Online law

What is a domain name?

A domain name is an “electronic” address enabling computers to communicate with other computers (which have an address as well) via the internet. Domain names can be used as addresses for e-mail, websites and so forth.

A website may be reached at an address such as https://www.iprecht.de. HTTP and HTTPS are transfer protocols; HTTPS encrypts the connection. In iprecht.de, .de is the country-code top-level domain associated with Germany and iprecht is the second-level domain. The suffix does not determine the server’s physical location. Generic endings include .com, .org and .net; eligibility varies by suffix. An email address might be horak@iprecht.de and a complete web address https://www.iprecht.de/index.htm. URL means Uniform Resource Locator; .htm and .html are conventional HTML document extensions.

Domain names such as iprecht.de can be accessed from all over the world. This means that the domain name iprecht.de is used only once worldwide. iprecht.com could be used by another domain owner, though. Similarly, ip-recht.de or a similar domain name could be used by third parties. Even the slightest deviation of just one sign or another TLD point to another -similarly unique -address.

What should be taken into consideration when choosing a domain?

Consider the example of finding a name for a law office named “Horak Rechtsanwälte” with the respective subtitle “Horak Weber Lehr Horak”. Appropriate domain names could be among others Horak.com, bwlh.de, bwlh.com. Another option might be Horak-rechtsanwaelte.de or Horak-anwaelte.de. The latter names are relatively long though and thus quite impractical. The name bwlh.de on the contrary, is a short imaginary acronymic term.

Usually, quite a number of activities in an enterprise can be handled via internet (by means of a computer). This number is most likely to be increasing steadily. Manufacturers, merchants, service providers and others can offer or at least present their services on a worldwide platform available at any moment. The way things are now, e-commerce or B2B (business to business) seems to provide an opportunity for all participants to develop new information, sales or marketing strategies. A company’s real address in a prestigious location can be replaced by a domain name and online contents that place the company in a similarly prestigious position at a cost below comparison. The domain name is a central aspect in all possible internet activities of a company.

In order to locate this website or to e-mail us, you have to know our domain name. Therefore, the name of a company or trademark should easy to remember. Short domain names are typically preferred. The following basic principles should be taken into consideration when determining what your domain name will be:

It is in principle out of question to use existing trademarks, company names, advertising slogans etc. of third parties as one’s own domain name (it is recommendable research if certain trademarks or company names already exist). The same applies to “similar” terms and in principle to authorities, communities and the like. As a rule, the legal owner has “better right” to his domain name and can thus possibly claim its use. Using such names may be highly fined.
Descriptive domain names are not generally prohibited by competition law. The Federal Court of Justice decided mitwohnzentrale.de on 17 May 2001 (I ZR 216/99), overturning the earlier Hamburg judgment. Misleading claims of exclusivity or other infringements may nevertheless arise in a particular case; the domain and the associated site must be assessed together.
You can often use your company’s name, its abbreviation an so on to your advantage. This name, however, might have already been assigned. It is a typical of the internet that a name has already been used someplace else in this world – who is entitled to the name can in most cases be decided out of court and usually depends upon whose rights to the name are the oldest and which nationalities are involved (sometimes certain variations of a domain name can be considered).
You should avoid using misleading domain names as well as names that violate competition law or that are illegal in any other way, shape or fashion.
To a certain degree, the service offered is often reflected in the imaginary term.
If not all TLDs are available for the domain name of your choice, it might be necessary to examine the ones already registered, since the domain owners might have already acquired a right to the name by already using it with another TLD. If, on the contrary, all TLDs are still available, it is advisable to consider multiple registration. Usually, .de and .com are relevant for a company operating in Germany. In some cases you might consider registering for all German-speaking countries (.ch, .de, .at). Similar domains should be registered as well, so that potential users of your website will find the right address even when they do not use the exact spelling.

If your desired domain name has already been assigned, there are the following alternative solutions. You might choose an alternative name, but sometimes you can just choose another TLD, as long as it does not infringe the rights of the owner of a domain already existing or another third party. Another solution is making the current domain owner “sell” his domain. Lastly, the current domain owner can assert no or “worse” rights to the domain and thus make the domain available.

What is the relationship of domain names to trademarks?

Registering a domain at a private institution does not automatically give you the absolute right, but merely relative rights. The absolute right includes the right against “everyone” (e.g. trademark right), relative rights on the contrary are usually a contractual regulation between two parties which do not interfere with the rights of third parties. If an internet service provider registers a domain at DENIC, certain facts change (the name is assigned and cannot be assigned for the second time), but does not change the legal status against third parties. If a third party has a trademark right to the name, he can claim the release of the domain name.

Use of a domain may establish a business identifier or title right under section 5 MarkenG, subject to the relevant conditions. A trademark acquired through use under section 4, no. 2 requires recognition in the relevant trade circles. These forms of protection must be distinguished.

Trademark protection may arise from registration, use with the required recognition or well-known status under section 4 MarkenG. Territory and goods or services matter. A domain’s worldwide technical accessibility does not create worldwide trademark rights and may itself be limited by technical or legal circumstances.
In the area of domain names, there is no risk of “confusion” or “similarity”. If the trademark “iprecht” is registered in Germany as a trademark for legal counselling at the Trademark Office, the protection is extended to include similar names and services. A domain as such without further rights, does not have such a “protection area”, which means that even the slightest alternatives can be registered.
Genuine use becomes relevant after the applicable grace period. Non-use may support a revocation application or affect enforcement; the mark does not simply disappear automatically when use stops. A domain registration is governed by its own contractual rules.
Trademarks are registered for specific goods/services. Therefore, it is possible that one trademark is registered for two different companies with different products. Thus, another enterprise might register the trademark “iprecht” for bicycles without infringing the trademark right. This does not apply to domains. If two enterprises want the same domain, this leads to a conflict, regardless of the activity or the seat of the enterprise, the latter concerning especially .com-domains.

What is the use of registering a trademark?

Registering a trademark can provide supportive protection against third parties and is recommended, since a registered trademark, contrary to a domain, secures a sole right (spatially limited as it may be). Thus, a trademark might create legal certainty. However, not every term is suitable for a trademark, and moreover, there might be rights already existing to the name, so that additional trademark protection is sometimes redundant (e.g. company names).

Domain grabbing

Trade with domain names, i.e. registration without use, sale and purchase are not per se illegal, but nothing to complain about.

However, some of the domains offered for sale have been registered because there are more or less known respective companies, brands, etc., that are supposed to buy the domain name at the highest possible price. This activity, called domain grabbing, is illegal and enterprises that have suffered from it might claim a release, without having to pay any “purchasing price” for it.

Steps to protection of a domain

While looking for a domain name, you should first of all pay attention to the rights of third parties. This requires constant research as far as the availability of a domain is concerned.

Moreover, from the legal point of view, a trademark search is advisable, in order to avoid infringement of a trademark. Such a search should cover company names as well. In many cases, similarity search is also advisable.

When a search concerning trademarks, company names and domain names has been completed successfully, the domain can be registered. Afterwards, you should investigate if a trademark registration is advisable.

What information do we need in order to secure your rights?

We need the following information to check and verify the registration of domain names:

Name of the domain, including the desired TLD (e.g. .de, .com), and, if necessary, alternative names

Name and address of the potential domain owner
Description of the occupation of the domain owner (one sentence is usually enough)
Data on a trademark application or registration for an identical or similar term (if available)
Contact details of the holder and the person or provider responsible for technical administration. DENIC has not recorded an Admin-C for .de domains since May 2018. Further details depend on the current registry and registrar rules.
Do you want us to perform research concerning the domain, trademark and companies and do you want us to check the possibility of registration of a trademark?

Please contact

Michael Horak, graduate engineer, LL.M.

Links

German IP Law, Information relating to patents, trademarks and licences, with further reading comprising judgements, commentaries, downloads and links

IT Law Germany: Information on IT law, online law and domain law