Maxem name rights outweigh rights in identical alias

Germany

In a dispute over the registration of 'maxem.de' between an individual named Werner Maxem and another individual using the name Maxem as an alias, the German Federal Court has ruled (I ZR 296/00) that rights in a surname outweigh rights in an alias where the individual using the alias is not known under that name in the commercial market.

The plaintiff, an attorney by the name of Werner Maxem, wanted to set up a website for his law firm under the domain name 'maxem.de'. However, the defendant - an individual who has used the alias Maxem on the Internet since 1990 - had already registered the domain name to host a private home page and was also using the name Maxem in his email address. The plaintiff filed a complaint against the defendant arguing that his registration and use of 'maxem.de' infringed the plaintiff's rights in his surname. In response, the defendant contended that he is entitled to use the domain name as a result of rights built up in his pseudonym.

A regional court and the Court of Appeal for Cologne dismissed the plaintiff's claims reasoning that the defendant had acquired rights in the name Maxem. In addition, both courts held that the defendant's use of his alias did not cause any likelihood of confusion with the plaintiff's use of his surname. The plaintiff appealed.

The Federal Court reversed the lower courts' rulings and ordered the transfer of 'maxem.de' to the plaintiff. It held that rights in a surname outweigh rights in an alias where, as here, the individual using the alias is not known under that name in the commercial market. The defendant's registration infringed the plaintiff's rights, said the court, because it prevented the plaintiff from using his name as a domain name. However, the court noted that not all uses of the alias Maxem are infringing. It stated that the use of the pseudonym as a component of the defendant's private email address does not violate the plaintiff's rights.

Matthias Sonntag, Gleiss Lutz, Stuttgart

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