Sound of domain name infringes T-MOBILE mark

The Hamburg Court of Appeals has issued an injunction restraining the registrant of 'be-mobile.de' from using that domain name (Case 3 w 81/03). The court held that the registration infringed the complainant's rights as (i) it sounded very similar to the complainant's T-MOBILE mark and 't-mobile.de' domain name used for telecommunications services, and (ii) the website it hosted featured advertisements for the same type of services.

The complainant telecommunications service provider petitioned the Hamburg Regional Court for a preliminary injunction to restrain the registrant's use of 'be-mobile.de'. At first instance, the court refused to grant the injunction. It held that although phonetically similar to the complainant's mark, the written form of the domain name differed sufficiently to avoid the likelihood of confusion.

On appeal, the Hamburg Court of Appeals reversed the decision and ordered the requested injunction. It stated that, when assessing whether the domain name was confusingly similar to the complainant's mark, it had to take the vocal sound of the domain name into consideration. The appellate court reasoned that it is not unusual for potential customers, who have seen a website or an advertisement featuring a website address, to orally communicate the details of the domain name to other parties. Thus, as the 'be-mobile.de' domain name sounded very similar to the T-MOBILE mark and both the complainant and registrant were offering telecommunications services there was a significant risk of confusion.

Peter Munzinger, Bardehle Pagenberg Dost Altenburg Geissler, Munich