Press release of April 07, 2011

The defendant, represented by BARDEHLE PAGENBERG, is the owner of numerous trademarks in Latin America (but not in Germany) similar or identical to the disputed .com domain name. The domain name was originally registered in the year 1996 and transferred to the plaintiff in June 2008. In November 2008, the defendant submitted a complaint to the WIPO Arbitration and Mediation Center under the UDRP. WIPO ordered that the domain name be transferred to the defendant since the domain name holder acquired it in bad faith and had no legitimate interest in the domain name.

The plaintiff launched an action before the Berlin District Court, seeking a declaration that the defendant was not entitled to claim transfer of the domain name. As an auxiliary request, the plaintiff asked the Court to declare that the registration and use of the domain name was not “contrary to the applicable German law”.

With respect to the plaintiff’s main request, it should be noted that this would almost automatically have to be successful because German case law does not provide for a transfer claim but only for the relinquishment of the ownership in the domain name for the benefit of a third party (Federal Supreme Court – shell.de). In the case at hand, however, the Court held that even if a claim for transfer existed under German case law, its existence or non-existence was not relevant with respect to the question whether a claim for transfer exists under the regime of the UDRP. The plaintiff as a user of the .com domain name system accepted the UDRP as a private legal regime with binding rules. This legal regime provides that in case of a dispute WIPO may order the transfer of a domain name to the authorized person. Taking the foregoing into account, the Court rejected the plaintiff’s action with respect to its main request as being inadmissible for lack of legal interest.

The plaintiff’s auxiliary request was construed by the Court as a request to determine whether or not the decision rendered by WIPO was in breach with German law, because the issue of the use of the domain name could not be considered separately from WIPO’s decision. Taking into account that the plaintiff accepted the UDRP as a binding contract, the Court found that the plaintiff must accept WIPO’s decision which has been rendered in line with the UDRP, unless it was contrary to “cogent German law”. According to the Court, this was not the case and not even claimed by the plaintiff. Therefore, the plaintiff’s auxiliary request was considered to be admissible, but without merits.

The decision of the District Court of Berlin is not final.

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