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The protection of distinctive signs in the Internet - Domain names Originally
published in "Business and Corporate Law" (DEE),
December 1999, p. 1243 f. (in Greek)
I. The issue The recent judicial award of the
Court of First Instance of Siros (1)
has handled for the first time in The Internet consists of thousands
of smaller computer networks that are all wired together. In order to reach
the desired computer and read the information, which it offers for
downloading, one must know its unique address in the Internet, which
resembles to the mailing address or the phone number of individuals and legal
entities in the physical world. This address consists of a long combination of
numbers (i.e. 206.253.222.65) and forms the identity of the computer in the
Internet, known as IP number (2).
The difficulty of memorizing such a number, has forced the development of the
DNS(3)
system, that makes it possible for every IP number to be provided with a free
to choose name (i.e. georgiades.com). In this point, that means of the registration
of the names, begins the battle for the domain names(4). Each domain name consists of
several levels (domain levels) that are being separated one of the other by full
stops. The crucial for our issue levels are the second level domain, which is
so to say the name (i.e. «georgiades»), and the top level domain (i.e. «.com»
or «.gr»), which indicates the organization which the domain name has been
registered with. Competent to register domain names are private companies or
organizations that have contracted with the Governments of each country and
occasionally also one with the other. The registration under the Greek top
level domain (.gr) has been allocated by a contract with the Greek
National Committee for Telecommunication and Mail (N.C.T.M.)
to the Foundation
for Technology and Research - Institute of Informatics (IP-ITE)
seated in Irakleon, Crete(5).
The said organizations and companies do not effect - due to lack of
competency - any kind of preventive control before registering a domain name,
but they give them to the applicants based on a first come, first served
principle. Every combination of words can be
registered only once under each top level domain, but can also be registered
under every single of the 246 top level domains, which are accessible to the
public. It is obvious that every corporation is seeking to register its name
as domain name (ibm.com, apple.com, antenna.gr etc.) for many obvious
considerations, such as marketing policy reasons, image, easiness of finding,
but also for protection from unlawful practices. Conscious of that fact the
so-called cybersquatters or domain grabbers(6)
have urged to register well known names, such as McDonalds, as domain names
in order to offer them for sale to their owners for big amounts of money, and
some of them have succeeded in it(7).
The legal community has in the beginning reacted reluctantly to this new
phenomenon called "domain grabbing" as the legal issues that arise
are more complex as they may seem at a first glance, especially as the
relative controversies have declined from the said, obviously in bad faith
examples of registrations of domain names in order to make profit and have
changed to hard controversies for the best place in the Internet. In the international literature
and case law many different opinions have been expressed regarding the legal
nature of domain names; it cannot be said that one of those has ruled (8).
Regardless of what is the legal nature of the domain name itself and as a
result what is the protection of a domain name, more crucial is the contrary
- and practically more up to date issue -, whether the registration and use
of a domain name may constitute insult of the rights of third parties in
immaterial goods(9).
In the following sections we will try to make a brief presentation of a few
of the problems that arise in relation to the said issue, as well as of the
solutions that the case law of other countries have come up with. II. Trademark law From the combined interpretation
of articles 4, 18 (3) and 26 (1) of Law 2239/1994 "regarding
trademarks" occurs that the owner of a trademark is empowered to forbid
to any third party the use without his consent in the course of trade of any: - sign, which is similar to the
trademark, for goods or services that are similar to those for which the
trademark is being used; - sign, which due to the
similarity or the resemblance to the trademark and the similarity or the
resemblance to the goods or services, for which the trademark and the sign
are being used, provokes risk of confusion of the public that includes the
risk of affiliating the sign with the trademark; - sign, that is similar or
resembles to the trademark and is being used for goods or services that do
not resemble to the goods and services for which the trademark has been
registered, under the condition that the trademark is well-known in Greece
and that such a use of the sign would without any reasonable excuse provide
it with an unfair advantage deriving from the distinctive character or the
reputation of the trademark or would harm the latter's distinctive character
or reputation(10).
In case the sign that is colliding
with the pre-registered trademark is a domain name, one might be confronted
with the following peculiarities, in relation to the application of Law
2239/1994: 1. Use in the course of trade: Law
2239/1994 "regarding trademarks" protects with articles 26 (1) in
combination with 18 (3) the owner of a trademark only in case it is being
used by third parties in the course of trade. As a result one must exclude from
the beginning all cases in which a private individual registers a domain name
in order to use it exclusively for private purposes (i.e. to publish his
family pictures); in such cases the owner of the trademark will have to seek
help in the protection of the name (Art. 58-59 of the Greek Civil Code-GCC),
provided that the trademark constitutes his name at the same time, or
eventually in the law of torts (Art. 914 f. of the GCC), if it applies, in
order to be protected. But should the said private individual offer the
domain name for sale or use it for advertising, then one must accept that
this does constitute use in the course of trade(11).
The latter should apply ad majore
for corporations(12). 2. Risk of confusion:
A first issue that needs to be addressed is which are the goods or the
services, in relation to which there must be a risk of confusion. The
Appellate Court of Duesseldorf(13)
held that crucial for the acceptance of a risk of confusion are not the goods
or services offered by the web site, but the web site as such, which results
that a risk of confusion will always be present, regardless of the sector of
the market the two challengers of a domain name are engaged in. As an
argument for its decision the Court has resembled the case with that of two newspapers
that are being published under the same title, for which there is no question
to examine their resemblance looking at the contents of the papers. One can
be reluctant regarding whether this argument is sound. The widespread use of
the Internet and of electronic commerce urge us to go ahead to the contents
of the website and to decide according to the goods or services that are
being offered by it. Moreover the said judicial decision is an
internationally sole example(14),
as not even German judicial decisions have followed its arguments(15). Following the above mentioned
conclusion one is confronted with the crucial issue, how to judge the case of
non competitive to each other corporations, which have been using for a long
time the same or similar trademarks and other distinctive signs and now have
to co-exist in the Internet. In contrast to the physical world, where trading
in different sectors of the market as well as the geographical distance do
allow the harmonic coexistence of similar trademarks and other distinctive
signs, the Internet proves to be in relation to this matter quite limited. As
already described, every combination of words can be registered only once as
a domain name under every top level domain (such as .gr or.com), regardless
of the nature of the goods or services or other activity, for which it is
going to be used. The problem becomes stronger by the fact that a domain name
cannot be accompanied by any other sign, colour or special way of writing and
that due to technical reasons it has to be consisting of no more than 24
letters, which results to a narrowing of the possibility of descriptive
differentiation of trademarks and distinctive signs in general. In this cases arises the issue,
whether the specific technical principle of time precedence that regulates
the appointment of domain names (first come, first served), which means that
the domain name will be given to the one who manages to register it first,
should apply or whether the owner of a former (older) distinctive sign
outside from the Internet will have a somehow stronger right to use it as a
domain name(16). The principle of precedence forms
indeed a fundamental principle of the law of distinctive signs, but its
implementation requires the existence of the risk of confusion(17).
Since there is no such risk of confusion, it would be against the basic
virtues of the law of industrial Property, but to the virtue of the economic
liberty (Art. 5 (1) of the Greek Constitution) as well, to force the owner of
a more recent trademark (beneath the Internet domain) to refrain from using
it as a domain name in advantage of the owner of an older trademark
(registered for other goods or services)(18).
In such cases, where both challengers of a domain name are owners of a
trademark or another similar right on the sign under dispute, there is no
other solution due to the technical peculiarity of the internet, than to let
the first come, first served principle apply.(19).
Thus the less active owner of a trademark, who came second, will have to
decline, choosing to add another sign on his trademark, in order to be able
to use it as domain name under the same(20)
top level domain(21). A different solution might only
apply if one of the colliding signs is a trademark with a reputation, but
also then under the prerequisite that its use as a domain name from the other
party will constitute illegal exploitation in the meaning of Art. 4 (1C) and
26 (1) of law 2239/1994(22).
This means that the use of this trademark as a domain name by the other party
should with no reasonable excuse provide it with an unfair gain deriving from
the distinctive character or the reputation of the trademark, or cause a
damage to the latter's distinctive character or reputation(23). Finally, following question has
been posed by a part of the writers, actually whether the principles that are
used in order to assess a risk of confusion in the case of similarity or resemblance
to a trademark(24)
(of a sign distinguishing similar goods or services) are indeed suitable to
be used for the judgement in the case of a conflict between a trademark and a
domain name(25).
In particular it has been argued that due to the technical peculiarities that
revert domain names into a good under insufficiency and due to the accuracy
that is demanded while typing a domain name in the computer(26),
a deviation should be made from the strictness of these rules, as they have
been formed by case law up to now, with the effect that even the addition of
a hyphen should be regarded as adequate differentiation, which draws away the
risk of confusion between a trademark and a domain name(27). This argumentation has correctly
not been adopted by the case law(28),
because the risk of confusion for the consumer remains the same regardless
from the fact whether he is on his way in the normal contractual field or the
so-called cyberspace(29).
An Internet user must indeed be extremely accurate while searching for a
WebPage by typing in the domain name under which it is hosted; but one cannot
say that this fact has changed (for now) the habits of the average and with
medium knowledge and abilities consumer - Internet user(30).
Thus the owner of a domain name should be obliged to add such distinctive
signs to it, that no risk of confusion can be provoked. Moreover the virtue
that the stronger the trademark is, the stronger its protection will be,
should fully apply(31). An exception to the above might
only be accepted in case the domain name under dispute has been formed by the
natural name of its owner, which is part of the trademark, the distinctive
title or his trade name. In that case following interesting phenomenon
arises: While the literature and the case law have formed a system of rules
for the case of holders of the same name(32),
which foresees the addition of differentiating signs in such a manner that
the interests in conflict are adequately served, the technical peculiarity of
domain names leads towards a re-approach of the colliding signs; it is
obvious that both parties will be interested in using the
"crucial"-colliding part of their distinctive sign and not the
differentiating addition as a domain name. In that case we must accept that
the owner of the more recent distinctive sign will not be totally deprived
from using his name as (part of) a domain name(33).
If it is technically not possible to add such differentiation signs that the risk
of confusion is completely excluded, one should be satisfied by demanding to
have it reduced as much as possible(34). 3. The principle of
territoriality: Another big issue that arises in
relation to trademark legislation evolves the principle of territoriality,
which proves insufficient to follow the evolutions in the global information
society. As already mentioned, every second level domain (that is every name)
can be registered under any of the 246 top level domains. In such cases,
where the distinctive sign to be protected is just a trademark and not a
trade name or a commercial designation at the same time(35),
its owner won't be easily protected from an in bad faith registration and use
of it as a domain name under a remote or "exotic" country level
domain, as in the case of Amazon. It is true that the problem of the
principle of territoriality is not a new one for the people involved with the
trademark protection. The parameter called "internet" though
provides this problem with explosive dimensions , in one part due to the
speed of its expansion and the circulation of the information contained
therein (i.e. Amazon was founded just 4 years ago and is now one of the
fastest growing businesses in the world, while it's name has become similar
to electronic commerce), on the other part due to its global nature. Internet
knows no borders. A web page under the domain name amazon.gr is equal easily
accessible to a computer user in the It is very doubtful whether the
few exceptions to the principle of territoriality that have been acknowledged
by the International Paris Convention are capable of regulating in the future
the commercial transactions in the global village named the Internet.
Furthermore the use of internationally uniform rules as well as the obligatory
international mediation (administrative panels) in the level of the
registration authorities regarding domain names disputes, as it has been
pursued by international organizations(36),
do not seem to be in position to totally solve the problem. Those rules and
these mediation proceedings do not have in the present phase a legislatory
and a judicial status, with result that there is always the possibility of
taking those mediation awards to the national courts, which will decide
taking into consideration the applicable law. III. Unfair Competition Apart from the protection of the
trademark legislation, but also in cases where such protection will not be
applicable due to the aforementioned reasons, one should investigate whether
the use of a domain name could be prevented on the basis of unfair
competition law and in particular by the clause of Art. 1 of law 146/1914.
That will mainly be the case when a domain name is being used for
transactions, but no risk of confusion arises or it is not being used as a
trademark(37).
Herein fall the cases in which companies are either using the distinctive
signs of a well known competitor of theirs as a domain name, in order to gain
clients at the competitor's expense (unfair expropriation of foreign
reputation), or are just registering them as domain names without using them,
in order to block them (unlawful obstruction)(38). The German case law, interpreting
broadly the requirement of "acting for the purpose of competition(39)"
is solving according to the respective general clause of Art. 1 UWG (German
Act Against Unfair Competition), also the cases of registration of a
trademark by the so-called domain traders with the sole intention to "resale"
it to the owner of the respective distinctive sign(40).
Respectively the English case law solves the cases of domain grabbing by the
use of the tort of passing off(41). Moreover Art. 13 of Law 146/1914
regarding distinctive signs according to the non typical system and the trade
name might be applicable, provided that the requirements that it sets are
met. As far the requirements of the use in the course of trade and the risk
of confusion are concerned, what has already been handled above should apply
accordingly. In cases where the same sign or part of it is used as a
trademark, tradename and distinctive title at the same time(42),
its owner might find himself better protected against the use of his sign as a
domain name by a third party, by the means of Article 13, rather than by the
trademark legislation, . IV. Tort law In cases where no use in the
course of trade is made or no risk of confusion exists, protection could be
granted on the basis of the provisions of the Greek Civil Code for torts and
in particular of Art. 914 and 919 of the Greek Civil Code. Registering
intentionally a foreign trademark or name as a domain name in order to
prevent his owner from using it as a web-address or to hold it to ransom, is
an illegal interference in his professional activity in the sense of Art. 914
of Greek Civil Code or alternatively an opposed to the honest practices
action in the sense of Art. 919 of Greek Civil Code(43).
The requirements of the illegality and the opposition to the honest practices
will be harder to prove in cases where the names are identical and the
cybersquatter will be setting forth his right in name. V. Protection of name The protection of name (as well as
of the company and the trade name) against it's use as a domain name should
also be examined on the basis of Art. 58 of the Greek Civil Code(44).
Critical will be the answer to the question, whether the owner of the domain
name makes illegal use of the name of the claimant (Art. 58, 2nd var.) The use will most probably not be
illegal in cases where the owner of the domain name has a right to use the
particular name (i.e. holder of an identical name). This will be almost
absolutely the case when the private owner of the domain name will be setting
forth his right on his name, with the result that no exception would be
permitted from the first come, first served principle. In relation to the trade name in
particular, to the extend that the critical requirements for the assessment
of the illegal insult are the same as the requirements of Art. 13 of Law
146/1914(45),
what has already been mentioned above should be cited here as well. The same
applies for the principle that no one can be deprived from his right to use
his name, even in transactions in the course of trade. Moreover with the provisions for
the protection of name (and eventually with the ones for the protection of
personality as well as of torts) one could deal with cases where private
individuals or non profit organizations are using the distinctive signs or
the trade name of a famous brand as a domain name, in order to practice from
the relative web-page a propaganda campaign against it(46). VI. Conclusion With the above presented remarks
we have tried to show part only of the issues that arise in relation to
domain names and constitute in a way the top only of an iceberg. The larger
the number of the users of the internet is becoming and in particular the
more the electronic commerce business is expanding, the more issues will
arise concerning domain names. To the issues already addressed one should
also add the general issues that relate to law and the internet, such as the
issue of the applicable law, but also that of the international jurisdiction
and the implementation of judicial awards(47).
The number of the relative cases that are pending before the courts of all
the countries of the world is increasing on a geometrical basis over the last
years. Initiatives for the resolution of the issue of domain names have been
undertaken by many country governments (with leader the Government of the The short overview above shows
from one side the new legal issues that arise from the expansion of this new
communication and information medium called the Internet; it also shows on
the other side the welfare in protection mechanisms that the legal science is
developing, especially in the countries of the roman legal tradition, a fact
that is of great significance and importance in view of the globalization
that is under process(50). FOOTNOTES (1) Court
of First Instance of (2)
Internet Protocol number. (return) (3)Domain
Name Server. (return) (4) For
the translation of the term into Greek see the efforts of Anthimos, Introduction to the issue of
Domain Names, Business and Corporate Law (DEE) 1999, 815, 817. (return) (5) The
administration of the three general (also called "international")
top level domains (.com, .net, .org) was up to now exclusively allocated to
Internic by virtue of a contract with the U.S. Government, while for the rest
243 regional (country code) top level domains (i.e. .uk for the United
Kingdom, .de for Germany, .fr for France a.s.o.) there are special companies
or organisations in every country. (return) (6)
Translated into greek as "kivernosfeteristes" by Anthimos, passim (Footn. 4), p. 818,
footn. 22. (return) (7) In
order to view the activities of Greek cybersquatters it is worth visiting the
following websites: mega.gr, net.gr, iaso.com, latsis.com, vardinoyannis.com,
athina2004.com, greece2004.com, athina2004.net, olympiada.com, lawyer.gr,
doctors.gr, medical.gr which are expressively offered for sale; continent.gr,
visa.gr, mastercard.gr, 2004.com which have an ambiguous content;
greece2004.org which hosts the web pages of a religious organisation; finally
aspis.com which contrary to the address aspis.gr, where the same named
company is being promoted, hosts the complaints of one of its
clients-investors (the site contains the full story and correspondence
between the two parties!). Moreover many domains that today are hosting the
web pages of well known companies, were being offered in the near past for
sale or rent (i.e. dromeas.gr). (return) (8) In Greece see Anthimos, passim (footn. 4), who cites the international literature, as well as Perakis, General Part of Commercial Law, 1999, p. 301.(return) (9) Kur, Namens- und Kennzeichenschutz im Cyberspace, CR 1996, 590, 591. (return) (10) Liakopoulos, Industrial Property II, 4th edition, 1995, p. 130. (return) (11) Kur, passim
(footn. 9), p. 591· Nordemann, Internet-Domains und zeichenrechtliche
Kollisionen, NJW 1997, 1891, 1893. Accordingly in the (12) The German theory and case
law handle the cases where a domain name has only been registered without
being used by granting provisional protection towards the upcoming danger of
using the domain name in the course of trade (OLG Duesseldorf CR 1998, 165,
166 - epson.de (= NJW-RR 1998, 979)· LG Frankfurt a.M. NJW-RR 1998, 974, 975
- lit.de). More recent decisions moreover rule that the mere registration of
a domain name constitutes use in the course of trade, due to its prohibiting
function in relation to having the same sign registered as a domain name by
another Internet user. (See OLG Dresden CR 1999, 589, 590 (=NJW-CoR 1999,
302) - cyberspace.de· OLG Braunschweig CR 1998 364, 365 - deta.com). (return) (12) The
German literature and case law are dealing with the cases in which a domain
name has only been registered without being actually used by accepting a
provisionary claim towards the upcoming danger of using the domain name in
the course of trade (OLG Duesseldorf CR 1998, 165, 166 - epson.de (= NJW-RR
1998, 979)· LG Frankfurt a.M. NJW-RR 1998, 974, 975 - lit.de). Some latest
awards also rule that the sole registration already constitutes a use in the
course of trade, due it's hindering function for another user of the internet
to register the same sign as a domain name (see OLG Dresden CR 1999, 589, 590
(=NJW-CoR 1999, 302) - cyberspace.de· OLG Braunschweig CR 1998 364, 365 -
deta.com). (return) (13) OLG
Duesseldorf passim (footn. 12), p. 168. (return) (14) For (15) See
LG Muenchen I CR 1997, 540, 541 - freundin.de with comment by Cloos (=
MMR 1998, 556 =NJW-RR 1998, 984)· LG Hamburg, KuR 1998, 365 - eltern.de· LG
Braunschweig passim (footn. 12).For the same issue see also Wiebe, Zur
Kennzeichnungsfunktion von Domain Names, CR 1998, 157. (return) (16) In
that sense TGI Paris, ord. ref., 12 mars 1998, Alice c/ Alice, D.
1999, Jur. p. 316, with comment by M. Viala, which has been revoked by
the Appelate Court CA Paris, 4 dec. 1998 at http://www.legalis.net/jnet/decisions/marques/arret_ca-paris_0411298.htm
. (return) (17) In
relation to the risk of confusion in the law of distinctive rights see (18) See Liakopoulos,
Issues of Commercial Law II, 1997, p. 145. (return) (19) A
limit to the above remark will set Art. 281of the Greek Civil Code, i.e. in
cases where the registration of a younger trademark is used in order to
"legalise" the registration of the domain name that follows. (return) (20) It
might be possible of course to register the trademark as it is, without any
additions under another top level domain, i.e. under .com instead of .gr. (return) (21)Accordingly
for the French law see Loiesau, Nom de domaine et Internet:
turbulences autour d' un nouveau signe distinctif, D. 1999, Chr. p. 245, 249·
M. Viala, comment on TGI Paris, passim (footn. 16), p. 318. (return) (22) See Liakopoulos,
passim (footn. 18), p. 144. (return) (23) See
LG Muenchen I passim (footn. 15), p. 542· OLG Karlsruhe, MMR 1999, 171, 172
-zwilling.de (unfair gain). In relation to damaging the reputation see in the
American case law Hasbro, Inc. v. Internet Entertainment Group, 40 U.S.P.Q.
2d 1479 (W.D.Wash.1996). Also OLG Hamm CR 1998, 241, 242 with comments by Bettinger
- krupp.de (=MMR 1998, 214 with comments by Berlit) and OLG Muenchen
EwiR 1999, 543 (Hoeren) - shell.de with partially ambiguous reasoning,
as they accept the existence of a danger of damaging the reputation, but they
use as a basis of the relative ommission claim the right in the name
according to Art. 12 of the German Civil Code. (return) (24)
According to German case law crucial for assessing the use is only the second
level domain. As a result the use of a sign under any top level domain (i.e.
.com or .gr) constitutes use of a sign that is identical to the trademark. In
any case the addition of the top level domain does not constitute an adequate
differentiation, in order to exclude the risk of confusion with a previously
registered trademark (the same applies of course for the communication
protocoll http://www., which inevitably accompanies every domain name) See LG
Frankfurt a.M. passim (footn. 12), p. 976· OLG Dresden, passim (footn. 12),
p. 591 and LG Hamburg of 30.9.1998 (315-0-278/98) – xtra.net at http://www.onlinerecht.de/vorent.html?LGHamburg980930.
The latter correctly rules that the top level domain might become crucial in
case it is being used as well in the sense of a trademark. As a result the
domain name xtra.net does collide with the trademark xtranet. (return) (25) Kur, Internet
Domain names, CR 1996, 328· the same, CR 1996, 593· the same,
Kennzeichenkonflikte im Internet, in Festschrift fuer Beier, 1996, p. 276· Hoeren,
Rechtsfragen des Internets, 1996, p. 98 f.· Graefe, Marken und
Internet, MA 1996, 100, 102. Bettinger, Kennzeichenrecht im
Cyberspace: Der Kampf um die Domain-Namen, GRUR Int. 1997, 402, 412. (return) (26) Every
little deviation while typing a web address (even ommitting a full stop)
might lead the internet user to a completely different web page than the one
he is seeking for. (return) (27) See Hoeren,
passim (footn. 25), p. 99. (return) (28) As it
can be indirectly concluded from the case law in relation to adding the top
level domain (see above footn. 23). See also OLG Hamm passim (footn. 23), p.
243 that leaves the matter pending. (return) (29)Nordemann,
passim (footn. 11), p. 1894. (return) (30)Nordemann,
passim, p. 1894. (return) (31)Poeck, in Schwartz,
Recht im Internet, Stadtbergen, 1996, 4-2.2, p. 16. In
relation to the doctrine see Rokas, Trademark law, 1978, p. 106 and
107 f. (return) (32) See
in depth Liakopoulos, Identical corporate names, Epitheorisi Emporikou
Dikaiou 1995, 324 f.. and N.
Rokas, Identical trademarks, Epitheorisi Emporikou Dikaiou 1996, 208 f. (return) (33) In
relation to this doctrine in genral see Liakopoulos, Industrial
Property II, 4th edition, 1995, p. 185. According to Kur, CR 1996, 594
this doctrine meets its limits in the technical peculiarities of the
Internet. (return) (34) In
this sense Viefhues in Hoeren/Sieber/Decker
kap. 6, Nr. 84.(return) (35) According
to Art. 8 of the International Covention of Paris the trade name (and the
distinctive title) is being protected despite the principle territoriality
"in every country of the (36) See
supra under IV. (return) (37)
According to the almost unanimous opinion of the courts and the literature in
(38) OLG
Dresden passim (footn. 12), p. 592. (return) (39) See the well-known award of BGH GRUR 1985, 550 - Dimple. (return) (40) LG Duesseldorf passim (footn. 12), p. 171·
LG Braunschweig passim (footn. 12), p. 366· LG Braunschweig CR 1997, 414 -
braunschweig.de. due of lack of a competition relationshipWilmer,
Offene Fragen der rechtlichen Einordnung von Internetdomains, CR 1997, 562,
565 partially also Bettinger, passim (footn. 25), p.
412 f. (return) (41) See British
Telecommunications plc. and others. v. One in a Million Ltd. and others,
passim (footn. 37), as well as R. Meyer-Rochow, The application of
passing off as remedy against domain name piracy, 20 European Intellectual
Property Review, Nov. 1998, p. 405. (return) (42) See (43) For
German law see Bettinger, passim (footn. 25), s. 414· Bucking,
Internet-Domains - Neue Wege und Grenzen des buergerlich-rechtlichen
Namensschutzes, NJW 1997, 1887, 1890. See also
the distinction made by Wilmer, passim (footn. 40), p. 566. (return) (44) The
first judicial award globally devoted to the issue of domain grabbing (LG
Mannheim, CR 1996, 353 with comment by Hoeren) has prevented a company
providing computer and internet services from publishing information on the
city of (45) See Liakopoulos,
Industrial Property II, 4th edition, 1995, p. 185. (return) (46) Kur,
Festschrift fuer Beier, 1996, p. 274 with reference to BGH GRUR 1984, 684 -
Mordoro. In such a case in order to assess the conflicting interests (being
among others the freedom of speech from the side of the holder of the domain
name) the court will inevitably have to take under consideration also the
fact that the use of the domain name for that purpose deprives the owner of
the trademark from the chance of using it in the Internet market. (return) (47) See Karakostas,
Law of the Internet, Nomiko Vima 46, 1172, 1181 f..· Marinos, The
Internet and its consequences mainly in the field of law, Elliniki Dikaiosini
1998, 1 f. · Mouzoulas, Transactions via the Internet, Elliniki
Dikaiosini 1998, 15 f. ( also at http://www.lawnet.gr/congress1/mouzoulas.html).
For the jurisdiction in particular see Kalow, From the Internet to
Court: Exercising Jurisdiction over World Wide Web Communications, 65 Fordham
Law Review 2241. (return) (48) It is
worth noting that the WIPO itself is a victim of domain grabbing (wipo.com),
but being an international organization it is being hosted under the top
level domain .int. (return) (49) The
application of the report-proposal (at http://wipo2.wipo.int/process/eng/processhome.html
), provided that it will be adopted by the competent authority, the
organization which will be regulating and managing the naming system in the
Internet (ICANN),
will be limited to the three generic top level domains (.com, .net., .org)
and therefore will not automatically apply to the greek domain (.gr). For a
brief summarized description of the report see Anthimos, passim
(footn. 4), p. 824. (return) (50) See also Lehmann, Cyberlaw: Rechtsevolution durch Globalisierung, in Festschrift fuer Fikentscher, 1997, p. 944, 952. (return) |
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