Unknown company with famous mark loses cybersquatting dispute

Germany

In Gesellschaft für Nuklear-Service GmbH v Firma Gruppe Domain 'castor.de' Aldebaran Daten und Kommunikationssysteme GmbH (11 O 96/02), the Regional Court of Essen has ruled that the non-commercial use of the domain name 'castor.de' by a group of anti-nuclear energy activists does not infringe the trademark rights of Gesellschaft für Nuklear-Service (GNS).

GNS is a nuclear waste removal company which has owned the trademark CASTOR (an acronym for Cask for Storage and Transport of Radioactive Materials) in relation to containers for radioactive substances since 1991. GNS argued that Firma Gruppe's registration and use of the domain name 'castor.de' for a website dedicated to the distribution of news on the transportation of radioactive substances infringed its famous mark. It therefore brought a claim for the transfer of the domain name.

Firma Gruppe argued that it decided to use the acronym CASTOR as part of its domain name because that term has become synonymous in Germany with the debate surrounding the transportation of radioactive substances. Its intent was not to damage the reputation of the CASTOR mark or the owner of that mark.

The court dismissed GNS's claim on two grounds. First, generally under German law only the commercial use of a mark can infringe trademark rights. As Firma Gruppe uses the domain name exclusively for non-commercial purposes, there is no infringement because confusion is unlikely. Second, in the exceptional case where German law protects the rights of the owner of a famous trademark where the mark is being used non-commercially, the mark must be used in a manner likely to affect the business interests of the owner. In the case at hand, the court held that GNS itself is almost unknown in Germany. Hence, use of the CASTOR mark is not likely to damage GNS's reputation.

The court's final argument is weak. It is often the case that the public is unaware of the company that owns a famous brand. The trademark NIVEA, for example, is famous throughout the world, but few people know that the owner is Beiersdorf AG. If the public were to stop buying Nivea products, Beiersdorf would be damaged despite the fact that no one knows its name.

Stefan Völker and Matthias Sonntag, Gleiss Lutz, Stuttgart

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