EN Official Journal of the European Union C 209/7

Judgment of the Court (Second Chamber) of 3 June 2010 (reference for a preliminary ruling from the Oberster Gerichtshof — Austria) — Internetportal und Marketing GmbH v Richard Schlicht

(Case C-569/08) (1)

(Internet - eu Top Level Domain - Regulation (EC) No 874/2004 - Domain names - Phased registration - Special characters - Speculative and abusive registrations - Concept of ‘bad faith’)

2010/C 209/10

Language of the case: German

Referring court

Oberster Gerichtshof, Austria

Parties to the main proceedings

Applicant: Internetportal und Marketing GmbH

Defendant: Richard Schlicht

Re:

Preliminary ruling — Oberster Gerichtshof (Austria) — Interpretation of Article 21(1)(a) and (b), (2) and (3) of Commission Regulation (EC) No 874/2004 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) — Speculative and abusive registrations — Concepts of ‘rights or legitimate interest’ and ‘bad faith’ — Registration of a domain by the proprietor of a national trade mark acquired with the sole aim of enabling that registration in the first phase of phased registration — Domain differing substantially from the trade mark on which its registration was based, because of the elimination of the special character ‘&’ — Trade mark ‘&R&E&I&F&E&N&’

Operative part of the judgment

1. Article 21(3) of Commission Regulation (EC) No 874/2004 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 must be interpreted as meaning that bad faith can be established by circumstances other than those listed in Article 21(3)(a) to (e) of that regulation;

2. In order to assess whether there is conduct 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 national court must take into consideration all the relevant factors specific to the particular case and, in particular, the conditions under which registration of the trade mark was obtained and those under which the.eu top level domain name was registered.

With regard to the conditions under which registration of the trade mark was obtained, the national court must take into consideration, in particular:

— the intention not to use the trade mark in the market for which protection was sought;

— the presentation of the trade mark;

— the fact of having registered a large number of other trade marks corresponding to generic terms; and

— the fact of having registered the trade mark shortly before the beginning of phased registration of.eu top level domain names.

With regard to the conditions under which the.eu top level domain name was registered, the national court must take into consideration, in particular:

— the abusive use of special characters or punctuation marks, within the meaning of Article 11 of Regulation No 874/2004, for the purposes of applying the transcription rules laid down in that article;

— registration during the first part of the phased registration provided for in that regulation on the basis of a mark acquired in circumstances such as those in the main proceedings; and

the fact of having applied for registration of a large number of domain names corresponding to generic terms..

(1) OJ C 69, 21.3.2009.