Germany kicks cybersquatter out of 'FederalRepublicOfGermany.biz'
In Bundesrepublik Deutschland (Federal Republic of Germany) v RJG Engineering Inc, a World Intellectual Property Organization (WIPO) panellist has ordered the transfer of 'FederalRepublicOfGermany.biz' to the complainant. The panellist held that although the trademark FEDERAL REPUBLIC OF GERMANY was unregistered, the complainant had rights in that mark, which had been infringed as a result of the registration.
The disputed domain name was registered by a company called RJG Engineering Inc, which is based in the United States. An individual named Gary Lauck was indicated as administrative, billing and technical contact. Lauck was using the domain name to host a website containing Nazi propaganda material. The Federal Republic of Germany (FRG), represented by the Press and Information Office of the Federal Government, filed a complaint with WIPO under the Uniform Domain Name Dispute Resolution Policy (UDRP).
The FRG had already succeeded in several arbitration proceedings against Lauck (Federal Republic of Germany v RJG Engineering Inc, WIPO Cases D2001-1401, D2002-0110 and D2002-0599). In each of those cases, Gauck had used official names of German public authorities (such as Ministry of the Interior) as components of domain names that redirected internet users to his own website containing Nazi propaganda material. Consequently, the WIPO panellist in the case at hand, Henry Olsson, held that this suggested that Lauck (i) did not have any legitimate interest in the domain name, and (ii) had registered and used it in bad faith pursuant to Paragraph 4(b)(iv) of the UDRP. This satisfied two of the three requirements for transfer under the UDRP.
The key remaining requirement was whether the German state has rights in the mark FEDERAL REPUBLIC OF GERMANY. The mark is not registered. However, it is established that a trademark does not need to be registered in order for the UDRP to apply, as long as the unregistered sign enjoys protection under trademark law. To determine if this was the case, Olsson applied German trademark law.
According to Section 4(2) of the German Trademark Act, trademark protection shall accrue to an unregistered mark through its use in the course of trade, provided that it has acquired a secondary meaning as a trademark within the relevant trade circles. Although the term 'Federal Republic of Germany' is well known in the FRG and also in most parts of the world as the English equivalent of the official German name of the FRG, it is arguable whether this term has acquired a secondary meaning as a trademark.
The German courts have ruled that the registration and use of domain names such as 'deutschland.de' or 'verteidigungsministerium.de' (Ministry of Defence) infringe the right and title in a name (as opposed to a trademark) belonging to the FRG. However, it should be taken into consideration that every state, including the FRG, renders under its name certain services (eg, public information) related to its governmental activities. Olsson therefore found that such services are sufficient to indicate that the mark FEDERAL REPUBLIC OF GERMANY had been used in trade and so has acquired a secondary meaning as a service mark. Accordingly, he ordered the transfer of the domain name to the FRG.
Matthias Sonntag, Gleiss Lutz, Stuttgart
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