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.EU domain name registration invalid because agency had no trade mark rights, rules ECJ

Out-Law News | 20 Jul 2012 | 4:47 pm | 2 min. read

An agency did not have the right to register a .eu domain name on behalf of a foreign optician during an initial registration period because the contract asking it to carry out the work did not count as a trade mark licence, the European Court of Justice (ECJ) has said. 

The dispute concerns a 'sunrise' period during which only trade mark owners or licencees could register .eu internet addresses.

US optician Walsh Optical hired Bureau Gevers to register the 'Lensworld.eu' address for it, based on its rights in the 'lensworld' trade mark for optical goods for Belgium, Holland and Luxembourg (Benelux region).

Rival optician Pie Optiek, which held rights in a 'lensworld' trade mark for Benelux covering different categories of goods and services, challenged whether Bureau Gevers had the right to claim the domain name on Walsh's behalf.

The ECJ ruled that the agency did not have those rights because in order to base the registration on Walsh's trade mark rights Bureau Gevers had to have rights for licensed use of the trade mark. Its contract did not provide those rights, the ECJ said.

It said that Bureau Gevers needed these rights in order to legitimately register the .eu domain name on Walsh Optical's behalf during the sunrise period. The contract merely provided Bureau Gevers with the right to register the web address similar to Walsh Optical's mark.

The ECJ's ruling was based on a reading of the EU's Regulation on the .eu domain. Under the Regulation firms that hold "prior rights", including in relation to trade marks, can take advantage of a 'sunrise' period in order to register .eu domain names based on those naming rights. Generally, other firms cannot register .eu domain names based on those names during that restricted period unless they hold a license to the rights.

The ECJ said that the contract between Walsh Optical and Bureau Gevers could not be "regarded as a licence agreement in trade mark law" and that "consequently" Bureau Gevers could not be said to have been a 'licensee of prior rights'.

"A contract ... by which the contractual partner, described as ‘licensee’, undertakes, in return for remuneration, to use reasonable efforts to file an application and obtain a registration for a .eu domain name, is more akin to a contract for services than to a licence agreement," the ECJ said in its ruling.

"That is all the more so if such a contract does not confer on that licensee any right to use the trade mark corresponding to that domain name commercially in a manner consistent with its functions, but the licensee acknowledges that the domain name which it registers in accordance with its obligations will remain exclusively owned by the licensor and confirms that it will not use that domain name in any matter inconsistent with the terms of the contract," it added.

"It is of little importance in that regard that such a contract specifies that its purpose is ... to enable the licensee to obtain a domain name registration in its name but on behalf of the licensor, if that power serves no purpose other than to enable the contractual partner to perform his obligation to register the domain name(s) in question in return for remuneration, and is thus purely ancillary to that obligation," the Court said.

To be a 'licensee of prior rights' and entitled to register .eu domain names on behalf of trade mark owners, companies must at least be able to use its trade marks to "guarantee to consumers the origin of the goods or services", the primary function protected by that mark, the Court said. Other "functions" of the mark that could also be licensed include "in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising," it added.

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