Brussels, 04/06/2010 (Agence Europe) - In its judgement of Thursday 3 June in Case C-569/08, the Court of Justice of the EU, referred to by the Austrian Supreme Court for a preliminary ruling, specified criteria governing revocation of .eu top level domain names which have been registered in a speculative or abusive manner. The Court thus interprets Article 21 of Commission Regulation 874/2004, which establishes general policy rules relating to implementation and functions of .eu domain names.
According to the Court, when examining a domain name in order to establish whether there has been conduct in bad faith, the relevant authority must take into account all relevant factors specific to the particular case and especially: - the circumstances in which registration of the trade mark forming the basis for registration of the domain name at issue during the first phase was obtained; - and the circumstances in which the .eu top level domain name itself was registered.
One must remember that the registration of a .eu top level domain name is done in three stages, each of which applies the principle of “first come, first served”, the first stage being reserved to the holders of Community and national registered trade marks. In this particular case, the Austrian company Internetportal und Marketing had, during the first stage, registered the domain name http://www.reifen.eu , using its “&R&E&I&F&E&N&” trade mark that it had registered earlier in Sweden for safety belts, a trade mark that it never used for the products in question.
Using a technicality, it had taken advantage of one of the transcription rules in the EU regulation, using the ampersand symbol to get the word “reifen” registered (meaning “tyres” in German) and using it in its domain name (the same company registered no fewer than 180 other trademarks in Sweden, 33 of them including ampersand - &). The holder of the Benelux “Reifen” trademark successfully challenged the legality of this and had had the domain name in question handed over to it by court order. The court ruled that Internetportal und Marketing had acted in bad faith and tried to abusively get round the registration process to avoid any competing applications for the same domain name.
With regard to the circumstances in which registration of the trademark in issue was obtained, consideration must be given, in particular, to: (1). the intention not to use the trademark in the market for which protection was sought; (2). the unusual and, from a semantic and visual point of view, linguistically irrational presentation of the trade mark; (3). the fact of having registered a large number of other trademarks corresponding to generic terms; and (4). the fact of having registered the trademark shortly before the beginning of phased registration of .eu top level domain names. With regard to the conditions in which the .eu top level domain name was registered, consideration must be given, in particular, to: (1). the abusive use of special characters or punctuation marks for the purposes of applying the transcription rules laid down in the Community rules; (2). registration during the first phase of the phased registration on the basis of a trademark acquired in circumstances such as those set out above; and (3). the fact of having applied for registration of a large number of domain names corresponding to generic terms. (F.G./transl.fl)