(CN) – An American eyewear company that tried to register a trademark in the European Union cannot score a coveted dot-eu domain by simply paying a Belgian consulting firm to nab it, the EU’s high court ruled Thursday.
Walsh Optical, which sells eyewear in the United States through its lensworld.com website, trademarked “Lensworld” throughout the Benelux region. It paid intellectual property consulting firm Bureau Gevers to obtain the lensworld.eu domain name when Parliament created .eu domain names in 2005.
Walsh’s quick grab of lensworld.eu thwarted the registration efforts of Belgian eyewear maker Pie Optiek, which was using lensworld.be prior to the unified European suffix.
Though the EU ultimately canceled Walsh’s trademark for “Lensworld” and gave it to Pie Optiek, the European Registry of Internet Domains (EURid) left lensworld.eu in the American company’s hands, prompting Pie Optiek to accuse Bureau Gevers of abusive and speculative actions.
A Belgian appeals court referred the case to the Court of Justice for clarification on what constitutes an eligible licensee for a dot-eu domain.
In May, an adviser for the Luxembourg court concluded that Walsh Optical and Bureau Gevers had a services contract — not a licensing agreement, as the companies claimed — because the consulting firm agreed to procure the domain registration for a price, and therefore had no right to the dot-eu domain.
The Court of Justice agreed and went a step further, pointing out that legislators created dot-eu to promote the visibility of European companies.
Under EU regulations, domain names requested by people and businesses established or living in the European Union “must be registered in the .eu Top Level Doman,” and “[s]uch undertakings, organizations and natural persons … are eligible to register one or more domain names under the .eu Top Level Domain,” the high court wrote.
Registration typically occurs on a first-come, first-served based, but those with a registered national or community trademark get first crack at registering that trademark as their dot-eu domain.
During this exclusivity period, only previously established European entities could obtain dot-eu domains. While the law allowed foreign licensees to obtain a European domain, the court ruled, they had to “satisfy the test of presence” in the EU — a test that Walsh Optical, having no recognized European trademark, failed.
The Court of Justice also agreed with its adviser that the arrangement between Walsh Optical and Bureau Gevers was “more akin to a contract for services than to a licensing agreement.” The court said this is underscored by the fact that Bureau Gevers acknowledges it signed over the domain rights to Walsh Optical for a fee, giving the U.S. company sole commercial use of the lensworld.eu domain.
The high court remanded the case to the Belgian appeals court for final judgment.