*Austrian Supreme Court: Generic Top Level Domain ‘.com’ Might Decrease The Likeliness of Confusion

The Austrian Supreme Court  in a recent decision (OGH, 18.01.2011, 17 Ob 16/10t, Schladming.com) has slightly liberalized its very strict practise concerning the registration of  names of cities as domains.

Although the court stuck with its previous rulings according to which the content of the website remains of no interest with regard to the question of whether or not the city’s names rights are infringed or not, the court for the first time admitted that the use of a Top Level Domain (TLD) such as e.g. .com might be of relevance for answering the question of whether a likeliness confusion (or attribution; “Zuordnungsverwirrung“) exists. If such a likeliness of confusion exists, a registrar would be seen as infringing the name rights of the city in question.

Facts of the Case:
The case concerns the domain Schladming.com which is registered for the defendant. Schladming is the name of a mid-size Austrian city, well know in Austria for skiing and, surely more importantly, for hosting the 2013 Alpine Ski World Championship.

The defendant Tiscover,  runs a accommodation booking site for the region around Schladming.  The domain Schladming.at is registered for the city council of Schadming. As many other Austrian cities and villages,  Schladming had failed to register the name of their city on time and subsequently sued the defendant.


 

Name law in Austria in regard to domain law is usually applied in a very strict manner and as a rule of thumb courts will usually grant an injunction against any registrar who registered the name of an Austrian city as a domain name and thus infringes the name rights of the city (OGH, 16.12.2003 ,4 Ob 231/03d, serfaus.at).

Regarding disputes about name rights, other than disputes about e.g. TM issues, the actual content of the respective website (OGH, 24.03.2009, 17 Ob 44/08g, justizwache.at) and  the actual TLD used (e.g. OGH, 20.03.2007, 17 Ob 3/07a, immoeast.com) were not considered when judging whether the name holder’s rights were infringed or not . The only thing courts were bound to consider was whether the  domain name itself was confusingly similar to the allegedly infringed name.


In Schladming.com the OGH extensively cited literature on the question of whether or not the TDL should also be considered, referring also to a decision by the German BGH (BGH, 21.09.2006, I ZR 201/03, solingen.info), in which the court had found  that the TLD ‘.info‘ when being registered for the name of a German city (solingen.info) was not sufficient to rule out a likeliness of confusion.


The defendant in schladming.com however had argued that an average consumer would “beyond doubt” not expect the city to be the registration of any Austrian city name ending on the  TLD ‘.com’.

A connection between the name of an Austrian city used as a domain and the respective city, would only be assumed if the TLD ‘.at‘ would be used. To prove this argument the defendant through all stages of the trial offered to provide expert witnesses. Citing the above-mentioned ruling of the OGH, the courts of lower instances (immoeast.at),  however refused to accept evidence on this matter.


  • Likeliness of Confusion as a ‘legal‘ or a ‘factual‘ question

Under Austrian procedural law courts are free to decide whether the question of whether a likeliness of confusion exists, shall be treated ad a mere ‘legal question‘ (“Rechtsfrage“) or as a ‘factual question’ (“Tatsachenfrage“).

Austrian courts will treat the question of a likeliness of confusion as a legal question, if the expertise of the court is sufficient to decide on the matter. In case the court expertise isn’t, the court is bound to consult an expert witnesses on the matter and deal with the matter as a factual question.

The courts of first instance saw no need to allow expert opinions on the question on confusion. Although the OGH stated that the court of first instance was in principle right in doing so, the Supreme Court took issue with the fact that the court of first instance didn’t address the issue of whether or not the TLD .com might affect the likliness of confusion was a legal defect (“sekundärer Feststellungsmangel”)  at all and thus annulled the decision of the court of first instance.

  • Possible implications on on-line advertising

Bearing in mind the notably very strict previous decisions of the Austrian OGH in this respect, one might wonder if the courts’ change of heart might indicate that the court acknowledges that Austrian web-users have become more web-savy and as a consequence might eventually pay attention to the TLD following a certain domain name. This would be indeed a big step forward, as the Austrian OGH in its recent decisions had expressed an attitude concerning the web-savines of the average Austrian web user, which – politely speaking and referring to the courts Keyword Advertising decision – was always seen as being  very, very limited.

  • No duty to transfer domains under Austrian law

One detail most practitioners forget to mention when trying to motivate their potential clients against litigating against an alleged infringer is that, under Austrian law, even a name-holder who was granted an injunction against the infringer will in most of the cases not receive his domain as Austrian law foresees no duty for the infringer to transfer (“Übertragungsanspruch“) the domain to the right holder. The only duty the infringer is bound to, is to cancel the registration (“Löschungsanspruch“) . After such a cancellation for example the Austrian Domain Name registry (nic.at) will wait for an undefined period of time before the domain can be registered again … by anybody.

As a practical consequence anybody who thinks that his rights were infringed by a domain name, should, if it is an Austrian domain name, approach the Austrian DN registry to request the ‘Wait status‘ (“Wartestatus“) which will stop the registrar from transferring the domain, but should necessarily at the same time request a third party service ‘Domain Catcher‘ to attempt to register the domain at the earliest point possible, as the infringer can always decide to cancel the domain and then to secretly register the domain under an identity less vulnerable to litigation.

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