Action for negative declaratory judgment rejected in domain name dispute

Germany
The Berlin District Court has rejected an action for a negative declaratory judgment brought by the holder of a ‘.com’ domain name against the defendant, who had obtained a favourable decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) (Case 16 O 54/09, February 8 2011).
 
The defendant is the owner of numerous trademarks registered in Latin America which are similar or identical to the disputed ‘.com’ domain name. The domain name was originally registered in 1996 and was transferred to the plaintiff in June 2008. In November 2008 the defendant submitted a complaint to the WIPO Arbitration and Mediation Centre under the UDRP. WIPO ordered that the domain name be transferred to the defendant, holding that the plaintiff had acquired it in bad faith and had no legitimate interest in it.
 
The plaintiff filed an action before the Berlin District Court, seeking a declaration that the defendant was not entitled to claim the transfer of the domain name. As an auxiliary request, the plaintiff asked that the court declare that the registration and use of the domain name was not “contrary to the applicable German law”.
 
With respect to the plaintiff’s main request, the court noted that German case law does not provide for the transfer of domain names, but only for the relinquishment of ownership in the domain names for the benefit of third parties (see ‘shell.de’ case, Federal Supreme Court). In the case at hand, however, the court held that, even if a claim for transfer existed under German case law, this was not relevant to the issue of whether a claim for transfer existed under the UDRP.
 
The plaintiff, as a user of the ‘.com’ domain name system, accepted the UDRP as a private legal regime with binding rules. This legal regime provides that, in case of a dispute involving a domain name, WIPO may order the transfer of the domain name to the authorised person. Taking the foregoing into account, the court rejected the plaintiff’s main request as being inadmissible for lack of legal interest.
 
The plaintiff’s auxiliary request was construed by the court as a request to determine whether the decision rendered by WIPO was in breach of German law, because the issue of the use of the domain name could not be considered separately from WIPO’s decision. Because the plaintiff had recognised the UDRP as a binding contract, the court found that the plaintiff also had to accept WIPO’s decision, unless it was contrary to “cogent German law”. According to the court, this was not the case here. The plaintiff’s auxiliary request was considered to be admissible, but without merits. The decision of the district court is not final.
 
This decision is particularly interesting in that it provides further guidance as to the relationship between the UDRP and German law. Paragraph 4(k) of the UDRP provides that the UDRP should not prevent parties from submitting a dispute to a national court. The Berlin District Court had found in an earlier case that seeking a declaration that the defendant was not entitled to claim the transfer of a domain name under German law in order to overturn a decision rendered under the UDRP was an abuse of rights, and rejected the complaint as being without merits (‘essque.com’, Case 15 O 79/09, March 2 2010). In the case at hand, the court used similar arguments, but rejected the action as being inadmissible for lack of legal interest. Both decisions accept that the UDRP binds users of the ‘.com’ domain name system to a global contract for dispute resolution. A decision rendered under the UDRP can be overturned only if it is contrary to cogent national law. The mere fact that German law does not provide for the transfer of domain name is irrelevant.
 
Bardehle Pagenberg acted for the defendant in this case.
 
Anna Sophie Steinmeister, Peter Munzinger and Pascal Böhner, Bardehle Pagenberg, Munich

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