Someone else’s trademark in a domain name?
Internet domain names should be registered in a way that respects prior rights.
The possibility of registering European domain names has existed since December 2005. The idea behind the top-level .eu domain created by the European Union was to allow users to stress their European identity and their respect for European values.
The rules for functioning of the .eu domain are governed by a regulation of the European Commission which, interestingly, is the only act within the system of Community law (Polish law as well) that sets forth comprehensive rules for registering and maintaining Internet domain names. Domains are registered at an institution established specifically for this purpose, the European Registry of Internet Domain Names (EURid).
EU domains are registered according to the principle of “first come, first served,” as with domestic domains. The regulation provides for certain restrictions, however. It is impermissible, for example, to maintain a domain name that is identical or confusingly similar to a national or Community trademark, if the domain name was registered unlawfully or without a legitimate interest, or if it was registered or is being used in bad faith.
Under the regulation, bad faith may include, among other things, registering or acquiring a domain for the purpose of:
- selling, renting or otherwise transferring the domain name to the authorised holder of a trademark;
- blocking registration of a domain name by an authorised holder; or
- disrupting the professional activities of a competitor.
In a judgment issued on 3 July 2010 in Internetportal und Marketing GmbH v Schlicht (Case C-569/08), the European Court of Justice interpreted the grounds for bad faith and held that bad faith should not be assessed solely in light of the circumstances indicated in the regulation. In the court’s view, consideration should be given to all of the relevant factors specific to the particular case. This means that the list of circumstances demonstrating bad faith in registration of a domain name is broad. This ruling will significantly strengthen the position of trademark holders and help them fight against dishonest actions by third parties who register domain names using trademarks belonging to others. The interpretation by the ECJ should be applied in disputes concerning Polish domestic domains pending before the Internet Domains Arbitration Court at the Polish Chamber of Information Technology and Telecommunications.
In short, anyone may register any .eu domain name so long as it does not infringe on the rights of third parties. Persons whose rights have been infringed by registration of a domain name have recourse as provided under EU law to oppose or annul the registration.