EU Court Sets Criteria|for Domain Registration

(CN) - The European Court of Justice established broad new criteria for rejecting abusive .eu domain name registrations.

Europe's high court indicated that, in principle, Austrian company Internetportal und Marketing GmbH abused the system for registering .eu domain names by exploiting a clause on special characters.

In December 2005, the European Registry for Internet Domains began registering top-level .eu domain names in a three-phase process. During the first two phases, called the "sunrise period," domain registration was reserved for public entities and those who held national and community trademarks.

Shortly before this period, Internetportal registered 33 generic trademarks in Sweden, all with the "&" symbol between each letter.

This included the name "&R&E&I&F&E&N&," which without the ampersands means "tires" in German. The company apparently intended to host an Internet portal for tire companies offering products for the German market.

European law allows for use of registered marks without special symbols on the Web, as domain names can only support standard letters.

Internetportal thus stood to profit greatly from early registration of 180 generic domain names, instead of having to wait until a general registration phase began.

A window-products company that uses the mark "Reifen" eventually challenged the registration, and the Austrian courts revoked Internetportal's claim to it.

The Court of Justice ruled that whether a registration was made in bad faith depends on factors such as intention and timing. In Internetportal's case, registration of such a "linguistically irrational" term suggests that "the special character was introduced only in order to disguise the generic term which is hidden behind the mark."

Also, the volume and type of domain names that Internetportal tried to register indicates that it intended to abuse the system, the ruling states.

The court concluded that defining bad faith for .eu domain names goes beyond the circumstances listed in the EU regulation, which is far from exhaustive.

Subscribe to Closing Arguments

Sign up for new weekly newsletter Closing Arguments to get the latest about ongoing trials, major litigation and hot cases and rulings in courthouses around the U.S. and the world.

Email *

Submit