Media company wins battle for ''


The Austrian Supreme Court has ordered the transfer of '' to media company RTL Group (Case 4 Ob 42/03 k). The court rejected the defendant's argument that he had a right to register the domain name because the letters 'R', 'T' and 'L' refer to the initials of his personal name, stating that the media company's name and trademarks require a higher level of protection.

RTL brought an action against the defendant, an individual, following his registration of ''. RTL argued that its RTL business name and trademark are very well known in Austria and require a high level of protection. The defendant contended that he had a right to register and use the domain name because the letters 'R', 'T' and 'L' refer to the initials of his personal name. He also argued that there was no likelihood of confusion as he was not using the domain name.

The Supreme Court rejected the defendant's argument holding that since the RTL name and mark have a high profile in Austria (and throughout Europe), they require an increased level of protection. RTL's interest in preventing third parties from using its name and mark for unconnected services, said the court, outweighs the interests of those third parties. The court stated that it was not unreasonable for the defendant to register and use a domain name based on his full name rather than a pseudonym made up of his initials.

In addition, the court noted that there is no need to examine the content of a website hosted at a domain name for evidence of confusion because a registration is unlawful if it blocks or adversely affects the owner of a mark or business name. Therefore, it did not matter that the defendant was not using the domain name. This lends support to the suggestion that the Supreme Court is changing its policy on this issue. In previous cases, it has examined the content of websites to assess whether there was a likelihood of confusion. It now seems that the court is giving its backing to academic opinion that has advocated that, in certain circumstances, the act of registration alone is capable of causing infringement.

Reinhard Schanda and Stephan Strnad, Sattler & Schanda Rechtsanwälte, Vienna

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