WIPO panellist says ministry name is a trademark

International

The German government has convinced a panellist of the World Intellectual Property Organization (WIPO) that it has trademark rights in the German translation of 'Federal Ministry of the Interior' (Bundesinnenministerium), and consequently has won the transfer of a domain name from a US company that had been using it for a pro-Nazi website. The US company had registered 'bundesinnenministerium.com', whereas the German ministry uses 'bundesinnenministerium.de'.

Henry Olsson concluded that the German government has met its burden of proof under the Uniform Domain Name Dispute Resolution Policy. He reasoned that the disputed domain name was being used in bad faith because the name redirected traffic to the US-based site which was filled with Nazi imagery and pro-Nazi statements. Such a site would be illegal in Germany, but is legal under US law. Olsson also reasoned that the owner of the domain name had no right or legitimate interest in it, and was using it to deceive the public.

Perhaps the most controversial aspect of Olsson's ruling was his finding that the German government has trademark rights in 'Federal Ministry of the Interior' when written in German. He regarded the suffix (in this case '.com') as irrelevant. Olsson noted that 'bundesinnenministerium' is not registered as a trademark, but could be protected if the ministry's "issuing and dissemination of publications and other public information" is sufficient to constitute use of the name "in the course of trade". Olsson wrote that "these activities are a form of trade directed towards the German people". Accordingly, he reasoned that the name is protected as a trademark and ordered its transfer.

Jon Fell, Masons, London

Get unlimited access to all WTR content