EU Should Strip Domain Name From U.S. Entity

(CN) - An American eyewear company cannot take a dot-eu Internet address since its trademark is not established in the European Union, a high court adviser said Thursday.

Walsh Optical, which offers contact lenses and eyeglasses in the United States through its website, lensworld.com, wanted to score a European domain name when Parliament made .eu domain names available in 2005.

Walsh hired the Belgian intellectual property consulting firm Bureau Gevers to obtain a .eu web address in Walsh's name. Bureau Gevers nabbed the registration for lensworld.eu, registered to itself on behalf of Walsh, from the European Registry for Internet Domains, or EURid, in July 2006.

Around the same time, Walsh Optical also arranged to trademark "Lensworld" in the Benelux region, which encompasses Belgium, the Netherlands and Luxembourg. The mark has since been canceled.

Walsh's quick grab of the lensworld.eu domain name thwarted the registration efforts of Belgian eyewear maker Pie Optiek, which sold contacts and eyeglasses from its lensworld.be website.

Pie Optiek applied for the lensworld.eu domain in January 2006, about a month after Bureau Gevers had applied on the first day of registration. It had also arranged to trademark "Lensworld" in the Benelux region. EURid denied Pie Optiek's domain application because of Walsh's prior registration.

Pie Optiek sued in the Belgian court of appeals, claiming Bureau Gevers actions were speculative and abusive. The Belgian court referred the case to the EU's Court of Justice for clarification on the definition of an eligible licensee for a .eu domain during the pre-registration period.

In her opinion for the Luxembourg court, Advocate General Verica Trstenjak said Walsh Optical and Bureau Gevers had actually entered into a contract for services, not a license agreement as they claimed. This is because the consulting firm agreed to procure the domain registration - albeit in its own name - for payment.

"The essential elements of a license (the licensee's right to use the trade mark - in this case 'Lensworld' - itself on a commercial basis and to defend it vis-à-vis third parties) were absent, however," according to a statement from the court. "Bureau Gevers cannot, therefore, be regarded as a licensee eligible to benefit from the sunrise period."

EU law mandates that only businesses and organizations that are established entities in the European Union may request a .eu domain name, Trstenjak said. This aims to provide a clearly identified link with the EU, its associated legal framework and the European marketplace.

"Against that background, a non-resident undertaking cannot be allowed to circumvent the rules on eligibility by obtaining registration of a .eu domain name by means of a legal construction such as the commissioning of a third party organization that is established in the European Union and thus an eligible party," the court said.

EURid must revoke Walsh Optical's ownership of the lensworld.eu domain, Trstenjak concluded.

The advocate general's opinion is not binding on the court, but instead proposes a legal solution to cases for which the court is responsible. The judges of the court may hear the case at a later date and render their own judgment.

Trstenjak's opinion is not available in English.

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