FAZ Frankfurter Allgemeine Zeitung
dated 18th of April 2000

Author: Dr. Eberhard Kolonko,

In Germany alone, approximately 100.000 new domain names are registered monthly. The procedure is rapid and easy. The creation of the actual names themselves has also occurred rapidly and without careful consideration. Intensive reflection has seemed not to be necessary since the domain names have been regarded simply as a kind of address or telephone number for a certain computer in the internet.

In the meantime, the meaning of domains has changed. They no longer merely reflect an address, but also a name, trademark and title. They represent an asset. They can be transferred and disposed of on their own and - in accordance with one of the latest court's decisions - distrained upon. They have established themselves as a patent right in the same way as company names and trademarks. With the aid of a domain name, even a younger trademark registered with the German Patent and Trademark Office can be attacked, if its name is identical or easily mistaken. In accordance with this, the proprietor of the domain name "tnet.de", which was registered in 1993, successfully took action against the trademarks "Tnet" and "T-net", which were registered with the German Patent and Trademark Office in 1995. The Higher Regional Court in Munich, (Oberlandesgericht (OLG) München) confirmed in a decision dated 16th of September 1999 (29 U 5973/98) that the proprietor of the domain name possesses a prioritised patent right compared to the registered trademarks.

The same considerations given to the creation of company names or trademarks should therefore apply to the creation of the domain name, whereby however the particularities of the internet have to be taken into account. Above all, the domain name should be clearly identifiable. Domain names simply consisting of generally used descriptions such as "tools.de" or "attorneys.de", do not allocate a particular company or office of lawyers to the name. The identifiable characteristic is missing. Protection against the use of similar or even identical names of competitors is not given. This was also painfully experienced by a popular internet bookseller. In 1998, he renamed his company "buecher.de AG" and used the domain name "buecher.de". When a competitor was assigned and then used the domain name "buecher.com" a few months later, the company "buecher.de" requested the omission of the usage of this domain with reference to the obvious danger of mixing both up.

However, the Higher Regional Court in Munich, (Oberlandesgericht (OLG) München), dismissed the case. In the decision of the court dated 22nd of April 1999, it is pointed out that the domain name "buecher.de" does not possess an identifiable character in respect of the legal aspects of the name, i.e. the name does not represent a function. On the contrary, the name does not go beyond a general product description. But nobody can have a monopoly on the name "buecher", since this is a public name to describe books for this very reason and shall not be possessed by an proprietor.

Since no "name" was consequently present, the domain could not claim protection as that of a name and as a result, no action could be taken against the usage of "buecher.com" by the competitor. The difference between "de" and "com" was explicitly not taken into account, since this top-level domain is imperative and does not indicate the products or services of a company.

The usage of the description of a type of products or services has another legal and internet-specific disadvantage. This was recently experienced by one German agency for private accommodation (Mitwohnzentrale), which uses the domain "Mitwohnzentrale.de". The user who types this name on the internet, does not get directed to a page where various German agencies for private accommodation can be selected, but gets directed to the homepage of the proprietor of this domain name. In a decision which has not yet come into force, dated 13th of July 1999, the Higher Regional Court in Hamburg (OLG Hamburg) interpreted this as an unfair interception of potential customers, who consider search engines as uncomfortable and therefore prefer direct searches by generic names. The court prohibited the further usage of the domain name "Mitwohnzentrale.de".

A slight amendment to or a certain alienation of the universal generic name is often sufficient to ensure that a missing identifiable characteristic no longer applies. An internet company changed the generic name "buecher" to the domain of "buecherde.com". The Higher Regional Court in Munich (OLG München) confirmed that this domain name now possesses the required identifiable characteristic and therefore a function of the name, since this name now represents individual word-coining and is not a generally known generic name (Higher Regional Court in Munich (OLG München) decision dated 23rd of September 1999.

Therefore, the jurisdiction appreciates the courage to create fantasy names as well as artificial word-coining by granting required protection. Names such as "Yello", "Infineon" as well as "Mercedes" are therefore "real" strong names and trademarks benefiting from an extensive level of protection. Products such as "Clinicware" (software for hospitals), "Eu-Lex" (for lawyers and tax advisors) and "Easycover" (for self-adhesive covering foils) were not granted trademark protection, since they only describe the composition or definition of products or services. Here, the creation of an invented word is therefore not sufficient, if it is indeed only of a descriptive nature and does not go "beyond a minimum fantasy level", as stated by the EUROPEAN OFFICE FOR HARMONISATION IN THE INTERNAL MARKET in the decision "Easycover".