'BigBen.de' registrant saved by the bell


The Regional Court of Düsseldorf has issued a decision (38 O 144/02) refusing to order the transfer of the domain name 'BigBen.de' to a company that (i) uses the term 'Big Ben' as a shortened version of its company name, and (ii) owns a German trademark registration for BIG BEN. The court held that the defendant had registered the domain name in good faith prior to the incorporation of the plaintiff company.

The plaintiff, a subsidiary of BigBen Interactive SA, was formed in France on April 1 2000. It sells computer games and accessories, and registered the mark BIG BEN in Germany in early 2000. The defendant is involved in e-commerce and internet-related communication services. It registered 'BigBen.de' on April 21 1998 and leased it to a third party until 2000. Since that time, the defendant has been using the domain name to host a website featuring a guide to the famous London landmark commonly known as Big Ben, as well as travel and flight information.

The plaintiff brought an action requesting the transfer of 'BigBen.de' arguing that since it owns a BIG BEN trademark and similar protected company name, it has a stronger right to the domain name. It also claimed that the defendant had failed to use the domain name immediately after registration and had now lost its right to use it.

The court disagreed and refused to order the transfer. It held that a domain name registration cannot infringe another party's company name if the domain name is registered prior to the company's incorporation date. The court further stated that in such circumstances, the fact that the defendant had not used the domain name immediately after registration was not evidence of infringement. Moreover, the court found that there was little likelihood of confusion because the goods and services offered by the parties involved differ sufficiently.

There were no unfair competition issues, said the court, because the majority of internet users would ordinarily expect the domain name 'BigBen.de' to include information on the famous London landmark and not the plaintiff's company. In addition, the defendant had registered the domain name in good faith and had not attempted to sell it or act in a way that caused harm to the plaintiff's business.

Fabian Seip and Florian Schwab, Boehmert & Boehmert, Munich

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