The Higher Regional Court Dresden has taken a decision involving a dispute between two domain owners. The appellant operates the website “www.fluege.de” where it offers travel agency services. The appellant does not only use the domain and word sign <fluege.de>, but also a logo showing blue characters and a small white stylized airplane. The defendants, owners of the website “www.flüge.de“, offer marketing and trade of descriptive domains. For a certain period of time users landing on “www.flüge.de” were redirected to another website where they could find sponsored links of the appellant’s competitors.
The appellant filed a request with the Regional Court Leipzig against the defendants asking for cease and desist, deletion of the domain, information, damages and reimbursement of its costs. It based its claims on an alleged infringement of trade mark and competition law. The Regional Court granted the claims for cease and desist, information and damages and dismissed the rest of the claim. Both parties appealed to the decision.
The Higher Regional Court found that the use of the domain “www.flüge.de” neither breached the alleged business name right of the appellant nor constituted an infringement under competition law. Although domains may be generally protected as business names under section 5(2) of German Trade Mark Law the appellant may not rely on such protection. The provision requires that a business name is used as an indication of origin and that the name is distinctive or has a reputation. Both prerequisites were not met as:
- The appellant’s domain name is descriptive. “Flüge” means flights which is one of the main services the appellant offers.
- The average user does not recognize such descriptive domains as indication of origin. Due to the descriptiveness the name also lacks distinctiveness. In the case of descriptive signs qualified reputation is necessary, meaning recognition by at least 50% of average users. Even though the appellant submitted significant figures of advertising expenditure, it failed to prove such reputation as the court found that this was not sufficient evidence.
In any case the Higher Regional Court found that there was no likelihood of confusion as the scope of protection of the sign is limited to its concrete graphic design which the defendants did not infringe. It further, denied an infringement under competition law finding the appellant’s sign to be missing the necessary competitive originality. Also, the defendant did not unlawfully intercept customers as they did not prevent users from reaching the appellant’s website.
The Higher Regional Court dismissed the appellant’s appeal and found in the defendants’ favour setting aside the Regional Court’s judgment.
The decision is in line with previous case law and shows that in cases of descriptive signs the scope of protection is very limited and restricted to those signs enjoying a high reputation among the customers. This applies in particular to domain names which are normally perceived as technical internet addresses and not as an indication of origin. Therefore, using purely descriptive domain names which are easy to understand and therefore highly attractive for many companies also has a considerable downside since it is often hard to enforce such domain names against competitors.