Domain name rules clarified
The uncertainties in the jurisprudence about the possibility to cancel domain names formed by using the names of others has now been clarified. In two decisions regarding domain names for websites criticizing the activity of the names' owners the Austrian Supreme Court made new clear rulings.
First of all, the already established rule was confirmed that the use of a not well-known trade mark for a domain name does not confer a claim for cancellation of the domain name to the trade mark owner but only a claim to forbid its use for websites displaying similar goods or services.
In the decision "Aquapol" the plaintiff's firm's name was Aquapol and it had a domain name "aquapol.at", both establishing a right in that name. The firm also had a Community Trade Mark "Aquapol". The defendant run a website "aquapol-unzufriedene.at" (aquapol-dissatisfied.at), displaying entrances of customers discussing the products of the firm Aquapol.
The claims on the basis of the CTM were to be disregarded since that domain name for such a website was clearly no use of the word aquapol as a trade mark for such services. The right on the name was also not infringed since such a domain is clearly understood by the users as not being the name of the company or leading to a website of it, and therefore this is not a misleading use of the name. The use of the name of the firm Aquapol is only a means to indicate that a person different from it gives independent information about it. Therefore, "criticizing" domains are allowed when the name is only an indication of the content and the users can see that directly, e.g. when the second level domain contains distinctive additions to that effect.
In the next decision "Justizwache" (Justizwache is the official designation of a body guarding prisoners similar to the police force), the Supreme Court conceded that the rights to this name appertains to the Republic. The defendant was an officer of that police body who used the website "justizwache.at" to criticize the Austrian penal system. Such a member of that body has no own rights in the name of that body. By using that name, he infringed the rights in it since he infringed the protectable interests of its legitimate owner. Users would think that this is the original or an authorized site of the "Justizwache". Therefore, the content of the website was held as irrelevant although it contained an indication that it was not the official website. The court said in the reasoning that he should have chosen a second level domain with clear additions like "justizwache-kritisch.at". This would be allowable - see above decision "Aquapol".
After many ups and downs to find the right system, we have now a clear guidance when a domain name infringes a right to a name and when it is allowable.
To summarize, a domain name can be cancelled
- because of bad faith
- because of unauthorized use of a famous mark
- because of unauthorized use of another's name.
The latter claim is not possible if it is also the domain owner's name or he has other legitimate reasons to use it (e.g. it is a usual descriptive expression) or if he does use distinctive additions which hinder users to think it is for a website of the true name owner.
The transfer of a domain name cannot be claimed since there is no basis for it in the law.
Dipl.-Ing. Helmut Sonn