their decisions in favor of the proprietor of the brand name and trademark without consideration of the contents of the website, which was filed under the domain name. This procedure dictated that the judges did not have to consider the contents of the actual websites – and therefore did not have to have knowledge about the Internet. The catch is, this procedure is hardly covenant with the regulation of German Brand Name and Trademark Law. German Brand Name Law states that there has to be an immanent danger of actual name confusion between the two opponents. Additionally, German Trademark Law requires the (at least intended) usage of the domain name in business trade.

Currently, German courts tend to focus on the concrete usage of the domain name by its holder. Therefore, if the usage does not involve the trademark-protected products, there is no violation of Trademark Laws. If the holder of the domain "freundin.de" (girlfriend) offers a professional contact agency under this domain, he does, at least in the opinion of the Regional Court (LG) of Munich, not violate the interest of the publisher of the German magazine "Freundin", a fashion magazine for women. However, as the case went in front of the court of appeal (OLG) in Munich, the court ruled in favor of the magazine, as "Freundin" obtained a trademark-registration in the class of Internet-usage (German registration-class no. 42).

Generally, German Courts now concentrate on the question of whether or not there is an existing likelihood of trademark confusion concerning the contents of the website.

Exception: Well-known Trademarks

The Regional Court (LG) of Hamburg and some other German courts have a different view on the subject as stated in a couple of decisions involving magazines. In cases of unfamiliar magazines such as "Bike", the domain holder may consider himself to be lucky and to keep his domain. However, in cases of well-known magazine titles such as "Eltern" (parents) or "Freundin" (girlfriend), the publishers of the magazines have a greater advantage than a domain name holder of the same name.

In a domain dispute involving an illustrious trademark, the Regional Court (LG) of Bochum and – following the decision – the Regional Court of Appeals (OLG) of Hamm showed no mercy for the original domain holder. Not even a domain holder with the family name "Krupp" was entitled to protect his domain (krupp.de) from the well-known German steel tube manufacturer of the same name. Not surprisingly, a provider who wanted to portray the German "Hellweg" Region under the domain name "hellweg.de" did not receive a ruling in his favor by the Regional Court (LG) Bochum in a dispute with the home hardware chain "Hellweg".

On the other hand in the case of "detag.de", the Regional Court (LG) of Bonn acknowledged in autumn of 1997 a reasonable interest in the possession of a domain as acceptable grounds for a verdict. The German company "Detag" demanded the domain "detag.de", which is owned by the former telecommunication monopolist "Deutsche Telekom AG" (which normally uses the abbreviation "DTAG"). Detag lost in court. It is possible, that the court ruled in favor of the "Deutsche Telekom AG", as it didn’t want to be responsible for giving the major and important company a bad reputation as a "cyber squatter".

Competition Based Law instead of Trademark Law

As the German Trademark and Brand Name Law is not able to offer any concrete solutions in the cases of those domains which are only reserved but do not as yet have any website contents, more and more German courts base their verdicts on aspects of Competition Law.

In the very personal opinion of some Competition Law judges who are not too familiar with the Internet, the hoarding of Internet addresses and any plans to sell those domains are per se reprehensible. Those who still plan to finance their web-presence by online-advertising have little chances of a German Court ruling in their favor. The courts also tend to dislike those who fall for lucrative offers by generally unknown providers who offer a substantial amount of money for the delegation of their domain. Generally if the owner of a domain is planing to sell it, he hardly has a change of keeping his domain in front of a German court when it comes to a domain name dispute.

In the cases of domains like "epson.de", "toyota.de" or "arbeitsamt.de" (Governmental German Labor Exchange Office), it is understandable that these firms have an interest in withholding the domain. These Internet addresses obviously correspond with original company names and any alternative user would therefore have to be considered a "cyber squatter" as he would merely block the domain without reasonable demand.

There is however, a difference in such cases concerning domain names as "bahnhof.de" (trainstation) or "emergency.de", as these Internet addresses are not automatically associated with known companies or organizations. Despite this important difference, the Regional Courts (LG) of Cologne and Hamburg have at least passed interlocutory injunctions in the above two cases. Concerning the case of "bahnhof.de", the "Deutsche Bahn AG" (German Monopolist Railway Company) focused on the issue that the domain had been registered for many weeks prior to contents being offered on the web. Even worse for the original domain holder was the fact that he also agreed to a sales offer for his domain.

In the case of "emergency.de", the German "Topware AG" referred to a legal name protection for software published by them, despite the fact that it is hardly understandable what the software game "Emergency" has in common with a website offering information on emergency medicine. Should the public usage of terms like "trainstation" and "emergency" now generally be regulated? Meanwhile, in June of 1998, the Regional Court of Hamburg (LG) said no: The word "emergency" is not automatically associated with the software game of the same name. Therefore there can be no legal protection against a website offering information on emergency medicine because there is no collision of business interests.

However, the "Topware AG" has succeeded in obtaining numerous domain names, referring to their telephone-directory-software "D-Info" ("D" stands for Deutschland – Germany) and other protected trademarks. The "Topware AG" now legally proceeds against more than 60 holders of those domains that start with the letter "D", varying from "D-Hotel" to "D-Werk" (work) or "D-Radio". In most of the cases the "Topware AG" filed an injunction to prevent the holders of the "D"-domains from further usage. The authors are now still worried about their car registration plates, which also start with a "D" for their hometown Duesseldorf and also about the German currency, the "D-Mark".

The discussion about the "D-domains" is still going on in Germany. In July 1998 the "Topware AG" lost a case by decision of the Regional Court (LG) of Berlin. The judges’ main argument was that the letter "D" does not refer automatically to "Topware" -products but to the abbreviation used for Germany in general. In the opinion of the Berlin Court, the various and massive legal motions of the "Topware AG" could even be considered as an abuse of law. However, the final decisions on those cases is still to come from the Regional Court of Appeal (OLG) Cologne and other German courts.

Conclusions

Working in the field of Cyberlaw all over the world, one basically has one opponent – untrained and ignorant judges. This results in a couple of strange court decisions as mentioned above. As known, in May 1998 a court in Munich sentenced the former CEO of CompuServe Europe to two years on probation for sexual materials offered in newsgroups in 1995. However, there still is no technical way of controlling the contents of newsgroups – and there was of course none in 1995.