Want a dot-eu? It's not enough to be crafty, says AG Trstenjak

Last week European Court of Justice Advocate General Trstenjak published his [or atcually her, if you want to be accurate/pedantic ...] Opinion in Case C‑569/08 Internetportal und Marketing GmbH v Richard Schlicht, an Opinion which the IPKat missed at the time because it was tagged with the subject label 'Industrial Policy' rather than his beloved 'Intellectual Property' [Mistaken identity, queries Merpel? They have the same initial letters]. This case, referred by the Oberster Gerichtshof, Austria, turns on a little-known but quite fascinating provision of European law: Article 11 (‘Special characters’) of Regulation No 874/2004 on the implementation of the .eu regime. Article 11 provides as follows:

‘As far as the registration of complete names is concerned, where such names comprise a space between the textual or word elements, identicality shall be deemed to exist between such complete names and the same names written with a hyphen between the word elements or combined in one word in the domain name applied for.
Where the name for which prior rights are claimed contains special characters, spaces, or punctuations, these shall be eliminated entirely from the corresponding domain name, replaced with hyphens, or, if possible, rewritten.

Special character and punctuations as referred to in the second paragraph shall include the following:

~ @ # $ % ^ & * ( ) + = < > { } [ ] \ /:; ‘, .?"

Now for the facts. Internetportal und Marketing GmbH ('IMG') ran websites and sold products via the internet. IMG sought to register a sizeable number of .eu domain names. To be eligible to apply to register .eu domain names during the first phase of registration (when precedence was given to the proprietors of trade marks), IMG secured the registration of 33 German generic terms as Swedish trade marks. Each of these incorporated an ampersand ("&") before and after each letter or between individual letters. One such registration was for the word mark ‘&R&E&I&F&E&N&’ for goods in Class 9 (safety belts). IMG never intended to use that trade mark for safety belts on the assumption that, after registration of that trade mark as a .eu domain name, application of the ‘transcription rules’ would cause the ‘&’ characters to be eliminated, thus leaving behind the German word ‘Reifen’ (‘tyres’) which, as a generic term, should never, in the claimant’s view, be protected under trade mark law.

During the first part of the phased registration procedure for .eu domains, the domain http://www.reifen.eu/ was indeed registered in IMG's name on the basis of its Swedish trade mark ‘&R&E&I&F&E&N&’. IMG actually applied to register no fewer than 180 domain names consisting of generic terms, proposing to use the domain http://www.reifen.eu/ to operate an internet portal for trading in tyres, but, by the time this dispute was referred to the Court of Justice for a preliminary ruling, had not yet taken any noteworthy preparatory steps for its construction.

When it registered the domain in question, IMG was unaware of the existence of Richard Schlicht, proprietor of the Benelux word mark ‘Reifen’ (tyres) for goods in Class 3 (bleaching preparations and other substances for laundry use; ... cleaning preparations, in particular, cleaning preparations containing nanoparticles for cleaning window surfaces) and Class 35 (services which facilitate the marketing of such cleaning agents) [What a strange choice of trade mark for these products. Merpel mischievously wonders if this case has been manufactured specially for the sake of the reference ...]. Schlicht subsequently secured Community trade mark protection and has apparently been developing a product to market under this curious name.

Before the Czech Arbitration Court, Schlicht successfully challenged IMG's domain name registration and the domain was transferred to him. That court, applying its own case law, considered that the character ‘&’ contained within a trade mark should not be eliminated but rewritten [In full? That would make the mark ANDRANDEANDIANDFANDEANDEANDNAND ...]. In its view IMG had sought to manipulate the system and was acting in bad faith. IMG then sought a declaration (i) that the domain name should not be transferred to Schlicht and/or (ii) that the decision of the Arbitration Court was unlawful.

Eventually, following an outbreak of litigation in Austria, IMG brought a special appeal on a point of law before the Oberster Gerichtshof, which stayed the proceedings and referred the following questions to the Court for a preliminary ruling:

‘1. Is Article 21(1)(a) of Regulation … 874/2004 [which deals with the right to seek revocation of speculative and abusive .eu registrations] to be interpreted as meaning that a right within the meaning of that provision exists:

(a) if, without any intention to use it for goods or services, a trade mark is acquired only for the purpose of being able to register in the first phase of phased registration a domain corresponding to a German language generic term?

(b) if the trade mark underlying the domain registration and coinciding with a German language generic term deviates from the domain in so far as the trade mark contains special characters which were eliminated from the domain name although the special characters were capable of being rewritten and their elimination has the effect that the domain differs from the trade mark in a way which excludes any likelihood of confusion?

2. Is Article 21(1)(a) of Regulation … 874/2004 to be interpreted as meaning that a legitimate interest [i.e. in registering the .eu domain name that has been challenged] exists only in the cases mentioned in Article 21(2)(a) to (c)?

If that question is answered in the negative:

3. Does a legitimate interest within the meaning of Article 21(1)(a) of Regulation … 874/2004 exist if the domain holder intends to use the domain – coinciding with a German language generic term – for a thematic internet portal?

If questions 1 and 3 are answered in the affirmative:

4. Is Article 21(3) of Regulation … 874/2004 to be interpreted as meaning that only the circumstances mentioned in points (a) to (e) of that provision are capable of establishing bad faith within the meaning of Article 21(1)(b) of Regulation … 874/2004?

If that question is answered in the negative:

5. Does bad faith within the meaning of Article 21(1)(b) of Regulation … 874/2004 exist if a domain was registered in the first phase of phased registration on the basis of a trade mark, coinciding with a German language generic term, which the domain holder acquired only for the purpose of being able to register the domain in the first phase of phased registration and thereby to pre-empt other interested parties, including the holders of rights to the mark?’

The Advocate General last Thursday advised the Court of Justice to decide as follows:

"(1) Article 21(1)(a) of ... Regulation ... 874/2004 ... must be interpreted as meaning that the proprietor of a national trade mark has a right within the meaning of that provision so long as that trade mark has not been cancelled, on grounds of bad faith or on other grounds, by the competent authorities or courts in accordance with the procedures laid down in national law.

That right exists even if the trade mark which provides the basis for the domain registration differs from the domain name as a consequence of the correct elimination from the latter of the special characters which that trade mark contained. It is for the national court making the reference to determine whether those special characters could have been rewritten.

(2) For the purposes of determining whether conduct can be categorised as being in bad faith within the meaning of Article 21(1)(b) of Regulation No 874/2004, read in conjunction with Article 21(3) thereof, the situations specified in which are not exhaustive, the national court is required to take into account all the relevant factors specific to the case before it, including:

– the circumstances in which the trade mark was acquired, in particular the intention not to use it on the market for which protection was sought;

– the fact that the trade mark is a German‑language generic name [this shouldn't be a problem in Sweden, given the successful defence of the Spanish registration MATRATZEN (German for "mattress") in respect of mattresses]; and

– the possibly abusive use of the ‘&’ character in order to influence the application of the transcription rules under Article 11 of Regulation No 874/2004,

in so far as the sole purpose of the registration is to be able to request registration of the domain name corresponding to the trade mark in the first phase of domain name registration (the ‘sunrise period’), as provided for in that regulation".

The IPKat notes the sentiment expressed by the Advocate General that

" ... even though it is difficult, to my mind, to deny that [IMG] has a right within the meaning of Article 21(1)(a) of Regulation No 874/2004, a combination of factors might nevertheless demonstrate its bad faith. ...

By its misconduct, it prevents the other interested parties from participating in the grant of the domain name in accordance with the ‘first come, first served’ rule. To accept that such conduct is a ‘stroke of genius’ would mean that the race will no longer go to the fastest but to the craftiest – whoever finds the best shortcut – which would be contrary to the very spirit of Regulation No 874/2004".

The moral is this, says Merpel: if you want a .eu domain name it's not enough to be crafty. That only seems to work for trade marks ... Both Kats note that, with the crafty use of ampersands, you can shorten the name of distinguished Indian IP practice Anand and Anand to An&&an&.

More about ampersands here