Brand name in domain designation impermissible!

Is there an impermissible use of a trademark if a reseller, who sells branded products alongside similar products from third-party manufacturers, uses the trademark of the branded products in the domain designation of its web presence? The Federal Court of Justice (BGH) says yes.

A well-known manufacturer of vacuum cleaners (Vorwerk) sued the operator of an online shop. The latter operated an online shop for used Vorwerk vacuum cleaners under the domain "keinevorwerkvertretung.de". The dealer not only offered original vacuum cleaners from the plaintiff, but also sold models from third-party manufacturers and corresponding accessories.

Vorwerk considered the use of its signs (including "Vorwerk") to be a trademark infringement and had unsuccessfully sent a cease-and-desist letter to the dealer before proceedings.

Brand name in domain designation permissible?

The judges at the Federal Court of Justice (BGH) had to clarify the following question: Is a trademark infringement present if a dealer incorporates a trademark into its domain designation and offers products other than those from the house of the manufacturer associated with the trademark on this web presence?

The Federal Court of Justice (BGH) (Judgment of 28.06.2018, Az. I ZR 236/16) answered this in the affirmative and thus assessed the dealer's conduct as impermissible. The use of the trademark in the domain designation pursued the goal of drawing the attention of potential customers of the plaintiff to the dealer's own product range and, for example, diverting them from the online shop of the plaintiff.

In the merger of the trademark with the domain name, therefore, it could not be seen merely as a simple reference to the usability of its own products in connection with those of Vorwerk. Rather, the domain name had an advertising effect, which in the present case was not compatible with the principles of good faith. The judges made it clear that milder means were available to the dealer to indicate the compatibility of its products with those of Vorwerk. For example, it would have been conceivable to mention the compatibility of the third-party manufacturer products with the "original product" in the description text of the respective item. In any case, the striking use of the trademark in the domain name was carried out in an impermissible manner, contrary to the principles of good faith.

Conclusion

When using third-party trademarks in one's own domain name, caution is advised. If there are less intrusive options available (and there always are) to indicate the compatibility of the products distributed under the trademark in question with one's own "no-name products", such a domain designation should be avoided.