IP Insights: Domains and domain names

Show notes

Read the German Chapter on Domains and Domain names of the 2022 Getting the Deal Through: https://www.bardehle.com/en/ip-news-knowledge/publication/detail/getting-the-deal-through-domains-and-domain-names-germany-2022

Pascal: Let’s start with a very general question: Can you sell and buy .de domain names?

Yes, as a matter of principle, you can, although, technically, it’s a bit different, because domain names, here in Germany, are not treated as a property, or as an intellectual property right, that can be transferred. What you actually do is assign the contractual relationship that you have with the Registry – the DENIC is, in Germany, responsible for the .de domain names – and that contract is then assigned to your buyer of the domain name.

Okay, so, you mentioned the Registry. The Registry applies a strict “first come, first served” principle. So, what they do not do is: They do not check whether a domain name registration is potentially in conflict with another prior right. So, if I am the owner of a trademark and I believe that a German domain name registration may potentially infringe my rights in a trademark, what can I do?

You’re absolutely right. That is a big problem. You cannot, from the outset, prevent someone from registering a domain name with your trademark and, for example, a generic term. So, what you can do is, obviously, raising claims for trademark or name infringement. But the problem in Germany is that you don’t have the mandatory arbitration proceedings – as you would for .com domains or other generic or country-code-level domains. So, you don’t have the Uniform Dispute Resolution Procedure, or something similar on the country level; which means as a general rule, you don’t have arbitration proceedings, but would have to file a full-fledged court action with the civil courts.

A full-fledged court action sounds like quite an effort. So, can you maybe think of any easier ways to transfer a potentially infringing domain name?

Yes, there are easier ways to do that. One very effective and important tool you have for .de domain names is the so-called “Dispute Entry”. That’s just an entry you make with the Registry where they do not really block the domain name – so, the domain name is still accessible and being used by that third party– but what they do is, they prevent that it gets transferred to a third party again. So, with this Dispute Entry, you have a certain security on that domain name. When you start taking action against the owner – sending them a warning letter or something else – it’s ensured that they cannot transfer it back to someone else, a third party which you have to run after again.

So, that is a very important tool to be taken into account. And then, avoiding court proceedings means, you can always send a warning letter, hoping that you can resolve the case amicably, out of court. And if that doesn’t help, there is one – let’s call it a trick: Registration data, especially for foreign registrants, are often not correct. And they have to be correct, otherwise, the Registry would cancel the domain name. And if you find that out, if you can verify that the registration data is incorrect, you can go to the Registry, they will double-check, and if they confirm that the registration data is not correct, they will cancel the domain name. And the benefit of the dispute entry I was mentioning before is that the domain name will be directly transferred to you, which is obviously an easier way than going to full court proceedings.

That does sound like a good way to save costs and time compared to court proceedings. So, thanks, Pascal for sharing these insights.

Thank you, Ronja.