City of Heidelberg loses domain name fight

The city council of the German city Heidelberg has lost its claim to recover the domain name 'heidelberg.net' because it failed to show any trademark rights in the city's name.

The domain name was registered in 1996 by an individual, Peter Gutbrod. In the Regional Court of Mannheim, the city council obtained a court order against Gutbrod, prohibiting his continued use of the name. However, to recover the name, the city council took its complaint to the World Intellectual Property Organization (WIPO).

The council argued that the name 'Heidelberg' is "legally protected and entitled to certain statutory entitlements under German law", but failed to elaborate on the nature of the name's statutory entitlements. It also argued that "Heidelberg is internationally known and has long-standing and settled legitimate interests in its own name." Again, it failed to elaborate.

The WIPO panelist ruled that the city council had failed to show the requisite trademark rights in the name, based on the Uniform Domain Name Dispute Resolution Policy which requires that:

• the domain name is identical or confusingly similar to a trade or service mark in which it has rights;
  
  
• the registrant has no rights or legitimate interests in the domain name; and
  
  
• the name has been registered and is being used in bad faith.

For discussion of a different outcome in a similar case, see City of Barcelona wins 'barcelona.com' in US federal court.

Jon Fell, Masons, London