Opinion of the Advocate General — ECLI:EU:C:2010:65
Date: 2010-02-10
Language of the case: German
Subject matter: Intellectual, industrial and commercial property;Trans-European networks
Procedure: Reference for a preliminary ruling
Origin: Austria

Summary 115. The analysis carried out in this Opinion leads me to suggest an approach whereby, even though it is difficult, to my mind, to deny that the claimant has a right within the meaning of Article 21(1)(a) of Regulation No 874/2004, a combination of factors might nevertheless demonstrate its bad faith. 116. Thus, obtaining a national trade mark constitutes a right which renders the claimant a beneficiary of the legal position required under that provision, since only cancellation of that trade mark in accordance with the relevant national procedures can deprive it of that benefit. However, the difference between the trade mark and the domain name is apparently due to what was probably a correct application of the transcription rules, so it is not possible either to blame the claimant for that difference with a view to annulling its right within the meaning of Article 21(1)(a) of Regulation No 874/2004. 117. However, the various steps undertaken by the claimant constitute links in a chain culminating in the registration of the domain name. Despite the fact that all those steps, considered in isolation, are formally valid, the process as a whole points to an intention to evade the provisions of Regulation No 874/2004 by means of a trade mark which is necessary for it only for the purpose of being able to take advantage of the first phase of domain name registration. By acting in that way, the claimant obtains an advantage over the other parties interested in the same domain name – which, moreover, is a generic word in German – an advantage which it would not have had if it had acted fairly. 118. By its misconduct, it prevents the other interested parties from participating in the grant of the domain name in accordance with the ‘first come, first served’ rule. To accept that such conduct is a ‘stroke of genius’ would mean that the race will no longer go to the fastest but to the craftiest – whoever finds the best shortcut – which would be contrary to the very spirit of Regulation No 874/2004. VIII – Conclusion 119. In the light of the foregoing considerations, I suggest that the Court answer the questions referred by the Oberster Gerichtshof as follows: (1) Article 21(1)(a) of Commission Regulation (EC) No 874/2004 laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration must be interpreted as meaning that the proprietor of a national trade mark has a right within the meaning of that provision so long as that trade mark has not been cancelled, on grounds of bad faith or on other grounds, by the competent authorities or courts in accordance with the procedures laid down in national law. That right exists even if the trade mark which provides the basis for the domain registration differs from the domain name as a consequence of the correct elimination from the latter of the special characters which that trade mark contained. It is for the national court making the reference to determine whether those special characters could have been rewritten. (2) For the purposes of determining whether conduct can be categorised as being in bad faith within the meaning of Article 21(1)(b) of Regulation No 874/2004, read in conjunction with Article 21(3) thereof, the situations specified in which are not exhaustive, the national court is required to take into account all the relevant factors specific to the case before it, including: – the circumstances in which the trade mark was acquired, in particular the intention not to use it on the market for which protection was sought; – the fact that the trade mark is a German-language generic name; and – the possibly abusive use of the ‘&’ character in order to influence the application of the transcription rules under Article 11 of Regulation No 874/2004, in so far as the sole purpose of the registration is to be able to request registration of the domain name corresponding to the trade mark in the first phase of domain name registration (the ‘sunrise period’), as provided for in that regulation. 1 – Original language: French. 2 – Commission Regulation of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration (OJ 2004 L 162, p. 40). 3 – According to the national court, the name of the trade mark is made up of the first three letters of the German words ‘Reinigungsmittel’ (cleaning agents) and ‘Fenster’ (window); but the word ‘Reifen’ in itself means tyre. 4 – OJ 2002 L 113, p. 1. 5 – Footnote not applicable in the English version. 6 – In Case No 00910. 7 – First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1). 8– Council Regulation of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1). That regulation was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), in force since 13 April 2009. However, it is merely a codified version, which has not altered the substantive content of the main provisions. 9 – Case C-421/04 Matratzen Concord [2006] ECR I-2303. 10 – It is established practice in the Court’s case-law to provide the national courts with answers which are helpful for the purposes of deciding cases in which questions have been raised for a preliminary ruling; see, for example, Case C-41/90 Höfner and Elser v Macrotron [1991] ECR I‑1979, paragraph 16; Case C‑445/06 Danske Slagterier v Bundesrepublik Deutschland [2009] ECR I‑0000, paragraph 29; and Joined Cases C‑402/07 and C‑432/07 Sturgeon and Others [2009] ECR I‑0000, paragraph 28. 11 – To that effect, Rule A5 of the .eu Alternative Dispute Resolution Rules (‘the ADR Rules’ ; see http://eu.adr.eu/html/en/adr/adr_rules/eu%20adr%20rules.pdf) provides that ‘[t]he conduct of the ADR Proceeding shall not be prejudiced by any court proceeding, subject to Paragraph A4(c) above …’. Paragraph A4(c) reads as follows: ‘The Panel shall terminate the ADR Proceeding if it becomes aware that the dispute that is the subject of the Complaint has been finally decided by a court of competent jurisdiction or an alternative dispute resolution body’. Moreover, those provisions show that the procedure is not mandatory, contrary to what has been maintained; to that effect, see Muñoz, ‘L’enregistrement d’un nom de domaine “.eu”’, Journal des tribunaux – Droit Européen, 2005, No 120, p. 164. 12 – Bettinger, T., ‘Alternative Streitbeilegung für “.EU”’, Wettbewerb in Recht und Praxis, No 5/2006, p. 551. 13 – Fromkin, M., ‘ICANN’s Uniform Dispute Resolution Policy, Causes and (Partial) cures’, Brooklyn Law Review, Volume 67, Spring 2002, No 3, p. 636. 14 – This has been criticised as unfair, in so far as (to confine the analysis to time periods alone), the right of the proprietor of a trade mark to bring proceedings before the courts is not subject to any temporal limits, whereas the defender of a contested domain name has, by contrast, only 30 days in which to bring the Arbitration Court’s decision before the national courts. Defossez, A., ‘Conflits entre titulaires de nom de domaine .eu et de droit de marque: une première analyse’, Revue du Droit de l’Union Européenne, No 2/2007, p. 375. 15 – That situation, typical of this kind of procedure, and known as ‘trademark bias’, has not been without its critics. See Froomkin, M., cited above, p. 674. See also Tardieu-Guigues, E., ‘“Eurostar.eu”, la première contestation judiciaire de l’enregistrement d’un nom de domaine en < .eu >‘, Revue LAMY droit de l’immatériel, No 15, April 2006, p. 35, for whom ‘the general principles which guide alternative dispute resolution procedures are not in the interests of applicants [for domain names]’. 16 – With regard to the notion of ‘genuine use’, see, inter alia, Case C‑246/05 Häupl [2007] ECR I-4673; Case C‑442/07 Verein Radetzky-Orden [2008] ECR I‑9187; and Case C-495/07 Silberquelle [2009] ECR I‑0000. 17 – Matratzen Concord, paragraphs 25 and 32, and Case C‑238/06 P Develey Holding v OHIM [2007] ECR I‑9375, paragraph 58. 18 – This also seems to be the test applied by the Czech Arbitration Court; Scheunemann, K., Die .eu. Domain – Registrierung und Streitbeilegung, Nomos, Baden-Baden, 2008, p. 240. 19 – Which reads as follows: ‘… [i]n all other respects, the domain name shall be identical to the textual or word elements of the prior right name’. 20 – This interpretation also seems to have been preferred by the ADR panels, although that has not succeeded in limiting fraud; Mietzel, J.G., ‘Die ersten 200 ADR-Entscheidungen zu .eu‑Domains – Im Spagat zwischen Recht und Gerechtigkeit’, Mutimedia und Recht, No 5/2007, p. 284. 21 – Thus, that same provision is worded as follows: in English, ‘[a] legitimate interest within the meaning of point (a) of paragraph 1 may be demonstrated where’; in French, ‘[l]’existence d’un intérêt légitime au sens du paragraphe 1, point a), peut être démontrée quand :’; in Italian, ‘[i]l legittimo interesse ai sensi del paragrafo 1, lettera a), può essere dimostrato ove:’; in Spanish, ‘[p]odrá quedar demostrada la existencia de intereses legítimos a efectos de la letra a) del apartado 1 en los casos en que:’; in Dutch, ‘[e]en gewettigd belang in de zin van lid 1, onder a), kan worden aangetoond wanneer:’; and in Slovene, ‘[l]egitimen interes v smislu točke (a) odstavka 1 se lahko izkaže, če:’ (emphasis added). 22 – In accordance with Article 23(2) of Regulation No 874/2004. 23 – This is apparent from the second subparagraph of Article 23(2) of Regulation No 874/2004, which requires them only to have ‘appropriate expertise’. 24 – That, at least, is the argument put forward by some academic writers; Bettinger, T., Willoughby, A. & Abel, S.M., Domain Law and Practice – An International Handbook, Oxford, 2005, p. 278; Scheunemann, K., op. cit., p. 245. 25 – See points 84 and 85 of this Opinion. 26 – In English, ‘[b]ad faith, within the meaning of point (b) of paragraph 1 may be demonstrated, where:’; in French, ‘[l]a mauvaise foi au sens du paragraphe 1, point b), peut être démontrée quand :’ ; in Italian, ‘[l]a malafede ai sensi del paragrafo 1, lettera b), può essere dimostrata ove:’; in Spanish, ‘[p]odrá quedar demostrada la mala fe a efectos de la letra b) del apartado 1 en los casos en que …’ ; in Dutch, ‘[k]wade trouw in de zin van lid 1, onder b), kan worden aangetoond wanneer:’; and in Slovene, ‘[n]epoštenost v smislu točke (b) odstavka 1 se lahko izkaže, če:’ (emphasis added). 27 – A contrary position, to the effect that the list is exhaustive, has been maintained by arguing that the addition of the general good faith clause to the grounds expressly provided for would be liable to result in a different interpretation according to the different national courts, a situation compounded by the fact that some of the criteria used would be those deriving from trade mark law, which are not in harmony with those for domain names; Kipping, D., Das Recht der .eu‑Domains, Ed. Carl Heymanns, Cologne/Munich, 2008, p. 40. However, the method of comparing language versions has traditionally been used by the Court in order to establish the meaning of Community legislative provisions. Where, as in the present case, the error appears in only one of the languages, all the others having the same semantic content, the only conclusion which can be drawn is that there is a mistake in that version. In addition, point (c) of the first paragraph of Article 3 of Regulation No 874/2004 also contains a reference to good faith, expressed as a general phrase which is not exclusively linked to the situations listed in Article 21, although there is still no need to advocate any limitation of the interpretation of that phrase. 28 – See point 87 of this Opinion. 29 – Case C‑529/07 Chocoladefabriken Lindt & Sprüngli [2009] ECR I‑0000, paragraph 37. 30 – See, inter alia, Joined Cases C‑456/01 P and C‑457/01 P Henkel v OHIM [2004] ECR I‑5089, paragraph 48. 31 – With regard to the other functions of a trade mark, recently recognised by the case-law of the Court, see Case C‑487/07 L’Oréal and Others [2009] ECR I‑0000, paragraph 58. 32 – In German law, see Ströbele, P., ‘Absolute Schutzhindernisse – Unterscheidungskraft’, Ströbele/Hacker, Markengesetz Kommentar, ninth edition, Carl Heymanns, Cologne, 2009, p. 242. 33 – However, a few differences between the national laws should be noted. Thus, in Austria itself, the case-law seems to have tempered an initial suspicion as regards whether the registration of generic terms as domain names was consistent with the requirement to act in good faith; Haller, A., ‘Internet-Domains – ein Überblick’, in Brenn (ed.), ECG/E-Commerce-Gesetz, Manz, Vienna, 2002, p. 109. Spanish law, on the other hand, expressly prohibits by statute the registration of generic terms covering products, services, establishments, sectors of industry, professions and trades, religions, and so on; Plaza Penadés, J., ‘Propiedad intelectual y sociedad de la información’, in García Mexía, P. (ed.), Principios de Derecho de Internet, Tirant lo Blanch, Valencia, 2005, p. 380. In Italy, by contrast, the registration of generic terms is not prohibited by statute but the case-law also seems to be moving towards at least partial prohibition; Casaburi, G., ‘Nomi a dominio Internet e tutela della proprietà industriale’, Rivista Giuridica di merito De Jure, No 5, May 2008, p. 12. In France and the United Kingdom, no prohibition of registration of generic domain names seems to exist; for French law, Azéma, J. and Galloux, J.‑C. Droit de la propriété industrielle, Dalloz, sixth edition, Paris, 2006, p. 917; for United Kingdom law, see Morcom, Roughton, Graham and Malynicz, The Modern Law of Trade Marks, second edition, Lexis Nexis Butterworths, London, 2005, pp. 377 and 378. 34 – See the 11th recital in the preamble to Regulation No 874/2004, which states that ‘… [a]fter the termination of the phased registration the principle of first come first served should apply in the allocation of domain names’. 35 – Codex Iustinianus. Corpus Iuris Civilis, vol. II, Krüger, Berlin, 1954, 8.17 (18)3(4). 36 – Case C‑110/99 Emsland-Stärke [2000] ECR I‑11569, paragraphs 52 and 53, and Case C‑515/03 Eichsfelder Schlachtbetrieb [2005] ECR I‑7355, paragraph 39.