The "BAG" and the Appropriate Domain

The Federal Labour Court (BAG) has been operating under the abbreviation "BAG" for decades. However, the holder of the Internet domain "bag.de" was not the BAG but a domain trader. The Regional Court (LG) Cologne has now decided on its release.

The Federal Republic of Germany, represented by the Federal Labour Court (BAG), had brought an action against the holder of the Internet domain "bag.de", who operates in domain trading among other activities, for cessation of further use and release of the domain.

The Federal Labour Court (BAG), which until now has operated its Internet presence under the Internet domain "bundesarbeitsgericht.de", has been using the abbreviation "BAG" for itself since 1955.

The domain "bag.de" had been "parked" by its holder on a domain trading platform and was offered for sale. It was not connected to any content. Only automatically generated links with references to advertising, including one bearing the inscription Federal Labour Court, were visible.

The Federal Labour Court (BAG) considered its name rights in the letter sequence "BAG" to be infringed by the registration of the domain name "bag.de".

The domain trader countered that the letter sequence "bag" was in fact widely used, so that an unambiguous attribution to the Federal Labour Court (BAG) could not be established. Furthermore, it was a well-known generic term from the English language.

Decision of the Court

The LG Cologne found the claims to be justified and ordered the domain trader to cease further use and to release the domain, on the ground that by registering the domain "bag.de" he infringed the name right vested in the Federal Republic of Germany in the abbreviation "BAG" used for the Federal Labour Court (BAG) (Judgment of 26.08.2014 – Az.: 33 O 56/14).

In view of the long-standing and nationwide use of the abbreviation "BAG", under which the Federal Labour Court (BAG) is known in the relevant trade circles, a name right of the Federal Labour Court (BAG) was to be assumed.

Knowledge in all conceivable trade circles or even market establishment was not a prerequisite for protection, according to the LG Cologne. The letter sequence also possessed original distinctiveness, since no specifically descriptive use could be established.

The domain trader could not – according to the LG Cologne – successfully rely on the fact that the abbreviation was identical to a generic term known in the relevant trade circles in Germany from the English language meaning "bag, pouch, pocket, suitcase". For nothing had been submitted to the effect that this term had already found such entry into the German language that it would be understood without further ado and independently of its concrete use as a descriptive specification within the meanings indicated.

There was, according to the court, also an unauthorised usurpation of the name by the domain trader as a result of the registration and use of the domain, since he unlawfully used the designation protected as a name, thereby caused confusion as to attribution and infringed the legitimate interests of the name holder. Legitimate interests of the domain trader were, however, not apparent, for the mere interest of the domain trader in reselling the registered domain name and not used as the address of an Internet page provided with content was not worthy of protection.

Conclusion

Domain trading as such is basically a permissible business model, however only as long as no third-party trademark or name rights are infringed. In proceedings against domains, name-related claims ultimately come into consideration as legal grounds alongside trademark and unfair competition law claims as well as claims in tort.