Identity of names and priority principle in domain name disputes

As a general rule, parties with identical names are governed by the priority principle – first come, first served. The Federal Court of Justice (BGH) has demonstrated that this does not always have to apply in domain name disputes by means of two landmark decisions shell.de and krupp.de In these cases, the court decided by way of an interests assessment that the proprietors of exceptionally well-known trade marks or business designations could assert their rights against faster and identically named private individuals. A new and far more far-reaching view has been taken by the Higher Regional Court of Stuttgart (OLG Stuttgart) (judgment of 26.07.2007 – 7 U 55/07), which, with an interesting line of argument, even dispenses with the requirement of exceptional fame in order to reach the same conclusion.

The plaintiff, here referred to as Mustermann GmbH, demanded that a Mr. Mustermann surrender the domain "mustermann-unternehmensgruppe" registered under the top-level domains (TLDs) .de, .eu and .com. Mr. Mustermann argued in the proceedings that he was planning to establish a business or business group, but it was undisputed that he was not (yet) engaged in any business activity. The court of first instance – the Regional Court of Stuttgart (LG) – dismissed the claim for deletion of the domains based on the law of names on the grounds that, given the descriptive domain component "Unternehmensgruppe", for the purpose of assessing a violation of the law of names through assumption of name, only the component "Mustermann" was to be considered. In the absence of exceptional fame of Mustermann GmbH, the Regional Court (LG) reached the logical conclusion that the priority principle prevails and that Mr. Mustermann may retain his domains.

The court's decision

The Higher Regional Court of Stuttgart (OLG) took a different view on appeal: Due to the fact that the defendant, Mr. Mustermann, was not engaged in any business activity, the domain component "Unternehmensgruppe" was nonetheless to be taken into account. It was precisely this attribute that would distinguish him from the plaintiff. Accordingly, there was no longer any identity of names, and therefore the priority principle could not be applied. On the basis of the assumption of name inherent in the domain registration, there was thus a confusion of attribution which justified the plaintiff's request for deletion of the domain.

The requirement of exceptional fame of the identifying mark of the attacking party, which was established by the BGH, was also reduced to a "different weighting", which, in the absence of an objective interest on the part of the defendant in the domains, decided in favour of the plaintiff.

Conclusion

The judgment fails to carry out, as indicated by the establishment of the significance of the overall mark "Mustermann-Unternehmensgruppe", the examination of whether Mustermann GmbH also has a name right to this mark and not merely to "Mustermann". In any case, for the claimed deletion right to succeed, it is not sufficient that there is in fact a business group. If this were not the case, the claim would nonetheless have had to be dismissed. The "different weighting" is in reality equally an interests assessment as the BGH has already carried out on several occasions – merely with considerably less stringent requirements.