Freshfields Bruckhaus Deringer
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(Local Court of Berlin, November 20, 1996 - 97 O 193/96; Court of Appeal of Berlin, March 25, 1997 - 5 U 659/97)
For the first time, German courts have not only granted protection against an illicit use of domain names registered under the German top level domain ".de", but have also prohibited the use of an American URL under the top level domain ".com" in Germany.
The plaintiff, a German company called "Concert Concept", brought a preliminary injunction claim against an American provider of internet Web Sites who had reserved the domain names "concert-concept.com" and "concert-concept.de" in his name. The domain name "concert-concept.com" was registered with the American INTERNIC, whereas the German "concert-concept.de" had been reserved at the German correspondent to the INTERNIC, the DE-NIC.. The plaintiff sought to prohibit the defendant's use of both the German and the American domain name on the basis of his right to bear a corporate name under German law. Both courts, the Local Court of Berlin as well as the Court of Appeal, found for the plaintiff.
As far as the German domain name "concert-concept.de" is concerned, both courts followed the rulings of earlier court decisions according to which the use of a third party's corporate name as URL constitutes a violation of such party's right to bear a name under Section 12 of the German Civil Code.
The more interesting part of the case is, however, that the courts extended their verdict also to the use of the American ".com" domain name. Both courts were of the opinion that they not only had jurisdiction over the use of the American URL in Germany, but that the use of the American URL in Germany was also governed by German law. The courts based their decision on the fact that both URLs, the German and the American, were equally used as Internet addresses in Germany and that already the use of domain names in Germany gave rise to infringement claims under German law, irrespective of the place at which the domain name was registered. As a result, the case law on domain name protection established by German courts for the top level domain ".de" could equally be applied to American registrations under the top level domain ".com".
The decisions of the Berlin courts may have a wide impact on domain name registrations worldwide, as German courts may assume jurisdiction for, and may apply German law to, all domain name registrations which violate the right to bear a corporate name within Germany, irrespective of their place of registration.
By Dr. Jochen Dieselhorst, Bruckhaus Westrick Heller Lober
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