Domain registration with consent of the name holder

A holding company that registers the business name of a subsidiary company as a domain with the latter's consent shall be treated in disputes over the domain name as if it were itself entitled to use the designation in question.

The defendant (Bekl.) registered the domain "segnitz.de" for its subsidiary company, A. Segnitz GmbH & Co. KG, and, with the latter's consent, in its own name. The Municipality of Segnitz considers this to be an infringement of its own name rights and accordingly seeks a prohibition on the further use of the domain in dispute and its release.

The court's decision

The Federal Court of Justice (BGH) set aside the judgment and remitted the case to the appellate court (OLG Bamberg) for fresh decision (BGH, Urteil vom 09.06.2005 – I ZR 231/01). Although this was done on purely formal grounds, the remittal nonetheless contains some instructive directions for the next decision, which shall be set out in the following.

In the event that the defendant's (Bekl.) assertion that it is referred to in commerce in abbreviated form as "Segnitz" – which is virtually established – is upheld, the claim should be dismissed. In that case, the defendant (Bekl.) – like the plaintiff (Kl.) – would have a name right to "Segnitz", which has the consequence that, in the relationship between the parties to one another, the principle of justice of priority of registration applies. In plain language: first come, first served.

Furthermore, in the event of domain registration by the holding company for the subsidiary, it should be assumed that this was done with the latter's consent. This leads to the result that the registration was carried out by a "person entitled" and the registrant is therefore to be treated no differently from the holder of the mark right (the subsidiary company).

Conclusion

The judgment can only be regarded as correct. On the one hand, it is not new that name rights extend to keywords and abbreviations of the actual business name (Firma). On the other hand, it thereby clarifies the self-evident fact that in the area of domain registration there exists a derived right of use which guarantees its validity.