SEXQUISIT mark owner fails to get its hands on 'sexquisit.de'

The Regional Court of Munich has refused to order the transfer of 'sexquisit.de', even though the registrant had held it for a period of four years without placing any substantive content on the site.

The defendant domain name holder registered 'sexquisit.de' on October 6 1999. He did not use the website until February 2004, when he started operating a private chat forum for the discussion of adult entertainment. The plaintiff owns a German trademark registration for SEXQUISIT in relation to adult-oriented products and films. It filed an action against the defendant requesting the cancellation or transfer of 'sexquisit.de'.

The court dismissed the claim. It first stated that neither the passive holding of a domain name nor its use to host a private chat forum constitute use in commerce. Among other things, this meant that the plaintiff's claims under trademark law were destined to failure.

Next, following an analysis of the provisions in Paragraph 12 of the German Civil Code, which protect names and similar rights against unfair use, it noted that the defendant was justified in holding and using the domain name because he had registered it before the plaintiff had registered its trademark. Thus, the defendant had prior rights in the SEXQUISIT mark and the plaintiff could not use its later registration to gain possession of the disputed domain name from the defendant.

The court also denied any claims based on unfair competition. The defendant could not have had the intention of blocking the plaintiff from using the domain name when he registered it in 1999 because neither the plaintiff's trademark nor its business name existed at that time. The situation might have been different if the defendant was using 'sexquisit.de' in commerce. However, there was no evidence to suggest that this was the case or that the defendant had tried to extract money from the plaintiff.

Accordingly, the court refused to order the transfer or cancellation of the disputed domain name. It remains to be seen whether the defendant uses this judgment as a basis for seeking the cancellation of the plaintiff's SEXQUISIT mark.

Carsten Albrecht, Lovells, Hamburg