'Weltonline.de' does not infringe rights of Die Welt publisher

The German Supreme Court has dismissed a complaint brought by German publishing house Springer - the owner of the newspaper Die Welt and its Internet-based subsidiary Welt Online - against the registrant of the domain name 'weltonline.de' (welt meaning 'world' in English) (Case I ZR 207/01, December 2 2004).

Springer filed a claim for injunctive relief against the registrant - a businessman from Kaarst, Germany who had registered over 4,000 domain names - based on its trademark rights in DIE WELT and WELT ONLINE.

The Supreme Court denied Springer's claim and confirmed an earlier decision on generic domain names ('mitwohnzentrale.de' (Case I ZR 216/99, May 17 2001)). It ruled that registration of a generic domain name, such as 'weltonline.de', is not per se anti-competitive or infringing. It confirmed that the first come first served principle used by '.de' domain registrar DENIC is a fair and legal way of assigning a domain name to an applicant. Making use of this registration principle does not give the earlier application an unfair benefit, even against holders of trademark rights.

However, the court noted two possible sources of infringement in relation to the registration of a generic domain that is similar to a trademark or protected name. First, registration may be infringing if registration hinders the trademark owner from using the mark or related domain name for its online services. This was not an issue in the case at hand since Springer's online services are available at 'welt.de'.

The use of a generic domain name may also be infringing if it creates the misleading impression that the service available under the disputed domain name is the only one of its kind, as discussed in the 'mitwohnzentrale.de' Case. Again, this issue was not relevant to the 'weltonline.de' Case.

The decision overruled the findings of the Regional Court of Frankfurt and the Regional Appeal Court (Case 6 U 72/00 OLG Frankfurt/M, October 5 2001). Both courts had upheld Springer's claim, reasoning that 'weltonline.de' had been registered not to be used in good faith by the registrant himself but for the purpose of selling it to third parties. The courts concluded that the registrant was hoping to capitalize on potential buyers' interest in acquiring a domain name similar to a well-known trademark and that this intention was infringing. However, the Supreme Court held that the intention behind a registration is irrelevant unless the act of registration itself can be seen as infringing.

Julia Meuser, Freshfields Bruckhaus Deringer, Hamburg