Domain Name Law

Author:Bardehle Pagenberg
Profession:Bardehle Pagenberg
 
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Nowadays, the domain name is far more than a web address. It usually is an important part of the trademark and communication strategy and entire business concepts along with "brands" are created around the domain name or together with it. Domain names indeed are not equal to the classical intellectual property right. Anyone thinking about a new company or product designation nowadays will always check whether the registration of a corresponding domain is possible.

In this context, the right of domain names plays an essential role. On the one hand, it is the interface between (modern) marketing measures, IT and the protection as well as enforcement of trademarks and other signs; on the other hand, aspects under competition law are also of great importance. It is par-ticularly essential here to establish strategic and legal possibilities to expand a stable, sustainable and efficient portfolio of domains.

With the help of the right of domains it is possible to ensure that domains containing trademarks and signs cannot be registered and/or used by third parties for unfair or abusive purposes.

  1. Legal status of a domain name

    Disputes over the legal status of domain names have gone as far as the Federal Constitutional Court in Germany (German Federal Constitutional Court, decision of November 24, 2004 - 1 BvR 1306/02 - ad acta.de) and as far as the European Court of Human Rights in Europe (ECHR, judgment of September 18, 2007 - 25379/04, 21688/05, 21722/05, 21770/05). According to this, domain names as such are not yet recognised as intellectual property rights. However, according to the case law of the German Federal Court of Justice, domain names fall under the protection of property. Protection of a domain name excludes others from using the same domain name and forms part of the proprietor's assets. Therefore, domain names are also alienable and can be seized. However, merely registering a domain name does not establish any right to use a name or a sign, although the use thereof may establish such a right. The domain name does not just function as an address - it can also perform the function of identification, i.e. of individualizing the proprietor or the goods and services offered under the domain name and distinguish them from others. Using the domain name may therefore create a right to use a name or sign.

  2. Registration of a domain name

    The registration is made by mere conclusion of a contract with a corresponding provider of domain names. These providers, also referred to as "registrars", are authorised by the respective central registry (in Germany DENIC, for example) to register domain names on behalf of their customers. It usually is not possible to register domains with the central registry by oneself; this rather happens via the registrar as agent. An according fee is to be paid to the registrar, which varies significantly depending on the registrar or the domain ending (so-called "top-level domains", see below in this respect).

    With a few exceptions, the principle "first come, first served" applies for the registration. This means that basically anyone can register a domain name that has not already been assigned to a third party before. Therefore, it usually is not necessary to provide proof of any kind of authorisation to use this domain name. When the application of the domain name is filed, it is not examined whether rights of third parties possibly are conflicting here. Therefore, basically anyone can apply for domain names that are formed out of a trademark or include it.

    Nevertheless, the registration (at least the registration of a .de domain) has to fulfill specific formal requirements. For foreign proprietors of a domain, for example, it is necessary to specify a contact person residing in Germany (the so-called "Admin C"), who is authorised to receive correspondence relating to the domain name. If the formal requirements are not fulfilled, e.g. providing incorrect address data, the domain may be deleted - also upon request of a third party.

  3. Top-level domains

    A domain name basically consists of two elements, the so-called top-level...

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