Parties with identical name fight over website

Germany

In a domain name dispute between parties with the same name, the Federal Supreme Court has held that the risk of confusing the parties could be avoided if one party adds his first name to his second-level domain and if both parties make a clarifying statement on their homepage. Also, it would help if each party provides a hyperlink to the other name owner's website.

The facts in this case were a bit complicated. Two law firms with the same name each wanted use of the same domain names. The defendant originally worked for the plaintiff's firm, and since 1986 the plaintiff used the defendant's last name as the firm name - Vossius & Partner. In 1989 a partnership agreement was signed permitting the plaintiff to use the defendant's name even after the defendant had left the firm. The defendant later joined his son and daughter's firm and registered the domain names 'vossius.de' and 'vossius.com'. The plaintiff argued that this violated his rights to the domain names.

The court held that the plaintiff's use of the defendant's name is legal, as per the partnership agreement, and therefore the plaintiff has rights in the domain names. However, the court also held that the defendant has the right to use 'Vossius' as it is his surname. Since both parties have the right to use 'Vossius' in domain names, the court refused to require the defendant to forfeit the names to the plaintiff, as the defendant was the first to register them.

Instead, the court held that the defendant could prevent the risk of confusion with the plaintiff's business by including his first name as part of his registered domain names and by making a clarifying statement on the homepage of his sites that his firm is not affiliated with the plaintiff's. Additionally, hyperlinks might be used to connect the parties' websites so that internet users can easily find the firm they desire to contact.

Horst Daniel, Faegre Benson Brendel, Frankfurt

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